The Controversy and Summary
Entrepreneurs, do not put the words “face” or “book” in your company’s name or you’ll be hauled to court. The United States Patent and Trademark Office have granted Facebook Inc., a popular social-networking site, to trademark both these words (Camp, 2010). Should a company be able to trademark such generic words? Facebook Inc. seems to think so, and they’re taking that to the bank. Camp (2010) states “Face(TM) book(TM) will now have stronger grounds to try and shut down websites that have similar names.” On November 15, 2010 Facebook Inc. filed a lawsuit against Lamebook.com, a satirical site, arguing the company’s name is too similar to their own (McHugh, 2010).
Not surprisingly, Lamebook is protesting. They claim the name is protected under the First Amendment, not to mention the Fair-Use Defense Doctrine. Facebook retorts that the site does not meet the standard for a parody site and therefore should not be protected as one.
Facebook Inc. v. Teachbook (2010)
In August 2010, Facebook took action in federal court against a site called Teachbook.com, alleging the site “was ‘misappropriating’ the ‘book’ portion of Facebook's trademark” and claimed “Teachbook.com is a ‘blatant’ attempt to become ‘Facebook for Teachers,’ thus riding the ‘coattails’ of the networking community's fame” (Casale et. al, 2010). Teachbook offers “several of the same services as Facebook and, according to the lawsuit,” Casale says, “actually is designed to be a teacher's substitute for Facebook, as some schools do not allow teachers to maintain a Facebook or MySpace account to protect personal information from students.”
It seems this is also pertinent to the case of Lamebook in regards to their “misappropriating” of the word “book.” However, the site does not offer the same features, indeed they offer very little at all.
Facebook Inc. v. Placebook (2010)
Other companies have been flattened under the Facebook steamroller besides Teachbook, including Placebook (now called TripTrace). Placebook decided not to put up a fight and changed their name after Facebook “dangled the threat of legal action over the founders’ head.” Placebook, according to their new site TripTrace.com, offers features that “sync[s] your check-in service of choice” and maintaining a provided personal atlas of the places the individual has been. The site also enables the user to “grab bookmarks from across the web and pin them to your private maps, alongside news, events, photos and, well, anything else you want” and be able to “budget every part of your trip - from flights and hotels to activities and pocket money” by utilizing their device called “Costimator” which “compare[s] trips quickly…” (triptrace.com).
Facebook Inc. v. Faceporn (2010)
Facebook has a lot on its legal plate. Facebook is asserting that Faceporn is engaging in dilution or diminution, in drawing negative association to Facebook’s trademark. This past October, Facebook spokesman Simon Axten said, "Where there is brand tarnishment, dilution, or confusion…we must enforce our rights to protect the integrity of our trademark" (McMillan, 2010). Faceporn is currently down “due to unforeseen circumstances,” and claim that they are “working to launch a completely new version of the site” (faceporn.com). Could this be because of the threats from Facebook? Latoicha Givens, founder and member of Phillips Givens, LLC., discusses in her blog that the original appearance of Faceporn’s site was indeed identical to Facebook’s, “The logo was in the same type and font, the color scheme was the same and the layout was identical to Facebook's…Clearly, Faceporn copied the layout and style of Facebook's site” (Givens, 2010).
Application of Text
A trademark can be any “word, logo/emblem, slogan, or similar device uses to call to mind a specific supplier/manufacturer’s services or goods” (Siegel, 2002, p. 230). The federal Lanham Act protects these trademarks.
Siegel (2002) states that infringement can occur when likely confusion is introduced into the consumer-buying process (p. 233). Likelihood of confusion occurs when it can be shown that “the general public is likely to be confused by the defendant’s use of a highly similar mark” and possibly assume, incorrectly, that the marks are related to each other (p. 233). However, when it comes to parodies, the 1st Amendment generally protects them.
The Fair Use doctrine, as stated in section 107 of the Copyright Act and cited in our text, suggests that “there are some instances of copying that must be protected, either because they provide some societal good or at least because they do not do a great deal of harm to the copyright holders” (Siegel, p. 213). This could be applied to any of Facebook Inc.’s law suits mentioned and support the argument of the defendants. However, Lamebook, the key case of note here, is unique from the other cases because of its content. The other companies engaged in a play of Facebook’s name and possibly some of its features, but Lamebook is strictly a parody of the Facebook site. Lamebook.com states they are, “a fun humor blog that allows us to all share and marvel at the funny, ridiculous, and outright crazy posts that can be found on your favorite social networking site” (lamebook.com, About). Parodying of earlier, copyrighted works is protected under the Fair Use doctrine.
