FOR PUBLICATION

UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

THE FREECYCLE NETWORK, INC., 

No. 06-16219 Plaintiff-Appellee,

D.C. No.

v.  CV-06-00173-RCC

TIM OEY; JANE DOE OEY,

OPINION Defendants-Appellants. 

Appeal from the United States District Court

for the District of Arizona

Raner C. Collins, District Judge, Presiding

Argued and Submitted

August 15, 2007—San Francisco, California

Filed September 26, 2007

Before: Diarmuid F. O’Scannlain, Michael Daly Hawkins,

and Kim McLane Wardlaw, Circuit Judges.

Opinion by Judge Hawkins

13235
COUNSEL

Donald M. Falk, Mayer, Brown, Rowe & Maw LLP, Palo

Alto, California, for the appellants. 

Paul J. Andre, Perkins Coie LLP, Menlo Park, California, for

the appellee. 

Bruce Adelstein, The Law Offices of Bruce Adelstein, Los

Angeles, California, David Post, I. Herman Stern Professor,

James E. Beasley School of Law, Philadelphia, Pennsylvania,

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. 

FREECYCLE NETWORK, INC. v. OEY 13237
Mark A. Lemley, William H. Neukom Professor, Stanford

Law School, Palo Alto, California, for Amici 38 Intellectual

Property Law Professors and the Electronic Frontier Foundation, in support of the appellants. 

OPINION

HAWKINS, Circuit Judge: 

Tim Oey (“Oey”) appeals a preliminary injunction preventing him “from making any comments that could be construed

as to disparage upon [The Freecycle Network]’s possible

trademark and logo” and requiring that he “remove all postings from the [I]nternet and any other public forums that he

has previously made that disparage [The Freecycle Network]’s possible trademark and logo.”

1 The Freecycle Network, Inc. v. Oey, No. CV 06-173, Order at 5 (May 11, 2006)

(emphasis added). We have jurisdiction under 28 U.S.C.

§ 1291 and, for the following reasons, vacate the injunction

and remand.

I.

The Freecycle Network (“TFN”) is a nonprofit Arizona

corporation “dedicated to encouraging and coordinating the

reusing, recycling, and gifting of goods.” Through its website,

http://www.freecycle.org, TFN coordinates the efforts of over

3,700 Freecycle groups worldwide. Via the local groups’

webpages, individuals can post goods they no longer want. If

another member wants the item offered, an exchange is

arranged between the parties and the item thus avoids the

landfill. 

1Although Oey’s wife remains a party to this case, the facts and legal

questions revolve solely around Oey and, accordingly, this opinion refers

only to him. 

13238 FREECYCLE NETWORK, INC. v. OEY
Although TFN claims to have consistently used the marks

FREECYCLE and THE FREECYCLE NETWORK, and

“The Freecycle Network” logo since May 2003 to refer to

TFN, it also admits that it initially used the term “freecycle”

and its various derivations (e.g., freecycling, freecycler) to

refer more generally to the act of recycling goods for free via

the Internet. In 2004, based on the advice of then-member

Oey, TFN decided to more actively police its use of the term

“freecycle” and to formally pursue trademark protection for it,

filing a trademark registration application on August 27,

2004. Shortly thereafter, TFN instituted a strict usage policy,

drafted by Oey, preventing use of the term “freecycle” in any

sense other than to refer to TFN or TFN’s services. On January 17, 2006, TFN’s proposed mark was published for opposition in the Official Gazette. An opposition was filed the next

day and the mark currently remains unregistered.2

A member of TFN since February 2004 and active in the

corporation’s early development, Oey initially supported

TFN’s claim to the FREECYCLE mark. Experiencing a

change of heart and convinced that the term should remain in

the public domain, Oey later urged TFN to abandon its efforts

to secure the mark, conveying his feelings in an August 8,

2005, email to fellow TFN group moderators.3 In the following weeks, Oey made various statements on the Internet that

2Opposition proceedings before the Trademark Trial and Appeal Board

have been stayed pending resolution of a challenge to TFN’s trademarks

currently pending in the Northern District of California. In FreecycleSunnyvale v. The Freecycle Network, No. 06-00324CW (N.D. Cal.), FreecycleSunnyvale (an independent “free recycling” group started by Oey)

seeks a declaration that its use of the term “freecycle” does not infringe

on TFN’s mark, or, in the alternative, that “freecycle” is a generic term.

3

In this email, Oey urged abandonment of TFN’s trademark pursuit,

contending that forcing the term “freecycle” into the public domain “fits

well with a ‘viral’ marketing approach to freecycle . . . which will lead

back to [TFN] . . . [and] generate lots of goodwill.” He also recommended

that TFN “maintain the trademark on the full name ‘The Freecycle Network’ . . . [and] take credit for birthing [the] freecycle [concept].” 

