Thursday, May 19, 2011

Federal Judge Throws the 'Book' at Facebook in Trademark Suit

Image representing Facebook as depicted in Cru...Image via CrunchBaseU.S. District Court for the Northern District of California Judge Ronald M. Whyte has dismissed Palo Alto, Calif.-based social networking colossus Facebook's trademark infringement suit against Illinois company Teachbook for lack of personal jurisdiction.

The case, Facebook, Inc. v., LLC (Case No. 10-cv-03654-RMW) was brought Aug. 12, 2010, by Facebook, which alleged trademark infringment and trademark dilution by Teachbook, a social and professional networking site for teachers. Facebook claimed the use of the generic "BOOK" by a competitor social networking site would confuse consumers and dilute its brand. Facebook alleged jurisdiction and venue were proper because the defendant intentionally infringed on its trademark, causing it to suffer injury in its district.

The court noted that Teachbook's trademark clearance search produced 31 entities using "BOOK" formative marks for interactive computer services, including 10 companies that pre-dated Facebook. In concluding Teachbook neither permits California residents to register on its site nor competes with Facebook for the hearts and minds of Californians, Judge Whyte relied on the three-pronged "effects test" developed by the U.S. Supreme Court in Calder v. Jones, 465 U.S. 783 (1984). Under Calder, the court gauges whether the defendant: 1)committed an intentional act, 2)expressly aimed at the forum state,  3)causing harm that the defendant knows is likely to be suffered in the forum state.

Judge Whyte ruled against Facebook because it failed to show Teachbook's conduct was "expressly aimed" at California. A tip of the hat to the always informative Website for reporting on this case, which seems more about hubris than trademark.

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