Facebook is Accepting No Friend Requests: Trademark of “Generic Plus” Words Makes Fast Adversaries

By Tiffany R. Johnson *

“At the end of the day, we weren’t aware Facebook owned the internet or the word ‘book’.”  When Greg Shrader, founder of Teachbook.com, uttered these words on a Chicago news program, he wasn’t just being coy for the sake of the cameras.  Facebook filed a complaint in a California District Court against the small start up on August 18, 2010 alleging eight violations of common and federal law, including trademark infringement, trademark dilution, and cybersquatting.  Just type in “facebook v. teachbook” in any search engine, and it quickly becomes apparent that small companies are frustrated by Facebook’s allegation that the use of the word “book” is both dilution and infringement of its trademark.  But Mark Zuckerberg, infinitely more recognizable by name after the success of The Social Network, isn’t pulling any punches for websites that even suggest a riff on Facebook’s marks, including the use of words like “wall” or, the ever-popular, “face.”

Facebook made another appearance in California District Court a month ago, filing a strikingly similar complaint against Faceporn.com’s owner, Thomas Pedersen, for its use of “face” and the “wall” function on its social networking pornography site.  The complaint alleges that Pedersen “blatantly copied the Facebook logo, site and WALL trademark to capitalize on the fame of the FACEBOOK marks.”  According to the complaint, Faceporn was essentially operating as the pornographic version of Facebook in every way because it looked and operated with the same wall, profile picture, messaging, and status update functions as Facebook.  Hoping my investigative curiosity would not backfire, I attempted to access Faceporn.com to verify some of the claims made in Facebook’s complaint.  It seems Facebook’s efforts have prevailed temporarily, as Faceporn has shut down its site with this message to its users:
Faceporn competes with Facebook

In both complaints against Teachbook and Faceporn, it seems that Facebook’s biggest hang up is the alleged infringers’ use of seemingly generic terms plus other generic terms.  Essentially, Facebook struck gold with its formula of “generic plus generic,” and now complains that any use of a “FACE plus generic mark” or “generic plus BOOK mark” is an infringement on its marks.  While this may seem outrageous to the small start up owner seeking to name his or her business, it does not seem that Congress has provided much protection for this sort of hoarding of common words.  15 USC § 1115 provides nine defenses to infringement on a registered trademark, none of which seem applicable.  Furthermore, it is likely that Facebook’s infringement and dilution claims will survive summary judgment on what the Ninth Circuit has explained as the “initial interest confusion theory.”  Under this theory, Faceporn and Teachbook’s use of Facebook’s marks is actionable because they create an initial interest in their site on the coattails of Facebook’s marks.  Even if the consumer realizes their mistake and Faceporn or Teachbook do not benefit from the initial confusion, the “capitaliz[ation] on the goodwill associated with [the Facebook] mark” is impermissible.

That being said, I believe it will be a harder question for the court when it comes time to determine whether Faceporn and Teachbook are infringers.  It doesn’t seem likely that a person just perusing the internet would even initially confuse Facebook with Faceporn, especially given Facebook’s self-admitted wild popularity.  The Ninth Circuit requires actual confusion, which may be a difficult burden for Facebook to bear.  Furthermore, the bigger problem for Facebook is not the use of these generic terms in domain names, but grander idea of social networking being profitable.  Facebook cannot trademark the idea, especially since social networking sites were around long before Zuckerberg thought to capitalize on it.  However, Facebook may potentially give its competitors the wrong idea – that they can operate functionally similar sites as long as they stay away from “book” and “face.”

*Tiffany Johnson is a second-year law student at Wake Forest University School of Law, and works as a Legal Writing and Research teaching assistant.  She holds a Bachelor of the Arts in Politics from Princeton University.  Upon graduation in May 2012, Ms. Johnson intends to litigate in the private sector.