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By: Mark R. Malek
According to an article on Domains.com, Facebook has filed suit against FacebookOfSex.com for trademark infringement. According to another article on XBiz.com, this is related to the FriendFinder issue that I reported on last week. I was really wondering about the details of what was going on with the “FriendFinder” trademark.
It seems as though the folks who run FriendFinder.com and AdultFriendFinder.com also run FacebookOfSex.com. This is apparently one of their chat sites. So it does not seem as though the fight is over “FriendFinder” as I had originally reported. In the complaint, Facebook alleges that the launch of FacebookofSex.com was a “calculated scheme to capitalize on the fame of Facebook’s marks.”
For once, I am going to agree with Facebook and take their side on this issue. When it comes to this lawsuit, I cannot call them trademark bullies. As you know, I have been critical of Facebook’s tactics in the past. See my articles here, here, here, and here. This is not the first time that Facebook has encountered the need to stop the porn industry from using their mark. You may recall in one of my previous articles that Facebook had to sue Faceporn for trademark infringement and, as of now, the Faceporn page is down.
I tweeted this story earlier this week (feel free to follow me @PTOLawyer) and one of the immediate responses I got back was from my good friend Patrick Anderson (Patrick runs an intellectual property blog – check it out http://gametimeip.com/. He also tweets @pandersonllc). Patrick’s response was very accurate – “I’ve never seen the ‘face book of sex’ used in commerce, but that’s one where FB just can’t sit on its hands…” I have to say that I agree with Patrick’s response. If Facebook value’s their trademark portfolio, which they clearly do, then they have to stop this kind of activity.
I truly cannot think of a legal argument that would give FacebookOfSex.com a leg to stand on. They are using Facebook’s trademark in its entirety in substantially the same classification, i.e., social media. Sure these are two very different types of social media, but they are related nonetheless. The likelihood is small that someone looking for Facebook would be confused if they landed on FacebookOfSex.com and saw some rather graphic pictures. This trademark argument likely goes more towards dilution, i.e., diluting the value of a very famous trademark. Facebook is, arguably, one of the more valuable trademarks out there and I believe that the dilution argument will be available for this case.
I will certainly follow this case, but I highly doubt that it gets too far. I suspect there will be a rather quick settlement reached once FacebookOfSex.com comes to the realization that they are on the wrong side of the law with this one.
Comments
Posted On
May 11, 2011Posted By
Jack HuntHi Mark,
very interesting case indeed. But I don’t think facebook can just sue every company with the word face or book in it. I mean they couldn’t just sue f*ckbook or what do you think?
regards,
Jack
Posted On
May 11, 2011Posted By
markmalekJack – you had better believe that Facebook would sue F*ckbook (if it existed) to protect their mark. Facebook has a history of suing anyone using “face” or “book.” For example, they sued “TeachBook” which was a social networking site for teachers and “FacePorn.” They are very protective of their trademarks, but we will have to see how far they get with these tactics.
Posted On
May 12, 2011Posted By
Eric V.Hi Mark,
I was actually an affiliate of the Facebookofsex website and had a domain with the “Face Book of Sex” name in it. I didn’t think I was doing anything wrong since this huge service provider was doing it so blatantly and was encouraging people to promote it. That being said, do you have any advice for me in the event that Facebook comes after me as part of this suit? I know the lawsuit listed “1-100 ‘Does’” of people who were affiliates of the site but it doesn’t say necessarily if it plans to sue them as well or what exactly. Just curious what you think about this as well as the likely hood of the case getting that far or if affiliates could be held responsible.