UPDATE: Federal Court Knocks Out Facebook Trademark Suit Against Foreign Porn SIte

(Photo credit: Wikipedia)As noted in the previous post, Facebook has been going through a tough stretch. Let it never be said that The Unruly of Law is above piling on and kicking a litigant when it's down.

United States District Court for the Northern District of California Judge Jeffrey White last week dismissed Facebook's trademark infringement suit against a Norwegian adult Web site for want of personal jurisdiction. In Facebook, Inc. v. Thomas Pedersen & Retro Invent (Case No. 3:10-cv-04673), Facebook sought entry of a default judgment, attorneys' fees of more than $80,000, litigation costs exceeding $13,000 and a permanent injunction against the defendants, operators of Faceporn, the self-described "number one socializing porn and sex network."

In October 2010, Facebook initially sued Faceporn in a 10-count complaint, alleging, among other claims, trademark infringement and trademark dilution. [See "TUOL" post 11/3/10.] According to the paidcontent.org Web site, Facebook, which owns 10 trademarks and has another 17 pending, is dogged in its pursuit of companies that deign to use face or book in their names.

Judge White adopted the recommendation of U.S. Magistrate Nathaniel Cousins's 10-page ruling that Norway, not California, would be the proper forum for Facebook to pursue its claims because the defendants were not subject to personal jurisdiction by the court. The court relied on the three-pronged "effects" test to determine personal jurisdiction as set forth in the Supreme Court decision in Calder v. Jones, 465 U.S. 783 (1984), which requires the plaintiff to show the defendant: 1)committed an intentional act, 2)expressly aimed at the forum state, 3)causing harm the nonresident defendant knew would likely be suffered in the forum state.
Applying Calder, Judge White said Facebook failed to show Faceporn's California viewer base (an estimated 250 users) was an integral part of the defendant's business model and profitability and thereby, establish personal jurisdiction. The court did not see Faceporn as being in direct competition with Facebook.

At times such as these, at least Facebook has millions of "friends" on whom it can lean.

UPDATE: 'Twittersquatting' Plaintiff Drops Suit

Image via CrunchBaseLife settlement company Coventry First has withdrawn its subpoena to Twitter and voluntarily dismissed its lawsuit against anonymous tweeters (see "TUOL" 6/15/11), the ABA Journal Law News Now blog reports.

The U.S. District Court for the Eastern District of Pennsylvania case,  Coventry First, LLC v. John Does 1-10 (Case No. 2:11-cv-03700) alleged violations of the Lanham Act and the Anti-Cybersquatting Consumer Protection Act, along with common law claims of unjust enrichment and unfair competition, arising from sarcastic false tweets under the tag @coventryfirst.  Coventry First said it decided to drop the case after counsel for Public Citizen, which had sought to quash the subpoena to Twitter, revealed the pseudonymous tweeter was not an industry competitor. Public Citizen argued the plaintiff erred procedurally by serving Twitter with a subpoena before seeking court permission via motion to conduct early discovery.

More likely, dismissing the case without prejudice  is a face-saving measure by Coventry First, which faced an uphill battle supporting its claim that the fake tweets amounted to trademark infringement that might confuse consumers.

'Twittersquatter' Sued for Trademark Infringement

Image via WikipediaIn Coventry First LLC v. John Does 1-10 (Case No. 2:11-cv-03700), filed this week in the U.S. District Court for the Eastern District of Pennsylvania, a life settlement industry leader is suing anonymous pranksters who have false-Tweeted messages under the "@coventryfirst" moniker that hope for mass disasters to occur.

As reported by Reuters news service and PaidContent.org, Coventry First's complaint includes claims alleging unjust enrichment, trademark dilution, unfair competition, violation of the Anti-Cybersquatting Consumer Protection Act [15 U.S.C. sec. 1125(d)] and trademark infringement under the Lanham Act [15 U.S.C. sec. 1125(a)]. The plaintiff is going after the anonymous posters for approximately 14 offending Tweets.

Coventry First LLC is a player in the life settlement field, in which companies re-sell life insurance policies to investors who pay the premiums and collect the policy proceeds when the insured parties die. The unidentified Tweeters have been sending messages tinged with sarcasm to their approximate 10 followers noting that Coventry and its investor/clients maximize their profits from insured individuals dying before too many premium payments have been made.

Included among the Tweets that have gotten under the skin of the plaintiff are: "Horrible weekend, No plane crashes (they make a lot of money), no earthquakes," and "the faster people die, the more coventry first profits! not even cig companies want their customers to die as fast." 

