Judge: Facebook must see Timelines Inc in court over trademark

Facebook has failed to convince a judge to toss out a trademark infringement lawsuit regarding the free content ad platform's use of the term "Timeline".

Timelines Inc, which created a website in 2009 that records and shares historic events, flung a sueball at Facebook in late 2011 when it alleged that Mark Zuckerberg's company was violating its trademark and competing unfairly.

The legal row was ignited within a week of Facebook debuting its Timeline feature on its network, which claims more than 1 billion users worldwide.

Facebook later tried to countersue Timelines Inc by claiming that the term was not distinctive enough to be valid for protection under trademark law.

But US District Judge John Darrah in Chicago disagreed with Facebook. He said in an opinion and order ruling on Monday:

Defendant has failed to demonstrate as a matter of law that plaintiff’s trademarks are either generic or merely descriptive, or that defendant’s use of the term 'Timeline' was a fair use.

Judge Darrah, in reaching his conclusion, noted that Facebook had "regularly referred to its 'Timeline' as a product and marketed its 'Timeline' in a manner that a reasonable jury might find to be trademark use."

He continued:

Moreover, genuine issues of material fact remain regarding defendant’s use of the term 'Timeline' in good faith, as evidence demonstrates that defendant was aware of plaintiff’s registered trademarks and defendant’s CEO commented that defendant 'wanted to punch anyone who tried to compete with [Facebook] in the face really hard' ...

The judge had apparently quoted Zuckerberg, who - in advance of the company's f8 developer conference in September 2011 - supposedly said that Facebook was focusing on two things:

[A]ll the stuff we want to do (products), and also wanted to punch anyone who tried to compete with us in the face really hard. You have to teach people who compete with you 'don't even fucking bother.'

Judge Darrah denied Facebook its motion for a summary judgment and the Timelines Inc versus Facebook Inc case [PDF] has a jury trial date set for 22 April. ®