Skip to main content

Trademark Infringement or Parody?

San Jose, CA |

I have a site lets say call it facebookidiots.com (no nothing is up on there). The site is basically about how people are idiots on facebook and allows them to upload stuff onto facebook utilizing the developer platform as an app to make their profile goofy. Completely complies with Facebook's App policy. Also the site would have news stories about stupid people on facebook (like the criminal who uploaded his picture to facebook).

Would this be trademark infringement or could I claim successfully parody?

Attorney Answers 4

Posted

The issue is whether your use of FACEBOOK [or whatever the real trademark is] would infringe the trademark rights already developed in that mark.

The rule is that's lawful to use another's trademark in order to name the company that uses the mark or the product branded by that mark. Gripe sites are examples [see http://webgripesites.com ] as are sites such as peopleofwalmart.com .

The infringement defense of "parody" is NOT the way to think about such uses. The applicable concept is that you are making a "nominative" or "referential" use of the mark. Such use, if it is indeed nominative, is not an infringement at all. In short, if you use another's mark in a nominative sense then you don't need a "defense" to an infringement claim [which is your burden to prove] because such use is simply not an infringement.

However, before you begin using anyone's already-existing mark it's necessary to discuss the matter with a trademark attorney. The devil is in the details and only after a thorough review of your site can anyone pass on the question of whether your use is nominative or not.

Good luck. And do not disclose the real trademark that you want to use in any public forum such as this one.

The above is general information ONLY and is not legal advice, does not form an attorney-client relationship, and should NOT be relied upon to take or refrain from taking any action. I am not your attorney. You should seek the advice of competent counsel before taking any action related to your inquiry.

Mark as helpful

4 lawyers agree

Posted

As usual, Attorney Ballard has given excellent advice re: Nominative Fair Use for trademarks.

I'll add that when you are working within an ecosystem like Facebook (or the iTunes App Store or whatever), you have to play by their rules, aka the Terms of Service.

Their rules almost always include "we can take down anything you post if we don't like it."

You'll want to review these rules (likely with an IP attorney) to determine how likely it is that your work will be taken down, regardless of whether it is legal generally.

Remember, there is the generally applicable trademark law (which has been discussed), then there is the "contract" you agreed to by signing up as a Facebook (or whatever) developer.

- Neil Wehneman

The standard disclaimers apply. These are general statements of law, and not legal advice, because I do not have all of the relevant facts. I am licensed to practice law in Indiana, and only practice outside Indiana through association with local co-counsel. If you have other questions or if you would like to discuss your situation in more detail, feel free to contact me. FEEDBACK on this post is appreciated, either thumbs-up or thumbs-down.

Mark as helpful

1 lawyer agrees

Posted

This has already been done, I believe. And, there have been serious consequences. Refer to the blog link attached.

Mark as helpful

1 lawyer agrees

1 comment

Daniel Nathan Ballard

Daniel Nathan Ballard

Posted

The Facebook v. Lamebook case is not analogous because there the defendant is using LAMEBOOK, not FACEBOOK. The issue is whether LAMEBOOK causes confusion or dilutes the value of FACEBOOK. As I understand what the questioner intends, however, he will be using FACEBOOK [more accurately, some other mark -- FACEBOOK being simply his example] in order to name that company and its users. That's fundamentally different than the LAMEBOOK scenario.

Posted

This is not parody. You might get away with asserting that this is a nominative use (as Mr. Ballard says), although I question this. But you will likely have a major problem if this goes forward. Facebook is a valid trademark. The facebook owners are aggressive in asserting their IP rights--as they should be. Your transformation of it into "facebook idiots" has the potential to cause substantial dilution to this legitimate trademark. You certainly are free under the first amendment to criticize facebook, but the first amendment does not allow you to alter the trademark in a disparaging and (i believe) misleading manner. And that is what you have done here.

If you want to publish critical commentary on facebook--be my guest. But the owners of facebook might have a legitimate argument that your criticisms are deficient factually and have a tendency to dilute the value of their trademark rights. I think the facebook folks--for whom I have no great admiration or economic attachment--would have a valid argument here. Why put yourself in this precarious legal position when there are much more productive and intellectually defensible ways to criticize facebook.

Mark as helpful

1 lawyer agrees

1 comment

Daniel Nathan Ballard

Daniel Nathan Ballard

Posted

Two points. First, the questioner's website provides a platform for commentary about Facebook users -- not about Facebook itself [of course, Facebook is simply being used by the questioner as an example, the actual brand being kept secret]. Trademark law has NO say over anyone's public commentary about Facebook users. In short, the trademark rights in "Facebook" that are owned by Facebook, Inc. are simply irrelevant when the public comments about Facebook users. Anyone can lie about anything, of course, and so defamation and perhaps false advertising law may apply if that occurs but that has nothing to do with any trademark rights in the word Facebook. Second, even if the website provides commentary on Facebook itself that's precisely what the nominative use right protects and, let's not forget, so does the First Amendment. Many folks, like Attorney Ross, are "IP Maximalists" who believe that intellectual property rights are inviolate and unassailable -- monopolies, in fact, granted from on high by the govt to business. It takes very little thought and reading to understand that that is clearly not the law. And it's not even good business. I'd love to read an IP Maximalist's take on the legality of the Pepsi commercial that incorporates a Coke delivery driver as a character in the advertisement. See http://goo.gl/flSQu .