TimesLines, Inc v. Facebook, Inc.

Filing 112

MEMORANDUM by TimesLines, Inc in Opposition to Sealed motion, 85 Motion for Summary Judgment (Redacted Version) (Attachments: # 1 Redacted Timelines, Inc.'s Local Rule 56.1(b)(3) Response to Facebook, Inc.'s Local Rule 56.1(a)(3) Statement of Material Facts, and Timelines' Local Rule 56.1(b)(3)(C) Statement of Additional Material Facts that Require the Denial of Summary Judgment)(Van Baren, Bruce)

IN THE UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION
TIMELINES, INC.,
Plaintiff/CounterDefendant,
v.

FACEBOOK, INC.,
Defendant/CounterPlaintiff.

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Civil Action No.: 11 CV 6867
HON. JOHN W. DARRAH

Jury Trial Demanded

TIMELINES, INC.'S LOCAL RULE 56.l(b)(3) RESPONSE TO FACEBOOK, INC.'S
LOCAL RULE 56.1(a)(3) STATEMENT OF MATERIAL FACTS, AND TIMELINES'
ADDITIONAL LOCAL RULE 56.1(b)(3)(C) STATEMENT OF ADDITIONAL
MATERIAL FACTS THAT REQUIRE THE DENIAL OF SUMMARY JUDGMENT
Pursuant to Local Rule 56.1 , Plaintiff and Counter-Defendant Timelines, Inc.
("Timelines") submits this Response to Facebook's Statement of Undisputed Material Facts, and
Its Additional Statement of Additional Material Facts that Require The Denial of Summary
Judgment.

Parties
Paragraph 1 states:
Facebook is a corporation organized and existing under the laws of the State of Delaware,
with its principle place of business in Menlo Park, California. (First Am. Compl. (Dkt. No. 27) ~
16; Answer (Dkt. No. 33) ~ 16; Declaration of Brendan J. Hughes in Support of Facebook's
Motion for Summary Judgment ("Hughes Decl."), ~ 2, Ex. 1.)

RESPONSE:
Admitted.
Paragraph 2 states:
Plaintiff/Counter-Defendant Timelines, Inc. ("Plaintiff') is a corporation organized under
the laws of the State of Delaware, with its principal place of business in Chicago, Illinois. (First
Am. Compl. (Dkt. No. 27) ~ 15; Answer (Dkt. No. 33) ~ 15.)

RESPONSE:

Admitted.

Jurisdiction and Venue
Paragraph 3 states:
This Court has jurisdiction over this action pursuant to Section 39 of the Lanham Act, 15
U.S.C. § 1121, and 28 U.S.C. §§ 1331 and 1338, as well as supplemental jurisdiction over state
law claims pursuant to 28 U.S.C. § 1367(a). (First Am. Compl. (Dkt. No. 27) ,-r 18; Answer
(Dkt. No. 33) ,-r 18.) This Court also has personal jurisdiction over Facebook. (ld.)

RESPONSE:
Admitted.
Paragraph 4 states:
Venue is proper in this district under 28 U .S.C. § 1391 (b) as the case in controversy arose
in this judicial district or a substantial portion of events allegedly giving rise to the claims in this
case took place in this judicial district. (First Am. Compl. (Dkt. No. 27) ,-r 17; Answer (Dkt. No.
33),-rl7.)

RESPONSE:
Admitted.

I.

Plaintiff's Services.

Paragraph 5 states:
Plaintiff offers an online service through its website Timelines.com where, according to
its website, users "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." (Hughes Decl. ,-r 3, Ex. 2 at FB _ TL00000660.)

RESPONSE:
Plaintiff objects to this fact statement on the grounds that it is not properly submitted into
evidence because it simply references prints from a webpage and provides an affidavit from
Defense counsel that the pages are true and correct prints. However, web pages are not selfauthenticating, and Defendant does not cite any admissible evidence authenticating this
statement. See. e.g., US. v. Jackson, 208 F.3d 633, 638 (7th Cir. 2000) (refusing to consider
web postings when ruling on motion for summary judgment because not properly authenticated);
2

Specht v. Google Inc., 758 F.Supp.2d 570, 580 (N.D. Ill. 2010) (refusing to consider screen shots
of websites when ruling on motion for summary judgment because not properly authenticated);
Ashworth v. Round Lake Beach Police Dept., No. 03 C 70 II, 2005 WL 1785314, at *3 (N.D. Ill.
July 21, 2005) (refusing to consider printout from website when ruling on motion for summary
judgment because such documents are not self-authenticating).

Accordingly, it should be

disregarded.
Subject to its objections, if this Court is inclined to consider this statement, Timelines
admits that this quote only partially explains its services, is taken out of context, and Timelines
more fully explains the services it offers in its Statement of Additional Facts ("SAF") below at

,-r,-r 2-8.
Paragraph 6 states:
Timelines.com uses "timelines, maps and lists to enable unique ways for readers to
explore and learn about topics .. .. " (Hughes Decl. ,-r 4, Ex. 3 at FB_TL00010742.) An excerpt of
a timeline that Plaintiff offered on its timelines.com website as it appeared in September 2011 is
below. (Hughes Decl. ,-r 5, Ex. 4.)

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RESPONSE:
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Plaintiff objects to this fact statement on the grounds that is not properly submitted into
evidence because it simply references prints from a webpage and provides an affidavit from
Defense counsel that the pages are true and correct prints. However, web pages are not selfauthenticating, and Defendant does not cite any admissible evidence authenticating this
statement. See the authority cited in Timelines' response to Paragraph 5. Accordingly, it should
be disregarded .
Subject to its objections, if the Court is inclined to consider this statement, Timelines
denies that it generally uses timelines (even though the same was referenced in this screen print),
denies that this quote explains all of the services it offers, states that it is taken out of context,
and Timelines more fully explains the services that it offers in its SAF below, including its
occasional references to the term "timeline ." See SAF ~,-r 2-8, 21-22.
Paragraph 7 states:
Plaintiff launched its timelines.com website in April 2009. (Hughes Decl. ,-r 6, Ex. 5 at
45 :25-47:11.)

