United States District Court, N.D. Illinois, Eastern Division
For TimesLines, Inc, Plaintiff: James Terrence Hultquist, LEAD ATTORNEY, Bruce Robert Van Baren, Douglas Alan Albritton, Michael Lawrence Demarino, William Seth Weltman, Reed Smith LLP, Chicago, IL.
For Facebook, Inc., Defendant: Michael G Rhodes, LEAD ATTORNEY, PRO HAC VICE, Gavin L. Charlston, PRO HAC VICE, Cooley LLP, San Francisco, CA; Anne H. Peck, Jeffrey Thomas Norberg, PRO HAC VICE, Cooley LLP, Palo Alto, CA; Brendan J. Hughes, Peter Joel Willsey, Vincent J. Badolato, PRO HAC VICE, Cooley Llp, Washington, DC; Jordan Mitchell Heinz, Steven Douglas McCormick, Thomas M Monagan, III, Kirkland & Ellis LLP, Chicago, IL.
For Facebook, Inc., Counter Claimant: Michael G Rhodes, LEAD ATTORNEY, Gavin L. Charlston, Cooley LLP, San Francisco, CA; Anne H. Peck, Jeffrey Thomas Norberg, Cooley LLP, Palo Alto, CA; Brendan J. Hughes, Peter Joel Willsey, Vincent J. Badolato, PRO HAC VICE, Cooley Llp, Washington, DC; Jordan Mitchell Heinz, Steven Douglas McCormick, Thomas M Monagan, III, Kirkland & Ellis LLP, Chicago, IL.
For TimesLines, Inc, Counter Defendant: James Terrence Hultquist, LEAD ATTORNEY, Bruce Robert Van Baren, Douglas Alan Albritton, Michael Lawrence Demarino, Reed Smith LLP, Chicago, IL.
MEMORANDUM OPINION AND ORDER
JOHN W. DARRAH, United States District Court Judge.
Plaintiff, Timelines, Inc., filed a Complaint against Defendant, Facebook, Inc., on September 29, 2011, alleging four counts of federal and state trademark and false practices violations. Plaintiff sought a temporary restraining order to bar Defendant from offering a service on its website called " Timeline" ; this motion was denied. (Dkt. No. 16.) Plaintiff amended its Complaint on October 8, 2011, alleging six counts against Defendant: (I) and (II) reverse and direct trademark infringement, in violation of 5 U.S.C. § 1114; (III) false designation of origin, in violation of 15 U.S.C. § 1125(a); (IV) unfair competition under the Lanham Act and common law; (V) unlawful conduct under the Illinois Consumer Fraud and Deceptive Practices Act, 815 ILCS 505/2; and (VI) unlawful conduct under the Illinois Uniform Deceptive Trade Practices Act, 815 ILCS 510/2. Defendant answered the Amended Complaint and asserted two Counterclaims against Plaintiff, seeking: (I) a declaration of non-infringement on the part of Defendant and (II) cancellation of Plaintiff's registered marks and a declaration of express abandonment of Plaintiff's then-pending trademark application with the U.S. Patent and Trademark Office (" PTO" ).
Discovery closed on September 28, 2012, and Defendant filed a motion, seeking summary judgment on each of Plaintiff's claims and both of Defendant's counterclaims. This motion has been fully briefed and is ripe for ruling. The case is set to proceed to trial before a jury on April 22, 2013.
Local Rule 56.1(a)(3) requires a party moving for summary judgment to provide " a statement of material facts as to which the moving party contends there is no genuine issue . . . ." Local Rule 56.1(b)(3) requires the nonmoving party to admit or deny each factual statement proffered by the moving party and concisely designate any material facts that establish a genuine
dispute for trial. See Schrott v. Bristol-Myers Squibb Co., 403 F.3d 940, 944 (7th Cir. 2005). A litigant's failure to dispute the facts set forth in an opponent's statement in the manner dictated by Local Rule 56.1 results in those facts' being deemed admitted for purposes of summary judgment. Smith v. Lamz, 321 F.3d 680, 683 (7th Cir. 2003). Local Rule 56.1(b)(3)(C) further permits the non-movant to submit additional statements of material facts that " require the denial of summary judgment . . . ."
To the extent that a response to a statement of material fact provides only extraneous or argumentative information, this response will not constitute a proper denial of the fact, and the fact is admitted. See Graziano v. Village of Oak Park, 401 F.Supp.2d 918, 937 (N.D. Ill. 2005). Similarly, to the extent that a statement of fact contains a legal conclusion or otherwise unsupported statement, including a fact which relies upon inadmissible hearsay, such a fact is disregarded. Eisenstadt v. Centel Corp., 113 F.3d 738, 742 (7th Cir. 1997).
The following facts are taken from the parties' statements of undisputed material facts submitted in accordance with Local Rule 56.1. Defendant is a corporation organized under the laws of the State of Delaware, with its principal place of business in Menlo Park, California. (Def.'s SOF ¶ 1.) Plaintiff, also a Delaware corporation, has its principal place of business in Chicago, Illinois. ( Id. ¶ 2.) Subject matter jurisdiction is proper pursuant to the Lanham Act, 15 § 1121, and 28 U.S.C. § § 1331 and 1338, with proper supplemental jurisdiction over the state law claims under 28 U.S.C. § 1367(a). ( Id. ¶ 3.) Defendant concedes personal jurisdiction is also proper in this District, and the parties agree venue is proper in this district pursuant to 28 § 1391(b). ( Id. ¶ ¶ 3-4.)
