Category Archives: Trademarks

Facebook Sued for Trademark Infringement of “TIMELINES” Mark

by Christina Frangiosa


Timelines, Inc., has filed suit in the Northern District of Illinois against Facebook, seeking to enjoin the launch of its new product, which it has marketed under the name “Timeline.” Plaintiff Timelines owns three federally registered trademarks on which it bases its suit: “TIMELINES” (Reg. No. 3,684,074); “TIMELINES.COM” (Reg. No. 3,764,134) and a graphic depiction of the word TIMELINES (Reg. No. 3,784,720). Each of these trademarks has been registered in Class 42 for: “Providing a web site that gives users the ability to create customized web pages featuring user-defined information about historical, current and upcoming events; and application service provider, namely, managing web sites of others in the fields of historical, current and upcoming events.” (Emphasis added).

In its Complaint, Plaintiff Timelines alleges that around September 23, 2011, it learned that Facebook was planning to launch a service called Timeline – and make it available as early as October 1 – which is described at https://www.facebook.com/about/timeline. (ECF No. 1, Complaint, ¶ 8; Pacer access required to access this document). (The link to Facebook’s explanation of its new Timeline product was active when I checked it this afternoon, but perhaps it will disappear (or be “inaccessible”) during the pendency of the lawsuit – particularly if a temporary restraining order (TRO) is issued.) Plaintiff Timelines alleges that “this service is identical or nearly identical to what Timeline offers” (id.), that Facebook knew it was causing confusion (id. ¶ 9) and that Facebook has now disabled access to Plaintiff Timelines’ own Facebook page (id. ¶ 10).

For context, Plaintiff Timelines explains that its own website has averaged approximately 97,000 visitors per month in 2011 and that it has “invested several million dollars into its business and has taken swift action to protect its Marks.” (Id. ¶¶ 24, 27).

Plaintiff Timelines alleges trademark infringement (§ 1114) based on likelihood of confusion deriving from a false implication of sponsorship or affiliation, and willful infringement, all resulting in claimed immediate and irreparable harm, leaving Timelines without an adequate remedy at law. (Id. ¶¶ 33-39). It also alleges false designation of origin (§ 1125), which it claims will improperly suggest a relationship between Timelines and Facebook and “destroy the source-identifying function and goodwill that Timelines has cultivated in its TIMELINES marks.” (Id. ¶ 43). Again, Timelines makes a claim of willful infringement on this second count. Timelines also seeks relief under state consumer fraud laws and the uniform deceptive trade practices act. (Id. ¶¶ 48-59).

Plaintiff Timelines seeks temporary, preliminary and permanent injunctive relief to prevent Facebook from using TIMELINE or TIMELINES or anything confusingly similar as well as money damages and “any other relief the Court deems just.” (Id. ¶ 12). It seeks attorneys’ fees, court costs, compensatory damages, exemplary damages, Facebook’s profits, treble damages based on the willful infringement claim, and punitive damages pursuant to the consumer fraud claims. (Id. Prayer for Relief). It also seeks publication of corrective advertising and a written accounting by Facebook within thirty days of the entry of the order detailing the “manner and form” in which Facebook complied with the order.

There may be a typo in the Complaint – in the Prayer for Relief, Timelines requests “That Facebook recover its costs of court” – which makes no sense, so they must have meant to request “That Timelines recover its costs of court.” (Id. at page 11).

Plaintiff Timelines also filed its motion for TRO today, along with a memo of law in support. ECF Nos. 7 & 8, Civil Action No. 11-6867 (N.D. Ill.) (Pacer access required to access these documents). In its motion for TRO, it specifically requests that Facebook be prevented from using these trademarks, from launching the service using these trademarks, and be required to distribute corrective advertising to dispel the “false and misleading impression” caused by Facebook’s promotional materials to date. ECF No. 7. (In other words, it only seeks a TRO to prevent further damage caused by Facebook’s alleged actions – any monetary damage claims will be handled at a later point in this case.)

Counsel for Plaintiff Timelines are Douglas Alan Albritton and James Terrence Hultquist, of Reed Smith LLP, in Chicago. The case has been assigned to the Honorable John W. Darrah and Magistrate Judge the Honorable Nan R. Nolan. No appearance has yet been entered on Facebook’s behalf.