RESPONSE:
Admitted.
Paragraph 8 states:
Plaintiff offers another online service under the name "LifeSnapz" at
www.lifesnapz.com, which "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." (Hughes Decl. ,-r 7, Ex. 6 at FB_TL_00000417.) Plaintiff
uses the term "timeline" generically on its LifeSnapz website . (Hughes Decl., ,-r 6, Ex. 5, Hand
Depo. at I 08: I 1-24.)

RESPONSE:
Plaintiff objects to this fact statement until the last sentence on the grounds that it is not
properly submitted into evidence because it simply references prints from a webpage and

4

provides an affidavit from Defense counsel that the pages are true and correct prints. However,
web pages are not self-authenticating, and Defendant does not cite any admissible evidence
authenticating this statement. See the authority cited in response to Paragraph 5. Accordingly, it
should be disregarded.

Subject to its objections, if the Court were inclined to consider this

statement (prior to the last sentence) then Timelines would admit that Facebook has accurately
described the LifeSnapz product.
As to the last sentence, Timelines denies the same as Mr. Hand's testimony was that
"timeline" is used generically in some instances on LifeSnapz, as opposed to generally. See
Deposition of Brian Hand ("Hand Dep.") at p. I 08. True and correct copies of the pages cited
from the Hand Dep. are filed herewith as Exhibit 2.
Paragraph 9 states:
Plaintiff's LifeSnapz website describes the "dynamic timelines" available on LifeSnapz
as a "timeline feature":

LifeSnapz enables you to explore your events,
photos and videos using timelines and maps.
tim~, al'ld lhe map
feature provides Q ~ique WQY 1[) vlaualire )"01$ events across a town, ~@te,
ccunby or the WQJid. Addltionaly, timelines and maps ·can be lnlitantty

The timeline fea1ure lelf; yoo vls.uallze your events acrM&

customized based on who WM at an event and how !he ever~t was ragged. With
this featun~, yoo can easily find the typee of evi!Krtf:; and people you are IO(lkin(l
fat"

~~nd

create inatant time fines Sind maps, baed ort1hem.

(!d. at FB_TL_00000405.) A depiction of Plaintiffs "timeline" feature as found on the
LifeSnapz website is below.

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(Hughes Decl. ~ 8, Ex. 7.)
RESPONSE:
Plaintiff objects to this fact statement on the grounds that it is not properly submitted into
evidence because it simply references prints from a webpage and provides an affidavit from
Defense counsel that the pages are true and correct prints. However, web pages are not selfauthenticating, and Defendant does not cite any admissible evidence authenticating this
statement.

See the authority cited in response to Paragraph 5.

Accordingly, it should be

disregarded .
Subject to its objections, if the Court is inclined to consider this statement, Timelines
would admit that Facebook has displayed a correct copy of a certain print from the LifeSnapz
website, but the same is not a full description of Timelines. Timelines more fully describes all of
its services in its SAF ~~ 2-8, 23.
Paragraph I 0 states:
In April 20 I 0, Plaintiff launched another service called "Timelines SE," which is "a
100% outsourced, custom branded service, [that] helps news websites organize, present, and
monetize past content *** For readers, the service makes past content more readily available
and presents it in an intuitive, easy-to-navigate manner using time lines, maps, and lists ...."
(Hughes Decl. ~ 4, Ex. 3 at FB-TL_00010745.) An example of a Timeline SE outsourced
timeline is below.
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(Hughes Decl. ~ 9, Ex. 8.) Plaintiff uses the term "timelines" generically to identify its
Timelines SE service offerings. (Hughes Decl., ~ 6, Ex. 5, Hand Depo. at 96:24-97:16.)
RESPONSE:
Plaintiff objects to this fact statement on the grounds that it is not properly submitted into
evidence because it simply references prints from a webpage and provides an affidavit from
Defense counsel that the pages are true and correct prints. However, web pages are not selfauthenticating, and Defendant does not cite any admissible evidence authenticating this
statement.

See the authority cited in response to Paragraph 5.
7

Accordingly, it should be

disregarded.
Subject to its objections, if the Court is inclined to consider this statement, Timelines
would admit that Facebook has displayed a correct copy of a certain print from the Timelines SE
offerings, but the same is not a full description of Time lines. Timelines more fully describes all
of its services in its SAF

~~

2-8. As to the last sentence, Plaintiff denies that it uses the term

"timelines" generically to identify its Timelines SE service offerings , because at the portion of
the Hand deposition cited, Mr. Hand testified that the term was used generically in the specific
context of a client pitch where Timelines was describing the SE platform. See Hand Dep. at

p. 97.
Paragraph II states:
On its own Facebook page, Plaintiff explains that timelines.com is "for individuals and
entities that want to reach and interact with a broad audience about publicly shared events";
LifeSnapz.com is "for families and other trusted groups that want a more controlled, permissionbased environment for recording and sharing their events" ; and Timelines SE is "for media
businesses that want a custom-branded, hosted solution as part of their websites to showcase past
content in an innovative, contextually relevant manner.'' (Hughes Decl. ~ 10, Ex. 9.)

RESPONSE:
Plaintiff objects to this fact statement on the grounds that it is not properly submitted into
evidence because it simply references prints from a webpage and provides an affidavit from
Defense counsel that the pages are true and correct prints. However, web pages are not selfauthenticating, and Defendant does not cite any admissible evidence authenticating this
statement.

See the authority cited in response to Paragraph 5.