Plaintiff's Goods and Services
Plaintiff was founded in January 2007. (Pl.'s SOF ¶ 1.) Plaintiff launched its website, Timelines.com, in April 2009. (Def.'s SOF ¶ 7.) Plaintiff operates two websites, Timelines.com and LifeSnapz.com; two applications, " Photogram" and " Disaster of the Day" ; and an application services provider called " Timelines SE," which has a graphical timeline. (Pl.'s SOF ¶ ¶ 2, 23.)
Through Timelines.com, a user " can record the details of events, connect them in space and through time to other related events, and contribute to a better collective understanding of what occurred at a particular place and time." (Def.'s SOF ¶ 5.) Timelines.com uses " timelines, maps and lists to enable unique ways for readers to explore and learn about topics." ( Id. ¶ 6.) Anyone can access and post content to Timelines.com by creating a user account. (Pl.'s SOF ¶ 3.) A Timelines.com user can record a personal or historic event, such as
a child's birthday party or a presidential inauguration. ( Id. ¶ 4.) Then, other users can add additional or new content for that event. ( Id. ) For example, USER A, a student, accesses Timelines.com and posts information about the American Civil War; thereafter, USER B, a professor with no relation to USER A, may also access the website and post additional information about the Civil War. ( Id. ) Plaintiff's total sales during the past three years are approximately $87,000. (Def.'s SOF ¶ 46.) Timelines.com has 1,209 registered users. ( Id. ¶ 47.) In 2011 and 2012, Timelines.com averaged approximately 94,000 visitors per month. (Pl.'s SOF ¶ 15.)
Plaintiff also offers services through another website, Lifesnapz.com, which is aimed at families, to allow them to share and record events with those designated people with whom they would like to share. (Pl.'s SOF ¶ 5.) On its " About Us" webpage, Plaintiff explains that " LifeSnapz is a free, easy and secure way for people to record and organize important events, milestones and memories in their lives. Users of LifeSnapz can contribute text, photos, and video to describe these events, share them with self-designated groups (like family members, colleagues, schoolmates or youth sports teams) and explore these events using dynamic timelines, maps, and lists." (Def.'s SOF ¶ 8.) The website for LifeSnapz further provides that:
The timeline feature lets you visualize your events across time, and the map feature provides a unique way to visualize your events across a town, state, country or the world. Additionally, timelines and maps can be instantly customized based on who was at an event and how the event was tagged. With this feature, you can easily find the types of events and people you are looking for and create instant timelines and maps based on them.
( Id. ¶ 9.) Lifesnapz.com has a timeline, and the term " timeline" as it is used on the website is used in a generic sense, to describe the graphical representation employed on the site. (Pl.'s SOF ¶ 23.)
Registration of Plaintiff's Marks
Plaintiff has invested millions of dollars in its business. ( Id. ¶ 19.) Plaintiff owns Federal Trademark Registration Numbers 3,684,074 for " Timelines" ; 3,764,134 for " Timelines.com" ; and 3,784,720 for its " Timelines" design mark. ( Id. ¶ 9.) Plaintiff filed its first application for the " Timelines" mark on May 23, 2008; its first use was September 15, 2008; its first use in commerce was on April 20, 2009, and its subsequent registration for " TIMELINES" was issued on September 15, 2009. ( Id. ¶ 11.) Plaintiff filed for the Timelines.com mark on May 23, 2008; it was first used on September 15, 2008; it was first used in commerce on April 20, 2009; and the registration date was March 23, 2010. ( Id. ¶ 12.) The " Timelines" design mark was filed on October 5, 2009; first used (and first used in commerce) on April 20, 2009, and it was registered on May 4, 2010. ( Id. ¶ 13.) The Timelines Mark is registered in the PTO's International Class 42, which relates to goods or services including scientific and technological services and research and design relating thereto. (Pl.'s SOF Ex. 4.) The mark was issued for " providing a web site that gives users the ability to create customized web pages featuring user-defined information about historical, current and upcoming events; and application service provider, namely, managing web sites of others in the fields of historical, current and upcoming events." ( Id. )
On September 26, 2011, Plaintiff filed an application with the PTO to register " Timelines" with a broader description of services than it provided in its first application, based, in part, on services identified
in Facebook's own trademark registrations. (Def.'s SOF ¶ 40.) This description of services associated with the application was more expansive than the description of services relating to the previously issued trademark for " Timelines." ( See Pl.'s SOF Ex. 4; Def.'s SOF Ex. 63.) The PTO refused to register Plaintiff's alleged mark, on the basis of its descriptiveness. (Def.'s SOF ¶ 41.) The PTO Examining Attorney stated that " [i]n this case, the wording 'timelines' as applied to the applicant's web-based software services describes a feature, characteristic and function of those services." ( Id. ...