The Value of a “-book”: Facebook v. Teachbook
On August 18, 2010 Facebook, Inc., better known as Facebook.com, one of the world’s most popular Internet websites, filed a federal lawsuit against Teachbook.com LLC alleging trademark infringement due to the use of Teachbook.com’s “-book” suffix in its registered domain name. This will be a case of first impression in the Northern District of California, and will test the ability of wholly online services to trademark otherwise generic portions of their domain name.
This suit against Teachbook is the main warning shot of a carefully launched campaign against other social networking websites that use the “-book” suffix in their domain names. Besides this suit other sites that received cease and desist letters from Facebook to refrain from using “-book” in their name were Placebook, Redneckbook, Doctorbook, Vetbook, and Geezerbook. Many of these sites complied and were taken down. Teachbook may have been specifically targeted because it was planning a large nation-wide launch in the fall of 2010 and has explicitly advertised itself as an alternative to Facebook for teachers.
Another targeted site, Lamebook, recently turned the tables and filed their own proactive trademark proceedings in the Western District of Texas against Facebook. Lamebook seeks declaratory judgment it is protected by the free speech element of the First Amendment as a parody and that it is a non-competitor of Facebook since it does not offer any social networking services.
Many tech commentators on the Internet have suspected that Facebook’s campaign was coordinated as a response to the release of David Fincher and Aaron Sorkin’s largely unflattering film adaptation of the events that led to the foundation of Facebook titled The Social Network. The lawsuit may also have much to do with the fact that many in Silicon Valley are betting on social networking websites expanding in the future and that Facebook sought to make a clear statement that it will protect its trademark name from dilution and infringement from imitators at all costs.
Trademark law differs from copyright and patent law in that for a trademark to be enforceable it must be in use in the marketplace. The central theories behind trademark law is that a mark will help identify goods in the marketplace and serve the dual purpose of protecting consumers from being tricked by imitator goods and also giving the owners of the mark a cause of action against competitors who piggyback off the success of the original mark to sell their own goods. A mark is considered “in use” once it is a recognizable indicator of a particular good in the marketplace. Marks can be things such as words, logo designs, colors, sounds, smells, or any combination of features that accomplishes the purpose of identifying one good.
Words are often tricky to trademark because they can easily be found to be “generic” and not subject to trademark protections. Generic words are common or descriptive terms. For example a trademark for “apple” would be impossible to establish if one was selling apples. However, the more unique the mark to the good the better chance of success in obtaining a trademark. If one used the term “apple” to establish a mark in the computer hardware world they have a much higher likelihood of being successful (if not for the fact that Steve Jobs has gotten there first.)
Domain names online may be considered trademarks because domain names are the central tool used by online consumers to access online goods and services. Facebook is operating under the central theory that they have established use in the marketplace and registered the name “Facebook” as a trademark for the purpose of online social networking.
In the August 18th complaint against Teachbook the plaintiffs made two primary accusations against Teachbook.
First, Facebook alleges trademark infringement based on the fact that the suffix “-book” causes Facebook and Teachbook to sound similar which may lead to confusion. They also claim Teachbook is directly competing for the same market pool as both Facebook and Teachbook operate online and both offer social networking to working professionals.
Second, Facebook alleges dilution of its name brand. Facebook claims that Teachbook will weaken the strength of Facebook’s name, which has been expensive to build and maintain. Allowing a direct competitor to piggyback off the name recognition of Facebook, particularly through the use of “-book” in its domain name, will allow others to do the same and weaken the overall name brand of Facebook. The key wording here is that adding the term “-book” to the Teachbook domain name is wholly arbitrary to the function of it’s service as a social networking site for teachers, and that the only possible explanation for its use is to make consumers identify it through Facebook’s own name.
The dilution cause of action may clearly be the stronger of the two. A similar case was decided in the fast food world earlier this year in Malaysia, where the nations highest court ended a lengthy eight year court battle between McDonalds and McCurry, an Indian-food based fast food chain. The allegations by McDonalds were very similar to the allegations made by Facebook, particularly to how the prefix “Mc-” was being used by McCurry to cause confusion among consumers and piggyback off McDonald’s name brand. For it’s own part McCurry claimed the “Mc” stood for “Malaysian Chicken” and that they were not direct competitors with McDonalds as they did not sell American fast food. The Malaysian court bought both of these arguments and found no infringement on McCurry’s part.
The Facebook v. Teachbook case however will be fought in the Northern District of California. American Federal Courts are known to more friendly to intellectual property holders than courts in other areas of the world. It will be interesting to see which direction the court decides to go with. A win on Facebook’s part could shut down any running social networking site with the suffix “-book” and give Facebook a complete monopoly on the name and, in many ways, protect it from any competitors whose presence might be healthier for the marketplace. On the other side a win by Teachbook might open a floodgate for competitors to drown out any current value of “-book” in Facebook’s name and possibly spread the trend to other popular domain names.
In either case the court will have a difficult time parsing through the worth of suffixes and prefixes on domain names and what value they have to the overall value of the name. I expect this will become an important issue as the Internet marketplace grows in the future. This is a case to keep an eye on.