Freelancer International Pty Limited v. Upwork Global, Inc.
- Susan Illston
- 3:20-cv-06132
- U.S. District Court · Northern District of California
- 5
Freelancer International v. Upwork Global: Judge Illston denied expedited briefing and a temporary restraining order, but partly granted expedited discovery.
Freelancer Technology Pty Limited and Freelancer International Pty Limited received permission to exceed the page limit and obtained expedited responses to their requests for admission, but their requests for faster briefing, a temporary restraining order, and broader expedited discovery were denied in whole or in part. Upwork Inc. and Upwork Global, Inc. were required to respond to the requests for admission on the schedule set by the court.
What happened
Freelancer International Pty Limited v. Upwork Global, Inc. involves allegations that Upwork used the word “FREELANCER” in ways that infringed Freelancer’s trademark and diverted users. Freelancer asked the court to act quickly while its request for a preliminary injunction was pending.
Freelancer requested a temporary restraining order, faster briefing, and expedited discovery. Upwork argued that “freelancer” was a generic word, that its current mobile apps had launched in January 2019, and that Freelancer had waited too long to seek emergency relief. Upwork also argued that much of the requested discovery was too broad and burdensome.
Judge Susan Illston denied the request for faster briefing and the temporary restraining order. She granted the request for expedited discovery as to five requests for admission but denied it as to document requests and special interrogatories because those requests were not narrowly tailored. The court also granted permission to exceed the page limit for the temporary-restraining-order motion.
The detailed version
- Freelancer International Pty Limited v. Upwork Global, Inc. · No. 3:20-cv-06132
- Susan Illston
- Sept. 9, 2020
Background
Freelancer Technology Pty Limited and Freelancer International Pty Limited sued Upwork Inc. and Upwork Global, Inc. The complaint alleged ten causes of action, including federal and state trademark infringement, unfair competition, tortious interference, claims under California statutes, and related common-law claims. The plaintiffs and defendants compete in the market for software platforms that connect freelancers with jobs. Freelancer Technology holds a federal registration for the word mark “FREELANCER” covering goods and services in several classes.
The plaintiffs alleged that Upwork’s use of “FREELANCER” caused users to be confused and diverted users from Freelancer’s platform. They sought a temporary restraining order—a short-term emergency court order—and an order requiring Upwork to explain why a preliminary injunction should not issue. They also requested faster briefing and expedited discovery, meaning discovery before the usual schedule. The discovery requests sought information about when Upwork began using the mark, when it learned of Freelancer’s mark, and alleged instances of consumer confusion.
Motions for Faster Briefing and a Temporary Restraining Order
The plaintiffs argued that each day of continued alleged infringement created potential confusion and diversion. They estimated that as many as 1,800 users per day, or 56,000 users per month, were being diverted. Upwork opposed faster briefing and the temporary restraining order, arguing that “freelancer” was generic, that its current mobile applications had launched in January 2019, and that the plaintiffs had waited approximately five months before seeking relief from the court.
The court concluded that the circumstances did not justify shortening the schedule. It noted that a preliminary-injunction hearing was set for early October and stated that the hearing should protect all parties. The court therefore denied the plaintiffs’ motion to shorten time and for a temporary restraining order.
Expedited Discovery
The court applied a “good cause” standard, which asks whether the need for early discovery outweighs the responding party’s potential prejudice. The court considered the pending preliminary-injunction request, the breadth and purpose of the discovery, the burden on Upwork, and how far before ordinary discovery the requests were made.
The court denied expedited discovery for the requests for production of documents and special interrogatories. It found those requests insufficiently narrow and significantly burdensome. For example, the document requests would have required Upwork to produce all documents concerning alleged confusion, branding decisions, target markets, customer bases, and consumer demographics. One interrogatory asked Upwork to identify all goods and services connected with any use of “FREELANCER” or a phrase containing that term.
The court granted expedited discovery for the plaintiffs’ requests for admission. It found that the five requests were straightforward, narrowly tailored, related to the preliminary-injunction motion, and not burdensome.
Other Rulings and Schedule
The court granted the plaintiffs’ motion to file two pages beyond the usual page limit for their temporary-restraining-order motion, while cautioning that similar extra pages were unlikely to be allowed in the future.
The final order stated that the plaintiffs’ motion for shortened time and a temporary restraining order was denied. It stated that the motion for expedited discovery was granted as to the requests for admissions and denied with respect to the requests for production of documents and special interrogatories. Upwork’s opposition to the preliminary-injunction request and its responses to the requests for admission were due September 18, 2020. The plaintiffs’ reply was due September 25, 2020, and the preliminary-injunction hearing was set for October 9, 2020, by videoconference. Judge Susan Illston did not decide the underlying trademark claims in this order.
Read the full 5-page opinion on CourtListener, the free public archive maintained by the Free Law Project.