- From LexisNexis® Mealey’s™ Daily Legal News.
A federal judge on May 13 filed an order granting an agreed motion by Facebook Inc. and the operators of a history-themed website, ending an almost 18-month dispute over alleged infringement of the “timelines” trademark by the social networking giant (Timelines Inc. v. Facebook Inc., No. 1:11-cv-06867, N.D. Ill.).
In September 2011, Chicago-based Timelines Inc. filed a lawsuit against Facebook, asserting trademark infringement and false designation under the Lanham Act, as well as violation of the Illinois Consumer Fraud and Deceptive Practices Act and the Illinois Uniform Deceptive Trade Practices Act.
The tagline on Timelines’ website at timelines.com states that its users can “[d]iscover, record, and share history.” The site’s users can contribute to and comment on existing pages on historical events, such as the U.S. Civil War, great sports moments or assassinations. Users can also post content about their own events, to which other users can add additional content and comments. Timelines Inc. has federal trademark registrations for “Timelines,” “Timelines.com” and a design logo, as well as another trademark registration that was pending before the U.S. Patent and Trademark Office (PTO).
Shortly before filing its complaint, Timelines learned that Facebook was then planning to launch the “timeline” feature on its popular social network. This feature allows Facebook users “to graphically display the events of their personal lives in chronological order along a vertical bar.”
On Sept. 30, 2011, Judge Edmond E. Chang, who presided over an emergency hearing, denied Timelines’ motion for a temporary restraining order (TRO), ruling that the plaintiff failed to show that it would suffer irreparable harm without one. About a week later, Timelines filed an amended complaint, breaking the federal trademark infringement claim into separate claims for reverse and direct infringement. Timelines also added a claim for unfair competition under both the Lanham Act and common law.
Facebook defended its use of the term “timelines” as being generic and fair use. Facebook sought a declaration of noninfringement and asked the court to cancel Timelines’ trademarks in the PTO.
Dismissed With Prejudice
After more than a year of motions, countermotions and negotiations, Facebook filed a motion for summary judgment in January 2013. Facebook said that Timelines was “seek[ing] to appropriate for its exclusive use the common English word ‘timeline(s)’ under the guise of trademark protection.” Facebook contended that not only it, but “a host of other companies use the term . . . to identify or describe aspects of products and services that consist of or relate to timelines,” which merely “refers to an arrangement of events or other information in chronological order.”
In an April 1 minute entry, Judge John W. Darrah mostly denied Facebook’s summary motion. The judge noted that the PTO had deemed Timelines’ pending trademark application as abandoned and, as such, granted in part summary judgment on the cancellation claim.
A jury trial was set for April 23.
On May 7, Timelines filed an agreed motion to dismiss the matter with prejudice, joined by Facebook. The parties did not disclose the terms of their agreement. In his order, Judge Darrah dismissed the matter with prejudice.
Timelines is represented by James T. Hultquist, Douglas A. Albritton, Michael L. DeMarino and Bruce R. Van Baren of Reed Smith in Chicago. Facebook is represented by Peter J. Willsey and Brendan J. Hughes of Cooley in Washington, D.C., Michael G. Rhodes of Cooley in San Francisco and Steven D. McCormick of Kirkland & Ellis in Chicago.