Our text references several cases in which parodying has been protected. This includes song melodies, dramatic skits (e.g. Saturday Night Live), and photographs. The precedent case, Campbell v. Acuff-Rose Music discusses this delicate relationship and the Supreme Court has since “embraced the narrower definition of parody and made clear that defenses based on comedic intent will be handled as part of the traditional Fair Use defense” (Siegel, p. 216). The Fair Use doctrine, as cited in our text, provides four inquiries about satirical or parodying works. First, the purpose and character of the use, asserts that “those comedic works most likely to be protected by the Fair Use analysis are the ones that comment on the original work” and may benefit if “pure parody” is achieved (p.217). Lamebook certainly comments on the original work in the depiction of Facebook’s design of “wall comments” and “status updates.” And all comments and updates portrayed are user-submitted and intended to be hilarious or outrageous in nature, thus attempting to obtain pure parody.
Under this inquiry, the text states that “defendants who can demonstrate that their use of another’s copyrighted materials was for a nonprofit, educational purpose are given much deference in Fair Use analysis” (p. 219). As lamebook maintains a “store” upon which to purchase lamebook merchandise, in addition to a donation link to their legal fund, their use appears to be for profit which may slightly hinder their case. However, it can be argued that by posting the messages and other various media they seek to educate the general social-networking public about internet etiquette.
The second inquiry ascertains the nature of the work. One particular aspect of this inquiry suggests that artistic work may be more protected than heavily factual and statistical work (p. 224). This could be applied to Lamebook’s defense as the site encourages its “posters” or “authors” to express themselves and post the things that the individual deems “lame.” In regards to this inquiry, I would not consider Lamebook to be heavily factual, if factual at all. All the messages and mixed media are unique to the site’s authors and as individual as they are.
The third inquiry details the amount taken. Siegel explains that “how much defendants are allowed to ‘take’ is often a function both of the nature of their use and the original work” and “parodists are permitted to take, minimally, whatever is necessary to ‘conjure up the original’ in the minds of the readers” or in this case, “viewers” (p. 227). Lamebook takes very little from the original Facebook. Lamebook uses the same font for their logo, an imitation of the wall (message board) feature, pictures (not a feature exclusive to Facebook), an imitation of the status update feature, and the “like” function. The way in which Lamebook borrows these features is unique, however. Lamebook doesn’t actually offer these features to its consumers as Facebook does but merely “reposts” the features and messages are not able to be commented on once the post is set, only “liked” or “disliked.” Lamebook’s “Like” and unique “Dislike” function is provided in a different position than Facebook’s; placed after or separate to the post, not inside or next to it. Therefore it can be argued that Lamebook takes very little of the many features Facebook offers and borrows to the extent of bringing the original website to mind while not actually being a reproduction of the website itself.
The fourth inquiry discusses the fair use’s effect on market value. This inquiry concerns the value of the current work and any possible future work that may be marketed (p. 228). Siegel suggests that “parody’s potential for dampening the market for the original might be a function of the satire’s bite” (p. 228). Any diminution or reduction of the original work’s value is actionable if it can be proved that the taking of the work caused the decrease in value. Conversely, criticism or ridicule of the original work may be protected (p. 229). Then there’s the instance of dilution. Dilution is “any unauthorized use of another’s trademarks can diminish the value of those trademarks…via a process sometimes called blurring…or tarnishment claims…” (p. 234). Blurring, or innocent confusion, is unlikely to occur in this case. Tarnishment claims, in which the plaintiff argues that their distinguished mark has been tainted, usually don’t succeed if the defendant’s purpose is for parody or some kind of political commentary (p. 234).
According to Facebook’s website, Facebook boasts more than 500 million active users, and asserts that people spend over 700 billion minutes a month on Facebook. On a personal note, my small circle of friends had never heard of Lamebook until it went up against the Goliath: Facebook. Indeed, it seems Facebook may not be cognizant of the free marketing it provides to the small websites they engage in litigation with. Facebook isn’t going anywhere and Lamebook will not catch up to the giant utilizing a mere rock and a sling.
Prediction
From what I can deduce through my research, and being among the generation of pro social-networking websites, Lamebook appears to be justified in regards to the selection of their name and the content on their website.
The cases prior to Lamebook, with at least one other currently in court (Teachbook.com), the outcomes have not been in favor of the little guy. August 2010 was a busy month for Facebook Inc., after sending notices to both Placebook.com and Teachbook.com for trademark infringement. “Sometimes you just can’t fight the 800lb gorilla,” said the official Placebook blog. While Placebook bowed to the king in submission, Teachbook stood in rebellion and is now being tried for treason. Off with their…face?
Despite the trail of carnage Facebook leaves in its path, I predict Lamebook will be triumphant. It is a true parody site and is protected by the Fair Use doctrine and the 1st Amendment.