US Trade Representative Seeks Comments on 2011 Notorious Markets List

by Christina Frangiosa


The U.S. Trade Representative today released a request for public comment regarding its Special 301 Out-of-Cycle Review of Notorious Markets. 76 Fed. Reg. 184 (published Sept. 22, 2011). In its summary of the request, the USTR explained:

“In 2010 the Office of the United States Trade Representative (USTR) began publishing the notorious market list as an ‘Out of Cycle Review’ separately from the annual Special 301 report. This review of Notorious Markets (‘Notorious Markets List’) results in the publication of examples of Internet and physical markets that have been the subject of enforcement action or that may merit further investigation for possible intellectual property infringements. The Notorious Markets List does not represent a finding of violation of law, but rather is a summary of information that serves to highlight the problem of marketplaces that deal in infringing goods and which help sustain global piracy and counterfeiting. USTR is hereby requesting written submissions from the public identifying potential Internet and physical notorious markets that exist outside the United States and that may be included in the 2011 Notorious Markets List.
 

See summary (emphasis added).

The first Out-of-Cycle review of Notorious Markets was published in February 2011, following a similar request for public comments, and is available on the USTR site. The 2011 Annual Report (published in April 2011 with country reports and a watch list) is also available.

The deadline to respond with comments is October 26, 2011. Specifically, the USTR is looking for detailed information about potential markets “where counterfeit or pirated products are prevalent to such a degree that the market exemplifies the problem of marketplaces that deal in infringing goods and help sustain global piracy and counterfeiting.” Id. ¶ 2a. If possible, the USTR would like to see location of the market, principal owners/operators (if known), types of products sold, distributed or otherwise made available, volume of traffic of the website (such as the Alexa ranking), and any known enforcement activity against it (including any requests for takedown of infringing content and the site’s response). Id. ¶ 2b.

The USTR will maintain a docket of public comments received about these markets, which will be open for public inspection, except for certain confidential business information, pursuant to 15 C.F.R. § 2006.13. This docket should be available here. (My apologies in advance if this link doesn’t work – there were no comments posted when I tested it, but I think the link will be active soon. As an alternative, visit http://www.regulations.gov/, search for public submission and enter “USTR-2011-0012” in the Keyword or ID field.)

Senate Judiciary Committee Issues Report on PROTECT IP Act

by Christina Frangiosa


As previously reported in this Blog, Senator Leahy introduced on May 12, 2011, the “Preventing Real Online Threats to Economic Creativity and Theft of Intellectual Property Act of 2011” (S. 968) (the “PROTECT IP Act of 2011”). Just last week, Senator Leahy published the Committee’s Report on the Bill (S. Rep. 112-39, released July 22, 2011). In this Report, he explains why a legislative solution is necessary.

He identifies the “footwear, clothing, consumer electronics and pharmaceutical industries” as being frequent victims of such counterfeiting enterprises. S. Rep. at 3. He explains that “the music, motion picture, television, publishing and software industries” face continual threats from copyright infringement in the digital world. Id.

Indeed, the President and CEO of Rosetta Stone testified during the February 16, 2011 Judiciary Committee Hearing on this topic that pirated copies of the newest versions of Rosetta Stone software are made available through sites that at least facially appear legitimate, causing confused customers to purchase (essentially) defective software bearing Rosetta Stone’s name. Prepared Statement of Tom Adams, Feb. 16, 2011 at 2.

Author Scott Turow (speaking on behalf of the Authors’ Guild) testified that he published a new book in May of 2010, and within a week or two of its release, friends informed him that pirated copies of his book were available for sale online. Webcast of Scott Turow’s Tesimony is available through the Committee’s hearing notice. This type of counterfeiting poses not only additional costs on the authors/publishers, but can also cause physical harm to the customer if what is counterfeited is pharmaceutical, but yet is distributed bearing legitimate trademarks and other indicia of legitimacy.

