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By: Mark R. Malek

As you may have already heard, Facebook has been in the process of vigorously enforcing its intellectual property.  Some commentators, such as, for example, ME, have likened their tactics to bullying, thereby providing them with the title of IP Bully.  Check out some of my previous gripes about Facebook here and here.

The way I suspect this goes is that a group of attorneys representing Facebook sit in a room with a list generated by some searchers of every single instance of use of the word “face” and/or “book” on the same web page.  Sure, these have to be filtered, but who cares about the labor costs involved with that?  The real costs of this crusade begin to add up when Facebook’s team of attorneys sit around that table to look at the results.  Let’s say that there is about $2500/hour sitting around that table.  It seems as though it was not too long ago, the words “face” and “book” were commonly used words that were found in any dictionary.  On any given day, I will use those words in communicating with my two year old.  For example, a typical sentence close to bedtime might just be “Let’s go wash your face so that we can read a book and go to sleep.”  I have no idea how to communicate something like that now.  The way that Facebook is going after everyone under the sun for using the words “face” or “book,” I think I may have to consider another option.  For example, maybe I will say, “Let’s go wash the portion of your body extending from your forehead down to your chin so that we can engage in entertainment by me reading words from a bound document that results in a story and go to sleep.”  Whew, I feel like I just wrote a claim for a patent application.

Am I exaggerating the situation?  Of course!  It makes for better reading.

With that in mind, however, there was at least one recipient of the dreaded Facebook cease and desist letters that wasn’t going to stand for the threats – Lamebook.  If you haven’t been to the Lamebook site (http://www.lamebook.com), take a second to check it out.  It is truly quite entertaining.  As you can see, Lamebook takes the funniest stuff that can possibly be found on Facebook and posts it.

After receiving the Facebook cease and desist letter, Lamebook decided to take matters into their own hands – in a matter of speaking.  Upon being threatened with a lawsuit, Lamebook actually filed a suit of their own asking the court to declare that their use of the “Lamebook” mark did not infringe on any of the Facebook trademarks.  You can read the complaint here.  The complaint is actually short, sweet and to the point – very unlike most complaints I have read lately.  As eloquently pointed out in the complaint:

“The Lamebook website is a parody website that highlights the funny, absurd and often ‘lame’ content that gets posted on the Facebook website.  Each weekday, the Lamebook website is updated with new ‘lame’ Facebook content for its users to view and comment on.  Unlike the Facebook website, the Lamebook website does not offer social networking services or functionality to its users and, therefore, does not compete with Facebook.”

Seems like a reasonable enough explanation, right?  Unfortunately, wrong.  The problem pretty much lies in the very same paragraph of the complaint.  “The parody has proven to be effective for Lamebook….the Lamebook website has become a popular destination for people to poke fun at and comment on the kind of pictures, comments, and messages that get posted on the world’s most popular social networking site.”  This sure does sound like a type of social networking to me.  If people can leave comments regarding a particular post, I have to assume that you can read the comments of others.  Of course, with enough popularity, the commentators will start commenting on one another’s posts.  This reeks of social networking.  Therefore, in my humble opinion, the argument that Lamebook does not offer social networking services is out.

It is my suspicion that this argument is directed to an allegation that the use of the mark “Lamebook” infringes on the “Facebook” trademarks.  The Lamebook Attorneys are likely trying to show that since Lamebook provides a different service, they are likely not to be confused with Facebook and, therefore, do not infringe on the “Facebook” marks.  The big issue that needs to be resolved, however, is the similarity of the trademarks.  As you can see, Lamebook did not exactly go out of its way to create a completely different mark.  Again, however, it is not as though someone took a look at the “Lamebook” trademark and got confused as to the source of the services, i.e., it is not as though someone was looking for “Facebook,” came across “Lamebook” and figured it was the same thing.

I'm so famous I can jump up on Oprah's sofa!

Let’s turn our focus to trademark dilution.  Trademark dilution is a cause of action that is generally reserved for “famous” trademarks.  Many people confuse trademark infringement with trademark dilution.  Trademark infringement can broadly be described as an unauthorized use of one’s trademark that causes a likelihood of confusion.  That is not the case with liability under trademark dilution.  No likelihood of confusion needs to be shown.  Instead, trademark dilution requires a showing that unauthorized use of a trademark dilutes the distinctive quality of the trademark.  The biggest issue that I often see with trademark dilution is that it is a cause of action that is brought for trademarks that do not possess a great deal of distinctive quality.  That is why I noted that trademark dilution is generally reserved for “famous” trademarks.

Turning our attention back to the case at hand, I think we can all agree that the Facebook mark is famous.  When someone tells me that they are not on Facebook, I look at them as if I am staring at someone that still uses a rotary telephone.  I find it hard to believe.  An issue here, therefore, is whether use of the “Lamebook” mark dilutes the distinctiveness of the “Facebook” trademark.  This one’s a toss-up for me.

Next, we need to address the parody issue.  A parody is a work of art that pokes fun at something/someone.  Any student of professor Gene Quinn, founder of IPWatchdog remember his final exams in Copyright Law where he would wheel in a television, pop a tape into the VCR (yes, we used VCR’s then) and played the Michael Jackson “Beat It” video, followed by the Weird Al Yankovic “Eat It” video.  The test question is something like “you are Weird Al’s attorney and he has asked you if it is ok to release this video.”  Then we would spend the next three hours feverishly writing our answer into blue books (yes we had to write our answers out using a pen and paper).  The answer that you needed to get to in order to pass Gene’s class was – this is a parody because it is taking a shot at Michael Jackson and, therefore, it is a fair use.

So how does this apply to the Lamebook case?  I believe that if Lamebook is going to rely on the doctrine of “parody” to note that they do not infringe on Facebook’s intellectual property rights, they will have to prove that the content on the Lamebook site is a way of poking fun at Facebook.  This is arguable, but, in my opinion, not a slam dunk.  When I took a look at the Lamebook site, it appears as though they are posting the “lamest” stuff on Facebook.  To me, it seems as though they are making fun of the people that post this stuff, and believe me, it is some pretty ridiculous stuff.  I suppose that Lamebook may argue that without Facebook, this lame stuff would not be posted.  Again, this is arguable at best.

Lamebook also argues that the content on their site is protected by the First Amendment of the Constitution, i.e., protected free speech.  I was under the impression that all Lamebook is doing is re-posting the “lame” things they find on Facebook.  Doesn’t that make the speech to be protected that of the “lame” people that post the stuff on Facebook in the first place?

I will be posting more about this article, but in the meantime, I need to turn my attention to the fact that a trademark was just issued to Facebook for “Face.”  Please stay tuned for my next article in this series of “Facebook Intellectual Property Enforcement Tactics” that will dissect the prosecution history of the “Face” trademark.