Last week, the District
Court for the Northern District of California dismissed Facebook's trademark
complaint against Teachbook. The dismissal was based on a lack of personal
On May 6th, Facebook re-filed in the Northern
District of Illinois.
Last Week's Dismissal
Facebook filed its
action on August 12, 2010, alleging trademark infringement and dilution of the
FACEBOOK mark. In support of personal jurisdiction, Facebook alleged that
Teachbook had sufficient "minimum contacts" with California.
In Facebook, Inc. v.
2011 U.S. Dist. LEXIS 48590 (N.D. Cal. May 2, 2011) [enhanced version available to lexis.com subscribers], the
court addressed the jurisdictional issue under the three-prong test set out in Schwarzenegger v. Fred Martin Motor Co.,
374 F.3d 797 (9th Cir. Cal. 2004) [enhanced version / unenhanced version available from lexisONE Free Case Law]. With
respect to the first prong:
... in cases sounding in tort, such as a suit for
trademark infringement, the court must determine whether the conduct at issue
was "purposefully directed" at the forum. ... The "effects" test requires that
the defendant allegedly have (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.
Facebook argued that
it had satisfied the effects test by making a prima facie showing that
Teachbook: (1) intentionally selected a confusingly similar trademark; (2) intended
to compete with Facebook, a California resident; and (3) knew that its use of
the TEACHBOOK mark would injure Facebook at its headquarters in California.
Facebook's argument, the court held that Teachbook's conduct did not satisfy
the Ninth Circuit's requirement that there be "something more" than
foreseeable effects in the forum state. The court noted:
Here, Teachbook's alleged intentional act-adopting an
infringing trademark-was expressly aimed at potential users of Teachbook's
website. Teachbook does not register users in California. Thus, even if
Teachbook intended to compete with a California company, it intended to compete
for users who were not in California. The fact that an essentially passive
Internet advertisement may be accessible in the plaintiff's home state without
"something more" is not enough to support personal jurisdiction in a
trademark infringement suit brought in the plaintiff's home state.
None of Teachbook's acts was purposefully directed at
California; to the contrary, Teachbook took purposeful steps to avoid the
California market. Facebook has failed to identify "something more"
than foreseeable effects in the forum.
Re-filing in the Northern District of Illinios
Last Friday, Facebook
re-filed its trademark complaint in the Northern District of Illinois,
Teachbook's alleged residence. Facebook v. Teachbook, 11-cv-03052
(N.D. Ill. May 6, 2011). Facebook alleges:
Defendant has touted on its website that TEACHBOOK is
a substitute for Facebook: "Many schools forbid their teachers to maintain
Facebook and MySpace accounts because of the danger that students might learn
personal information about their teachers. With Teachbook, you can manage your
profile so that only other teachers and/or school administrators can see your
personal information, blogs, posts, and so on. Teachbook is all about
community, utility, and communication for teachers." Defendant uses the
TEACHBOOK Mark in connection with offering and/or promoting the aforementioned
online networking services.
California court noted that Teachbook had commissioned a trademark search
before applying to register the TEACHBOOK mark with the USPTO. As noted:
Teachbook commissioned a trademark clearance search
which revealed thirty-one "-BOOK" formative marks for interactive
computer services, including ten marks that were first used in commerce prior
to Facebook. The search disclosed by
Teachbook revealed that Facebook had
filed extensions of time to oppose several -BOOK marks, but that Facebook had not yet opposed any of the -BOOK marks.
Teachbook's search allegedly did not reveal that Facebook had opposed
registration of the DATEBOOK mark in 2007, because that opposition had been
resolved by the applicant's default and abandonment of the application.
Other items of interest:
2-7A Gilson on Trademarks § 7A.10[a] Gripe Sites and Fan
Sites - Fan Sites; In General. (Non-subscribers can purchase Gilson on Trademarks at the LexisNexis Bookstore)
In addition to stand-alone fan web
sites, there are also unofficial fan pages on social networking sites. For
example, Facebook allows members to create "Facebook Pages," or web
pages within Facebook that give businesses, sports teams, artists, musicians
and products a presence on the site. On these Pages users can
"friend" a brand or celebrity, thereby ....
3-11 Gilson on Trademarks § 11.02[k][iii][C] Parties - Defendants; Fans; Provide Authorized Forums for Fan
Activity; Post Pages on Social Networking Sites. (Non-subscribers can purchase Gilson on Trademarks at the LexisNexis Bookstore)
Trademark owners may want to post an
official page on social networking sites like Facebook before someone else
posts an unofficial page under the trademark. But, just as with the stand-alone
fan sites and fan clubs, the trademark owner must supervise these pages for
inappropriate content. Fans can post ....
YourName(R) - Trademark Protection is Coming to Social Networks
Oh, baby, baby, it's a wild,
unregulated world. Facebook and LinkedIn, among other online social networks,
are vast private communities that have thrived without oversight from any
policy-making body. And new social ....
NLRB Puts Social Media Policies Under Scrutiny
While an innovative social media campaign can be a great boon to
business, corporate America is becoming increasingly aware of the
inherent dangers of social media as well. In particular, employees'
statements about ....
Webcast: Overview of 2010 Developments in Lanham Act, Social Media,
Trademark, and Copyright Law
saw important developments in intellectual property and technology law, but what
do these changes mean for 2011 and beyond? Please join us for one or both of
our breakfast programs as we review developments of the past year and look
toward trends for the future.
For more information about LexisNexis products and
solutions connect with us through our corporate