Accordingly, it should be

disregarded .
Subject to its objections, if the Court is inclined to consider this statement, Timelines
admits that these descriptions appear on its Facebook page.

8

II.

"Timeline(s)" Is a Common English Word Used to Refer to an Arrangement of
Information in Chronological Order.

Paragraph 12 states:
The term "timeline" is defined in numerous dictionaries, such as the American Heritage
Dictionary, Merriam Webster' s Collegiate Dictionary, and Wikipedia. (Hughes Decl. ~~ 11-18,
Exs. 10-15.)

RESPONSE:
Admitted.
Paragraph 13 states:
A recent GOOGLE search for the term "timeline" returned over 454 million hits ,
including thousands of image results depicting a wide variety of timelines . (Hughes Decl. ~ 1718, Exs . 16-17.)

RESPONSE:
Plaintiff objects to this fact statement on the grounds that it is not properly submitted into
evidence because it simply references prints from a webpage and provides an affidavit from
Defense counsel that the pages are true and correct prints. HoweYer, web pages are not selfauthenticating, and Defendant does not cite any admissible evidence authenticating this
statement.

See the authority cited in response to Paragraph 5.

Accordingly, it should be

disregarded.
Paragraph 14 states:
News media regularly use the term "timeline" for reporting events in chronological order.
(Hughes Dec I. ~ 19-21, Exs . 18-20.)

RESPONSE:
Denied.

The attached newspaper articles admitted are genenc uses of the term

"timeline," but they do not permit any inference that such use is "regular." Moreover, such
third-party uses would only be relevant to the extent they are referring to the same good or
product offered by Timelines and Facebook. They are not.
Paragraph 15 states:
9

The U.S. Patent and Trademark Office ("PTO") itself uses the term "timeline(s)"
generically on its website when referring to its "Trademark Application and Post-Registration
Process Timelines." (Hughes Decl. ~ 22, Ex. 21.)

RESPONSE:
Admitted .

III.

Uses of the Term "Timeline(s) by Plaintiff and its Customers.

Paragraph 16 states:
Prior to initiating this lawsuit, Plaintiffs Timelines.com website offered a page entitled
" Popular Timelines," which listed over thirteen different categories of "timelines" such as
" Timelines of Wars and Conflict," and "Timelines of Famous People" ; Plaintiff also used the
term "timeline" in the names of its various arrangements of information in chronological order,
such as the "Battle of Bull Run Timeline," "AI Capone Timeline," and the "Amelia Earhart
Timeline." (Hughes Decl. ~~ 5, 6, 23-25, Exs. 4, 5, Hand Depo. at 52 :12:23 ; Exs . 22-24.)
Plaintiff itself admits that "[t]he noun 'timeline ' refers to a chronological organization of events
or other information." (Hughes Decl. , ~ 6, Ex. 5, Hand Depo. at 40:19-25.)

RESPONSE:
Timelines admits that Timelines.com, for a period sometime after it launched its service,
had a web page entitled "Popular Timelines" but states that this was done specifically to increase
internet search traffic through higher search results on Google and other search engines . Hand
Dep.

at

pp.

176,

223-24,

226.

Meanwhile,

Timelines '

URL

remained

http://timeliness.com/topics . ld. at p. 51 . With respect to the Battle of Bull Run, AI Capone, and
Amelia Earhart, Timelines admits that those pages appeared on its website.

Timelines also

acknowledges that the noun timeline can refer to a graphical chronological organization of
events or other information.
Paragraph 17 states:
After initiating this lawsuit, Plaintiff removed the "Popular Timelines" page from its
website and replaced it with a page entitled "Popular Topics ." (Hughes Decl. ~ 26, Ex. 25.)
Plaintiff also removed the tenn "timelines" from the names of the various categories identified
on this page so that, for example, "Timelines of Wars and Conflict" became "Wars and
Conflict," and "Timelines of Famous People" became "Famous People ." (Jd.) Plaintiff also
removed the term "Timeline" from the names of its various arrangements of infonnation in
chronological order and replaced it with the term "Events" so that, for example, the " AI Capone
10

Timeline" became "AI Capone Events" and the "Amelia Earhart Timeline" became "Amelia
Earhart Events." (Hughes Dec!.~ 27-29, Exs. 26-28.)

RESPONSE:
Plaintiff objects to this fact statement on the grounds that it is not properly submitted into
evidence because it simply references prints from a webpage and provides an affidavit from
Defense counsel that the pages are true and correct prints. However, web pages are not selfauthenticating, and Defendant does not cite any admissible evidence authenticating this
statement.

See the authority cited in response to Paragraph 5.

Accordingly, it should be

disregarded.
Subject to its objections, if the Court is inclined to consider thi s statement, Timelines
admits that it changed the titles of the matters referenced in the statement because it wanted to
increase what is known as Search Engine Optimization ("SEO") value. See SAF

~

22. SEO is a

way to make a website attractive to individuals who are conducting web searches , such as
through popular search engines Google, Yahoo and Bing, by causing the subject site to be
crawlable by the search bots and to generate links back to the site. !d. Stated otherwise, this was
done to increase traffic to Timelines.com from web searches. !d. One of the reasons that word
had to be used was because, among other reasons, Timelines believed that the popular search
engine Google required the words to actually appear on the web pages (and not simply in the
metatags). !d. Timelines had seen that inbound traffic to its website from web searches was
coming after searches for the term "timeline ." !d. After the SEO benefit leveled off, Tirnelines
removed the term and noted that the removal did not have a difference in web traffic coming to
the website. Jd.
Paragraph 18 states :
Mr. Brian Hand , Plaintiff's Co-founder and Chairman, added an event to Plaintiff's
Timelines.com website dated April 20, 2009, entitled: "Google Labs Launches Google News
Timeline," which stated: "Timelines are becoming an increasingly popular user interface.
11

Today, Google Labs launched a new product called Google News Timeline, which lays out the
top stories from Google News in columns for each day .... " (Hughes Decl. ~ 30, Ex. 29.)

