United States Ninth Circuit

In an appeal arising from a preliminary injunction preventing defendant "from making any comments that could be construed as to disparage upon [plaintiff's] possible trademark and logo" and requiring the removal of previous such postings on the Internet and any other public forums, the injunction is vacated and remanded as: 1) defendant's actions likely did not constitute trademark infringement under section 1125(a) of the Lanham Act because they were not a "use in commerce," created no likelihood of confusion, and did not disparage plaintiff's products or services; 2) to the extent the injunction was based on a "trademark disparagement" claim under section 43(a) of the Lanham Act, the district court abused its discretion because no such cause of action exists under the Act; and 3) even if there were such cause of action, plaintiff failed to show a likelihood of success.

Appellate Information

• Argued 08/15/2007
• Decided 09/26/2007
• Published 09/26/2007

Judges

• HAWKINS, Circuit Judge:, Before: DIARMUID F. O'SCANNLAIN, HAWKINS, and KIM McLANE WARDLAW, Circuit Judges.

Court

• United States Ninth Circuit

Counsel

• For Appellant:
  
• Donald M. Falk, Mayer, Brown, Rowe & Maw LLP, Palo Alto, CA, for the appellants., Bruce Adelstein, The Law Offices of Bruce Adelstein, Los Angeles, CA, David Post, I. HermanStern Professor, James E. Beasley School of Law, Philadelphia, PA, for Amici James Boyle, Lauren Gelman, Lawrence Lessig, Declan McCullagh, David Post, Glenn Harlan Reynolds, Martin Schwimmer, Jimmy Wales, and Jonathan Zittrain, in support of the appellants., Mark A. Lemley, William H. Neukom Professor, Stanford Law School, Palo Alto, CA, for Amici 38 Intellectual Property Law Professors and the Electronic Frontier Foundation, in support of the appellants.


• For Appellees:
  
• Paul J. Andre, Perkins Coie LLP, Menlo Park, CA, for appellee.