Facebook vs. Faceporn: Trademark Infringement or Copyright Infringement

Hello!

Recently, Facebook filed a lawsuit against the pornographic social networking site, Faceporn, alleging trademark infringement of its trademark, Facebook. Specifically, Facebook alleges the use of the mark, Faceporn, is "confusingly similar" to the mark Facebook and the use of the mark, Faceporn, is causing dilution of the Facebook brand.

Dilution

Dilution is a trademark infringement legal claim that can be asserted by famous brands. I have previously discussed Dilution here. Dilution occurs when a lesser known brand uses the mark of a famous trademark owner, and the use of the more famous mark by the lesser known brand, dilutes the distinctiveness of the famous trademark. Dilution can be asserted by famous trademarks even if the products or services are totally unrelated.

Although, Facebook is claiming the use of the Faceporn mark is diluting its brand via tarnishing its reputation, with the revision of the Dilution statute, the only thing Facebook has to prove is the use of the Faceporn mark will cause a likelihood of confusion between the two trademark among the relevant consuming public.

Likelihood of Confusion

The courts determine whether likelihood of confusion exists by balancing 8 factors. Those factors are: if the marks are similar in sight, sound, and meaning; the similarity of the goods and services sold; the similarity of the distribution channels and customers for the goods or services at issue; the sophistication of purchasers and the expense of the product or service at issue; the similarity of means and methods of advertising and promoting the goods or services at issue; whether there is evidence of actual confusion of consumers or other relevant groups; the strength of the mark; and was the potentially infringing trademark adopted with good faith or with intent to imitate the established trademark?

I think Facebook would have a hard time proving the trademarks were similar in sight, sound, and meaning. Facebook and Faceporn clearly do not have the same meaning. Furthermore, they really do not sound the same...book and porn. The only thing Facebook could possible claim is similar is the word "face" in both trademarks. But I do not believe that is similar enough. Next, Faceporn could certainly refute that Facebook and Faceporn have the same customers and/or distribution channels. Individuals looking for porn are not going to go to Facebook to find it. At least I don't think so. In addition, Facebook users seems to be very sophisticated consumers and would have enough intellect not to go to Facebook looking for or expecting to see the contents of Faceporn. Also, I am sure Facebook and Faceporn are not promoting their services through the same advertising and/or marketing channels. Lastly, I do not believe Facebook can prove actual confusion between both sites among their and Faceporn's consumers. Like I said earlier, people looking for porn are not going to visit Facebook attempting to find it and vice-versa.

However, I do believe the strength of Facebook's lawsuit against Faceporn lies in the last two factors. Clearly, Facebook, has a strong trademark. It is a unique term created by Facebook and was created to brand the number one social networking site. Also, Facebook could easily prove Faceporn created the trademark and site with the intent to copy the famous Facebook trademark. Specifically, Faceporn's site did have the same look and feel as Facebook. The logo was in the same type and font, the color scheme was the same and the layout was identical to Facebook's. I believe Facebook would have a stronger copyright infringement claim than a trademark claim. Clearly, Faceporn copied the layout and style of Facebook's site.

You can view a screen shot of the Faceporn site here. It has since been changed. But what do you think?

Counterfeiting: Why Consumers Should Never Buy Fake Goods

Hello Everyone!

Welcome Back! Today I am not going to discuss the law as much but I want to bring to your attention the crime and economics behind Counterfeit goods. I read a very informed and interesting article in the January 09 issue of Harper's Bazaar Magazine about the Counterfeiting Industry. Harper's Bazaar spearheaded the "Fakes Are Never In Fashion" campaign in 2005 to inform the public about the atrocities of the Counterfeit Trade. Every January, the magazine publishes an article about counterfeiting. Here are some very amazing numbers provided by Harper's Bazaar:

$600 Billion
Estimated annual sales in counterfeit products worldwide

$512 Billion
Global sales lost to counterfeit goods

$250 Billion
Annual loss to American companies from intellectual property theft

$20 Billion
Estimated loss to American companies from counterfeit products

$1 Billion
Estimated annual loss in New York City tax revenues due to counterfeiting

750,000
Number of jobs lost due to intellectual property theft in the United States

10%
Estimated percentage of fakes among all goods produced worldwide every year

As you can see these are pretty staggering numbers. However, I was more appalled by the use of child labor in Thailand and China to produce counterfeit goods. As reported in the January 09 Issue of Harper's Bazaar Magazine, children as young as 6 years old work around the clock in sweat shops producing fake goods. The children are often dirty and underfed. In one raided Thailand sweat shop, the owner had broken the lower legs of elementary age children and tied them to their thighs so the children legs would not heal. When asked why he committed such a horrific act, he said "because the children wanted to go outside and play." I nearly cried.