The Committee Report summarized the various harms that result from this type of activity:

  • First, online infringement harms the content and trademark owners themselves in the form of lost sales, lost brand value, increased costs to protect their intellectual property, and decreased incentives to invest in research and development.
  • Second, online infringement harms consumers who receive lower quality products, inauthentic products, or, in a worst case scenario, products that cause physical harm or health risks.
  • Third, online infringement harms Federal and State Governments in the form of lost tax revenues, higher law enforcement costs, and the harm caused by the effects of the Government’s own purchase of counterfeit products.
  • Fourth, online infringement harms U.S. trade by lessening its ability to partner with countries that have weaker intellectual property enforcement regimes.21 Fifth, online infringement reduces the incentives to create and disseminate ideas which, as the United States Supreme Court has recognized, harms the free expression principles of the First Amendment.
  • Finally, as Victoria Espinel, U.S. Intellectual Property Enforcement Coordinator (IPEC), noted in a hearing before the Senate Committee on the Judiciary, online infringement supports international organized crime syndicates, which pose risks to our national security. 

S. Rep. at 5 (footnotes omitted).

While a large portion of the Bill relates to government action that can be taken by the Attorney General, the private right of action included in this Bill provides separate benefits to rightsholders, allowing them to enforce their rights, independent of any action that the government may take against the wrongdoer. This private right of action is more limited than the enforcement tools provided to the AG.

As the Committee Report explains, while the private right of action can extend to websites operating outside of the U.S., “the resulting remedies are more limited [than those reserved for the Justice Department]. A qualifying plaintiff may only seek the court’s permission to serve a court order resulting from an action brought under this provision on a payment processor or online advertising network. Neither a DNS operator nor a search engine can be required to take action as the result of an order issued under this provision.” Id. at 8. As a result, private rightsholders cannot use this process to require that web hosting companies or search engines disable access to the domain name when it is found to be a “rogue Internet site.”

Moreover, when court orders are served on third parties (such as payment processors or search engines), no ongoing duty on the part of the third-party – for instance, to ensure that the infringing domain does not pop up again under a different name at a later time – will be established. Id. at 9. Instead, the third-party’s obligations begin and end with the court order served upon it – even then, the third party is only required to comply to the extent such compliance is “technically feasible and reasonable.” Id. This safe harbor allows third parties to avoid significant expenses that might result from having on-going, extensive obligations to police against the re-appearance of these rogue sites when they resuscitate themselves after a successful enforcement action.

This Bill also limits the remedies that a qualifying plaintiff can seek against a third-party who “knowingly and willfully” fails to comply. Id. Specifically, actions to enforce the order at issue will be limited to requiring compliance with it – “These provisions do not open the door to fishing expeditions in the form of frivolous litigation brought simply to initiate broad discovery.” Id. Monetary damages are also not available in these situations.

Notably, the drafters did not intend the Bill to deter voluntary action by third parties to police their own networks for infringing or counterfeiting activity, nor does it intend to allow the Bill to act as a substitute for such voluntary action. Id. at 10.

Overall, the Bill would provide needed assistance to rightsholders to continue to fight the battle against infringement and counterfeiting. It is not a complete solution, however. Even Senators who support this Bill recognize that it’s only the first step – but an important one nonetheless. See Prepared Statement of Sen. Leahy, May 26, 2011 (“The PROTECT IP Act targets the most egregious actors, and is an important first step to putting a stop to online piracy and the sale of counterfeit goods.”).

Background

In general, this Bill provides a remedy both to the Attorney General and to certain private rights holders (“Qualified Plaintiffs,” as specifically defined) to combat copyright infringement and counterfeiting against websites whose primary purpose is infringement or counterfeiting. The statutory definitions make this a bill of somewhat limited application (not every infringement will qualify, nor will every infringer, involved third-party or level of conduct), but it undoubtedly would provide rightsholders with another tool in the toolbox to enforce their valuable copyright and trademark rights.

In effect, this Bill constitutes an amendment to the COICA bill introduced last session, which did not reach a floor vote in the Senate before the session ended. (More on the COICA bill and related hearings can be found here.)

Senators Hatch, Grassley, Schumer, Feinstein, Whitehouse, Graham, Kohl, Coons and Blumenthal co-sponsored the PROTECT IP Bill, which was referred to the Committee on the Judiciary on May 12. The Committee scheduled an executive business meeting on May 19, which was rescheduled for May 26 to consider the bill and to review proposed amendments. The Committee accepted both amendments and approved the bill unanimously by a voice vote. (The audio recording of the session – very short – can be found here: http://judiciary.senate.gov/webcast/5-26-11_Exec_Bus_Mtg.mp3. It also appears on the meeting announcement changing the date of the session to May 26.)