Prediction Rationale
Although much was digressed in Application of Text, briefly reviewing the four questions posited via the Fair Use Doctrine will provide an outline the rationale for the prediction. First, the purpose and character of the use appears to be in good faith and achieving pure parody thus fulfilling this inquiry, albeit the commercial use within the parody site. Second, the nature of the work is more artistic than statistical but in reference to Lamebook’s parody, not necessarily the original work borrowed from Facebook though that is more artistic than statistical too. Basically, true parody is artistic and should be protected. Third, the amount taken is minimal and only enough to bring to mind the original website in the mind of its audience. Fourth, the effect on market value is minimal as well. Even if there is an increasing share of popularity, the site cannot compete with Facebook as it cannot stand alone. Lamebook is akin to a benign parasite, feeding on a host to survive while causing no real harm.
Another point for the rationale involves dilution. As aforementioned, Siegel (2002) described it as “any unauthorized use of another’s trademarks…” (p. 234). Due to the immense popularity of Facebook, blurring, in which the public might mistakenly believe Lamebook is Facebook, the case would have to be made that their product lines or services are similar, which they are not. Then the second aspect of dilution, being tarnishment, will not benefit Facebook’s case as parody is generally exempt from these claims.
In short, we find throughout the text that true parody is protected. It is an artistic interpretation of another artistic expression, so to speak. All great artists – musicians, painters, and comedians – draw their inspiration from somewhere and their unique outlook is and should be protected. Lamebook does not offer the same services as Facebook therefore cannot become the “new Facebook,” nor does it seem their intention. The creators of Lamebook merely poke fun (oops, can’t use the word “poke” much longer) at the lack of etiquette some of the site’s users exhibit and the funny comments and pictures that arise.
Lastly, a point of rationale is a brief look at the other cases dragged to court by their collars. In the case of Teachbook, Facebook was in the right. Teachbook was blatantly a “Facebook for teachers,” utilizing many of the same services Facebook offered, thus committing “product proximity” (Siegel, p. 233). In the case of Faceporn, Facebook too could have a strong case as Facebook Inc. argues it is essentially an “X-rated social network.” To add fuel to their fire, Faceporn also claimed them to be “the number one socializing porn and sex network,” thus also committing product proximity and potential tarnishment (McMillian). Finally, in the case of Placebook, it would seem the creators of the site had something to hide as they changed their name the first time drill sergeant Facebook said “drop and gimme twenty.”
Perception of Fairness & Benefits
If the outcome of the case is as I predict, I feel it would be a most fair ruling. Parodies have a unique license in our laws because our forefathers knew even back then that we need humor in our lives. Some people have a tendency to take life so seriously and the stress of it all takes its toll on our minds and bodies.
On the one hand where Facebook Inc. decries foul play by Lamebook’s intent and need to survive solely due to Facebook’s existence, Facebook must also concede that Lamebook has and will bring new visitors, if not members, to its ranks, thus causing a positive impact on Facebook’s existence and popularity. The determining factor of the health and prosperity of a web-based social networking business is indeed measured by numbers of viewers and numbers of times those viewers seek out the site. If another venue brings more viewers to their site, even if just to witness the basis for the parody and to ascertain what makes the Facebook site worth turning into a humorous counterpart, then Facebook is impacted more positively than negatively as every visit to their site is a potential gain for their intended purpose of existence. Moreover, imagine the impact of interest Lamebook could create not only in the virtual cyber world, but in the real word.
Word of mouth advertising is the best advertising there is, some say. Imagine friends talking in a college dormitory’s lobby and another student overhears this name “Lamebook,” investigates the location of the site, undoubtedly finds humor, and then scans the original Facebook for ways to contribute to the humor. This scenario is not at all far-fetched as this is how I heard of it. Of course, I was already acquainted with and a member of Facebook, but nonetheless, I searched through Facebook’s profiles and “walls” to discover anything clever enough to submit to Lamebook.
Heeding the old adage that imitation is the highest form of flattery, Facebook may be putting itself in a position of losing new attendees to its site by seeking to suppress the Lamebook venture. In weighing the advantages and disadvantages of a purported “copycat” site, Facebook may lose more than it would gain by spending the time, effort, and financial costs to pursue the demise of Lamebook. By creating their site to have its basic building blocks solely as parody, Lamebook is not putting itself up against Facebook as a competitor seeking to garner an ever growing market share of what Facebook has to offer to the online community.
Lamebook, by contrast, is more likely a virtual advertising agent for Facebook and Facebook can freely enjoy and reap the benefits of this free publicity that will most certainly outweigh any negative impact a site like Lamebook could have on a comparatively gigantic counterpart. Facebook also may in the long run improve its image by not running headlong into fighting every perceived infringement of their online presence and structure that may ultimately create some degree of negative impact on members and potential members who do not have a problem with parodies, and others who do have a problem with corporate giants throwing their weight around and attempting to seek out and destroy smaller sites that are benign in nature and only trying to give participants a laugh and a venue to express their own humor. It is in the nature of many people to be repelled by the bully yet feel a receptiveness towards others that can laugh at themselves. This can cross over to businesses, politics, and entertainment – virtually anything that is in the sight of the public eye. It almost seems that Facebook employs a zero tolerance policy on any aspect of what they believe is infringement due to the amount of litigation it initiates. If they looked at it on a case by case basis and analyzed the obvious potentials of advantages and disadvantages, it would not only save them litigation funds but also not tie up court time in the legal system which ultimately has a negative impact on the population at large.
