Facebook and Timelines Inc. is scheduled to begin trial today in a case over the social network’s “timeline” profile feature, which Timelines says infringes on its trademark over the word “Timelines.”
Timelines Inc. operates Timelines.com, a website for people to create and collaborate on historical timelines. The company sued Facebook in September 2011 after it debuted an overhauled profile page it called “timeline.” Timelines Inc. has registered trademarks for “Timelines,” “Timelines.com” and its “Timelines” logo. The company is seeking damages “equivalent to Facebook’s Timeline-derived ad revenue,” according to Bloomberg.
Facebook asserted that its use of “timeline” was generic and it requested a summary judgment to prevent the case from going to trial. The U.S. District Court for the Northern District of Illinois denied Facebook’s motion, and now the companies will face a jury.
Here’s a breakdown of Timelines’ and Facebook’s arguments. Note that the case is over the use of the word “timeline,” not the design or functionality of Facebook’s profile.
Timelines Inc. says its registered trademark gives it the sole and exclusive right to use “Timelines” in connection with customized webpages, and that Facebook’s use of the term is likely to cause confusion about the affiliation between the companies and products. Timelines Inc. suggests that Facebook not only knowingly violated its trademark, which was registered in 2009, but that it engaged in unfair and deceptive practices that have caused harm to Timelines Inc. For example, at one point Facebook redirected users searching for Timelines Inc’s Facebook page instead to a page about its own new profile.
Facebook counterclaims that Timelines Inc. is not entitled to a trademark over “Timelines” because it is a generic or purely descriptive term without any secondary meaning associated with the company. A trademark can become generic when there is no longer a way for a company to compete effectively without using the term to explain the product they are selling. For example, Chevrolet would be at a distinct disadvantage in a scenario where it could not call its product a “car” because a competitor like Ford had trademarked the word.
Facebook points to dictionary definitions of “timeline” and use by other companies and the media to prove that the term is generic. Timelines Inc. argues that dictionary definitions do not fully encompass its product offering, and that other parties’ goods or services using the word “timeline” are software-based and paid, while Timelines.com is free and web-based, as is Facebook.
As for proving that “Timelines” does have secondary meaning uniquely associated with it, Timelines Inc. notes that it has 1,209 registered users, and that in 2011 and 2012, Timelines.com averaged about 94,000 visitors per month. The company also says that some people believed Timelines Inc was involved with Facebook timeline, and even contacted the company with requests to change their settings on Facebook when the feature launched.
Facebook, on the other hand, commissioned a survey asking people whether they believed “timeline” and “timelines” were common names or brand names in connection with a website or website feature. Only 24 percent thought the terms were brand names.
Facebook also asserts that even if Timelines Inc. does have a valid trademark for “Timelines,” its own use of the term falls under “fair use” because it did not use “timeline” as a trademark, simply as a way to describe its offering. Timelines Inc. challenges this by referring to internal and external communications about Facebook’s timeline. The social network’s employees publicly refer to the timeline as a “product,” and even more recently as one of the three “pillars” of the social network, along with News Feed and Graph Search.
CEO Mark Zuckerberg wrote in an internal email before launching the product:
“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 than editing your profile, you edit or update your timeline.”
Across the site, Help Center, data use policy and other communications, Facebook has changed references to the “profile” or “Wall” to now say “timeline.” Because Facebook has a trademark on “Wall,” and the company has replaced the Wall with the timeline, Timelines Inc. alleges that the social network did use timeline in a way that was more like a trademark and than a descriptor.
We’ve noticed that Facebook now uses “timeline” in lowercase, even though it regularly capitalizes products like Pages, News Feed, Graph Search, Activity Log, Gifts and others. (Our own editorial policy has been to capitalize Timeline when referring to a user’s profile or a company’s page.) However, it capitalizes it in regulatory filings. Like with other products, Facebook does not use an article in front of timeline — meaning it refers to “timeline” but not “the timeline” or “a timeline.” Facebook admits it was aware of Timelines Inc. prior to announcing its timeline.
Timelines Inc. highlights that Facebook is very protective of its own similar trademarks, such as “Wall,” “Face” and “Book.” The social network filed a trademark infringement suit against Teachbook in 2010. Teachbook ended up changing its name to resolve the suit in 2012.
Timelines Inc. wrote in a memorandum to the court:
“Facebook enjoys such widespread recognition because trademark law protects Facebook against infringing uses of its many trademarks by others. While trademark law protected (and protects) Facebook in its pursuit of success, Facebook wants this Court to deny the same protections to Timelines.”
The social network’s name itself comes from the generic term for college yearbooks that were known as face books.
The case is Timelines, Inc. v. Facebook, Inc., No. 11-cv-6867. It begins today in Illinois Northern District Court.