FREECYCLE NETWORK, INC. v. OEY 13239
TFN lacked trademark rights in “freecycle” because it was a

generic term, and he encouraged others to use the term in its

generic sense and to write letters to the United States Patent

and Trademark Office (“PTO”) opposing TFN’s pending registration. 

Not surprisingly, TFN took issue with Oey’s views and, on

September 16, 2005, asked him to sever ties with the company. In the ensuing months, Oey continued to make statements on the Internet challenging the validity of TFN’s

claimed trademark in the term “freecycle” and encouraging

others to use the term in its generic sense. 

In April 2006, TFN sued Oey, seeking an injunction and

damages, alleging that Oey’s statements constituted contributory trademark infringement and trademark disparagement

under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a),

as well as injurious falsehood, defamation, and intentional

interference with a business relationship under Arizona law.

The district court granted a preliminary injunction based

solely on TFN’s § 1125(a) claims, apparently conflating

TFN’s allegations of contributory trademark infringement and

trademark disparagement. Oey timely appealed, and, on July

20, 2006, we stayed the district court’s injunction pending the

outcome of this appeal.

II.

We review a district court’s grant of a preliminary injunction for an abuse of discretion. Perfect 10, Inc. v. Amazon.com, Inc., 487 F.3d 701, 713 (9th Cir. 2007). A district

court abuses its discretion in granting an injunction if its decision is based on “either an erroneous legal standard or clearly

erroneous factual findings.” Clear Channel Outdoor, Inc. v.

City of Los Angeles, 340 F.3d 810, 813 (9th Cir. 2003) (internal quotations and citations omitted). “A district court’s decision is based on an erroneous legal standard if: (1) the court

did not employ the appropriate legal standards that govern the

13240 FREECYCLE NETWORK, INC. v. OEY
issuance of a preliminary injunction; or (2) in applying the

appropriate standards, the court misapprehended the law with

respect to the underlying issues in the litigation.” Id.

We have established two sets of criteria for evaluating a

request for a preliminary injunction. Earth Island Inst. v.

United States Forest Serv., 351 F.3d 1291, 1297 (9th Cir.

2003). 

Under the “traditional” criteria, a plaintiff must show

(1) a strong likelihood of success on the merits, (2)

the possibility of irreparable injury to plaintiff if preliminary relief is not granted, (3) a balance of hardships favoring the plaintiff, and (4) advancement of

the public interest (in certain cases). Alternatively, a

court may grant the injunction if the plaintiff demonstrates either a combination of probable success on

the merits and the possibility of irreparable injury or

that serious questions are raised and the balance of

hardships tips sharply in his favor. 

Id. at 1297-98 (internal quotations and citations omitted).

Thus, under either criteria, where a plaintiff fails to even raise

serious questions about its likelihood of success, an injunction

may not issue. 

III.

Although the district court correctly identified the “traditional” criteria for granting a preliminary injunction, it issued

the injunction based solely on TFN’s Lanham Act claims of

trademark infringement and trademark disparagement. As we

detail below, the district court’s “likelihood of success” analysis did not adequately analyze the necessary elements for

trademark infringement, see Clear Channel Outdoor, Inc.,

340 F.3d at 813, and the district court “misapprehended the

law” insofar as the Lanham Act contains no cause of action

for trademark disparagement.

FREECYCLE NETWORK, INC. v. OEY 13241
A) Trademark Infringement

[1] The district court’s order characterized TFN’s § 1125(a)

claims as allegations of “trademark infringement.”

4

 To be liable for trademark infringement under § 1125(a), a person

must (1) use in commerce (2) any word, false designation of

origin, false or misleading description, or representation of

fact, which (3) is likely to cause confusion or misrepresents

the characteristics of his or another person’s goods or services. 15 U.S.C. § 1125(a). “The core element of trademark

infringement is the likelihood of confusion, i.e., whether the

similarity of the marks is likely to confuse customers about

the source of the products.” Abercrombie & Fitch Co. v.

