Book ’em, Danno: Facebook Updates User Agreement to Protect Trademark Rights in “Book”

Much of the discussion around Facebook’s changes in policy have revolved around privacy.  But a recent revision to the company’s Statement of Rights and Responsibilities has people talking about Facebook’s inclusion of a term designed to protect its trademark rights in the word “book.”

Jon Brodkin over at ars technica breaks it down nicely:

So, what exactly is Facebook changing? If you view the current Statement of Rights and Responsibilities, you’ll find this sentence:

“You will not use our copyrights or trademarks (including Facebook, the Facebook and F Logos, FB, Face, Poke, Wall and 32665), or any confusingly similar marks, without our written permission.”

If you’re wondering, 32665 is the number allowing Facebook users to update their pages through text message. The newly revised user agreement reads as follows (emphasis ours):

“You will not use our copyrights or trademarks (including Facebook, the Facebook and F Logos, FB, Face, Poke, Book and Wall), or any confusingly similar marks, except as expressly permitted by our Brand Usage Guidelines or with our prior written permission.”

Not accepting the terms isn’t really an option for anyone with a Facebook account. “By using or accessing Facebook, you agree to this Statement,” the document says.

This isn’t the first time the company has asserted rights in the word “book.”  There have been disputes (involving “Teachbook” and “Lamebook,” among others), but the move to include “book” among marks protected in its new terms is seen as newsworthy because “book” is not among the company’s extensive list of marks registered by the USPTO.

According to the ars technica piece, “Facebook has a pending trademark application on ‘book’ listed in the European Union’s trademark database, but the current status is ‘application opposed’ with ‘likelihood of confusion’ listed as the reason for opposition.”

Most readers of this blog already know that you don’t need to have a registered mark in order to have enforceable trademark rights in the United States.  And by incorporating this mark into its user terms, Facebook (potentially, depending on what a court would say) is adding breach of contract claims to its menu of options in enforcing its trademark rights.  And when you have, oh, 845 million or so contracts out there, well, that can’t hurt either.

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SOPA Blackout

Wow.  So you take some time off for the holidays (and then catching up from the holidays) and aren’t IP blogging for a little while and then– all of a sudden– the whole web is talking (or not talking, out of protest) about copyright law.

You didn’t have to venture too far beyond a simple Google search (which we, as a planet, only do a billion or so times a day) to notice something strange was going on today.  Visitors to a laundry list of sites including Google, Wikipedia, and Twitter were greeted by blacked-out logos and missing content in protest of SOPA and PIPA, two IP reform bills currently in Congress.

And, according to the Los Angeles Times, this protest might have already had an impact as three co-sponsors of the SOPA and PIPA antipiracy bills have publicly withdrawn their support for the legislation.  From the Times:

Sen. Marco Rubio (R-Fla.) withdrew as a co-sponsor of the Protect IP Act in the Senate, while Reps. Lee Terry (R-Neb.) and Ben Quayle (R-Ariz.) said they were pulling their names from the companion House bill, the Stop Online Piracy Act. Opponents of the legislation, led by large Internet companies, say its broad definitions could lead to censorship of online content and force some websites to shut down.

In a posting on his Facebook page, Rubio noted that after the Senate Judiciary Committee unanimously passed its bill last year, he has “heard legitimate concerns about the impact the bill could have on access to the Internet and about a potentially unreasonable expansion of the federal government’s power to impact the Internet.”

 

Trademarks as Verbs and the Risk of “Genericide”

Aspirin.  Cellophane.  Butterscotch.  Escalator.  Yo-Yo.  Heroin.

Don’t worry, I haven’t reverted into bizarre free-word-association mode.  This is a list of words which once were the subject of someone’s exclusive ownership, which have since lost their trademark protection through a process commonly referred to as “genericide.”

The basic idea here is this: a word only functions as a trademark to the extent that it is distinctive of someone’s goods or services.  Put differently, a good trademark will make consumers think of a particular type of product or a specific company that provides goods/services.

As Tom Galvani notes, in a recent post pondering the trademark implications of online search provider DEX‘s marketing activities, “Typically, use of a trademark as anything other than an adjective weakens the rights in that mark.  Supplanting the mark for a noun or a verb in a sentence changes the mark’s meaning and its understanding.”

I’m a grammar nut (no kidding– in college, I participated in an event called Grammar Smackdown!), so naturally, I find Tom’s shorthand formula appealing.  But, as Tom and others (see Evan Brown’s thoughts on Google’s entry into the Merriam-Webster dictionary) note, there’s more at play here.  

There is no doubt that businesses who invite consumers to use a trademark as a verb or a noun are running a risk of genericide.  So the question then becomes: (a) how great is this risk; and (b) in light of the marketing opportunities (word of mouth, “buzz” associated with your service, e.g.) is it worth taking this risk nonetheless.

Steve Baird over at DuetsBlog makes a key observation— it’s all about what consumers think:

To be sure, far more than a single act of verbing a trademark or brand must occur before a majority of the relevant consuming public no longer sees the claimed trademark or brand as identifying and distinguishing certain products or services as coming from a single source. Given this, there must be an opportunity to engage in some thoughtful and creative level of brandverbing without committing trademark suicide, right?

Only time will tell which of today’s popular brands will go the way of Escalator and company.  Brand owners have a lot to consider in the meantime, and they want more information, they can always just Google it.

