Facebook has settled year and a half-long litigation with Timelines.com, according to a recent filing with the SEC.
The case involved Chicago-based Timelines.com, which lets users to create interactive “timelines” based on historical events. Back in October of 2011, they sued Facebook for trademark infringement just weeks after Facebook CEO Mark Zuckerberg unveiled the new Timeline profile page at the company’s f8 conference. Soon after, Facebook countersued, saying that the word “timeline” was generic and did not deserve trademark protection. The trial was supposed to have begun on April 22nd, but was delayed at the last minute.
Here’s the pertinent bit from the filing:
We are also party to various legal proceedings and claims which arise in the ordinary course of business. Among these legal matters, in two cases, Summit 6 LLC v. Research in Motion Corporation et al. , and Timelines, Inc. v. Facebook, Inc., we have reached agreements to settle the matters. The cost of settlement in each case, which is included in the accompanying condensed consolidated financial statements for the three months ended March 31, 2013, was not material to our business, financial condition, or results of operations.
Facebook adds that they expect no adverse effect from the settlements:
Although the results of these other lawsuits, claims, government investigations, and proceedings in which we are involved cannot be predicted with certainty, we do not believe that the final outcome of these other matters will have a material adverse effect on our business, financial condition, or results of operations.
That’s all we have right now. I’ve reached out to Facebook for additional info and will update this article accordingly.
With no explanation, a U.S. District Judge has delayed the trial that has Facebook on the defensive over its “Timeline” product.
The case involves Chicago-based Timelines.com, a site that allows users to create interactive “timelines” based on historical events. Back in October of 2011, they sued Facebook for trademark infringement just weeks after Facebook CEO Mark Zuckerberg unveiled the new Timeline profile page at the company’s f8 conference.
According to the report, U.S. District Judge John W. Darrah conferred with lawyers for approximately 90 minutes before declaring a recess, after which he said that the tril would be postponed until either tomorrow afternoon, or if need be, May 7th.
After Timelines.com sued Facebook for the supposed trademark infringement, Facebook countersued, claiming that the word “timeline” was too generic for federal trademark protections. They argue that Timelines.com has no legal rights to them, and that they should be canceled.
Facebook moved for dismissal, but Judge Darrah rejected that motion earlier this month. He said that Facebook “failed to demonstrate, as a matter of law, that the marks are generic.” He noted that the word “timeline” may very well have specific meaning to Timelines.com users, and therefore the case should see a trial.
This morning, Facebook begins its defense of its Timeline product against a website who claims that its continued use amounts to trademark infringement.
The website, Timelines.com, lets users create and edit “timelines” of historical events. They sued Facebook back in October of 2011, just weeks after Facebook announced their new Timeline product at the company’s f8 conference. As of now, all Facebook users have the new Timeline, which is an update of the traditional Facebook profile page.
Timelines.com claimed that Facebook was infringing upon their trademarks by operating the new profile under the name “Timeline.” Facebook quickly countersued, claiming that the term “timeline” is generic – too generic in fact to deserve any sort of federal trademark protections. They have argued that the trademarks should be canceled.
“Given the generic or at least merely descriptive nature of the term ‘timeline’ when used to identify chronologies of events and related information (or tools for their creation), as well as the prior and widespread use of the term by third parties, Counterdefendant does not own exclusive rights in the term ‘timelines’ as used in connection with timeline creation and collection services,” says Facebook.
Earlier this year, Facebook asked U.S. District Judge John W. Darrah to dismiss the original suit. And a few weeks ago, Darrah ruled that the claim must go to trial. He said that Facebook had ““failed to demonstrate, as a matter of law, that the marks are generic.”
He also concluded that with “millions of dollars invested in its business and more than a thousand active users,” it’s reasonable to believe that the word “timeline” has its own specific meaning to Timelines.com users.
Timelines.com has just shy of 100,000 visitors a month, while Facebook boats over 1 billion monthly active users. The trial began this morning in the Northern District Court of Illinois.
A U.S. District Court Judge has ruled that a lawsuit between Facebook and Timelines.com will in fact go to trial, after denying Facebook’s notion that the trademark-infringement lawsuit should be killed due to overly-generic trademarks.
Back in October of 2011, fresh off of unveiling the new Timeline profiles at the f8 conference, Facebook was sued by Timelines.com – a site that lets users create chronological historical records. The site, which launched in 2009, claimed that Facebook was infringing on their trademark with their new “Timeline” feature.
A few months later, Facebook countersued. They claimed that the term “timeline” is generic, citing the fact that a Google search of the term yields nearly 200 million results.
“Given the generic or at least merely descriptive nature of the term ‘timeline’ when used to identify chronologies of events and related information (or tools for their creation), as well as the prior and widespread use of the term by third parties, Counterdefendant does not own exclusive rights in the term ‘timelines’ as used in connection with timeline creation and collection services,” said Facebook.
Now, a Judge has ruled that the trial must go on, saying that Facebook has “failed to demonstrate, as a matter of law, that the marks are generic.”
He claims that Timelines.com has “millions of dollars invested in its business and more than a thousand active users,” and that it’s reasonable to believe that “timelines” has its own specific meaning to Timelines.com users.
“We believe the claims made by the Timelines plaintiffs are without merit, and we intend to continue to defend ourselves vigorously. Although the outcome of litigation is inherently uncertain, we do not believe the possibility of loss…is probable.”
Facebook will go to trial to defend their “Timeline” in April.
Facebook’s Annual Report filing with the SEC revealed that the case, Timelines, Inc. v. Facebook, Inc., will go to trial on April 22nd of this year. In 2011, Timelines Inc., owners of Timelines.com, sued Facebook over the “Timeline” name. At that point, Facebook was just coming off of the f8 conference and beginning to roll out the new profile to more and more users.
