Timelines, Inc. v. Facebook, Inc., No. 11 C 6867, Slip Op. (N.D. Ill. April 1, 2012) (Darrah, J.).

Judge Darrah denied defendant Facebook’s summary judgment motion arguing that plaintiff Timeline’s TIMELINE trademark was generic or descriptive, and that Facebook’s use of the mark was fair use.  Timelines presented evidence that it used TIMELINE as

Judge Aspen denied defendant Teachbook’s motion to dismiss plaintiff Facebook’s Lanham Act complaint. As an initial matter, the Court refused to consider the 300 pages of additional materials outside of Facebook’s complaint that Teachbook sought to introduce. The Court declined to take judicial notice of public records, and would have had to convert the motion to a summary judgment motion to consider the remaining materials.
The Court denied Teachbook’s claims that the -Book suffix in the FACEBOOK mark was generic as a matter of law. As an initial matter, although it was within the Court’s discretion, the Court did not believe it was appropriate to isolate and review the -BOOK suffix separate from the FACEBOOK mark. Additionally, Facebook was using its mark to offer social networks, not books, ebooks or otherwise. Facebook sufficiently plead the visual and aural similarities between the two marks. Facebook’s decision not to plead actual confusion was not fatal to its claim. Actual confusion is not a required element of trademark infringement.
Facebook also sufficiently pled intent. Facebook alleged that Teachbook adopted its mark to call to mind Facebook. The Court also noted that teachers might think that Teachbook was Facebook’s response to some school’s banning teachers Facebook use.

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Next Tuesday, September 29, at noon central, Adrian Dayton and I are giving an ALI-ABA audio seminar titled: IP Issues in Social Media. Dayton and I will discuss the growing importance of social media for businesses and look at strategies for protecting and promoting your brands with a focus on social media sites such as Twitter. Click here to register for the program. I hope to “see” you there.
Here is more detail about the program from ALI-ABA:
Why Attend?
This audio seminar takes a practical look at the wide world of electronic social media with a focus on protecting and leveraging intellectual property through the intelligent use of such media by both companies and their employees. What are people saying about your clients on-line? What is being said about your firm? How can you stop cybersquatters posing as your clients on Facebook, LinkedIn and Twitter? Listen to IP attorney-blogger David Donoghue and social media attorney/expert Adrian Dayton to learn how to leverage social media in a way that will not only protect your clients, but will help build their brands.
What You Will Learn
Social media is a critical element of the Internet and of every company’s marketing plan, whether or not the company affirmatively employs social media. Understand how electronic social media impacts a company’s intellectual property is important to every company–and to every practitioner, IP or otherwise. Taught by a duo of experts in the field, this one-hour audio-only program will cover:
The importance of protecting your social media identity;
A look at recent Twitter-squatting cases;
How you safely invite employees to use social media (including key components of social media policies);
How to create strategic social media policies without forfeiting the benefits;
Why banning employee use of social media can be dangerous; and
How to use social media in an effective way on just 15 minutes a day.
Invest just 60 minutes at your home or office to learn about current developments in electronic social media and the implications of intellectual property law (copyright, trademark and patent law) on new social media networks and the like. This teleseminar comes to you live on Tuesday, September 29th, 2009, 1:00-2:00 pm EDT, via your phone or your computer. Its format will allow for questions to be submitted to the panel via email during the program. Corresponding course material may be downloaded or viewed online, but they may not necessarily be followed during the presentation.

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Tomorrow, Saturday, June 13 at 12:01 a.m., Facebook begins allowing users to create personalized URLS for Facebook pages. A user’s Facebook page has previously been designated by a seemingly random number assigned for each user. But starting just after midnight tonight, users will be able to register more meaningful URLs, such as facebook.com/RDavidDonoghue. Facebook users are very excited about this and it could be good for business that utilize Facebook, but it also poses a threat for trademark holders. Facebook users could accidentally or intentionally register site names including your trademarks or terms confusingly similar to them. To Facebook’s credit, they have provided a mechanism to help prevent trademark infringement. You can click here for an online Facebook form which asks for your name, contact email, company, exact trademark and trademark registration number. It is unclear whether Facebook will act on common law trademarks that have not been registered. Additionally, you will need to resubmit the form separately for each trademark you wish to identify to Facebook. I would encourage trademark owners to register their marks with Facebook and to strongly consider securing personalized Facebook pages with their trademarks to further protect themselves, if you use Facebook with your business or think that someone else might.

