Summary:

Online businesses typically operate nationally, if not internationally, and that means court disputes can take place in a variety of venues.…

Teachbook Logo
photo: Teachbook

Online businesses typically operate nationally, if not internationally, and that means court disputes can take place in a variety of venues. But a lawsuit filed by Facebook against Teachbook.com, alleging that Teachbook’s name violates Facebook’s trademark rights, has been thrown out for an unusual reason. The California federal judge overseeing the case has ruled that Teachbook can’t be sued in California, because it doesn’t accept California users and therefore doesn’t even have minimal contact with the state.

Facebook sued Teachbook, an online community for teachers, back in August, demanding that the site remove the “-book” suffix from its name. Teachbook responded with a motion asking the judge to dismiss the case or transfer it to a court near its home base in Northbrook, Illinois, a suburb of Chicago. Facebook said that it was perfectly appropriate to hear the case in California, because “Facebook, a Palo Alto resident, suffered injuries in this district.” The company accused Teachbook of “intentionally adopt[ing] an infringing trademark for use on social networking services that directly compete with Facebook.”

U.S. District Judge Ron Whyte didn’t see the issue that way, however. Teachbook’s actions weren’t “expressly aimed” at California. Indeed, Teachbook went out of its way to avoid California, actually banning California users from joining the site. The company said it did that because it didn’t want to be subject to California’s powerful anti-SPAM laws. That was enough to convince Whyte to dismiss the suit, although Facebook is free to re-file in another venue.

However, if Whyte had heard the case in California, it sounds like he may well have seen it Facebook’s way. He wrote (emphasis mine): “Teachbook, somewhat implausibly, insists that it did not intend to trade on Facebook’s mark, and that it selected the TEACHBOOK mark in 2009 because of the connection between teachers and books.” Whyte also wrote that Facebook had made at least an initial showing that Teachbook’s selection of a trademark was “confusingly similar” and would hurt Facebook.

A Facebook spokesman said the company is likely to re-file the case, but declined to comment beyond that. Teachbook didn’t immediately respond to a request for comment. Last year, Teachbook told a reporter from Wired.com that Facebook was trying to own the term “book,” calling its fight “a David and Goliath situation.”

This isn’t the only trademark dispute Facebook has been involved in; it’s also sued sites like Lamebook and FacebookOfSex.com. (Facebook reached a settlement that allowed Lamebook, a parody site, to remain up; the litigation against FacebookOfSex.com, which is owned by the parent company of FriendFinder Networks, is ongoing.)

»  Facebook v. Teachbook Dismissal Order [PDF]

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