A couple of months after Timelines, Inc filed suit, Facebook countersued. Facebook’s argument all along is that the term “timeline” is generic. In their filing, Facebook listed dozens of instances of “timeline” being used in a generic capacity in the past, and made the point that a Google search of “timeline” yields over 196 million results.
Timelines.com allows users to record and share historical events.
“Given the generic or at least merely descriptive nature of the term ‘timeline’ when used to identify chronologies of events and related information (or tools for their creation), as well as the prior and widespread use of the term by third parties, Counterdefendant does not own exclusive rights in the term ‘timelines’ as used in connection with timeline creation and collection services,” claims Facebook.
In their Annual Report, Facebook tells investors that they don’t see defeat as very probable in this case:
In the Timelines case, the plaintiffs allege that Facebook infringes a trademark held by the plaintiffs…We believe the claims made by the Timelines plaintiffs are without merit, and we intend to continue to defend ourselves vigorously. Although the outcome of litigation is inherently uncertain, we do not believe the possibility of loss…is probable. We are unable to estimate a range of loss, if any, that could result were there to be an adverse final decision, and we have not accrued a liability for either matter.
“If an unfavorable outcome were to occur in the…Timelines case, it is possible that the impact could be material to our results of operations in the period(s) in which any such outcome becomes probable and estimable,” says the company.
On Tuesday, Facebook began to roll out their Timeline feature to users. You remember the Timeline, right? The pretty new Profile interface that is supposed to “tell your life story” through Facebook? After announcing the reportedly groundbreaking new feature at the f8 conference, it has only been available to developers until now. The lucky folks of New Zealand are the first to experience Facebook’s next big thing.
As they make this move, Facebook is also making another move in the realm of legal affairs. Facebook is countersuing Timelines.com over the use of the “Timelines” trademark.
Back in September, Timelines.com sued Facebook over the used of the “Timeline” phrase. Having trademarks for “Timeline,” the historical scrapbooking site claimed that Facebook’s use of the word would effectively drown their service in customer confusion, leading to their inevitable demise. Facebook was then limited to releasing the Timeline feature to developers. That order has since expired.
Any thoughts that this thing would result in a relatively quick settlement have been nixed with this countersuit. In the legal documents, Facebook continues their assertion that Facebook’s “Timeline” feature is not infringing on trademarks because the term is too generic. The countersuit also holds that Timelines.com should be stripped of their trademarks because they are “weak” trademarks.
Facebook argues that “timeline” is a generic term that is used in a descriptive capacity. They proceed to list upwards of ten instances where “timeline” has been used generically in the past. Facebook says that a Google search of “timeline” reveals over 196 million results. They mention the use of “timeline” by various other sites – most importantly Twitter, whose tweet stream has been called the Twitter Timeline for years.
Given the generic or at least merely descriptive nature of the term “timeline” when used to identify chronologies of events and related information (or tools for their creation), as well as the prior and widespread use of the term by third parties, Counterdefendant does not own exclusive rights in the term “timelines” as used in connection with timeline creation and collection services.
Facebook asks that Timelines.com be stripped of their trademarks, claiming that they are weak trademarks and that Timelines.com has no right to the generic phrase:
The TIMELINES Registrations have each been registered for less than five years and thus may be cancelled if the Court finds that the term “timelines” is either generic or merely descriptive of the services identified in the registrations.
Pursuant to 15 U.S.C. § 1064, the Court should order the cancellation of the TIMELINES Registrations. Further, the Court should order Counterdefendant to expressly abandon its pending TIMELINES Application and enjoin Counterdefendant from seeking the registration of any mark incorporating the term “timelines” as used in connection with Counterdefendant’s timeline creation and collection services in the future.
Facebook has a point about “timeline” being a fairly generic, descriptive term. Sites have used this word for years. But it’s kind of funny to hear this kind of argument from a company that has filed lawsuits over the words “face” and “book.”
Meanwhile, Facebook says they will continue to roll out Timeline to more areas in the near future. On Timelines.com, the company says that they are “hoping that Facebook will realize that it made a mistake and that it needs to make things right.” It appears that this legal battle is not going to end that easily.
Facebook announced its new Timeline feature at its f8 developer event last month. The Facebook timeline replaces the current Facebook profile, and is designed to let Facebook users share their whole lives on Facebook, or at least as much as they like. You can go back and add in events from any year of your life.
Facebook has not rolled out the Timeline feature to the masses yet, and it looks like the roll-out could be in jeopardy, or at least postponed due to legal issues.
You might assume that any legal issues with Timeline might be related to privacy, as there are plenty of concerns about the Timeline’s ramifications in that department, but it’s actually a trademark matter.
Timelines.com has filed a suit against Facebook over the name. Here’s the complaint (via Robin Wauters):
Facebook considers the word “timeline” generic, and is trying to make the case that it should not be protected by trademark. That’s pretty interesting coming from a company who has sued others for using the word “book”.
According to a report from PaidContent, a federal judge refused to grant a temporary restraining order to Timelines.com that would prevent Facebook from launching it, but also that Facebook agreed to keep from launching Timeline before another court appearance on Tuesday.
Over a million Facebook users have already reportedly started using Timeline by signing up as developers. Many more are simply waiting for Facebook to launch the feature, and have been expecting it to go live any time.
My guess is that some settlement will come of this, and users will still get their Timeline feature.
I wonder if we’ll see Twitter get into this battle. They’ve been using the word “timeline” quite a while, Facebook has certainly borrowed some ideas from the company over the years.