RESPONSE:
Plaintiff objects to this fact statement on the ground that it is not properly submitted into
evidence because it simply references prints from a webpage and provides an affidavit from
Defense counsel that the pages are true and correct prints. However, web pages are not selfauthenticating, and Defendant does not cite any admissible evidence authenticating this
statement.

See the authority cited in response to Paragraph 5.

Accordingly, it should be

disregarded.
Subject to its objections, if the Court is inclined to consider this statement, Timelines
admits that Mr. Hand posted the material described.
Paragraph I 9 states:
Plaintiff has operated a blog at http://blog.timelines.com/ since 2008. Several blog posts
include uses of the terms "time line" and "timelines" to refer to an arrangement of information in
chronological order. (Hughes Decl. ~~ 31-32, Exs. 30-31. )

RESPONSE:
Plaintiff objects to this fact statement on the grounds that it is not properly submitted into
evidence because it simply references prints from a webpage and provides an affidavit from
Defense counsel that the pages are true and correct prints. However, web pages are not selfauthenticating, and Defendant does not cite any admissible evidence authenticating this
statement.

See the authority cited in response to Paragraph 5.

Accordingly, it should be

disregarded.
If the Court is inclined to consider the statement, Timelines admits that several historical
blog posts refer to the terms ''timeline" and ''timelines," but denies that this is relevant to the
motion.
Paragraph 20 states :
12

Plaintiff also launched and maintained a website dedicated solely to Rod Blagojevich
(previously available at www.rodblagojevich .com) that included an arrangement of information
related to Rod Blagojevich in chronological order called a "Timeline." (Hughes Decl. ~ 33, Ex.
32.)

RESPONSE:
Plaintiff objects to this fact statement on the grounds that it is not properly submitted into
evidence because it simply references prints from a webpage and provides an affidavit from
Defense counsel that the pages are true and correct prints. However, web pages are not selfauthenticating, and Defendant does not cite any admissible evidence authenticating this
statement.

See the authority cited in response to Paragraph 5.

Accordingly, it should be

disregarded .
Subject to its objections, if the Court is inclined to consider this statement, Timelines
denies that it posted the material described because it merely hosted web pages for a third party
under the web pages www.rodblagojevich.com. Hand Decl.

~

18. It did not post the material

described. Id.
Paragraph 21 states:
Customers of Plaintiffs Timeline SE service used the term "timeline(s)" in the name of
the outsourced chronologies of events posted on their websites , such as Boston.com' s "20 I 0
Massachusetts Gubernatorial Election Timeline," and " Celtics Timeline." (Hughes Dec!. ~~ 3436, Exs . 33-35.)

RESPONSE:
Plaintiff objects to this fact statement on the grounds that it is not properly submitted into
evidence because it simply references prints from a webpage and provides an affidavit from
Defense counsel that the pages are true and correct prints. However, web pages are not selfauthenticating, and Defendant does not cite any admissible evidence authenticating this
statement.

See the authority cited in response to Paragraph 5.

disregarded.

13

Accordingly, it should be

Subject to its objections, if the Court is inclined to consider this statement, Timelines
admits that its Timeline SE customers used the term "timeline" in certain outsourced graphical
chronologies but denies any further suggestion because the material cited supports no such
conclusion.
Paragraph 22 states:
With the exception of this lawsuit, Plaintiff has not made any effort to enforce its
purported rights in the alleged mark 'Timelines." (Hughes Decl. ~ 6, Ex. 5, Hand Depo. at
212:23-213:3.)

RESPONSE:
Denied. The Hand deposition pages cited do not support the statement that Timelines
"has not made any effort to enforce its purported rights in the alleged mark 'Timelines,"' but,
instead, the Hand depositions pages cited state "the only action the company has taken to enforce
its rights is this lawsuit." Those are two very different statements.

IV.

Uses of the Term "Timeline(s) by Third Party Competitors.

Paragraph 23 states:
Numerous third party competitors of Plaintiff have used the term "timeline(s)" to identify
or describe their timeline-related goods and services. In fact , the following entities, among
others, all used the term "timeline(s)" before Plaintiff first used "timelines" in 2009:
Timelineindex.com, Famento, Inc. ("Famento"), Kidasa Software ("Kidasa"), Underlying, Inc.
("Underlying"), Twitter, Inc. ("Twitter"), SmartDraw, Tom Snyder Productions, Inc. ("Tom
Snyder Productions"), International Reading Association, the Massachusetts Institute of
Technology ("MIT"), Timetoast ZTimeline, Allofme, Timeline Maker, HistoricaiTimeline.com,
Timelines.info, and Ourtimelines.com. (Hughes Decl. ~~ 37, 40-44, 48-52, 54-57, 59-62.)

RESPONSE:
Plaintiff objects to the citations to Hughes Declaration

~~

42, 55-57, 59-62 on the

grounds that they are not proper evidence because those citations simply reference prints from
web pages and provide an affidavit from Defense counsel that the pages are true and correct
prints.

However, web pages are not self-authenticating, and Defendant does not cite any

admissible evidence authenticating this statement.
14

See the authority cited m response to

Paragraph 5. Accordingly, these should be disregarded.
Plaintiff objects to the citations to Hughes Decl.

~~

37 (affidavit from Jan Battem,

purportedly executed on September 28, 2012 but never produced to Timelines) and 43-44
(affidavit from lillian West, purportedly executed on January 22, 2013 but not previously
produced to Timelines) on the grounds that Facebook never disclosed these individuals as
persons with knowledge in any initial disclosures or supplemental disclosures.