Following the announcement that the bill had passed the Committee on the Judiciary and was moving to the full Senate floor for consideration, Senator Wyden announced a hold on the motion to proceed to the bill, thus perhaps indefinitely tabling consideration of what seems to have been a substantial bi-partisan effort to combat a very real threat to American commerce.

The Bill has received both praise and criticism, with interest groups and other organizations going on record with their opinions about the Bill and its anticipated impact. (See my prior post for a short summary of some of the opinions that had already been made public before the Judiciary Committee voted on the bill on May 26. Undoubtedly, more groups have made their opinions public in the intervening months, but I have not searched since.)

Senate Judiciary Committee Marks Up S. 968 (PROTECT IP Act)

by Christina Frangiosa


Yesterday, the Senate Judiciary Committee held a business meeting which was scheduled for purposes of discussing certain nominations and markups to at least two bills: 1) S.968, Preventing Real Online Threats to Economic Creativity and Theft of Intellectual Property Act of 2011 (“PROTECT IP Act”) (sponsored by Leahy, Hatch, Grassley, Kohl, Feinstein, Schumer, Graham, Whitehouse, Klobuchar, Franken, Coons, Blumenthal); and 2) S.978, A bill to amend the criminal penalty provision for criminal infringement of a copyright, and for other purposes (Klobuchar, Cornyn, Coons). A discussion of S. 978 was held over until the next meeting.

The meeting was not open to the public and was not simulcast, but an audio file of the meeting is now available on the Committee’s site, along with the agenda. Senators Leahy and Franken have also published their prepared remarks on the Committee’s site.  (UPDATE:  A webcast of the Executive Business Meeting is now available on the site.)

During the meeting, Senators Leahy, Hatch and Grassley offered an amendment in the nature of a substitute, and Senators Leahy and Grassley offered an additional amendment. Both of these were made available on the Senate Judiciary Committee’s main site, although I imagine they will be moved at some point in the near future (once there is more current news to publish on the main site).

Both amendments passed the Senate Judiciary Committee on a 10-0 Voice Vote. Following the announcement that the Bill had passed the Senate Judiciary Committee, however, Senator Wyden announced a hold on the Bill, commenting that while “I understand and agree with the goal of the legislation, to protect intellectual property and combat commerce in counterfeit goods, . . . I am not willing to muzzle speech and stifle innovation and economic growth to achieve this objective.” An interesting article in Wired.com identifies the “hold” process as “rarely used” in the Senate, but effectively blocking the Bill from “landing” on the Senate floor.

Statements of several organizations on both sides of the fence on this issue can be found as follows (below are excerpts of the various statements, please click the links to their full statements to get complete context):