Moose Creek, Inc., 486 F.3d 629, 633 (9th Cir. 2007) (internal

quotations omitted). We have identified eight nonexclusive

factors relevant to evaluating likelihood of confusion. AMF

Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979).5

In its order, the district court did not mention, let alone analyze, these critical factors in evaluating TFN’s likelihood of

success on its trademark infringement claim. Rather, the district court simply concluded that: (1) TFN appears to have a

legitimate mark; (2) Oey at one time acknowledged TFN’s

4The district court makes no reference to TFN’s contributory trademark

infringement claim. Likewise, TFN’s brief on appeal references only

direct infringement, unfair competition, and disparagement. Regardless, as

discussed below, neither Oey’s actions, nor those he encouraged others to

take are actionable under the Lanham Act, making it unlikely TFN would

succeed on a contributory infringement claim either. There is nothing in

the record suggesting that Oey intentionally induced others to infringe

upon TFN’s claimed mark or that third parties actually used the mark in

an infringing manner. See Inwood Laboratories, Inc. v. Ives Laboratories,

Inc., 456 U.S. 844, 854 (1982). Rather, based on this record, Oey simply

encouraged the use of the claimed mark in its generic sense. 

5The so-called Sleekcraft factors are: (1) strength of the mark; (2) proximity of the goods; (3) similarity of the marks; (4) evidence of actual confusion; (5) marketing channels used; (6) type of goods and the degree of

care likely to be exercised by the purchaser; (7) defendant’s intent in

selecting the mark; and (8) likelihood of expansion of the product lines.

Id.

13242 FREECYCLE NETWORK, INC. v. OEY
mark and sought to protect it; and (3) “after his separation

from the organization, [Oey] began to publicly encourage the

disparagement of the Freecycle trademark.” Contrary to the

district court’s conclusion, these facts—even if true6—simply

do not demonstrate that TFN has a likelihood of success on

its § 1125(a) infringement claim. 

As a threshold matter, Oey’s actions likely did not constitute a “use in commerce,” 15 U.S.C. § 1125(a)(1), as the

record in this case does not indicate they were made to promote any competing service or reap any commercial benefit

whatsoever. See 15 U.S.C. § 1127 (defining “use in commerce”); Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894,

903 (9th Cir. 2002) (“[Trademark law’s ‘use in commerce’]

refers to a use of a famous and distinctive mark to sell goods

[or services] other than those produced or authorized by the

mark’s owner.”). Rather, based on his view that the term was

generic, Oey simply expressed an opinion that TFN lacked

trademark rights in the term “freecycle” and encouraged likeminded individuals to continue to use the term in its generic

sense and to inform the PTO of their opinions.7

Furthermore, even if Oey’s statements could somehow be

construed to be a “use in commerce,” such use was not likely

to cause confusion, mistake, or deceive anyone as to the connection of Oey’s services (or any other) with TFN. Id.

§ 1125(a)(1)(A). Although the district court did not examine

the relevant Sleekcraft factors, our review of the record identifies no potential likelihood of confusion resulting from Oey’s

activities. Oey simply did not use TFN’s claimed mark or a

similar mark in any manner likely to confuse the relevant public: his statements neither mention any competing service or

product, nor claim any affiliation with TFN. 

6We express no opinion regarding the validity of TFN’s claimed mark.

7Likewise, nothing in the record suggests Oey encouraged others to use

the mark in commerce. 

FREECYCLE NETWORK, INC. v. OEY 13243
Finally, Oey’s statements also do not satisfy the requirements for false advertising, misrepresentation, or unfair competition under § 1125(a)(1)(B). There is no evidence that

Oey’s statements were made in “commercial advertising or

promotion.” Id. § 1125(a)(1)(B). And, even if such evidence

existed, § 1125(a)(1)(B) creates liability only for product

disparagement—i.e., misrepresentation of “the nature, characteristics, qualities, or geographic origin” of “another person’s

goods, services, or commercial activities.” Id. (emphasis

added). TFN does not allege or show that Oey made any statements disparaging its goods or services.8

 To the contrary,

many of Oey’s remarks appear aimed at ensuring the ongoing

success of TFN and its services.9

[2] Because the district court did not adequately analyze the

relevant law in evaluating TFN’s likelihood of success on its

trademark infringement claim, and the facts alleged do not

demonstrate such a likelihood, the district court abused its discretion in granting a preliminary injunction based on this

claim.

B) Trademark Disparagement

[3] TFN’s complaint also alleged “trademark disparagement” under § 1125(a).10 However, no such claim exists under

8While perhaps relevant to an analysis of the mark’s validity, TFN’s

novel argument that disparaging its mark constitutes disparagement of its

service because its mark is largely synonymous with its service is irrelevant here. Oey simply did not misrepresent “the nature, characteristics,

qualities, or geographic origin” of TFN’s services. See id.

9Oey’s statements included: (1) “Let everyone know that TFN does not

need to control freecycling for TFN to be successful.”; (2)“[Keeping the

term ‘freecycle’ in the public domain] fits well with a ‘viral’ marketing

approach to freecycle. People hear about it and want to know where it

came from — which will lead back to [TFN] without strong trademark

enforcement. It will also generate lots of goodwill.”; and (3) “My alternative also has consequences but I firmly believe it is a much better choice

for [TFN] in the long run.” 

