History

Most Significantly:

The lawsuits below established that everyone in the United States can freecycle in peace without threat of overreaching trademark claims.

It also established that using a word generically is not trademark infringement, saying a word is generic is not trademark infringement, and encouraging others to use a word generically is not trademark infringement.


Briefly:


During the first few years of the grassroots freecycle movement (2003-2005), everything was freely given away to everyone -- "freecycle", the freecycle logo, and how to set up your own freecycle group. This made sense and was in harmony with the whole freecycling ethic. Key objectives were: free and legal.

This was documented in Salon.com (Nov 25, 2003), The New York Times (March 16, 2004), The San Jose Mercury News (Jan 27, 2004), The Wall Street Journal (May 6, 2004), People (May 10, 2004), and hundreds of other publications.

Then The Freecycle Network (TFN) decided to take back what it had given away by claiming a trademark on the word freecycle. The person in TFN who drove this decision was Deron Beal, TFN's founder, paid Executive Director, and primary controller of TFN's board of directors (as of 1/1/2011 the board still consists of only Deron, his wife, and a personal friend). Such a small board with the paid executive director in charge of it is a bad practice -- too many conflicts of interest and no independent oversight.

TFN used its incorrect trademark claim to bully or delete thousands of independent freecycle groups including the original FreecycleSunnyvale group in November 2005 because those "rogue" groups wanted to use the word freecycle freely just as it had been used in the New York Times, Wall Street Journal, People, and hundreds of other publications and thousands of groups.

To defend itself (and help shield other groups), the FreecycleSunnyvale group filed a lawsuit in California against TFN. TFN counterattacked with a SLAPP lawsuit in Arizona against Tim Oey, one of the moderators of FreecycleSunnyvale, as well as Tim's wife who had nothing to do with freecycling. This was an attempt to shut Tim up by attacking him and his family financially.

In November 2007, the 9th Circuit Court of Appeals essentially ended the AZ SLAPP lawsuit and reaffirmed that using the word freecycle generically is not trademark infringement, saying freecycle is generic is not trademark infringement, and encouraging others to use the word freecycle generically is not trademark infringement (these were essentially the claims TFN made against Tim and his wife).

In November 2010, the 9th Circuit Court of Appeals reaffirmed an earlier district court ruling saying: "TFN engaged in naked licensing and consequently abandoned the trademarks." This reaffirmed the original open freecycling movement's stance (as embodied by the case that FreecycleSunnyvale brought against TFN) that freecycle and the freecycle logo had been freely given away.

Moral: If you give something away for free, it's not right to demand it back.
In other words, it was wrong for TFN to be an ersatzgiver.

Why should freecycle be free rather than a trademark? Let us count the ways...

No appeal was made to the Supreme Court so the ruling is final -- freecycling is now free and legal (and legally free) once again.

Groups and individuals in the US who wish to use the word freecycle are now free to do so without needing to fear a lawsuit from TFN. As a further consequence, the original freecycle logo (used as a graphic and not a trademark) and the name "The Freecycle Network" are also free to use.


In Detail (with corroborating references):

