A DISCUSSION OF LAW AND JOURNALISM

Face it, Facebook. Your Legal Argument is Lame.

By Russell Smith

Someone should tell Facebook that imitation is the sincerest form of flattery, since the Internet giant is involved in yet another trademark infringement and dilution suit. After filing suit against Teachbook (a social networking site for teachers) for infringing on and diluting Facebook’s brand in August, Facebook is now in a battle with Lamebook, a site where users post “lame” Facebook content.

Facebook trademark lawsuits are hardly noteworthy anymore, so this likely would have been a non-story except that Facebook is on the other end of the court this matchup, and is being sued by Lamebook.

Huh?

It turns out that in July, Facebook sent Lamebook a letter demanding that Facebook withdraw its application for a trademark on the name “Lamebook” and change the style (or trade dress) of its logo. Lamebook refused to do either. And rather than waiting to be sued, Lamebook filed a lawsuit of its own in Texas federal court, asking for a declaratory judgment that a Lamebook trademark would not infringe on or dilute the value of Facebook’s trademark.

Lamebook argues that its name and logo are clear parodies of Facebook’s and are thus an original trademark. Facebook claims that Lamebook improperly “trade[s] off of Facebook’s popularity and fame.” While the media has widely reported the lawsuit, they haven’t evaluated the merits of Lamebook’s claim.

A review of trademark law indicates that Facebook will not be able close this chapter of Lamebook.

In 2007, a federal circuit court decided Louis Vuitton v. Haute Diggity Dog, in which Louis Vuitton, the famous luggage, purse and accessories company sued a pet toy manufacturer for trademark infringement and dilution. In particular, Louis Vuitton objected to “Chewy Vuiton,” a dog toy that resembled one of its purses and contained a stylized “CV” instead of Louis Vuitton’s similarly stylized (and trademarked) “LV.” The court determined that Haute Diggity Dog (1) was a parody, (2) did not infringe on Louis Vuitton’s trademark, and (3) did not dilute the value of Louis Vuitton’s trademark.

We will examine each of these arguments in turn and apply it to the Facebook/Lamebook lawsuit.

First, the court determined that “Chewy Vuiton” was indeed a parody, an amusing “form of entertainment conveyed by juxtaposing the irreverent representation of the trademark with the idealized image created by the mark’s owner.” The court pointed out that while the dog toy “irreverently” represented many of the details of the designer purse, it was clearly not a purse (it did not open and it squeaked), but an “idealized image” of a purse in the form of a dog toy. The court also felt the juxtaposition of the two items, a dog toy with expensive purses, was amusing enough to qualify as a parody. (It’s an expensive purse that dogs chew on! Get it? Ha ha ha!).

Lamebook is an even clearer parody than the dog toy in Louis Vuitton. Lamebook “irreverently” replicates the style of the Facebook logo and website, while also presenting an “idealized image” of Facebook’s logo, by changing the name and adding an image of a thumbs down, and website, by publishing the wackiest content from Facebook. Lamebook amusingly critiques Facebook by posting outlandish Facebook messages on its site which contrast the serious investment many users have in the social media experience with the crude, wit of internet commenters. (People on Facebook are so lame!)

Second, the Louis Vuitton court held that the parodied purse did not infringe on Louis Vuitton’s trademark. When determining whether a trademark has been infringed, the central focus is whether a “likelihood of confusion” exists in consumers’ minds between the allegedly infringing item and the original item. A finding that the allegedly infringing item is a parody will not, on its own, rule out the existence of a likelihood of confusion. Accordingly, a court will weigh a number of factors. In holding that the purse did not infringe, the Louis Vuitton court stressed that (1) because the Louis Vuitton trademark is so widely known, it would unlikely be confused by consumers purchasing dog toys; (2) similarities in the design of the “CV” and the “LV” are permissible because the dog toy is a parody; and (3) the dog toys are sold and advertised exclusively in pet stores, while Louis Vuitton products are sold and advertised only in high end boutiques.

Facebook’s trademark is surely as ubiquitous as Louis Vuitton.  It’s supremely unlikely anyone on the internet would not notice the difference between it and Lamebook’s trademark. Facebook even had a movie made about it! Also, while Lamebook replicates the font and color scheme of the Facebook logo, it is clearly a parody, not a ploy to confuse wannabe Facebook users. Additionally, Facebook and Lamebook function entirely differently. While Lamebook is a humor website, Facebook is a massive social network. Internet users wishing to join Facebook would not mistakenly join Lamebook and have the same experience.

While these factors weigh heavily in favor of non-infringement, the final factor stressed by the Louis Vuitton court weighs in favor of infringement. Unlike Louis Vuitton and Haute Diggity Dog, Facebook and Lamebook have an overlapping customer base. Both Facebook and Lamebook are accessible on the Internet. They both advertise to similar audiences and probably place ads on similar sites. (In fact, Lamebook would probably love to advertise on Facebook.) Still, the three factors, considered together, substantially favor there being virtually no likelihood of confusion between the Lamebook trademark and the Facebook trademark.

Third, and finally, the Louis Vuitton court held that the “Chewy Vuiton” toy did not dilute that value of Louis Vuitton’s trademark. 15 U.S.C. Section 1125 provides that any branding that is “likely to impair the distinctiveness or harm the reputation of a famous trademark” is liable for diluting the value of the famous trademark. In an analysis that overlapped with its infringement analysis, the Louis Vuitton court determined that the “Chewy Vuiton” toy did not harm the reputation of the Louis Vuitton trademark.

Lamebook would likely benefit from a similar balancing because (1) the strength of Facebook’s name brand makes it unlikely that a small website like Lamebook could tarnish it, (2)  Lamebook does not provide similar services as Facebook and (3) Lamebook’s obvious parody distinguishes the site enough that Facebook’s reputation would not suffer because of consumer confusion with Lamebook.

Lamebook will likely be granted declaratory judgment that its trademark does not infringe on or dilute Facebook’s trademark. Lamebook is making the smart legal move by being the aggressor and challenging Facebook’s claim to all things “Face” or “-book.” Perhaps they learned a little something from Facebook: “you don’t get to 500 hundred million friends without making a few enemies.”      

Comments

54 Comments »

54 Responses

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