Comments Nancy Castleman has made

Whoops

The link didn't come through correctly. My apologies. Here's take two: <http://docs.justia.com/cases/federal/district-courts/california/candce/4:2006cv00324/175584/146>On freecycle: TM, and R.I.P. posted 1 year, 5 months ago 31 Responses

Update on the Legal Cases Re: Tfn's Alleged TM

Tim Oey's attorneys have asked the court for a summary judgment against tfn because of what's called "naked licensing." Their motion will be heard on August 23rd.

Below are some excerpts, and the actual legal documents are in the Files secrion on http://groups.yahoo.com/group/fcnext/ , for your reading pleasure.

"Courts look to three kinds of evidence to determine if an alleged trademark has been abandoned through naked licensing: whether the
trademark owner (1) retained contractual rights to control quality, (2) actually controlled quality, or (3) reasonably relied on the icensee to maintain quality. ... Here, the facts show, not only a complete absence of quality control, but also an absence of quality standards."

"As an alleged trademark owner with alleged licensees, TFN has an obligation to set quality standards so that greecyclers know that the
freecycling services offered by TFN's approved groups are consistent and predictable. TFN failed to set quality standards for its alleged
licensees. For this reason alone, TFN abandoned its alleged trademarks through naked licensing, and FreecycleSunnyvale is entitled to summary adjudication."

"Once a trademark has been abandoned through naked licensing, that trademark cannot be revived through belated efforts to inspect or supervise the quality of licensee operations."

"FreecycleSunnyvale asks this Court to enter summary adjudication upon the grounds that, because there is no material issue of the fact that The Freecycle Network, Inc., engaged in naked licensing, The Freecycle Network, Inc., abandoned any trademark rights it might have had in the word 'freecycle,' the phrase 'The Freecycle Network,' or a logo containing a stylized version of 'freecycle' and the elements of a guitar and bicycle."

"When permitting others to use its alleged trademarks, TFN (1) did not establish quality standards for its alleged licensees, (2) did not retain any contractual rights to inspect or supervise its alleged licensees, (3) did not engage in quality control of its alleged licensees' operations, and (4) permitted complete strangers to use its alleged trademarks without having any basis to rely on the quality control efforts of these strangers. FreecycleSunnyvale is therefore entitled to summary judgment on its claim for a declaration of non-infringement as well as on TFN's counterclaims, all of which are trademark based."

"Of importance is what did not happen when FreecycleSunnyvale affiliated its online group with TFN and began using TFN's logo. There

were no contracts. There were no discussions of any requirements, restrictions, or conditions on the use of the word 'freecycle' or the phrase 'The Freecycle Network.' At this time, freecycling was a grassroots movement, and neither TFN not Mr. Beal made any effort to control local groups by asserting trademark rights."

There are lots of legal references in the motion and other legal papers, but here are some quotes from a quick Web search:

http://en.wikipedia.org/wiki/Trademark "... if a trademark owner does not maintain quality control and adequate supervision in relation to the manufacture and provision of products or services supplied by a licensee, such 'naked licensing' will eventually adversely impact on the owner's rights in the trademark."

http://www.ladas.com/BULLETINS/1995/1195Bulletin/US_Naked ...
"United States Court of Appeals Holds 'Naked' Licensing Results in Abandonment of Trademark Rights. In Stanfield v. Osborne Industries Inc., the Court of Appeals for the Tenth Circuit held that the plaintiff's licensing of its trademarks to the defendant, without any provision for, or actual exercise of, quality control, constituted an abandonment of the plaintiff's rights in its marks."

Nancy