Facebook is no stranger to the trademark infringement lawsuits; however, they are the ones currently being sued over their new Facebook Timeline profiles, by Timelines.com.
Facebook Timeline, is a feature that was unveiled last week and will be rolled out over the coming weeks, transforms the Facebook user profile into a virtual scrapbook that lays out your digital history. Last week, Timelines Inc. sued Facebook for trademark infringement on its new Facebook Timeline product, arguing that implementing it would put Timelines Inc. out of business. But an "emergency" judge named to the case implied that Timelines has an uphill battle in establishing its own "Timelines" trademark.
In a hearing earlier today, Judge Edmond E. Chang, named to temporarily replace Judge John Darrah as the presiding judge, did not grant a temporary restraining order against Facebook, as Timelines had asked for. Instead, the judge on Friday simply ordered Facebook to disclose, on a daily basis, how many users had been granted access to Facebook's Timelines: about 1.1 million users as of last Friday, with an additional 100,000 to 200,000 users added per day. All, so far, have been, or have said they are, developers who have registered to use the feature.
In the meantime, however, most of the world will not receive Timelines. "Between now and Tuesday (when the assigned judge returns), [Samuel] Lessin, [Facebook's product manager] testified, Facebook does not plan on opening access any broader than the current access and does not plan on any media events to promote Timeline," the judge ruled in a motion late on Friday.
On Sept. 29, Timelines, which tracks the historical events of a given day, filed suit against Facebook, about a week after Facebook launched the feature at its f8 conference. The Timeline feature replaces the traditional Facebook Wall, allowing users to essentially highlight important times, events, and people in their lives for public display.
Initially, users who searched for Timelines' own Facebook page were redirected to a page highlighting the new Facebook feature, a mistake that Timelines noted in the suit. However, Facebook then fixed the issue.
From the court complaint, filed in the U.S. District Court for the Northern District of Illonois:
Facebookâs use of the term âTimeline,â and its redirection of Internet traffic from Timelinesâ Facebook page to Facebookâs new âTimelineâ offering, infringes on Timelinesâ federally registered trademarks in that it causes confusion as to the source of the services offered to users of the Internet. Indeed, Facebookâs âTimelineâ offering and its misdirection of users attempting to access Timelinesâ offering is intended to prevent Internet users from accessing information about Timelines.com and to allow users to instead use Facebookâs âTimelineâ offering.
Facebook has dealt with many lawsuits in its brief existance (many of them from the Winklevoss twins), but this one might present a challenge to the social network.
Timelines has also argued that Facebook's Timelines threatened "the very existence" of Timelines Inc., especially because it argued that the functionality is essentially the same."
Facebook, for its part, has argued that it is using the term "Timelines" generically, meaning that it would have latitude to use it under U.S. trademark law. It also argued that it had already launched the product, and a temporary restraining order would harm Facebook and the users seeking to use it. But I canât help but wonder that if Facebook is permitted to use the âTimelineâ trademark generically, that they themselves, wonât attempt to trademark it in the future.
Judge Chang agreed that any harm done Timelines Inc. by redirecting away from the Timelines Inc. page on Facebook had already been alleviated. And while he wrote that the Timelines trademark "does not seem to fall squarely within the generic category," he also seemed to believe that the reach of the respective companies made a difference. If this is true, large companies will always prevail over smaller ones. This is at odds with long standing US trademark law.
"Timelines would have to show that the term 'Timelines' has acquired a secondary meaning to customers such that they uniquely associate the term with the Plaintiff," Judge Chang wrote, discussing whether or not "Timelines" was generic. "On the current record, it is not at all clear that Timelines can make that showing. The term was first used in commerce relatively recently by Timelines in April 2009. To be sure, Timelines avers that it has 97,000 visitors per month, but it is not clear whether those are unique visitors."
In addition, other sites which have used the Timelines service has not used the company's design trademark or unique font, the judge ruled. "It might very well be that a fuller record, built for a preliminary injunction hearing, could show that preliminary injunctive relief is warranted, but a TRO [temporary restraining order] is not," he wrote.