10The district court did not address this claim individually, but did

seemingly conflate it with TFN’s trademark infringement claim, concluding that Oey’s alleged disparagement of TFN’s mark somehow enhanced

TFN’s likelihood of success on its infringement claim. 

13244 FREECYCLE NETWORK, INC. v. OEY
the Lanham Act.11 The “elements” of TFN’s “trademark disparagement” claim, as set forth in its complaint—i.e., false

statement, with malice, about TFN’s operations and the validity of its mark—simply cannot be gleaned from § 1125(a)’s

text or its prohibition against unfair competition, but instead

seem to have been derived largely from a common law “slander of title” claim. See Big O Tire Dealers, Inc. v. Goodyear

Tire & Rubber Co., 561 F.2d 1365, 1373-74 (10th Cir. 1977)

(comparing “trademark disparagement” claim to Colorado’s

“slander of title,” which requires a false statement, malice,

and special damages). That the Lanham Act’s text does not

contemplate a trademark disparagement claim is borne out by

the absolute dearth of precedent analyzing such a claim under

the Act.12

Even assuming TFN’s trademark disparagement claim were

somehow cognizable under the Lanham Act, the district court

made no attempt to determine whether TFN would likely succeed on the merits and, in any event, Oey’s conduct does not

satisfy TFN’s asserted elements. Oey’s statements were not

“false.” At worst, Oey offered an erroneous legal opinion (by

a layperson) that TFN lacked trademark rights in the term

“freecycle.” “Statements of opinion are not generally actionable under the Lanham Act.” Coastal Abstract Serv., Inc. v.

First Am. Title Ins. Co., 173 F.3d 725, 731 (9th Cir. 1999). 

11As discussed above, § 1125(a)(1)(B) does prohibit product disparagement, but Oey’s actions did not satisfy the requisite elements. TFN did not

raise a dilution by blurring or tarnishment claim under § 1125(c). 

12TFN’s reliance on Perfect 10, Inc. v. Cybernet Ventures, Inc., 167 F.

Supp. 2d 1114 (C.D. Cal. 2001) (declining to dismiss a complaint alleging,

inter alia, trademark disparagement under § 1125(a)), is misplaced. There,

the district court simply concluded that Perfect 10’s infringement claims

were sufficiently specific to withstand a vagueness challenge at the pleading stage. See id. at 1122. Furthermore, contrary to TFN’s claims, Echo

Drain v. Newsted also offers no assistance because there the district court

simply recited the plaintiffs’ various allegations, including a claim of

“trademark disparagement,” but offered no further analysis as to whether

the claims were in fact cognizable under the Lanham Act. See 307 F.

Supp. 2d 1116, 1118 (C.D. Cal. 2003). 

FREECYCLE NETWORK, INC. v. OEY 13245
To this day, there has been no formal determination that

TFN has trademark rights in the term “freecycle.” The mark

is not yet registered and both an opposition to registration and

action seeking a declaration that TFN lacks trademark rights

in the term are currently pending. Oey’s statement that TFN

lacked trademark rights in the term therefore cannot be considered a false statement of fact. Cf. id. (“Absent a clear and

unambiguous ruling from a court or agency of competent

jurisdiction, statements by laypersons that purport to interpret

the meaning of a statute or regulation are opinion statements,

and not statements of fact.”). TFN and the district court

emphasize Oey’s prior support of TFN’s efforts to trademark

the term, but these prior efforts do not render his subsequent

statements “false.” Oey is entitled to change his mind. Until

it is definitively established that TFN holds a trademark in the

term “freecycle,” it cannot be false to contend that it does not.13

[4] Trademark disparagement is not a valid cause of action

under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a),

and, even if it were, Oey’s actions do not satisfy the elements

alleged by TFN because he made no false statements. Accordingly, to the extent the district court relied on this alternative

claim in granting TFN an injunction, it abused the discretion.

C) Genericide

[5] Although we do not reach the question of the validity

of TFN’s claimed mark, the crux of TFN’s complaint is that

Oey should be prevented from using (or encouraging the use

of) TFN’s claimed mark FREECYCLE in its generic sense.

However, TFN’s asserted mark—like all marks—is always at

risk of becoming generic and thereby losing its ability to identify the trademark holder’s goods or services. See, e.g., Mat13Even if TFN unambiguously obtains trademark rights (e.g., by registration or judicial decree), Oey would remain free to argue that TFN

should not have been granted the trademark or that the public would be

better served with the mark in the public domain. 

