Facebook & Timelines.com Prepare For Trial with Joint Status Report
Timelines.com initially brought suit against Facebook in September 2011, alleging that Facebook’s new “Timeline” feature infringed on Timelines’ federally registered trademarks. Timelines.com is a small Chicago-based company, whose website “allows users to record and share events and contribute descriptions, photos, videos, geographic locations and links related to events.” Facebook filed counterclaims against Timelines.com, asking the court to cancel Timelines.com registered marks because TIMELINES is generic or, at best, merely descriptive.
On January 20th, the companies filed a joint initial status report, which provided the plans for discovery pursuant to Fed.R.Civ.Proc.26(f). The parties agreed to have a phased discovery, with fact discovery preceding expert discovery. The dates for the stages of discovery are as follows:
Fact discovery completed by August 31, 2012
Plaintiff’s expert reports due by September 28, 2012
Defendant’s expert reports due by October 26, 2012
Rebuttal expert reports due by November 23, 2012
Expert discovery completed by December 28, 2012.
Dispositive motions to be filed by January 31, 2013
Final pretrial order to be filed by [open for Court].
Based on this schedule, it appears that both companies are preparing for a lengthy court battle. However, the document does leave open the possibility of settlement, and states that “[t]he parties have discussed settlement of this matter and submit that an early settlement conference with a magistrate judge may facilitate settlement of this matter.”
I feel conflicted about whom to side with in this case. On the one hand, TIMELINES does appear to be merely descriptive of the services offered by Timelines.com. Having never used or seen Timelines.com, my immediate reaction upon hearing the name is that it is a website that allows users to make timelines, displays timelines, or is related to timelines in some capacity. An argument could also be made that, in this particular context, the term is being used in its generic sense because we don’t really have any other useful words to describe a chronological series of events. I would guess that the best case scenario for Timelines.com will hinge on their ability to establish secondary meaning of TIMELINES. The Facebook legal team will have its work cut out for it.
On the other hand, despite its poor choice of name, I sympathize with Timeline.com’s plight. They have developed a new service, spent time and money, and have been operating for five years. The company has a federally registered trademark, and according to their complaint, Facebook continued with the launch of its timeline feature without attempting to contact the mark owner, Timelines.com. I seriously doubt that the Facebook legal team failed to investigate whether TIMELINE was a registered mark prior to rolling out the new service. Further, the counterclaim against Timelines.com seems a little hypocritical coming from a company that seems to sue any website using BOOK in its name and has applied for trademarks of FACE, WALL, and LIKE. Politics and policy aside, I think either this case will settle or Facebook will prevail.
A copy of the Joint Status Report, as well as other information, can be obtained from paidContent.org