The intent of our legal system has never been to invite the business community to throw everything they can against a courtroom wall just to see what will stick. I think that a decision in favor of Lamebook will have a positive impact by defining publicly what is allowable under the First Amendment and the Fair Use Doctrine.
Conclusion
Facebook Inc. is a great social networking tool and one of their many contributions is helping long-distant friends stay in touch. It’s a fun site to utilize and a great time killer on a lazy Sunday afternoon. But when will enough be enough? How many mice will this cat chase before it’s completely satisfied? When will the night watchman rest and let the innocent passersby stroll through the fiber optic channels of cyberspace in peace?
Camp (2010) identifies that “possible future targets could include Apple’s FaceTime and Failbook.com.” Camp also claims that “Facebook has also applied to trademark the words ‘like,’ ‘poke,’ and ‘wall.’” It seems soon Facebook Inc. will be able to distribute a dictionary of all the words they own and their secondary meanings.
Robin Wauters, a writer and “blogger” for the website Tech Crunch, wrote a commentary in August about all the latest Facebook happenings with litigation. He wrote:
“All those insolent travel website owners think they can get away with using the word ‘book’ in their names because people can ‘book’ holidays, hotels and whatnot on their websites. Shouldn’t be allowed, ‘making a reservation’ is just as effective a term. Hotelbook, Travelbook, Cruisebook and others – consider yourself warned. Scrapbook? No-brainer. The social aspect of your site is dubbed My Place, which sorta sounds like MySpace, so consider yourself warned twice. TasteBook? One can sign up to your website for free, which is exactly what Facebook does. You’re on the list. RaceBook? Care to make things a little more interesting? Bet you’ll meet each other in court. DoctorsBook? A social network for doctors, like you really came up with that on your own. Facebook has an effective remedy for your company name, no prescription required. Casebook? Better yet, a social network for lawyers. Sure hope your users are among the cream of the crop in their profession. Cookbook(s)? You look like a tasty target. eBook? Taking 3 letters off of Facebook’s name is kinda obvious, you dirty parasites. Runbook? That trademark icon behind your company name ain’t gonna help you, buddies. BlackBook? Your About Us page says ‘community’ somewhere. On the list you go. FacesBook? Actually, you might really be next.”
So who will be next? How many more generic, everyday words will Facebook accumulate? Will Lamebook survive the storm and find shelter in the law? These answers have yet to be revealed. But stay tuned, folks, as the next episode unfolds in days of our lives.
References
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Bell, M. (2010, November 10). Lamebook and Facebook battle over name rights. The Washington Post . Retrieved from http://voices.washingtonpost.com/blog-post/2010/11/lamebook_and_facebook_battle_o.html
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Facebook Press Room: Statistics, http://www.facebook.com/press/info.php?statistics (last visited Dec. 1, 2010).
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Lamebook Official Website: About. http://www.lamebook.com/about (last visited Dec. 3, 2010).
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McMillan, R. (2010, October 22). Facebook sues Faceporn, claiming trademark infringement. The IDG News Service. Retrieved from
http://www.computerworld.com/s/article/9192700/Facebook_sues_Faceporn_claiming_trademark_infringement.
Patel, M., & Saha, S. (2008). Trademark issues in digital era. Journal of Intellectual Property Rights, 13, 118-128. Retrieved from http://nopr.niscair.res.in/bitstream/123456789/425/1/JIPR%2013(2)%20(2008)%20118-128.pdf
Prognano, S. M., & Fishkin, A. P. (2010). Social networking: So much data, so little guidance, so much potential exposure. New York Law Journal. Retrieved from http://www.law.com/jsp/nylj/PubArticleNY.jsp?id=1202474706944&slreturn=1&hbxlogin=1.
Rubin (2010, August 18). Placebook is now TripTrace. TripTrace Official Blog. Retrieved from http://triptrace.files.wordpress.com/2010/08/byebye.jpg.
Van Camp, J. (2010, November 24). Facebook trademarks the word "face" (TM). Digital Trends. Retrieved from http://www.digitaltrends.com/computing/facebook-trademarks-the-word-face-tm/trackback.
Wauters, R. (2010). Hey Facebook, here are some other companies you can bully or sue. Tech Crunch. Retrieved from http://techcrunch.com/2010/08/26/facebook-placebook-teachbook.
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