13246 FREECYCLE NETWORK, INC. v. OEY
tel, Inc., 296 F.3d at 900 (“Some trademarks enter our public

discourse and become an integral part of our vocabulary.”); 2

J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS AND

UNFAIR COMPETITION § 12:1 (2007) (hereinafter “MCCARTHY”).

Where the majority of the relevant public appropriates a

trademark term as the name of a product (or service), the

mark is a victim of “genericide” and trademark rights generally cease. MCCARTHY § 12:1. 

[6] Such genericide can occur “as a result of a trademark

owner’s failure to police the mark, resulting in widespread

usage by competitors leading to a perception of genericness

among the public, who sees many sellers using the same

term.” Id. (footnotes omitted). Alternatively, “a term intended

by the seller to be a trademark for a new product [can be]

taken by the public as a generic name because customers have

no other word to use to name this new thing.” Id. Genericide

has spelled the end for countless formerly trademarked terms,

including “aspirin,” “escalator,” “brassiere,” and “cellophane.” See id. § 12:18 (list of terms held to be generic). 

“Although there is a social cost when a mark becomes

generic—the trademark owner has to invest in a new trademark to identify his brand—there is also a social benefit,

namely the addition to ordinary language.” Ty Inc. v. Perryman, 306 F.3d 509, 514 (7th Cir. 2002). Furthermore, when

a trademark becomes generic, “it reduces the cost of communication by making it cheaper for competitors to inform consumers that they are selling the same kind of product” or

providing the same kind of service. MCCARTHY § 12:2; see

also Mattel, Inc., 296 F.3d at 900 (“Trademarks often fill in

gaps in our vocabulary and add a contemporary flavor to our

expressions. Once imbued with such expressive value, the

trademark becomes a word in our language and assumes a

role outside the bounds of trademark law.”). 

[7] Of course, trademark owners are free (and perhaps

wise) to take action to prevent their marks from becoming

FREECYCLE NETWORK, INC. v. OEY 13247
generic and entering the public domain—e.g., through a public relations campaign or active policing of the mark’s use.

The Lanham Act itself, however, contains no provision preventing the use of a trademarked term in its generic sense.14

Cf. Ty Inc., 306 F.3d at 513-14 (rejecting an attempt to extend

the Lanham Act’s antidilution provisions “to enjoin uses of

their mark that, while not confusing, threaten to render the

mark generic”). 

[8] Nor does the Act prevent an individual from expressing

an opinion that a mark should be considered generic or from

encouraging others to use the mark in its generic sense.

Rather, the use of a mark in its generic sense is actionable

under the Lanham Act only when such use also satisfies the

elements of a specified cause of action—e.g., infringement,

false designation of origin, false advertising, or dilution.

TFN’s mere disagreement with Oey’s opinion and frustration

with his activities cannot render Oey liable under the Lanham

Act.

IV.

Based on the record before us, our analysis of the necessary

elements and relevant considerations under § 1125(a) indicates that Oey’s actions likely did not constitute infringement

because they were not a “use in commerce,” created no likelihood of confusion, and did not disparage TFN’s products or

services. 

To the extent the injunction was based on TFN’s “trademark disparagement” claim under section 43(a) of the Lan14Although generic use (or encouraging generic use) alone does not violate the Lanham Act, we express no opinion as to whether such actions

may be cognizable pursuant to alternative theories of relief under state or

federal law. The district court’s preliminary injunction was based solely

on TFN’s claims under section 43(a) of the Lanham Act, and we therefore

need not—and do not—address TFN’s other potential causes of action. 

13248 FREECYCLE NETWORK, INC. v. OEY
ham Act, the district court abused its discretion because no

such cause of action exists under the Act. Furthermore, even

if the claim were somehow cognizable under § 1125(a), TFN

has not demonstrated any likelihood of success because the

record does not demonstrate that Oey made any false statement.15

[9] Because TFN’s Lanham Act claims provided the sole

basis for the district court’s order granting a preliminary

injunction, we VACATE the injunction and REMAND for

further proceedings consistent with this opinion.16

15Because we conclude TFN failed to demonstrate any likelihood of

success or raise any serious questions, we need not address whether TFN

can meet the additional prerequisites for obtaining a preliminary injunction. 

16Because we vacate the injunction on other grounds, we express no

opinion on the First Amendment challenges raised by Oey and amici. Nor

do we express any opinion on whether an injunction is appropriate pursuant to any of TFN’s state law claims. We leave it to the district court to

determine its jurisdiction over—and, if necessary, the relative merits of—

those claims. 

FREECYCLE NETWORK, INC. v. OEY 13249