Timelines had a registration for “Timelines” for web-based
services involving tracking events.
Facebook decided to use “Timeline” as the centerpiece of its new
strategy:
In advance of Defendant’s
development conference . . . to be held
in September 2011, Zuckerberg stated Defendant “decided to focus in two places:
all the stuff we want to do (products), and also wanted to punch anyone who
tried to compete with us in the face really hard. You have to teach people who
compete with you ‘don’t even fucking bother.’”
Zuckerberg continued:
(1) Timeline. This is the most
important brand. It describes the entirety of the new product we’re rolling out
and not just the main tab itself. Timeline will also replace the word “profile”
across the whole product as the brand/word describing this product. From now
on, rather thanediting your profile, you edit or update your timeline.
Once this litigation started, Facebook ran a Teflon phone survey: 68 percent of
respondents expressed a belief that the term “timeline” was generic (not a
brand) when asked whether “timeline” was a common name or a brand name, while
24% thought it was a brand. The court
found that survey not enough to justify summary judgment for Facebook, nor were
plaintiff’s own multiple generic uses of the term (which it removed once this
litigation began), nor were dictionary definitions, nor were other companies’
uses of the term--not even in combination.
Also, Facebook didn’t show that the Timelines mark lacked secondary
meaning: Timelines had “more than nominal sales and over one-thousand active
users on its website, Timelines.com. At this stage in the proceedings, it is
not unreasonable to conclude that as to this group of users, ‘timeline(s)’ had
acquired a specific meaning associated with Plaintiff.” (How many cases have found secondary meaning
based on a thousand customers?)
Facebook’s descriptive fair use defense was also
unresolvable on summary judgment. There
was evidence that it intended to use “Timeline” as a mark, and genuine issues
also remained on its good faith, since it was aware of plaintiff’s registered
marks; see “punch in the face” comment above.
(How many plaintiffs’ attorneys will be using that remark in years to
come, I wonder?)
Comment: Given the rather serious evidence of genericity,
which outstrips that in most of the genericity cases I’ve seen, it’s hard not
to think the court is being nice to David because Goliath tried to capture a
generic term, which is now coming back to haunt it.
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2 comments:
Hopefully, you're right. Of course "timeline" is descriptive, but Facebook is such an unsympathetic defendent that it's hard to object to anything that makes them squirm.
But...is the judge doing the plaintiff or the system any favors by drawing this out? Speaking as someone who used to represent clients of limited means, the tendency of judges to give even clearly meritless arguments their day in court is quite frustrating.
That's an excellent point -- my usual assumption is that the court is telling the defendant to write a check, but if negotiations fail then litigation costs could easily eat up the smaller company's resources.
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