Besides the obvious legal reason why we should not buy Counterfeit goods,(federal crime, trademark infringement, and brand dilution) we all should detest the mistreatment and cruelty to children in producing these "fake" goods. In today's culture we all want to own luxury for less. Instead of saving or waiting until we can afford these goods, we will purchase a $50 "fake" Louis Vuitton handbag on the street. Purchasing counterfeit goods is stealing from those companies who have investing considerable effort and time in building a recognized and respected brand. It is also supporting human trafficking, child abuse, and child labor.

Please visit Fakes Are Never In Fashion.com to learn more about what we can do as consumers to stop Counterfeiting.

Note: Counterfeiting Facts in this post are credited to Harper Bazaar Magazine: January 09 Issue

How Does Dilution Affect You as a Trademark Owner?

Hello:

Below is my continuation of Monday's post regarding Dilution.  

So how does Dilution affect you as a trademark owner or potential trademark owner? Well the law has recently changed. Now the law heavily favors owners of nationally knowned or recognized trademarks. Previously, an owner of a famous trademark had to show that a company that adopted their trademark but sold a totally unrelated product or service was ACTUALLY diluting their brand. Actual dilution could be shown by economic injury (loss profit or sales) via blurring (consumers began to confuse the two products) or tarnishment (the use of the famous mark by the subsequent company tarnishes the reputation of the famous mark). But actual dilution was hard to prove. Currently, the only thing an owner of a famous trademark has to prove is that there is a likliehood of confusion rather than actual economic injury. Trademark Dilution Revision Act (TDRA) This is much easier for a company to prove. One way a company can prove a likliehood of confusion is by simply doing customer surveys.

Second, a mark has to be recognized nationally by the general consuming public. TDRA. Previously, a highly distinctive or niche mark was considered famous even if it was only used in a specific geographic region. Now if your mark is famous or well knowned in the Southeast but not nationally, then you can not claim dilution by a subsequent mark.

Third, protection from Dilution is still afforded to trademarks that are satires, parodies, or criticisms of a famous mark. TDRA. This is called the fair use doctrine. So the website Perez Hilton, which is a satire or parody of the name, Paris Hilton, is protected from any dilution claim from Paris Hilton.

I want to close out this article with three key points:

1. If your mark is nationally known or recognized, be vigiliant in protecting your brand and trademark. The current law is on your side.

2. If you are a potential trademark owner, make sure you do not choose a trademark that is too similar to a nationally recognized trademark. Although you may not offer the same product or service, a company that owns a more famous mark can easily prevent you from using the mark.

3. Parodies or satires are protected. So if you have a website or an idea for a mark that parodies a famous mark, feel free to embark on that journey. Fair use is king!

Trademark Dilution: What Does It Mean?

Hello!

Note: When I initially wrote this article, it was very long. So to keep my readers engaged, I decided to split this article into two posts.  I hope you find this information helpful.

Today I am going to discuss Trademark Dilution.  I will explain what it means and in my next post I will discuss how Dilution may or may not afffect you as a trademark owner.

Dilution is when another company or individual uses your famous trademark or brand name on a totally unrelated product or service and their use of your trademark "dilutes" the distinctiveness of your product or service.  Dilution can occur even if the unrelated product or services is not competitive or may not cause a likliehood of confusion, i.e., consumers would confuse the two companies' product or services.  I will explain this concept in the example below:

Your company name is XYZ, Inc. You own a trademark for distributing tech gadgets.  You have built a brand name and reputation as a leader in distributing tech gadgets.  However, another company comes along and names their company XYZ, Inc. but they don't sell tech gadgets, they sell street clothing. Although, the products sold are totally unrelated, the consuming public can assume that company XYZ, Inc., which sells tech gadgets, has ventured into the business of selling street clothing.  XYZ, Inc., the tech company, does not want to be known for selling street clothing.  They want to be known as the leader in selling tech gadgets. And of course, XYZ, Inc., the street clothing company, wants to use the XYZ name because they can gain recognition off of the brand name and reputation of XYZ, Inc., the tech company.  Thus this is how dilution of a brand occurs and why well knowned or famous trademarks want to avoid it.

So how does Dilution affect you as a trademark owner? Stay tuned for my next post to find out.