At best,

Timelines referenced their companies, Timelinelndex.com and Twitter, (see Facebook's
Supplemental Disclosures, a true and correct copy of which is filed herewith as Exhibit 92), but
that is not sufficient. See Fed. R. Civ. P. 37(c)(l) ("If a party fails to provide information or
identify a witness as required by Rule 26(a) or (e), the party is not allowed to use that
information or witness to supply evidence on a motion ... ."); Finley v. Marathon Oil Co., 75
F.3d 1225, 1231 (7th Cir. 1996); Kaplan v. City ofChicago, No. 99 C 1758,2004 WL 2496462,
at *2 (N.D. Ill. Nov. 4, 2004) (granting a motion strike portions of Local Rule 56.1 statements
that were from undisclosed witnesses); Hess v. Reg-Ellen Mach. Tool C01p. Employee Stock
Ownership Plan, No. 02 C 50007, 2003 WL 21209747, at *4 (N.D. Ill. May 22, 2003) (finding

that Plaintiff was prejudiced when defendant submitted affidavits of undisclosed witnesses at
summary judgment). Although the dates on these affidavits predate the recent filings, they were
not even produced earlier.
As to the reference to Hughes Decl. 40-41 (Dipity), Timelines admits that Dipity,
SmartDraw, Tom Snyder Productions, International Reading Association and MIT generically
used the term "timelines" before 2009. Of course, these uses do not mean that "Timelines" is
used generically by either Timelines or Facebook. See SAF

~

24.

Paragraph 24 states:
"Timelinelndex.com is a website that offers historical information and other content in
the form of various timelines, as well as timeline creation services;" these services were first

15

offered in October 2003. (Hughes Decl. ~ 37, Ex. 36, Affidavit of Jan Battem ~~ 2, 5.) The
banner at the top of Timelinelndex.com's home page states prominently: "Timelines, Who,
What, Where, When ... " (!d. ~ 3, Ex. A.) Timelinelndex.com also offers a "Time lines Poster"
and "Timeline Widgets." (!d.) According to Mr. Battem's affidavit, as of September 2012,
Timelinelndex.com has had over 5 million visitors (58% from the United States) and over 20
million page views. (/d.~ 10.)

RESPONSE:
Timelines objects to this fact statement on the grounds that it is based upon an affidavit
from a witness that was never disclosed and Timelines has no way to verify any of the matter
described. See the authority and arguments made in response to Paragraph 23.
Paragraph 25 states:
Xtimeline is a "timeline tool" offered by Famento, which "offer[s] historical information
and other content in the form of various time lines, as well as timeline creation services" through
the www.xtimeline.com website; these services were first offered in July 2007. (Hughes Decl. ~
39, Ex. 38, Affidavit of Kevin Chen ("Chen Aff.") ~~ 3, 6.) On its website, Xtimeline is defined
as "a free web-based timeline" and "a place for you to create, share and discuss interesting
timelines." (Jd. ~ 4, Ex. A; Hughes Decl., ~ 38, Ex. 37.) The Xtimeline home page includes: (i) a
link to "Featured Timelines"; (ii) a search bar that states "search for a timeline"; (iii) a prominent
graphic at the top that states: "Create a timeline!"; (iv) a link to "Recent Timeline Lists"; and (v)
a link to "Timeline Categories." (Chen Aff. ~ 4, Ex. A.) According to Mr. Chen's affidavit, as
of September 28, 2012, Famento had over 30,000 users on xtimeline.com (approximately 70%
located in the United States), over 239,000 monthly unique visitors (approximately 55% located
in the United States), and over 747,000 monthly page views. (ld. ~ 10.)

RESPONSE:
Timelines objects to this fact statement on the grounds that it is based upon an affidavit
from a witness that was never disclosed, and Timelines has no way to verify any of the matter
described. See the authority and arguments made in response to Paragraph 23.
Paragraph 26 states:
Underlying launched a "free digital timeline website" (available at www.dipity.com)
under the mark DIPITY around March 2008. (Hughes Decl. ~~ 40, 41, Exs. 39, 40, Deposition
of Mr. Derek Dukes at 11:25-12:6.) Underlying owns a trademark registration for the mark
DIPITY for: "Computer services, namely, providing on-line, non-downloadable software for the
creation of timelines based on user-supplied information; Computer services, namely, hosting
and maintaining an online website for users to create timelines based on user-supplied
information, as well as view the timelines of others." (Jd., Pl. Depo. Ex. 2.) Dipity's users can
select the "Create a Time line" tab identified at the top of Dipity' s home page to "create, share,
16

embed and collaborate on interactive, visually engaging timelines." (Hughes Decl.

~

40, Ex. 39.)

RESPONSE:
Admitted.
Paragraph 27 states:
Twitter, a real-time information network that connects over 200 million users using small
bursts of information called "Tweets," has been using the term "timeline" since 2006 to describe
a collected stream of Tweets listed in real-time chronological order. Twitter uses the term
"timeline" because it believes it is the generic term for such temporal lists. (Hughes Dec!. ~~ 43,
44, Exs. 42, 43.)

RESPONSE:
Timelines objects to this fact statement on the grounds that it is based upon an affidavit
from a witness that was never disclosed, and Time lines has no way to verify any of the matter
described. See the authority and arguments made in response to Paragraph 23.
Paragraph 28 states:
Webalon Ltd. ("Webalon") began offering timeline creation software under the brand
TIKI-TOKI (available at www.tiki-toki.com) in March 20 II. (Hughes Decl. ~ 45, Ex. 44,
Affidavit of Alex Keams~~ 1-3.) Tiki-Toki's home page offers an example of a timeline and
states: "Create beautiful timelines!"; "Tiki-Toki is the best and easiest way to create beautiful
interactive timelines that you can share on the web"; and "You'll be creating timelines in
minutes." (ld. at~ 4, Ex. A.) As of August 31, 2012, Tiki-Toki had more than 60,000 users of
its timeline software. (ld. at~ 9.)

