Freelancer Int'l Pty Ltd. v. Upwork Global, Inc. ( 2021 )


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  •                            NOT FOR PUBLICATION                           FILED
    UNITED STATES COURT OF APPEALS                        JUN 22 2021
    MOLLY C. DWYER, CLERK
    U.S. COURT OF APPEALS
    FOR THE NINTH CIRCUIT
    FREELANCER INTERNATIONAL PTY                    No.    20-17196
    LIMITED; FREELANCER
    TECHNOLOGY PTY LIMITED,                         D.C. No. 3:20-cv-06132-SI
    Plaintiffs-Appellants,
    MEMORANDUM*
    v.
    UPWORK GLOBAL, INC.; UPWORK
    INC.,
    Defendants-Appellees.
    Appeal from the United States District Court
    for the Northern District of California
    Susan Illston, District Judge, Presiding
    Submitted June 17, 2021**
    San Francisco, California
    Before: SCHROEDER, M. SMITH, and VANDYKE, Circuit Judges.
    Plaintiffs-Appellants Freelancer Technology Pty Limited and Freelancer
    International Pty Limited (collectively, Freelancer.com) appeal the district court’s
    *
    This disposition is not appropriate for publication and is not precedent
    except as provided by Ninth Circuit Rule 36-3.
    **
    The panel unanimously concludes this case is suitable for decision
    without oral argument. See Fed. R. App. P. 34(a)(2).
    denial of a motion for a preliminary injunction relating to alleged infringement of
    the “FREELANCER” trademark by Defendants-Appellees Upwork Inc. and
    Upwork Global, Inc. (collectively, Upwork). Because the parties are familiar with
    the facts, we do not recount them here, except as necessary to provide context to our
    ruling. We have jurisdiction under 
    28 U.S.C. § 1292
    (a).
    To obtain a preliminary injunction, Freelancer.com must establish: (1) a
    likelihood of success on the merits; (2) a likelihood of irreparable harm; (3) that the
    balance of the equities favors injunctive relief; and (4) “that an injunction is in the
    public interest.” Winter v. Nat. Res. Def. Council, Inc., 
    555 U.S. 7
    , 20 (2008). We
    review a district court’s decision to deny a preliminary injunction for an abuse of
    discretion—and that review is “limited and deferential.” Harris v. Bd. of
    Supervisors, L.A. Cty., 
    366 F.3d 754
    , 760 (9th Cir. 2004) (citations omitted). We do
    not review the underlying merits of the case and “our ‘inquiry is at an end’ once we
    determine that ‘the district court employed the appropriate legal standards which
    govern the issuance of a preliminary injunction, and . . . correctly apprehended the
    law with respect to the underlying issues in litigation.”’ 
    Id.
     (citations omitted).
    1.    The district court did not abuse its discretion by concluding that
    Freelancer.com could not carry its burden to show likely success on the merits of its
    trademark infringement claim because it could not refute Upwork’s fair use defense.
    The fair use defense applies where a defendant’s alleged infringing use of plaintiff’s
    2
    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.” 
    15 U.S.C. § 1115
    (b)(4). The district court
    conducted the proper analysis and did not clearly err in its factual findings supporting
    its conclusion that Upwork does not use the term “freelancer” as a mark. Instead, the
    district court found that Upwork uses the descriptive term “freelancer” in good faith
    to describe its users and to distinguish its mobile application for its freelance users
    (Upwork for Freelancers) from its application for its client users (Upwork for
    Clients)—both of which are accompanied by Upwork’s house mark and branding.
    These findings were supported by the record and not clearly erroneous.
    2.    The district court also did not abuse its discretion by concluding
    Freelancer.com is unlikely to succeed on the merits of its counterfeiting claim
    because it failed to show that Upwork’s mark is identical or substantially
    indistinguishable from Freelancer.com’s registered mark. 
    15 U.S.C. §§ 1127
    ,
    1116(d). The district court conducted the proper legal analysis by considering “the
    product as a whole,” and its conclusion that Freelancer.com is unlikely to succeed
    on its counterfeiting claim is supported by the record because the products are
    dissimilar and each company has its own distinct and original app, logo, and
    branding. See Arcona, Inc. v. Farmacy Beauty, LLC, 
    976 F.3d 1074
    , 1080 (9th Cir.
    2020).
    3
    3.    The district court also did not abuse its discretion by concluding that
    Freelancer.com failed to show a likelihood of irreparable harm because it failed to
    submit evidence of actual or likely irreparable harm. To obtain a preliminary
    injunction, Freelancer.com must “demonstrate that irreparable injury is likely” and
    not merely “a possibility.” Herb Reed Enters., LLC v. Fla. Ent. Mgmt., Inc., 
    736 F.3d 1239
    , 1249 (9th Cir. 2013) (quoting Winter, 
    555 U.S. at 22
    ) (internal quotation
    marks omitted). A finding of likely irreparable harm cannot be based on
    “unsupported and conclusory statements regarding harm”—it must be based on
    “factual findings.” Id. at 1250.
    Freelancer.com argues the district court applied the wrong legal standard by
    improperly requiring that Freelancer.com show “actual” harm. Instead, however, the
    district court properly analyzed whether Freelancer.com was “likely to suffer
    irreparable harm” and found no evidence to suggest that standard was satisfied.
    While a loss of goodwill and prospective customers may support a finding of the
    possibility of irreparable harm, the district court properly found that Freelancer.com
    presented no evidence of actual losses and failed to establish that it is likely to suffer
    irreparable harm in the future.
    AFFIRMED.
    4
    

Document Info

Docket Number: 20-17196

Filed Date: 6/22/2021

Precedential Status: Non-Precedential

Modified Date: 6/22/2021