Tuesday, April 19, 2011

Facebook Slaps Facebook Of Sex With Suit

SAN FRANCISCOFacebook filed a lawsuit April 13 against Various, GMCI Internet Operations, Traffic Cat, Friendfinder Networks and 1-100 Does, alleging trademark infringement and dilution in the promotion of "an online 'adult' networking service and affiliate program under the brand FACE BOOK OF SEX."

The complaint further claims that the "Defendants’ mark, websites and affiliate program are a deliberate and blatant attempt to imitate and trade upon the success of the Facebook brand. Association with Defendants’ pornographic websites tarnishes Facebook’s reputation and abuses the trust of Facebook users. Accordingly, Facebook brings this suit to put a stop to Defendants’ unlawful scheme."

The Facebook complaint is 23 pages in length, but with all the exhibits added the size of the file submitted Wednesday runs 200 pages, much of it documentation proving multiple U.S. registrations for the Facebook mark, but also numerous screen grabs of Face Book of Sex web pages, with performer's faces pixilated, and also two blocks of emails between Facebook domain name manager Susan Kawaguchi and Various general counsel David Bloom that begin in October 2010 and end April 12, 2011, the day before the filing of the lawsuit.

The letters show a year long inability by the respective parties to coordinate upper level meetings to discuss concerns about trademark, but were really added by Facebook to illustrate that, as the complaint states, "Defendants have tried to use the purported 'FriendFinder' mark as leverage in negotiations, asserting that Facebook must address Defendants’ concerns before they will address Facebook’s trademark claims."

Indeed, from the beginning of the submitted email correspondence on trademark, apparently broached by Kawaguchi on Oct. 29, 2010, when she followed up on an earlier call addressing Facebook's concerns about FacebookOfSex.com and other domains, Bloom replied in an Nov. 8 email saying his side also wanted to discuss Facebook's use of the Friendfinder mark, and also the fact that Facebook had issues with Various domains, PenthouseBook.com, PenthouseBook.net and MyFaceOnPenthouse.com. As early as that first exchange, though, Bloom was unambiguous about Friendfinder's position regarding its right to use Face Book of Sex.

"As to the purpose of your phone call and email," he wrote, "we respectfully disagree that the uses you described infringe upon Facebook's trademark."

That position apparently remained unchanged through to April 12, the day of the final email submitted as evidence, in which Bloom refers to a planned conference call involving FriendFinder COO Anthony Previte and a Facebook executive.

"At this point we seem to have trouble scheduling a meeting," he wrote. "Rather than have Tony on this call, I request the following: please create a short agenda of all the issues that Richard wants to discuss. To that agenda we also want to discuss Facebook's historic and continuing use of 'Friend Finder'. Once you send me your proposed agenda, I will find the correct person to handle the call, and we can schedule a time."

The lawsuit was filed the following day. In it, Facebook attempts to also address its use of "friend finder," which it uses as "a tool on its website that allows users to find friends by searching their email contact lists." The company wants the court to "declare that Facebook is making descriptive fair use of the words 'friend finder,' or in the alternative, that Various’s 'FriendFinder' Registrations are subject to cancellation on the grounds that the terms registered therein are descriptive and have not acquired secondary meaning in the marketplace.

The Facebook complaint can be accessed here.

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