RESPONSE:
Timelines objects to this statement on the grounds that it is based upon an affidavit from
a witness that was never disclosed, and Timelines has no way to verify any of the matter
described. See the authority and arguments made in response to Paragraph 23.
Paragraph 29 states:
Kidasa has operated the website vvww.timelinesoftware.com, which provides general
information about timelines and has been used to promote its timeline creation software products
since 2002. (Hughes Dec!. ~ 42, Ex. 41.) The term "Timelines" is featured prominently at the
top of home page, as shown below:

17

Kidasa's website also provides the commonly accepted meaning of a timeline: "Generally, a
timeline shows a sequence of events or projects over a period of time" (ld. ) (see screenshot
above).

RESPONSE:
Plaintiff objects to this fact statement on the grounds that it is not properly submitted into
evidence because it simply references prints from a webpage and provides an affidavit from
Defense counsel that the pages are true and correct prints. However, web pages are not selfauthenticating, and Defendant does not cite any admissible evidence authenticating this
statement.

See the authority cited in response to Paragraph 5.

Accordingly, it should be

disregarded.
Subject to its objections, if the Court is inclined to consider this fact statement, Timelines
admits that the Kidasa website is partially described as counsel set forth .
Paragraph 30 states:
Tom Snyder Productions has offered the Time liner product since 1987, which is an
"educational software that's delivered on a CD that allows teachers or students in their class to
type in dates and facts and the computer will create a scaled timeline that you could print out"
and uses the term "timeline" to describe the Timeliner product " because the program creates
timelines, so it would be natural to use the word 'timeline' [to] describe what Timeliner does."
(Hughes Decl. ~5 1 , Ex. 50, Deposition ofMr. Richard Abrams at 14:15-13; 37:2-38:23.)

RESPONSE:
Admitted.
Paragraph 31 states:
International Reading Association has offered a "web-based Timeline Tool" since
approximately 2003 and identifies the tool as the "Timeline Tool" because "[i]t creates a
timeline." (Hughes Decl. ~53 , Ex. 51, Deposition of Ms. Bridget Hilferty at 17:10-19.)

18

RESPONSE:
Admitted.
Paragraph 32 states :
SmartDraw has offered timeline creation software since as early as 1996 and has used the
term "timeline" in describing its software because it is "descriptive of the feature." (Hughes
Dec!. 149, Ex. 48, Deposition of Mr. Anthony Patterson at 26:6-15.) See also (Hughes Dec!. 1
48, Ex. 47.)

RESPONSE:
Admitted.
Paragraph 33 states:
Mnemograph LLC ("Mnemograph") has offered "free web-based timeline software"
since February 2008 and has used the term "timeline" to refer to its web-based software because
"[t]he word timeline is probably just the most accurate word that people in the general public
would have in their vocabulary to understand what it is that we have as a product. It's a common
word that ' s used to refer to a visual display of historical information on a horizontal axis."
(Hughes Dec!., 147, Ex. 46 .)

RESPONSE:
Admitted.
Paragraph 34 states:
MIT developed a timeline software program in 2006, available at http://www.similewidgets.org/timeline/. (Hughes Decl. 11 53-54, Exs. 52, 53.) "The Timeline project was a
JavaScript software library that aimed to make it easy, at least easier, for individuals to create
timeline visualizations of structured data that they owned." (Hughes Dec!. 1 54, Ex. 53,
Deposition of Dr. David Karger, MIT designee, at 16:5-11.) "Timeline" is used to describe the
software "because it's displaying a timeline." (ld. at 54:22-25.) If MIT was prevented from
using the term "timeline" it would not be able to properly convey the purpose of the software, at
least " not without a lot of roundabout circumlocutions." (ld. at 55: 15-20.)

RESPONSE:
Admitted.
Paragraph 35 states:
The founders of Timelineslndex.com, Famento, and Webalon have each provided a
swom statement in the form of an affidavit stating that the tenn "timeline" identifies their goods
and services because their goods and services enable users to view and create timelines, and that
19

they use the term "timeline(s)" to identify their goods and services because it is the generic name
for their goods and sen·ices. (Hughes Decl. ~~ 37, 39, 45, Exs. 36, 38, 44.)

RESPONSE:
Timelines objects to this fact statement on that grounds that it is based upon affidavits
from witnesses that were never disclosed, and Timelines has no way to verify any of the matter
described. See the authority and arguments made in response to Paragraph 23.
Paragraph 36 states:
Witnesses on behalf of Timelineindex, Famento, Webalon, Mnemograph, International
Reading Association, and MIT have declared under penalty of perjury that their companies
would be at a competitive disadvantage if they were not allowed to use the term "timeline" to
identify or describe their timeline goods and/or services. (Hughes Decl. ~~ 37, 39, 45, 47, 52, 54,
Exs. 36, 38, 44, 46, 51, 53.)

RESPONSE:
Timelines objects to this fact statement as it regards Timelinelndex, Famento and
Webalon on the grounds that it is based upon affidavits from witnesses that were never disclosed,
and Timelines has no way to verify any of the matter described. See the authority and arguments
made in response to Paragraph 23.
As to Mnemograph, International Reading Association and MIT, Timelines admits those
statements were made but denies that they are competitors of Timelines and thus would be at a
competitive disadvantage .
Paragraph 37 states:
Witnesses on behalf of Timelineindex, Famento, Underlying, Webalon, Tom Snyder
Productions, International Reading Association, SmartDraw, Mnemograph, and MIT have
declared under penalty of perjury that they are not aware of any instances of confusion arising
from their use of the term "timeline(s)" in connection with their timeline goods and services, and
that neither Plaintiff nor any third party has ever objected to their use of the term "timeline(s)."
(Hughes Decl. ~~ 37, 39, 41 , 45, 51, 52, 49, 47, 54, Exs. 36, 38, 40, 44, 50, 51, 48, 46, 53.)

