Facebook asserts trademark on word "book" in new user agreement

[jbrodkin]

Facebook is trying to expand its trademark rights over the word "book" by adding the claim to a newly revised version of its "Statement of Rights and Responsibilities," the agreement all users implicitly consent to by using or accessing Facebook. The company has registered trademarks over its name and many variations of it, but not on the word "book". By inserting the trademark claim into the Facebook user agreement, the company hopes to bolster its standing in lawsuits against sites that incorporate the word "book".

[dctoedt]

A. One possible attack would be that this new TOS provision is unconscionable [1], and therefore unenforceable, to the extent it purported to give FB trademark rights beyond those provided by trademark law.

This argument might be supported by a longstanding public policy (at least in the U.S.): Trademark law gives certain rights to trademark "owners," not because they have some natural-right entitlement, but to protect the public's right not to be confused about the origin, sponsorship, or endorsement of the products and services they encounter in the marketplace [2]. A trademark owner can't enforce its trademark rights against another when there's no likelihood of confusion as to origin, sponsorship, or endorsement [3].

On the other hand, even if Facebook didn't prevail on a trademark infringement theory (requiring proof of a likelihood of confusion), it still might succeed in a lawsuit for dilution of a famous mark [4]. A court might view that as legitimizing the new FB TOS.

B. There might also be an antitrust challenge: By requiring users to agree not to use a term to which it (hypothetically) doesn't have trademark rights, Facebook might be guilty of an unlawful tie-out [5].

C. Finally, if FB doesn't require users to click on "I agree" again, and doesn't even notify them that the new TOS are in effect, then courts are unlikely to enforce the new TOS. The U.S. Court of Appeals for the Ninth Circuit already ruled to that effect in one case [6].

It'll be interesting to see what comes of this.

[1] http://en.wikipedia.org/wiki/Unconscionability

[2] http://en.wikipedia.org/wiki/Trademark#Public_policy

[3] http://cyber.law.harvard.edu/metaschool/fisher/domain/tm.htm...

[4] http://en.wikipedia.org/wiki/Trademark_dilution

[5] http://www.dechert.com/library/Analyzing%20IP%20License%20-%... at p. 7

[6] http://www.theiplawblog.com/archives/-cyberspace-law-ninth-c...

[ggchappell]

I think some of us need a bit of a primer on trademarks.

A trademark does not restrict arbitrary use of a term, but only uses that conflict with available product. Off the top of my head, consider Nestle's (former) trademark for "tollhouse". This referred to the cookie. You could not legally sell your own cookies and call them "tollhouse cookies". But you could still sell, say, a booth for collecting highway tolls, and call it a "tollhouse".

So, no Facebook is not claiming complete ownership of the word "book" -- or, if they are, then they're wrong. They are claiming that you can't use it to conflict with their usage of it. So sell some software for recording purchases, and call it "checkbook", and you're fine. But make a social website called "friendbook" without their permission, and you'll get sued. You'll lose, too; and that is not a bad thing.

P.S. The law already restricts usage of trademarks. Adding this to their license, as far as I know, changes nothing.

Disclaimer: IANAL. Input from actual lawyers would be good.

[pg]

That is going a bit far.

[RuggeroAltair]

... and a little ridiculous. "You will not use our copyrights or trademarks (including ... Face, ... Book and Wall)"

Like if using a windows machine meant that I can't have any name that involves window, micro, soft, gate, intel(ligence)...

The world 'wall'? Ever been to the Western Wall? To the old Berlin? Or listened to the Pink Floyd?

[emptyaccount]

While it is ridiculous, your comparisons are also a little ridiculous. Product similarity is a large part of whether something is trademark infringing.

[RuggeroAltair]

Maybe they seem ridiculous to you if you don't get that my comparisons were purposely exaggerated.

The point is that facebook didn't invent face, didn't invent book, and didn't invent wall (not even in the ACTUAL meaning they are used in facebook itself).

If I want to create a website with social tools that for some reason involves wall or book I don't see why I have to risk to be suit based on a user agreement (that usually nobody reads).

Say that I want to open a social network for old book lovers. I can't call you the old book or the ancient book or whatever you can think of just because facebook thinks they own the word book?

Or what if I want to use the metaphor of the berlin wall to open a thematic social network for human right causes and maybe also use the idea that you can place notes on this wall?

Do you think that in that case am I actually infringing the Facebook trademark?

Yet I'm sure they could try to sue me if I'm a Facebook user and agreed to their fluff.

[bishnu]

Balances the goodwill they generated by coming out against employer requests for Facebook accoutn passwords, I guess...

[RuggeroAltair]

Nope.

One thing is defending their website from massive account closing or effectively limiting their usage.

Another thing is that if I create a Facebook account then I can't use anymore the words wall, face and book without risking a lawsuit against Facebook.

[RuggeroAltair]

By the way, do they realize that their ask people to apply through their Facebook accounts?