Monday, April 9, 2012

Face the facts - you won't get sued for poking someone in the eye

First off, let me say that I am not a lawyer.

Second off, let me say that I suspect that Dara Kerr is not a lawyer either.

Kerr is the author of a post that I've run across a few times in the last few days, entitled Facebook users beware: Don't use the word 'Book'. The subheading says:

The social-networking site is updating its Statement of Rights and Responsibilities -- if approved, account holders must agree not to use the words "Face," "Poke," or "Book."

Well, that's not exactly what the updated Statement will say.

Kerr notes that the new revised Statement is only a slight change from the current Statement. The current Statement, which you can read at, says the following (section 5.6):

You will not use our copyrights or trademarks (including Facebook, the Facebook and F Logos, FB, Face, Poke, Wall and 32665), or any confusingly similar marks, without our written permission.

So are we Facebook users ALREADY prohibited from using the words "face," "poke," and "wall" on Facebook without Facebook's permission?

Not exactly.

We Facebook users are prohibited from using COPYRIGHTS OR TRADEMARKS such as those listed, or "confusingly similar marks."

Let me give you an example. Let's say that you go to a restaurant and have a bowl of soup. You really like that bowl of soup. In fact, you think that bowl of soup is "super." You get so excited that you run to Yelp and write a review about that "super bowl." Do you think that the National Football League's lawyers are going to come knocking at your door? Of course not, because your description of your restaurant visit is not "confusingly similar" to a certain piece of intellectual property that the NFL zealously protects.

Now bring this back to the original subject. I'm sure that countless numbers of people have discussed Pink Floyd's late 1970s double album, and I'm sure that other people have put their left foot in/out, and many people (probably including myself) have described various biometric modalities, including the finger, the iris, the veins, and other ones.

So how many people have been hammered by Facebook for random uses of the words "wall," "poke," and "face" under the PRESENT Statement?

No, I haven't heard of any either.

Now using these words as part of a trademark or copyright? That's another story, and that's what Facebook is trying to counter - Facebook isn't trying to prevent you from using the word "book."

D.C. Toedt, unlike myself (and probably unlike Kerr), actually IS a lawyer. And on the specific question of whether Facebook can legally protect the term "book" as a trademark, Toedt has written the following:

I think if I were challenging this provision, I might argue that the user’s agreement not to use a particular Facebook trademark implicitly rests on a condition precedent, namely that Facebook in fact has trademark rights in the stated terms. So if Facebook turned out not to have trademark rights in term “book,” then the user’s agreement not to use that term would be automat­ic­ally nullified.

Toedt refers to this post from the Pillsbury Law Firm that discusses Facebook's claim:

While there is no record of a current US trademark application on "BOOK", Facebook does have a pending application in the European Union's trademark database. Moreover, Facebook has brought several suits against online sites incorporating the word "BOOK" in their domain name, with mixed results. Several of these suits have settled while others are still pending. Under US law a certain level of trademark protection can be gained merely by use of an unregistered mark.

Note that even if the proposed change to the Statement is never made, and even if Facebook never registers "BOOK" as a registered trademark, Facebook will probably still go after people and companies who use confusingly similar trademarks. After all, Facebook started going after Teachbook in 2010, and despite an initial dismissal because of an improper jurisdiction, even the judge who dismissed the complaint had some choice words for Teachbook:

Teachbook, somewhat implausibly, insists that it did not intend to trade on Facebook’s mark, and that it selected the TEACHBOOK mark in 2009 because of the connection between teachers and books… Facebook has made a prima facie showing that Teachbook committed an intentional act by selecting a confusingly similar trademark, and that the act caused harm that Teachbook knew was likely to be suffered in the Northern District of California.

In the new jurisdiction, the new judge said that the case should go to trial.

Unless, of course, Teachbook changes its name to Teachspace. Or iTeach.

Oh, and by the way, if you think that Teachbook is a brave little company, standing up for reason against the evil lawyers from big huge multinationals, think again:

2. Trademarks

The trademarks, trade names, trade dress, logos, and service marks (collectively, the "Trademarks") displayed on this Site are the registered and/or unregistered Trademarks of Teachbook, or such third party licensors that may own the displayed Trademarks. Nothing contained on this Site or in the TOU serves to grant to you, by implication or otherwise, any license or right to use any Trademarks displayed on this Site without the written permission of Teachbook or such third party licensors that may own the displayed Trademarks.

3. Site Contents and Copyright

The text, Trademarks, logos, images, graphics, photos, video files, application functionality, or any other digital media, Submissions (as defined below), and their arrangement on this Site (“Content”) are all subject to patent, copyright, trademark, third-party licenses and other intellectual property protection. Content may not be copied for commercial use or distribution, nor may Content be modified, processed, or reposted to other websites without our written permission for uses other than those contemplated by this Site. Access to and use of this Site are allowed solely for your personal use of Teachbook services, information, education, entertainment, and communication with Teachbook and within the Teachbook community. You may download, copy, use, modify or print certain portions of the Content of this Site for your non-commercial limited use, but only as that use relates to the school Teachbook community. No right, title, or interest in any of the Content of this Site is transferred to you as a result of any downloading, copying, printing or use of this Site.

Oh, and take a look at this excerpt from section 5 regarding user submissions:

If you make a Submission to this Site in a public mode or designate a private Submission as public, you automatically grant Teachbook a perpetual, worldwide, unlimited, irrevocable, transferable, assignable, royalty-free license for Teachbook to use that Submission for any lawful purpose whatsoever, including, without limitation, the right to sublicense that Submission to third parties for their lawful uses and purposes, including, without limitation, to adapt, perform, display, create derivative works, copy, sell and otherwise use. Subject to existing laws, you waive any moral rights that you or your licensors may have in any Submission. Once offered as a public Submission, the Submission or any of its derivatives cannot be re-designated as private.

Hmmm...maybe Teachbook is more like Facebook than it would care to admit...
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