RESPONSE:
Timelines objects to this fact statement as it regards Timelinelndex, Famento and

20

Webalon because it is based upon affidavits from witnesses that were never disclosed, and
Timelines has no way to verify any of the matter described . See the authority and arguments
made in response to Paragraph 23.
As to Underlying, Tom Snyder Productions, International Reading Association,
SmartDraw, Mnemograph and MIT, Timelines admits that the witnesses for those companies
were not aware of any confusion and that they were not aware of any third-party objections, and
that Timeline has not objected to their use of the term "timeline(s)."

V.

Consumer Sun'ey Evidence Shows that the Term "Timelines" is a Common Name.

Paragraph 38 states:
Dr. Deborah Jay conducted a Teflon model survey to determine the primary significance
of the terms "timeline" and "timelines" among individuals age 14 and older who had accessed or
were likely to access a social networking \\·ebsite or a website where a user could record events
and contribute descriptions, photos, videos and links to related events. (Hughes Dec!. ~ 63, Ex.
62, p. 7.) Only respondents who demonstrated an understanding of the difference between a
brand name and a common name were administered the substantive portion of the survey
questionnaire . (Id., p. II .)

RESPONSE:
Timelines admits that Dr. Jay purported to perform the survey described in this
paragraph, but Timelines denies that her results are valid . See Timelines' Response to Paragraph
39.
Paragraph 39 states:
68% of respondents in Dr. Jay's survey expressed a belief that the term "timeline" was
generic (not a brand) when asked whether "timeline" was a common name or brand name when
used in connection with a website or website feature; 69% of respondents expressed a belief that
the term "timelines" was generic when asked the same question regarding "timelines." (ld. , pp.
17-25.) 24% of the respondents believed the terms "timeline" and "timelines" were brand
names . (Jd.)

RESPONSE:
Denied because Dr. Jay' s survey was improperly done. Timelines had its expert Dr. Eli
Seggev review and critique Dr. Jay' s expert report, and he concluded that the survey's results
21

were invalid for a number of reasons. See Timelines' Rebuttal Report of Dr. Jay from Dr.
Seggev ("Seggev Report"), a true and correct copy of which is filed herewith as Exhibit 93 . As
set forth therein, Dr. Seggev determined that Dr. Jay's survey contained two irresoluble biasesmethodology biases and analysis biases-that render the survey' s results invalid. Id.

at~~

3, 5,

7, 11 , 14, 15, 19. The methodology biases included marketplace context bias, auditory bias, and
questionnaire bias. Id. Dr. Seggev concluded that, under the circumstances of this case, a phone
survey was the wrong methodology. Id.

at~~

5-l 0; see also Deposition of Dr. Seggev (" Seggev

Dep.") at pp. 218, 222-23 . True and correct copies of the pages from the Seggev deposition cited
herein are attached hereto as Exhibit 94.). Dr. Seggev further concluded that Jay ' s survey failed
to properly randomize the questions presented to respondents and failed to take into account the
"Product Life Cycle" concept. See Seggev Report

at~~

11-1 8; see also Seggev Dep. at pp. 224-

25.
VI.

The U.S. Patent & Trademark Office Refused to Register Plaintiff's Application for
"Timelines" on the Ground that the Term is Merely Descriptive.

Paragraph 40 states:
On September 26 , 2011, shortly after filing this lawsuit, Plaintiff filed an application with
the PTO to register the alleged mark "Timelines" in connection with a description of services
based, in part, on services identified in Facebook's own trademark registrations. (Hughes Decl.
~~ 6, 64, Exs. 5, 63, Hand Depo. at 198:7-200:22.)

RESPONSE:
Admitted.
Paragraph 41 states :
The PTO refused to register Plaintiff's alleged mark in connection with the identified
services on the ground that the term was merely descriptive, citing in support of its refusal many
ofthe third parties mentioned above. (Hughes Decl. ~ 64, Ex. 63 at FB_TL_00002591-2594.)

RESPONSE:
Timelines admits that the PTO refused to register the referenced mark because of

22

descriptiveness (not genericness), but denies the vague reference to "many of the third parties
mentioned above" because there is no way to accurately respond to that fact statement.
Answering further, the PTO has granted Timelines' other three registrations, making clear that it
does not believe the term is generic or descriptive for Timelines' listed goods and services. See
SAF ~ 9.
Paragraph 42 states:
The PTO Examining Attorney noted that "[i]n this case, the wording 'timelines' as
applied to the applicant's web-based software services describes a feature, characteristic and
function ofthose services." (ld. at FB_TL_00002591.)

RESPONSE:
Timelines admits that the PTO refused to register the referenced mark because of
descriptiYeness (not genericness).

Answering further, the PTO has granted Timelines' other

three registrations, which are presumptively valid, making clear that the PTO does not believe
the term is generic or descriptive for Timelines' listed goods and services. See SAF

~

9.

Paragraph 43 states:
Plaintiff did not respond to the PTO's refusal and as a result, the PTO ultimately deemed
the application to be abandoned. (Id. at FB _ TL_ 00002642.)

RESPONSE:
Admitted.

VII.

There Is No Evidence Demonstrating that Plaintiff's Alleged Mark Has Acquired
Secondary Meaning.

Paragraph 44 states:
Plaintiff has not produced consumer survey evidence or direct consumer testimony
relevant to establishing secondary meaning of the term ''timelines." (Hughes Decl. ~ 65.)

