Timelines, Inc. v. Facebook, Inc.
By Ashish Bakshi – Edited by Dorothy Du
Timelines, Inc. v. Facebook, Inc., No. 11-cv-6867 (N.D. Ill. Apr. 1, 2013)
Memorandum Opinion and Order (hosted by Justia.com)
Facebook, Inc. (“Facebook”) lost its bid for a quick end to a trademark infringement suit filed by Timelines, Inc. (“Timelines”) over the social networking giant’s use of the term “timeline.” The U.S. District Court for the Northern District of Illinois denied Facebook’s motion for summary judgment on each of Timelines’ claims and its own counterclaims. The court held that Facebook failed to show as a matter of law that Timelines’ trademark for “timeline” was generic or merely descriptive or , if the trademark were valid, that Facebook’s use of the term constituted fair use. A jury trial will commence on April 22.
Timelines launched its Timelines.com website, which allows users to collaboratively create online representations of personal events or history, in 2009. Timelines, Inc. v. Facebook, Inc., No. 11-cv-6867 (N.D. Ill. Apr. 1, 2013) at 3. The company owns federally registered trademarks for “Timelines,” “Timelines.com,” and its “Timelines” design mark. Id. at 5. In September 2011, Timelines sued Facebook, alleging, inter alia, trademark infringement under federal law.
The court held that since Timelines has a registered trademark for the term “timelines,” its mark was “entitled to a presumption of validity.” Id. at 16. Facebook could rebut this by showing that the term was generic or merely descriptive, but to prevail at the summary judgment stage, it would have to show that the evidence was so obvious as to remove any doubt. Id. at 17.
Facebook asserted that other companies had used “timeline” generically in the past; the court, however, found those different from Timelines’ usage: they were for static, paid-for, local software-based products, while Timelines’ service was dynamic, free, and web-based. Id. at 8–9. The term “timeline” had been used generically in common speech and even on the U.S. Patent and Trademark Office’s own website, but this simply indicated that the Office understood the difference between generic and non-generic uses of “timeline” and had found Timelines’ use of the term to be non-generic. Id. at 18.
Facebook presented survey results showing that nearly seventy percent of respondents believed that “timeline” and “timelines” were generic, while only twenty-four percent believed that the terms were brand names. Id. at 13. Timelines, however, disputed the study’s methodology: A phone survey could not mirror a customer’s thought process as he/she encountered the term online. Id. at 19. Further, the court held that the survey data were not compelling enough to eviscerate doubt as to the genericness of “timeline.” Id.
Facebook argued next that Timelines’ mark was merely descriptive—that it had not acquired a secondary meaning uniquely associating it with the company. The court rejected this: given Timelines’ base of over one thousand active users, “it is not unreasonable to conclude that as to this group of users, ‘timeline(s)’ has acquired a specific meaning associated with [Timelines, Inc.].” Id. at 21. Further, Timelines asserted that beyond being merely descriptive with secondary meaning, its use of “timeline” was “suggestive” because it stood “for an idea which requires some operation of imagination to connect it with the goods.” Id.
Facebook also tried to assert that even if “timeline” were protected, its use of the term fell within fair use and thus was non-infringing. Id. To establish fair use, Facebook had to show that (1) it did not use “timeline” as a trademark; (2) its use was merely descriptive of its offering; and (3) it used the mark fairly and in good faith. Id. Facebook founder and CEO Mark Zuckerberg had, however, referred to “Timeline” as Facebook’s “most important brand,” intended to replace its trademarked “Wall.” Id. at 22. A jury could, the court held, reasonably find this and Facebook’s marketing of its “Timeline” “product” to constitute trademark use. Id. Further, Facebook’s good-faith usage was not beyond doubt: Facebook was aware of Timelines’ registered trademark and Zuckerberg was quoted as hostile to Facebook’s competitors. Id.
The case is set to proceed to a jury trial on April 22. Facebook’s own name, ironically, derives from a generic term for college yearbooks, id. at 9, and the company has actively opposed others’ attempts to register or use terms, such as “Teachbook” or “Sharewall,” that Facebook believed were to close to its own registered marks. Id. at 10.
Ashish Bakshi is a 1L in Harvard Law School and Harvard Business School’s joint JD/MBA program.