Among the significant hurdles Coventry First LLC must overcome to prevail are showing that consumers are confused by the faux-Tweets to support its Lanham Act (trademark infringement) claim, a daunting task given the obviously jokey nature of the fake messages.  Also, the anti-cybersquatting statute arguably does not contemplate Twitter user names, but rather, "second level" domain names. Nor is it clear how the plaintiff plans to show the John Does at issue are commercially benefiting from the fake Twitter account.

It will be worth tracking whether this case adds anything to social media jurisprudence or if it just akin to Coventry First yelling out the windows of its corporate headquarters: "Get off of my lawn!"

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

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. Teachbook.com, 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 Internetcases.com Website for reporting on this case, which seems more about hubris than trademark.

Facebook & Lamebook Poking Each Other in Tex. & Calif. Federal Courts

Image via WikipediaFacebook has filed a 10-count trademark infringement suit against Lamebook in U.S. District Court for the Northern District of California  (Facebook, Inc. v. Lamebook, LLC, Case No. CV-10-5048), less than a week after Lamebook filed a Complaint for Declaratory Judgment against the social network behemoth in the U.S. District Court for the Western District of Texas (Lamebook, LLC v. Facebook, Inc., Case No. 1:10-cv-00833).


In its 19-page complaint, Facebook alleges, among other claims,  federal trademark dilution [15 U.S.C. sec. 1125], trademark infringement [15 U.S.C. sec. 1114], false designation of origin, unfair competition, and violation of the Anti-Cybersquatting Consumer Protection Act [15 U.S.C. sec. 1125(D)]. As reported by www.law.com, Facebook challenges Lamebook's claim that its Web site warrants 1st Amendment protection as parody and satire, countering that Lamebook is a for-profit venture whose appearance is nearly identical to Facebook's and being used to lure advertisers.


In its 7-page complaint, Lamebook is asking a federal judge in Austin to find that it is a parody of  Facebook's "best & worst posts" and does not dilute or infringe on Facebook's trademark, pursuant to the Lanham Act [15 U.S.C. sec. 1051 et seq.]. Before their respective race to the courthouse, the two sides were engaged in discussions to resolve the dispute.

Although parody is a protected  form of expression under the First Amendment, it's a tricky obstacle course to navigate because the purveyor of the parody must in its work make readers or viewers think about the original work while at the same time conveying to the readers/viewers that it is a humorous vehicle in no way connected to the original work.


The Lamebook Web site invites visitors to contribute to its legal fund. "TUOL" wonders how many active federal lawsuits it takes before parties "de-friend" each other.

Facebook Trademark Suit Involves Different Kind of 'Poking'

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Seinfeld Cookbook: A Trademark & Copyright Case About Nothing

Cover via Amazon

In Missy Chase Lapine, The Sneaky Chef, Inc. v. Jessica Seinfeld, Jerry Seinfeld, HarperCollins Publishers, Inc. & Departure Productions, LLC (Case No. 09-4423cv), the U.S. Court of Appeals for the Second Circuit last week upheld the trial court's grant of summary judgment to the defendants on the plaintiffs' copyright infringement, trademark infringement, and trademark dilution claims.

Lapine, author of  The Sneaky Chef:  Simple Strategies for Hiding Healthy Foods in Kids'  Favorite Meals, claimed  Deceptively Delicious: Simple Secrets to Get Your Kids Eating Good Foods, written by Jessica Seinfeld, the spouse of comic Jerry Seinfeld,  infringed on Lapine's work. Both cookbooks cracked The New York Times best-sellers list, with Seinfeld's book, which came out four months after Lapine's, capturing the number 1 spot.

The appellate court conducted an independent comparison of the two cookbooks, concluding: "the 'total concept and feel' of Deceptively Delicious is very different from that of The Sneaky Chef."  Foodies may be thrilled by the Second Circuit's observation that "stockpiling vegetable purees for covert use in children's food is an idea that cannot be copyrighted."

In reviewing the standard for deciding if copyright infringement occurred, the Court of Appeals for the Second Circuit decision noted: "When, as in this case, a work incorporates unprotected elements from the public domain, we apply a 'more discerning observer' test, which requires 'substantial similarity between those elements, and only those elements, that provide copyrightability to the allegedly infringed [work]."

Which leads Seinfeld fan "TUOL" to wonder: Why do they call it a "trademark"--there are no marks being traded? And what are they diluting the trademark with?  How do you infringe on a copyright anyway--do you have to stand on it, or can you just make harassing telephone calls?...