IN FAVOR

  • Microsoft, praising the Bill (5/26/11), issued before the amendments were reported, supports the Bill, but cautions: “Safeguards should be included to ensure that rogue sites are identified clearly and appropriately, and that the responsibilities of companies required to take action to ensure compliance are well defined and their liability appropriately limited. In addition, steps should be taken to ensure that the private right of action is not subject to abuse, and that the new actions and resulting orders do not stifle free speech or the free flow of information.” Brad Smith, General Counsel and Senior Vice President, Legal & Corporate Affairs, Microsoft also issued a statement in support of the Bill.
  • U.S. Chamber of Commerce’s Global Intellectual Property Center, praising the Bill (5/26/11), specifically stating: “Rogue sites and their operators contribute nothing to the U.S. economy. They do not innovate, they do not pay taxes, they do not follow safety standards, and they do not follow the law. Today’s vote serves as a wakeup call to those who illicitly profit at the expense of American businesses and consumers—the U.S. will not tolerate your careless, reckless, malicious behavior.”
  • Copyright Alliance, praising the Bill (5/26/11), specifically stating: “”The websites targeted by this legislation are draining income from American businesses and misleading consumers with their unregulated, unlicensed and unsafe practices. This bill provides much-needed tools for law enforcement to do its job and we urge the full Senate to consider it in the very near future.”
  • National Cable & Telecommunications Association, supporting the Bill (5/26/11), stating “By cracking down on rogue websites that have for too long encouraged the theft of valuable content and intellectual property, the PROTECT IP Act of 2011 sends a strong message that this illicit practice will no longer be tolerated.”
  • A group of entertainment professionals jointly issued a statement in support of the Bill, entitled, “Joint Statement from AFM, AFTRA, DGA, IATSE, IBT and SAG Commending Senate Judiciary Committee Passage of the PROTECT IP Act.” Representing “more than 400,000 entertainment industry workers including craftspeople, actors, technicians, directors, musicians, recording artists and others whose creativity is at the heart of the American entertainment industry,” the statement opines,
    • “[W]e believe the PROTECT IP Act is critical to efforts to aggressively combat the proliferation of foreign ‘rogue websites’ that steal US produced content and profit from it by illegally selling it to the American public. Let us be very clear: online theft is stealing. It results in thousands of lost jobs and millions of dollars in lost wages for our members. We reject the claims that shutting down illegal sites may somehow impact legitimate commercial websites. This bill clearly goes after illegal sites; legitimate and law abiding websites are not the target and we would hope that those who advocate against either of these bills are not condoning illegal activity on the Internet any more than they would condone illegal activity in their bank or grocery store. Today’s passage of the PROTECT IP Act is a significant step toward ending the ‘looting’ of the creative and artistic entertainment works that constitute our members’ hard work, and are an invaluable part of our collective cultural heritage.” (Emphasis added.)
    • The groups signing on to this Joint Statement are the American Federation of Musicians (AFM), American Federation of Television and Radio Artists (AFTRA), Directors Guild of America (DGA), International Alliance of Theatrical Stage Employees, Moving Picture Technicians, Artists and Allied Crafts of the United States, Its Territories and Canada (IATSE), International Brotherhood of Teamsters (IBT) and Screen Actors Guild (SAG).
  • Another group in the entertainment industry (IFTA, NATO and MPAA) jointly supported the Bill, specifically stating, “By helping shut down rogue websites that profit from stolen films, television shows, and other counterfeit goods, this legislation will protect wages and benefits for the millions of middle class workers who bring America’s creativity to life.” (Specific quote was attributed to Michael O’Leary, MPAA).
    • According to the press release, this group includes the Independent Film & Television Alliance® (IFTA), the National Association of Theatre Owners (NATO), and the Motion Picture Association of America, Inc. (MPAA)
  • The American Apparel and Footwear Association, supporting the Bill (5/26/11), states “While the current PROTECT IP Act is a significant improvement over previous attempts at legislation to shut down rogue Web sites that sell counterfeit goods, the U.S. apparel and footwear industry believes this bill can be made stronger. We are pleased that language has been included to allow law enforcement the ability to share information with rightsholders.”

OPPOSED

  • Center for Democracy and Policy (CDT), opposing the Bill (5/26/11), but noting that improvements were made during the markup session on May 26: “CDT has expressed its concern with this approach, and particularly with the portions of the bill that try to use the domain name system (DNS) to control ‘rogue websites,’ in previous blog posts and congressional testimony. The Committee today made a few modest but generally positive changes, such as improving transparency via annual oversight reports and tightening some language designed to prevent the bill from undermining the crucial copyright liability “safe harbor” under section 512 of the DMCA. But CDT’s core concerns remain.” (Internal hyperlinks omitted)
    • CDT published a letter sent by public interests groups on 5/25/11 to the Judiciary Committee, expressing concern with the Bill. The signatories were the American Association of Law Libraries, Association of College and Research Libraries, American Library Association, Association of Research Libraries, Center for Democracy and Technology, Demand Progress, EDUCAUSE, Electronic Frontier Foundation, Human Rights Watch, Rebecca MacKinnon, Bernard Schwartz Senior Fellow, New America Foundation, Public Knowledge, Reporters sans frontières / Reporters Without Borders and Special Libraries Association.
    • CDT published another letter sent by Internet and payment system companies on 5/25/11 to the Judiciary Committee, objecting to the creation of a private right of action included in the Bill. The signatories were American Express Company, Consumer Electronics Association, Discover, Visa, PayPal, NetCoalition, Yahoo!, eBay and Google.
    • CDT also published a letter sent by various trade associations on 5/25/11 to the Judiciary Committee, expressing concerns about the definition of “dedicated to infringing activities,” application to search engines, creation of a private right of action and DNS blocking. Signatories were Computer and Communications Industry Association (CCIA), Consumer Electronics Association (CEA) and NetCoalition.
  • Public Knowledge, opposing the Bill (5/26/11), specifically stating: “We are disappointed that the Senate Judiciary Committee today approved legislation (S. 968) that will threaten the security and global functioning of the Internet, and opens the door to nuisance lawsuits while doing little if anything to curb the issues of international source of illegal downloads the bill seeks to address.”  Public Knowledge also published a paper entitled, “Security and Other Technical Concerns Raised by the DNS Filtering Requirements in the PROTECT IP Bill” (May 2011).
  • Google appears to oppose the Bill (according to an article appearing in The Guardian (UK), but I was unable to find a formal press release to that effect. See “Google boss: anti-piracy laws would be disaster for free speech,” The Guardian, May 18, 2011 (i.e., before the measure passed the Senate Judiciary Committee). Note that they signed on to one of the 5/25/11 letters that CDT posted to its site (referenced above).