Pittsburgh, Plumbers, and Cybersquatting (Redux)

Here’s an update from a story I picked up back in May involving a Pittsburgh-based plumbing company that was sued for cybersquatting.

From the Pittsburgh Post-Gazette:

Fagnelli Plumbing Co. in Oakland filed a lawsuit against Gillece in May, claiming the company had improperly registered the Internet domain name fagnelli.com and then redirected Web traffic from that site to the Gillece home page. Though Fagnelli sent a cease and desist letter, demanding that Gillece turn over the domain name, that never happened.

Gillece did, however, stop redirecting traffic to its own site, and instead listed fagnelli.com on GoDaddy.com, which is a parking site for domain names that are registered but contain no content.

The case was supposed to have been settled following mediation at the end of September, but the settlement fell through when the parties couldn’t agree on the confidentiality clause.

The case is now headed for a bench trial before U.S. District Judge Arthur J. Schwab on April 11. Fagnelli, which characterizes Gillece’s behavior as “unscrupulous and unethical,” is seeking damages of $100,000 plus costs and attorney fees.

Does Gillece’s conduct amount to “cybersquatting”?

The elements of cybersquatting under the UDRP, requires that plaintiff show: (1) that the domain is confusingly similar to its trademark; (2) that the registrant does not have a legitimate interest in the domain name; and (3) that the registrant registered and is now using the domain in “bad faith.”

One of the classic cybersquatting cases (Kremen v. Cohen) that I mentioned in my previous post involved, among other picaresque details, a cybersquatting dispute over the domain “Sex.com.”

Let’s look now at factor (2).  Although there’s room for argument about who “owns” “Sex.com,” it’s hard to see who, other than Mark Nix, a plumber in the Brentwood section of Pittsburgh, “owns” “marknixplumbing.com.”  Again, from the P-G:

Mark Nix, who has operated Mark Nix Plumbing in Brentwood for more than 25 years, said he didn’t know a domain name similar to his business had been registered until lawyers for Fagnelli told him.

Even so, he doesn’t like that Gillece registered the name marknixplumbing.com.

“I think it’s the wrong thing to do for Gillece — to go take my website and put his name over top of mine,” Mr. Nix said. “He’s a big enough company, he really doesn’t need to do something like that.

“He should have his own customers.”

Paul Robinson, an attorney for Gillece, said Tuesday afternoon that he had not yet read the affidavits filed by Fagnelli and could therefore not comment on them. A response to the filing is due by Feb. 10.

As we always must do in litigation (and in blogging about other people’s litigation), we’ll have to wait and see– whether Gillece will prevail in this matter or whether it has simply flushed a good deal of GoDaddy domain fees down the drain.

April Fools’ Day: Topeka, Kansas Edition

If you visit Google.com today, you’re in for a surprise.  That’s right– your eyes aren’t playing tricks on you– Google has changed its name to “Topeka.”  This is just the latest in a long line of Google’s April Fools’ hoaxes.

But why Topeka?  If you haven’t been following the ongoing competition among cities vying for Google’s ultra-fast, experimental fiber network, you might have missed the recent news that Topeka, Kansas, one of the cities competing for the network, has officially changed its name to “Google.”

The trademark wonks among us will appreciate “Topeka’s” guidance on proper usage of the moniker so as to avoid the problem of descriptiveness/genericide:

And I would be doing a disservice to my fellow Pittsburghers out there if I didn’t point out that the Steel City is in the running for Google’s Topeka’s experimental fiber network.  I was happy to see that members of the Greater Pittsburgh community are making a compelling case for bringing the project here.  I mean, what’s not to like?  Pittsburgh has excellent universities and a burgeoning high-tech industry.  Plus, as the Pittsburgh Google Fiber Project aptly notes, we’ve got the parking chair:

Keyword Advertising 101: Be Careful About (Implicitly) Slamming Your Competitors

In the cult-classic b-movie “Cool as Ice” (starring, you guessed it, Vanilla Ice), the protagonist admonishes a love interest to “drop that zero and get with the hero!”

While most advertisers can’t muster the same sort of panache that Vanilla Ice had back in the early ’90s, there is no denying the fact that advertisers like to boost the strength of their brand by attacking the credibility of their competitors.

Keyword advertising is an exciting platform where can advertisters turn the internet searches into sales opportunities.  And, from a trademark perspective, it’s kind of like the Wild West, with litigation cropping up left and right and courts wrestling with issues such as “trademark use” that become elusive in this new context.

Eric Goldman has posted recently on Morningware, Inc. v. Hearthware Home Products, Inc., 2009 WL 3878251 (N.D. Ill. Nov. 16, 2009).  In that case, the trademark owner sued the advertiser for purchasing its trademark as a keyword and running an ad with the following copy: “The Real NuWave ® Oven Pro Why Buy an Imitation? 90 Day Gty.”

Interestingly, the ad’s copy did not specifically reference the trademark owner’s mark.  And, as Goldman notes, the trademark owner was able to survive the advertiser’s 12(b)(6) motion to dismiss.

So what’s the takeaway for advertisers interested in purchasing keywords?  Goldman sums it up nicely:

“Meanwhile, advertisers buying competitive keyword advertising should take note of the risks of implicitly calling your competitor an “imitation” without explaining the relative product positioning–which isn’t possible due to the limited character count of a Google AdWords ad. Because the character limits prevent fully clarifying disclosures, advertisers should consider striking the phrase “why buy an imitation?” from their keyword advertising copy toolkit.”