Upwork Can Use the Term “Freelancer” to Describe an App for Freelancers

In Freelancer International Pty Ltd v. Upwork Global, Inc., the Ninth Circuit recently (June 22, 2021) affirmed the Northern District of California’s denial of a preliminary injunction against Upworks’s use of Freelancer’s registered trademark FREELANCER in the name of its app “Upwork for Freelancers.” Upwork had apps for it clients, called Upwork for Clients and an corresponding app for the freelancers it placed called Upwork for Freelancers:

Once downloaded to a device, Upwork’s “Upwork for Freelancers” provides its display name, listed beneath the app’s “Up” logo icon, as “Freelancer” on iOS devices and as “Freelancer-Upwork” on Android devices — This is what Freelancer objected to.

The district court found that Freelancer lacked the required likelihood of success. Upwork argued that its use of “freelancer” was a fair use under 15 USC 1115(b)(4). The district court said that the fair use defense is applicable in instances where defendants’ alleged infringing use of plaintiff’s mark “is a use, otherwise than as a mark . . . of a term or device which is descriptive of and used fairly and in good faith only to describe the goods or services of such party, or their geographic origin.” The court noted that defendants submitted evidence showing (1) defendants use the word “freelancer” to describe their users and (2) the word “freelancer” is well-known and defined as “someone who is not permanently employed by a particular company, but sells their services to more than one company.” The court found that plaintiffs did not offer a persuasive refutation of defendants’ fair use argument, dismissing the fair use defense as inapplicable because plaintiffs do not challenge defendants’ use of the word “Freelancer” where it is not used “as a mark.”

The court discussed and rejected Freelancer’s arguments, finding that the instances in which Upwork allegedly uses “freelancer” as a mark are proper and descriptive uses of a common word distinguishing Upwork’s freelancer app from its client app. The Court was not persuaded that bold font and a capital letter are sufficient to show defendants use “Freelancer” as a mark versus a descriptive term – especially when Upwork’s distinctive lime green logo or coloring is placed directly alongside the various notifications. The Court noted that Upwork did not list the word “Freelancer” among its own publicly listed trademarks, nor did Upwork implement a stylized font or “TM” symbol when using the word “Freelancer.”

Based on the current record, the court found that Upwork does not use “freelancer” as a mark, rather, Upwork’s used the word in good faith to describe its users, and thus the court agreed that the defendants’ use of the word “freelancer” satisfies the requirements of fair use under 15 U.S.C. § 1115(b)(4).

The 9th Circuit concluded that the district court did not abuse its discretion by concluding that Freelancer could not carry its burden to show likely success on the merits.

The case provides some helpful guidelines to companies trying to use a registered mark descriptively: Avoid presenting the mark in a stylized font and avoid identifying the term with a TM. Capitalization and bolding are not enough to change this, at least where the user’s trademark is also prominently displayed. The case also provides a helpful reminder to brand owners: The more descriptive your mark, the more likely a third party use of the term will be found to be a descriptive use.

Do Lawyers Make Us Rude?

A trending story today is Courtney Love’s accusation that Olivia Rodrigo of copied Love’s Hole album cover:

Love has clarified that her complaint is that she wasn’t asked, calling Rodrigo’s actions “rude.” A lot of people agree with Love that it was rude not to ask.

However, what lawyer would advise a client to ask? We all know that if you ask, you have to accept the answer. There is no coming back from asking for permission, being denied, and going ahead anyway. If you believe what you are doing is appropriate and are definitely proceeding, asking is an unnecessary risk.

Was Rodrigo rude not to ask, was she just following her lawyer’s advice, or both?

Flagging a Potential Issue

Flag Day is an appropriate day to reflect on the use of the American Flag in trademarks and advertising. The Flag Act, 4 USC 3, prohibits the use of the American Flag in advertising in the District of Columbia:

Any person who, within the District of Columbia, in any manner, for exhibition or display, shall place or cause to be placed any word, figure, mark, picture, design, drawing, or any advertisement of any nature upon any flag, standard, colors, or ensign of the United States of America; or shall expose or cause to be exposed to public view any such flag, standard, colors, or ensign upon which shall have been printed, painted, or otherwise placed, or to which shall be attached, appended, affixed, or annexed any word, figure, mark, picture, design, or drawing, or any advertisement of any nature; or who, within the District of Columbia, shall manufacture, sell, expose for sale, or to public view, or give away or have in possession for sale, or to be given away or for use for any purpose, any article or substance being an article of merchandise, or a receptacle for merchandise or article or thing for carrying or transporting merchandise, upon which shall have been printed, painted, attached, or otherwise placed a representation of any such flag, standard, colors, or ensign, to advertise, call attention to, decorate, mark, or distinguish the article or substance on which so placed shall be deemed guilty of a misdemeanor and shall be punished by a fine not exceeding $100 or by imprisonment for not more than thirty days, or both, in the discretion of the court. The words “flag, standard, colors, or ensign”, as used herein, shall include any flag, standard, colors, ensign, or any picture or representation of either, or of any part or parts of either, made of any substance or represented on any substance, of any size evidently purporting to be either of said flag, standard, colors, or ensign of the United States of America or a picture or a representation of either, upon which shall be shown the colors, the stars and the stripes, in any number of either thereof, or of any part or parts of either, by which the average person seeing the same without deliberation may believe the same to represent the flag, colors, standard, or ensign of the United States of America.

Most states have a statute purporting to restrict the commercial use of the flag. Here is a list from 2002. Nebraska’s statute was upheld by the U.S. Supreme Court in 1907 in Nebraska v. Halter (which involved the depiction of a flag on a bottle of beer.  However, in a country where modifying and even burning the flag constitutes free speech, it seems likely that such laws would not be found enforceable today — even accounting for the fact that commercial speech is afforded less protection. Given the fact that the USPTO has assigned a special design code for the American flag (24.09.05    American flags in any form), it doesn’t seem that anyone is taking restrictions on the use of the American flag in advertising very seriously.

There is an excellent review of flag protection laws published by the Congressional Research Service here.