Here is a detailed timeline of freecycling legal events with references. Items of particular note are highlighted in red. There are 3 intertwined legal threads, one lawsuit in California (CA), one lawsuit in Arizona (AZ), and the Trademark Trial and Appeal Board (TTAB) opposition.
  • 1987 - Possible first use of FREECYCLE by Salvager Dali. In a 2006 phone discussion between David Hoekstra and Tim Oey, David said it was possible, as that was the kind of thing he would say, but he could not remember.
  • April 2000 - The term freecycle used on the web at Hemp-Inc. This is the first well documented use.
  • May 2003 - Deron Beal created the first freecycle group on Yahoo Groups.
  • Oct 2003 - FreecycleSunnyvale group created by Lissy Abraham.
  • 2003-2005 - The Freecycle Network (TFN) incorporated, evolved, and popularized freecycling by spreading it far and wide and giving it all away for free.
  • Oct 2004 - TFN applies for registered trademark with the USPTO.
  • 2005-2008 - TFN intimidated or deleted thousands of freecycling groups by convincing Yahoo it had trademark rights to the word "freecycle". This is documented in many posts to FreecycleNext and in legal filings below.
  • Mar 2005 - Daniel Steinberg posted to FreecycleSunnyvale.
  • Aug 2005 - Civil disobedience posted to freecyclemodsquad.
  • Oct 2005 - Yahoo deleted the original FreecycleSunnyvale group at TFN's request based on alleged trademark infringement. The FreecycleSunnyvale moderators had to create a new group called SunnyvaleFree.
  • Jan 2006 - FreecycleSunnyvale filed a federal lawsuit in CA against The Freecycle Network claiming that either FREECYCLE, THE FREECYCLE NETWORK, and the freecycle LOGO are generic, or they are public domain, or they were nakedly licensed and therefore abandoned. FreecycleSunnyvale also filed an opposition to TFN's trademark registration with the Trademark Trial and Appeal Board (TTAB).
  • Apr 2006 - TFN filed a SLAPP lawsuit in AZ against Tim Oey and his wife claiming trademark infringement/disparagement.
  • May 2006 - Judge in AZ put Tim Oey under a preliminary injunction prohibiting Tim's free speech in regards to advocating for freecycle to be free.
  • May 2006 - Trademark Trial and Appeal Board (TTAB) opposition put on hold (suspended) pending outcome of civil action.
  • June 2006 - 9th Circuit appeal of the AZ preliminary injunction.
  • July 2006 - Friend-of-the-court brief filed by Mark Lemley, the Electronic Frontier Foundation, et al against the AZ preliminary injunction.
  • July 2006 - Friend-of-the-court brief filed by David Post, Bruce Adlestein, Jimmy Wales, Larry Lessig, et al against the AZ preliminary injunction.
  • July 2006 - 9th Circuit stayed AZ preliminary injunction.
  • July 2007 - Tim Oey's Declaration filed in the CA suit.
  • Aug 2007 - 9th Circuit hearing held on AZ injunction appeal (3.9 MB wma audio file). TFN's counsel is stumped.
  • Sept 2007 - 9th Circuit vacated AZ injunction, ruled against TFN and in favor of Tim Oey, and reaffirmed using FREECYCLE generically is not trademark infringement, saying FREECYCLE is generic is not trademark infringement, and encouraging others to use FREECYCLE generically is not trademark infringement. (Thus "spanking" the AZ judge who was very wrong about the preliminary injunction).
  • Sept 2007 - Eugene Volokh commented about Freecycle, Inc v. Oey AZ ruling.
  • Mar 2008 - CA District Court filed a summary judgment in favor of FreecycleSunnyvale and against TFN, saying TFN nakedly licensed and thus abandoned its trademarks (FREECYCLE, THE FREECYCLE NETWORK, and TFN's logo).
  • May 2008 - TFN appealed CA ruling to 9th Circuit.
  • Aug 2010 - 9th Circuit hearing held on CA appeal (3.6 MB wma audio file).
  • Nov 2010 - 9th Circuit unanimously reaffirmed CA District ruling that TFN nakedly licensed and thus abandoned its trademarks. FREECYCLE, THE FREECYCLE NETWORK, and the original graphic logo are now free -- TFN cannot enforce them as trademarks in the US.
  • Jan 2011 - TFN dismisses lawsuit in AZ with prejudice (this ends the last lawsuit).
  • Feb 2011 - TFN withdraws trademark application from TTAB.
  • Feb 14, 2011 - TFN trademark application is closed as abandoned by USPTO. See TARR and TTABVUE records.
  • Mar 11, 2011 - TFN/Deron admitted that TFN can no longer use its old graphic logo anywhere in the world as a trademark because someone else owned the artwork, not TFN. TFN violated intellectual property law using someone else's intellectual property in TFN's alleged trademark without authorization.
  • August 2011 - The temporary SunnyvaleFree group was renamed back to FreecycleSunnyvale, reclaiming the name it was forced to abandon back in 2005.
  • Q.E.D.
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Tim Oey,
Nov 28, 2010, 9:43 PM
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2007-08-15AZ-9thCircuitHearingAudio.wma
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Tim Oey,
Nov 28, 2010, 10:41 PM
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2010-08-10CA-9thCircuitHearingAudio.wma
(3630k)
Tim Oey,
Nov 28, 2010, 10:53 PM
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Tim Oey,
Feb 8, 2011, 10:25 PM
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Tim Oey,
Feb 8, 2011, 10:25 PM
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