Freelancer International Pty Limited, et al. v. Upwork Global, Inc., et al.

For at least a decade, the petitioner has been using the registered and now-incontestable trademark “Freelancer” in commerce with various goods and services. Because the mark has been granted “incontestable” status, a secondary meaning of the term is presumed and defenses to infringement are severely limited. One of petitioner’s direct competitors began using the mark as the name of goods and services that themselves compete directly with petitioner’s similar goods and services that have borne the “Freelancer” mark for years. Petitioner moved for a preliminary injunction. To deny the preliminary injunction, the district court rewrote the trademark statute, extending the “fair use” defense and constricting the “counterfeit mark” definition (based on a recent Ninth Circuit opinion that constricted the definition). The “fair use” defense is statutorily limited to using the mark “only” to describe “goods or services”, but the district court extended fair use to describing “users.” The Ninth Circuit and the district court have imposed a new restriction on a “counterfeit mark,” requiring side-byside consideration of product appearance, when the statutory language, legislative history, and at least five circuits reject this requirement. The district court also required a showing of “actual” irreparable harm rather than “likelihood” of irreparable harm. And the Ninth Circuit ignored a retroactive statute that was enacted during the appeal and that requires a presumption of irreparable harm. In view of this, the questions presented are: 1. Whether the courts may rewrite the statute (15 U.S.C. §1115(b)) to include a fair use defense for use of an incontestable mark to describe “users,” where the statute