A friend of mine recently told me, “If you’re going to practice intellectual property, sooner or later you’re going come across something that touches on the porn industry.”
Which brings me to a case settled this week between Facebook and the “Face Book of Sex” (Facebook Inc. v. Various Inc., case number 4:11-cv-01805, N.D. CA).
Facebook’s trademark claim seems to have been pretty straightforward: that the defendant infringed the social media giant’s trademarks by running the adult-themed FaceBookOfSex.com, asserting that FaceBookOfSex.com mimicked the social network’s site with such features as “like” (albeit, in a slightly different context).
As many of you know, the Lanham Act imposes liability upon any person or entity who uses a mark in interstate commerce in connection with the sale or advertising of goods or services that is likely to cause confusion or mislead consumers as to source or origin of the goods or services. See 15 U.S.C. § 1114(1)(a). Likelihood of confusion is typically measured by a series of criteria originally set forth in AMF, Inc v Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979).
While Facebook’s claims were somewhat obvious, impressively and unexpectedly, “Face Book of Sex” brought its own counterclaim to cancel Facebook’s marks, arguing that “face book” is a term that has been used for years by schools and organizations, ant Facebook should not be allowed to monopolize it.
That’s the argument people made with respect to “Windows,” way back when, and “Apple,” too.
Not necessarily a winning argument, but you have to appreciate the in-your-face chutzpah!
Jonathan Pink is an intellectual property attorney resident in Bryan Cave LLP’s Los Angeles and Orange County offices. He can be reached at firstname.lastname@example.org