New Version of Online Counterfeiting and Infringement Bill Proposed

by Christina Frangiosa


On Thursday, May 12, Senators Leahy (D-VT), Hatch (R-UT), Grassley (R-IA), Schumer (D-NY), Feinstein (D-CA), Whitehouse (D-RI), Graham (R-SC), Kohl (D-WI), Coons (D-DE) and Blumenthal (D-CT) introduced a new version of the COICA bill, this time called the “Preventing Real Online Threats to Economic Creativity and Theft of Intellectual Property Act of 2011” (or, the PROTECT IP Act of 2011). As of this writing, a copy of the bill bearing the number has not yet been posted, although I have been informed that it will be numbered S. 968. (Thomas currently only provides access to bills S. 1 through S. 943.)

According to Senator Leahy’s press release, this bill provides:

  • A narrower definition of an Internet site “dedicated to infringing activities”;
  • Authorization for the Attorney General to serve an issued court order on a search engine, in addition to payment processors, advertising networks and Internet service providers;
  • Authorization for both the Attorney General and rights holders to bring actions against online infringers operating an internet site or domain where the site is “dedicated to infringing activities,” but with remedies limited to eliminating the financial viability of the site, not blocking access;
    • [Note: this is the so-called “private right of action” but appears to try to take into account the concerns expressed about avoiding restrictions on free speech rights]
  • Requirement of plaintiffs to attempt to bring an action against the owner or registrant of the domain name used to access an Internet site “dedicated to infringing activities” before bringing an action against the domain name itself;
    • [Note: this provision in the bill may actually contain a typographical error. As written, this section states that only after a private rights holder attempts to bring a civil action against the owner, then the Attorney General may bring an action against the domain name. I think this was supposed to authorize the private rights holder to take the “in rem” action, since the Attorney General’s ability to bring an “in rem” action is codified in the preceding section.]
  • Protection for domain name registries, registrars, search engines, payment processors, and advertising networks from damages resulting from their voluntary action against an Internet site “dedicated to infringing activities,” where that site also “endangers the public health,” by offering controlled or non-controlled prescription medication. 
    • [Note: This is one so-called “Safe Harbor” that witnesses representing GoDaddy and Visa requested for those private companies involved in the Internet ecosystem who try to prevent some of the bad actors from achieving profits in the U.S. market. It may not go as far as those witnesses requested, however, in that it is limited to counterfeit pharmaceuticals and dangerous goods.]

Senator Leahy also describes the purposes of the bill and republishes his statement on the floor to introduce the bill. He summarizes the ultimate point in this legislation:

“This legislation will provide law enforcement and rights holders with an increased ability to protect American intellectual property.  This will benefit American consumers, American businesses, and American jobs.  We should not expect that enactment of the legislation will completely solve the problem of online infringement, but it will make it more difficult for foreign entities to profit off American hard work and ingenuity.   This bill targets the most egregious actors, and is an important first step to putting a stop to online piracy and sale of counterfeit goods.”
 

Senator Grassley has posted a similar press release (although it does not include the same “summary of the bill” section that Senator Leahy’s does).

It remains to be seen how the bill will be received, and whether stakeholders believe that this version adequately addresses some of the criticisms of the prior bill that were raised during a Senate Hearing in February, and two House Hearings in March and April. (More on those hearings can be found in prior posts about the COICA bill.)

As of this writing, the House has not introduced a companion bill, but given its recent hearings on the topic, such a companion bill is expected in the near future.