It isn’t the first time that Facebook has tried to claim monopoly trademark rights over book related domain names. In August of this year Facebook tried to sue a tiny company called Teachbook, claiming it owned the rights to the name book.
Google sued the tiny company before they even launched their website which provided tools for teachers to manage their classrooms and share lesson plans. Facebook claimed that the “book” part of its name is “highly distinctive in the context of online communities and networking websites.”
To some extent they are trying to assert monopoly interests over both the word ‘face’ and ‘book’ to protect their monopoly interests in the event that they may become generic.
In May 2010 Lamebook a small Texas based company filed a trademark application with the USPTO for the word LAMEBOOK in relation to it’s website www.lamebook.com.
California based Facebook, the popular social networking site claims to have secured rights to the FACEBOOK mark both through common law use and registration with the United States Patent and Trademark Office.
In 2009, Jonathan Standefer and Matthew Genitempo, two graphic artists conceived of a parody website which highlighted the lame and absurd content that is frequently posted on the Facebook website. The website www.lamebook.com was frequently updated with fresh lame Facebook content for its users to view and offer their commentary upon. The lamebook site never purported to offer social networking services as Facebook does and therefore isn’t a competitor to Facebook in that sense.
Lamebook.com simply compiles, selects and enables commentary on amusing content from Facebook, serving the function of a parody of the Facebook website and the role it has come to play in society. Since the launch of www.lamebook.com in April 2009, it has become an extremely popular forum for users to comment on the type of material that is posted on the Facebook social networking site.
In March this year, Facebook’s legal division sent correspondence to Lamebook notifying it that it’s Lamebook mark infringes the trademark rights in the Facebook mark and dilutes the value of the mark. Facebook requested that Lamebook ceased using the Lamebook mark and change the name in addition to the look and feel of it’s website.
Lamebook responded to Facebook’s letter by stating that their mark didn’t infringe or dilute the Facebook trademark as it was a form of parody and therefore a protected form of expression under the First Amendment of the United States Constitution. It may constitute infringement or dilution however I think that Facebook may be out of luck as this appears to be protected free speech.
It has an important function of criticising Facebook and satire is an important form of social commentary. People would quickly recognise when perusing the website lamebook.com that it doesn’t resemble Facebook’s site, although the logo appears similar.
It was a smart tactical move for Lamebook to obtain declaratory judgement in Texas. If domainers wished to use a domain name incorporating the word book, the domain name owner could do the same thing if they received a cease and desist letter. A domain name holder could file a federal lawsuit seeking declaratory judgement instead of having the matter heard under the UDRP rules, although the costs may be prohibitive for many domain name holders.
The parties were unable to reach a resolution, and Facebook demanded by correspondence in July of this year that Lamebook abandon their application to register the trademark Lamebook, permanently cease and desist using the Lamebook mark or any mark with the BOOK suffix and agree not to register such marks. Facebook also demanded that Lamebook cease using Facebook trade dress. Facebook threatened to bring legal action against Lamebook causing Lamebook to bring an action in a US court for a declaratory judgement of non-infringement to establish that it is not infringing, diluting, or otherwise violating any of Facebook’s legally protectable marks.
Lamebook requests a declaration from the Court to the effect that its use of the Lamebook mark doesn’t infringe upon the trademark and/or trade dress rights claimed by Facebook, or otherwise create any likelihood of confusion under the Lanham Act. They also seek a ruling as to whether Lamebook’s use of the Lamebook mark dilutes the trademark rights claimed by Facebook or otherwise lead to confusion under the Lanham Act.
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