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I have written about the legal issues surrounding social networking sites (click here and here to read those posts). I even did an ALI-ABA teleseminar with Eric Goldman yesterday discussing, among other things, how the Communications Decency Act protects social networking sites against suit based on third party content published on the sites. But Julie Kay’s National Law Journal article yesterday — click here to read it — provided a new angle on the power of social networking sites in the courtroom.
It is no surprise that lawyers, either alone or assisted by jury consultants, research juror backgrounds, and use their research during voir dire and to inform their trial presentations, in particular opening and closing arguments. Of course, internet research has been a cornerstone of those efforts for years. But social networking sites have vastly increased the amount of information available about the average person. Instead of learning someone’s Turkey Trot 5k time and one or two newspaper quotes, you now may be able to see their entire resume on LinkedIn, read about major life events on FaceBook, or even read their personal, daily thoughts on a blog. Kay reports that the information is a valuable fact checking tool, acting as a backstop to information provided in a jury questionnaire.
Additionally, blogs can tell you a lot about a juror, that the juror might not be inclined to disclose in open court or on a questionnaire. To illustrate this point, Kay quotes Anne Reed of Reinhart Boerner Van Deuren — who writes Deliberations, one of my favorite legal blogs. Reed tells the story of “Erin” a relatively prominent Florida blogger who blogged that she was a juror several days after posting that: “I totally understand how innocent people that go to prison turn into hardened criminals . . . .” Reed explains that the lawyers might not have struck Erin for her blogging, but that it was critical information to have in the decisionmaking process:
“You’d hate to leave Erin on your jury without having seen her writing,” said Reed. “A juror’s blog tells you things about the jurors that she probably won’t tell you herself.”
Kay also quotes Holland & Knight litigator Dan Small who raises an important and often overlooked note of caution. Small is concerned that invading jurors’ privacy via internet research could make jurors very uncomfortable and is a substantial invasion for people performing their civic duty:
“You are taking people who are doing their civic duty and didn’t sign up to have their whole life probed,” Small said. “It scares people. They wonder: ‘Are they going to hack into our e-mails next?’ The Internet in so many areas creates an extraordinary conflict between the desire for information and the desire for privacy.”
Of course, there is a real question as to whether anything posted on the internet, without password protection or some other privacy protections, can be considered private in anyway. But there is little doubt that knowing their backgrounds were researched and their FaceBook pages were read could make jurors uncomfortable and learning that their backgrounds have been probed could turn jurors against the lawyers or their clients. So, at a minimum, the information needs to be used carefully and discreetly.

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In the June 2008 issue of the National Law Journal (out today), Tresa Baldas reported on the increasing number of law suits involving allegedly fake MySpace or Facebook pages — click here (subscription required) for the story. Among other cases, Baldas discusses the town of Cicero’s efforts to identify the creators of two MySpace pages containing false and allegedly defamatory statements about Cicero Town President Larry Dominick and claiming to be authored by him, which I posted about last week.
As I said in my post last week, the increasing number of disputes regarding false social networking pages raises questions about the problems with the anonymity of the internet that are equally interesting and difficult. And while your first reaction may be that courts should not be asked to resolve these disputes, the courts may be a necessary part of the process, as I discussed in the National Law Journal article:
Free speech issues aside, fake online profiles have pushed the age-old problem of schoolyard rumors into the courtroom, said Dave Donoghue, an attorney with DLA Piper who specializes in intellectual property litigation.
“The internet gives [a rumor] an air of credibility that it used to not have,” Donoghue said. “It forces the schoolyard into the courtroom. And how the courts deal with youthful mistakes and transgressions is a very difficult issue.”
Another difficult legal issue arising from fake postings, he said, is privacy rights. Specifically, when should Web sites turn over information about who is creating questionable profiles?
“They owe their users whatever protections they promised them, and so it’s important that the court system be used in those cases,” Donoghue said, adding that Web sites can’t and shouldn’t turn over personal information based upon a private request.
Donoghue warned that those requests could be falsely created, “just like you can’t always trust that the creator of the page is who they claim to be.”
Baldas discusses many of the most prominent social networking identity theft cases and does a good job of crystallizing the issues. But one other case with particular international impact is that of Bilawal Bhutto Zardari. As explained in the New York Times’ Lede Blog (click here for the post), Bhutto Zardari took over as chief of the Pakistan Peoples Party after his mother, Benazir Bhutto, was killed late last year. Because Bhutto Zardari was “relatively unknown” many reporters turned to Facebook. While some found his profile, created using his first name spelled backwards for privacy reasons, many found and reported statements from one of two other false pages claiming to be Bhutto Zardari’s. The creator of one of the pages even anonymously posted about his fake Bhutto Zardari page on an internet bulletin board. Of course, the false pages were eventually taken down, but some copies of the newspapers and magazines that ran the false quotes and information still exist.

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In Sunday’s Chicago Tribune, Josh Noel reported on the town of Cicero’s efforts to identify the creators of two MySpace pages containing false and allegedly defamatory statements about Cicero Town President Larry Dominick and claiming to be authored by him– click here for the story. The incident and Noel’s story raise questions about the problems with the anonymity of the internet that are equally interesting and difficult. Noel talked to me about the difficulties of policing social networking sites for the story. Here are my quotes:
“There’s an element of this we just have to live with,” said Dave Donoghue, an attorney with DLA Piper who specializes in intellectual property litigation. “It’s impossible to have large-scale social networking sites, which people clearly want, without having some risk of this.”
Greater policing of social networking sites would be impractical, Donoghue said, comparing it to air travel.
“To make air travel 100 percent safe, the background checks and checks of personal possessions of each individual getting on an airplane would be so cumbersome, time consuming and expensive, it would make air travel impractical,” he said. “There has to be a balance.”

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