Recently, Facebook filed a lawsuit against the pornographic social networking site, Faceporn, alleging trademark infringement of its trademark, Facebook. Specifically, Facebook alleges the use of the mark, Faceporn, is "confusingly similar" to the mark Facebook and the use of the mark, Faceporn, is causing dilution of the Facebook brand.
Dilution is a trademark infringement legal claim that can be asserted by famous brands. I have previously discussed Dilution here. Dilution occurs when a lesser known brand uses the mark of a famous trademark owner, and the use of the more famous mark by the lesser known brand, dilutes the distinctiveness of the famous trademark. Dilution can be asserted by famous trademarks even if the products or services are totally unrelated.
Although, Facebook is claiming the use of the Faceporn mark is diluting its brand via tarnishing its reputation, with the revision of the Dilution statute, the only thing Facebook has to prove is the use of the Faceporn mark will cause a likelihood of confusion between the two trademark among the relevant consuming public.
Likelihood of Confusion
The courts determine whether likelihood of confusion exists by balancing 8 factors. Those factors are: if the marks are similar in sight, sound, and meaning; the similarity of the goods and services sold; the similarity of the distribution channels and customers for the goods or services at issue; the sophistication of purchasers and the expense of the product or service at issue; the similarity of means and methods of advertising and promoting the goods or services at issue; whether there is evidence of actual confusion of consumers or other relevant groups; the strength of the mark; and was the potentially infringing trademark adopted with good faith or with intent to imitate the established trademark?
I think Facebook would have a hard time proving the trademarks were similar in sight, sound, and meaning. Facebook and Faceporn clearly do not have the same meaning. Furthermore, they really do not sound the same...book and porn. The only thing Facebook could possible claim is similar is the word "face" in both trademarks. But I do not believe that is similar enough. Next, Faceporn could certainly refute that Facebook and Faceporn have the same customers and/or distribution channels. Individuals looking for porn are not going to go to Facebook to find it. At least I don't think so. In addition, Facebook users seems to be very sophisticated consumers and would have enough intellect not to go to Facebook looking for or expecting to see the contents of Faceporn. Also, I am sure Facebook and Faceporn are not promoting their services through the same advertising and/or marketing channels. Lastly, I do not believe Facebook can prove actual confusion between both sites among their and Faceporn's consumers. Like I said earlier, people looking for porn are not going to visit Facebook attempting to find it and vice-versa.
However, I do believe the strength of Facebook's lawsuit against Faceporn lies in the last two factors. Clearly, Facebook, has a strong trademark. It is a unique term created by Facebook and was created to brand the number one social networking site. Also, Facebook could easily prove Faceporn created the trademark and site with the intent to copy the famous Facebook trademark. Specifically, Faceporn's site did have the same look and feel as Facebook. The logo was in the same type and font, the color scheme was the same and the layout was identical to Facebook's. I believe Facebook would have a stronger copyright infringement claim than a trademark claim. Clearly, Faceporn copied the layout and style of Facebook's site.
You can view a screen shot of the Faceporn site here. It has since been changed. But what do you think?
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