Freelancer Int'l Pty Ltd. v. Upwork Global, Inc.
20-17196
9th Cir.Jun 22, 2021Background
- Plaintiffs-Appellants Freelancer Technology Pty Ltd and Freelancer International Pty Ltd (Freelancer.com) sought a preliminary injunction in the Ninth Circuit against Upwork Inc. and Upwork Global, Inc. (Upwork) for alleged infringement of the registered mark "FREELANCER."
- The district court denied the preliminary injunction; Freelancer.com appealed under 28 U.S.C. § 1292(a).
- The district court found Upwork’s use of the term "freelancer" to be descriptive and a permissible fair use ("Upwork for Freelancers" app labeling), used in good faith and accompanied by Upwork’s house mark/branding.
- The court concluded Freelancer.com’s counterfeiting claim failed because Upwork’s mark and products (apps, logos, branding) were not identical or substantially indistinguishable.
- The district court found Freelancer.com failed to show likely irreparable harm, because it offered no evidentiary support of actual or probable future harm (only conclusory assertions about loss of goodwill/prospective customers).
- The Ninth Circuit affirmed, holding the district court did not abuse its discretion in applying the correct legal standards.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Likelihood of success on trademark infringement (fair use) | Upwork's use of "freelancer" infringes and functions as a mark causing confusion | Upwork uses "freelancer" descriptively in good faith to identify its users and label its freelancer-facing app | Court: Upwork's use is descriptive fair use; Freelancer.com unlikely to prevail |
| Counterfeiting claim (identical or substantially indistinguishable mark) | Upwork's branding effectively copies Freelancer.com's registered mark | Upwork's apps, logos, and branding are distinct and original | Court: Marks/products are dissimilar; counterfeiting claim unlikely to succeed |
| Likelihood of irreparable harm | Loss of goodwill and prospective customers warrants injunction | Freelancer.com produced no evidence of actual or likely irreparable harm | Court: No factual showing of likely irreparable harm; insufficent for injunction |
| Balance of equities and public interest | Protect trademark rights and prevent consumer confusion | No demonstrated harm to Freelancer.com; injunction unwarranted | Court: District court did not err in denying injunction given failures on merits and harm |
Key Cases Cited
- Winter v. Nat. Res. Def. Council, 555 U.S. 7 (2008) (establishes preliminary injunction factors: likelihood of success, irreparable harm, balance of equities, public interest)
- Herb Reed Enters., LLC v. Fla. Ent. Mgmt., Inc., 736 F.3d 1239 (9th Cir. 2013) (irreparable injury must be likely and supported by factual findings; conclusory assertions insufficient)
- Harris v. Bd. of Supervisors, L.A. Cty., 366 F.3d 754 (9th Cir. 2004) (appellate review of denial of preliminary injunction is limited and deferential; inquiry ends if district court applied correct legal standards)
- Arcona, Inc. v. Farmacy Beauty, LLC, 976 F.3d 1074 (9th Cir. 2020) (counterfeiting analysis considers the product as a whole when assessing substantial indistinguishability)