Facebook Inc. (FB), operator of the world’s most popular social networking website, must convince a Chicago federal court jury that its Timeline feature isn’t trampling the trademark rights of the website Timelines.com.
Timelines Inc., the operator of that site, sued Facebook in September 2011, a week after the social-network announced it was converting user-profile pages previously known as walls to individual chronologies and calling the new feature Timeline.
Announcing its new profile design, Facebook founder and Chief Executive Officer Mark Zuckerberg called Timeline “the heart” of a user’s experience. Facebook has more than a billion monthly users, according to its website.
Timelines, which has about 94,000 visitors a month, is scheduled to go to trial today seeking to stop Facebook from using the word “timeline,” contending it has held a federal trademark on the use of “timelines” in the realm of user-created Internet chronologies since 2009.
The Chicago-based company’s website allows user-members to create timelines and add events to existing ones including those for space exploration, sporting events, battles and assassinations.
Timelines is seeking damages equivalent to Facebook’s Timeline-derived ad revenue, plaintiff’s attorney Douglas Albritton said in a phone interview this month.
Facebook, based in Menlo Park, California, has counter-sued, contending “timeline” is too generic to enjoy federal trademark protection and arguing that the registrations should be canceled.
“Plaintiff’s description of its services reflects the common understanding of the term ‘timeline’ in the English language,” defense lawyers said in a January court filing asking U.S. District Judge John W. Darrah for a ruling it its favor ending the case.
Darrah on April 1 denied Facebook’s motion, setting it on course for today’s trial in his court.
Facebook “has failed to demonstrate, as a matter of law, that the marks are generic,” Darrah said in his decision. “At this stage in the proceedings, it is not unreasonable to conclude that as to this group of users, ‘timeline(s)’ has acquired a specific meaning associated with plaintiff.”
Timelines fears Facebook’s use of its trademarked word will cause its own site to be “overwhelmed and swallowed up,” according to a revised complaint filed in October 2011. “The public has or will assume that Facebook’s timeline is really Timelines.”
While the federal trademark registration for Timelines is legally presumed valid, two lawyers who specialize in such matters said separately that the smaller company must be able to convince jurors its name is something more than generic, that it has a secondary meaning.
“You can take a common English word and apply it to something that has nothing to do with the ordinary meaning of that word,” said Mark Steiner, an attorney in the San Francisco office of Philadelphia-based Duane Morris LLP (1202L). “What it really depends on is what goods and services you’re using the term for.”
“Some of the strongest marks in our culture are common English terms that are applied to goods and services,” he said. “The classic example being Apple for a computer.”
Darren Cahr, a partner in the Chicago office of Philadelphia’s Drinker Biddle & Reath LLP (1273L), said the trial could come down to who the jury perceives is the good guy and who is the bad.
“Facebook apparently knew about the plaintiff’s trademark registration,” Cahr said.
After Facebook completed its Timeline redesign, it made changes to its own site so that visitors looking for Timelines.com’s Facebook page were redirected to a page touting the Facebook timeline feature.
“The fact that there was this redirection and that it went on for at least a week, that’s a pretty bad fact,” Cahr said.
Timelines may also benefit from trying its case to a jury and not a judge.
“Trademark is about identity, it’s about who you are,” said Cahr. “It’s important to be able craft a narrative around that emotive response: ‘They’re stealing who we are.’”
Zuckerberg unveiled the Timeline feature in 2011 at F8, a Web developer conference in San Francisco. He called the user profile the center of every major redesign his company had ever undertaken.
“People feel an intense ownership over their profile,” he said. “It’s where you put all your stuff. It’s where you have everything about you. Millions of people have invested a ton of time in telling the story of their life on their profile. It’s a really personal product.”
Brittany Darwell, who writes about Facebook for the website insidefacebook.com, said a jury verdict that forces the company to stop using “Timeline” won’t alter the essential functionality of the user profile.
“I don’t think the word ‘Timeline’ is that necessary, but the feature is one of the core aspects of Facebook, one of the pillars,” she said in an April 18 phone interview. “I don’t think that the case will have any impact on the end result of what the product ends up being.”
The case is Timelines Inc. v. Facebook Inc. (FB:US), 11-cv-06867, U.S. District Court, Northern District of Illinois (Chicago).
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