Freelancer International Pty Limited v. Upwork Global, Inc.
3:20-cv-06132
N.D. Cal.Sep 9, 2020Background
- Plaintiffs Freelancer Technology Pty Ltd and Freelancer International Pty Ltd (collectively "Freelancer") own a federal registration for the mark FREELANCER and compete with defendants Upwork Inc./Upwork Global in freelancer-platform software.
- Plaintiffs allege Upwork used the term FREELANCER on its apps/websites, causing diversion and consumer confusion; plaintiffs notified Upwork in April–May 2020 and received limited response.
- On August 31, 2020, plaintiffs filed suit asserting trademark, unfair competition, and related claims and moved ex parte for shortened briefing, a temporary restraining order (TRO), and expedited discovery.
- Upwork opposed urgency and argued the term is generic and plaintiffs delayed seeking relief (apps in current form launched Jan 2019).
- The court denied the motion to shorten time and the TRO, finding plaintiffs’ delay and the existing preliminary-injunction schedule did not justify emergency relief.
- The court granted limited expedited discovery only for narrowly tailored requests for admission, but denied expedited requests for production and special interrogatories as overbroad and unduly burdensome; it set an opposition/reply schedule and an October 9 hearing.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Motion to shorten time and TRO | Immediate relief required to prevent diversion/irreparable harm (est. up to 1,800 users/day) | No urgency: term generic, apps predate suit, plaintiff delay militates against TRO | Denied — no shortened time and no TRO; preliminary-injunction schedule adequate |
| Whether expedited discovery is warranted generally | Need expedited discovery to prove when Upwork began using mark, awareness, and confusion incidents | Discovery requests are overbroad and impose heavy burden on Upwork | Partially granted — court applies good-cause factors and limits relief |
| Expedited requests for production of documents & special interrogatories | Necessary to support PI; seek documents identifying uses, confusion, branding decisions, markets | Overbroad: would require sweeping production about all uses, customer data, and internal decisionmakers | Denied — requests are not narrowly tailored and are unduly burdensome |
| Expedited requests for admission | Narrow, directly relevant to PI issues and not burdensome | (Implicit) Less prejudicial; limited scope | Granted — five RFAs allowed; Upwork must respond by Sept 18, 2020 |
Key Cases Cited
- Granny Goose Foods v. Bhd. of Teamsters & Auto Truck Drivers, 415 U.S. 423 (U.S. 1974) (TROs preserve the status quo and require appropriate urgency)
- Semitool, Inc. v. Tokyo Electron America, Inc., 208 F.R.D. 273 (2002) (expedited discovery permissible upon showing of good cause)
- Am. LegalNet, Inc. v. Davis, 673 F. Supp. 2d 1063 (2009) (factors courts consider in deciding expedited discovery requests)
- Disability Rights Council of Greater Wash. v. Wash. Metro. Area Transit Auth., 234 F.R.D. 4 (2006) (expedited-discovery factors and their application)
- Rovio Entm't Ltd. v. Royal Plush Toys, Inc., 907 F. Supp. 2d 1086 (2012) (plaintiff delay in seeking TRO weighs against emergency relief)