RESPONSE:
Plaintiff objects that this fact statement is not relevant because Plaintiff has no obligation
to conduct a survey of any kind and it is unnecessary for Plaintiff to conduct a survey when, as
23

here, three applications were granted and the marks are per se niether generic nor descriptive, in
which case there is no need to show secondary meaning, or if descriptive, the USPTO has
already decided that secondary meaning exists.
Paragraph 45 states:
Timelines has spent a de minimus amount of money, if any, on advertising its services
provided through timelines.com. (Hughes Decl. ~ 6, Ex. 5, Hand Depo. at 177:5-21; 180:4181 :7; 182: 12-25; Hughes Dec I.~ 73 , Ex. 71 , Armour Depo. at 89:23-90:17.)

RESPONSE:
Denied. Although anything less than millions of dollars spent is de minimus to Facebook,
Timelines has spent from $100,000 to $300,000 on advertising its services. Hand Dep. pp. 184.
As a result of Timelines' advertising, Timelines.com has received 3 to 4 million visitors. Hand
Dep. at p. 186. Timelines ' future advertising budget depends on whether Facebook continues to
use Timelines' federally registered trademark TIMELINES because "it's kind of hard to spend
money on advertising when someone else is using your trademark and your brand." Hand Dep.
atp.185.
Paragraph 46 states:
Plaintif-fs total sales during the past 3 years are approximately- (Hughes Decl. ~
66, Ex. 64.)

RESPONSE:
Admitted.
Paragraph 4 7 states:
Timelines.com has 1,209 active users. (Hughes Decl.

~

67, Ex. 65.)

RESPONSE:
Denied. The material cited identifies registered users, not active users.

VIII. The "Timeline" Feature on Facebook.
Paragraph 48 states :
24

Facebook' s "timeline" feature "changes the default profile from a list of your most recent
updates to a complete summary of your entire life since birth .... The new Facebook profile is
divided into two main columns, [typically] with a line down the middle representing the passage
of time," as well as a navigational tool on the top right corner of the user interface allowing users
to easily access content posted in a particular month and year. (Hughes Decl. ~ 68, Ex. 66.)
Below is an excerpt of the redesigned proftle as a timeline.

B re n dan H ughes

.,.... ....

•
.. ,.
-J..._..... ..
, ~..,.~--~··'~-......-.. .. ___ ,......""'dw'
-•:~et•.-,.

...w..-~.~-

,...,

·-

li4'l"'O..-t•-~J­

,...

lliJI~

f'-'t,U

. . _ _ .... , o::f"

1

_

*""

_.

......~ -··13 ..::.'a:. ..-,~~e.•
TH~ S.'f!JW. '• ~' -· ~
u..i'ri··~­

.~u...

(Hughes Decl.

~

69, Ex. 67.)

RESPONSE:
Denied. Plaintiff objects to this fact statement on the grounds that it is not properly
submitted into evidence because it simply references prints from a webpage and provides an
affidavit from Defense counsel that the pages are true and correct prints. However, web pages
are not self-authenticating and Defendant does not cite any admissible evidence authenticating
this statement. See the authority cited in response to Paragraph 5. Accordingly, it should be
disregarded.
Subject to its objections, if the Court is inclined to consider the statement, Timelines
denies it because the statement is a gross mischaracterization of the "timeline" feature right down
to the lower-case description of "timeline" in light of the overwhelming evidence that Facebook

25

treats "Timeline" as a trademark. See SAF ~~ 25-51.
Paragraph 49 states:
While Jogged into Facebook, a registered user can navigate through Facebook's different
features by accessing a drop down menu. Set forth below are depictions of such a drop down
menu:
facebook
Bre-ndno

Hug~e~

.,:::P How ""'
~ ._..: nrne~nc
!j_ )

f

.lOOt>~

-

5tatu5-

o

Photo

~. PI• «

...Jufe <v~l

1-

..ODr.-. r..t ~~ol'l"<
IWYO' ~¥'1l t'l., ~~ &~
~o:w~t~'
~:H : l .xl!2

...

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~w

,..,T'hol.:fn... l171...
~~ ·

... ollll~tJ
h ·d yn H<JPI'h:n-E'~-.~fJi

~~~

it

.~.

facebook
arcnct;o" Hugh,.s

1!!:,11 ._..:.. 'T.I"'t~

Ill Work and Educa

~~.

j .tt.b61.tt

,l_ Fiot.....X

·~ ~~

tr.•lo.v

_Q_ folllp

lll~t

/ •.:._j, o
!

\.·'·" I
. ;,<:

OF~.;
mJ :;~r.o.J;

] ti:·:41 ~

I

History by Year
.,..

r;,.~ ...
,.Jrd<ltt)OIOVIIIndottf."tl.lrlo.-'lltyiiJ'I'I

'"""'

I
ftv

a:.

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... ~Ado...A~JftOII\ ...-.-..~brll"'/><o:f*~'l

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Basic. Info

~~ IN"

,. . ,qr..

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YQV:;~rd,.ett••V1c0 - ...

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BoviJ • •KI ~ PotilllOVodk<l
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26

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,_ts

(Hughes Decl.,-r ,-r 69-70, Exs. 67-68.)

RESPONSE:
Plaintiff objects to this fact statement on the grounds that it is not properly submitted into
evidence because it simply references prints from a webpage and provides an affidavit from
Defense counsel that the pages are true and correct prints. However, web pages are not selfauthenticating, and Defendant does not cite any admissible evidence authenticating this
statement.

See the authority cited in response to Paragraph 5.

Accordingly, it should be

disregarded.
Subject to its objections, if the Court is inclined to consider the statement, then Plaintiff
admits it.
Paragraph 50 states:
In addition to the "timeline" feature, the drop down menu often includes features such as
"Map," "Friends," "Photos," and "Events." The term "Map" describes a feature that displays the
geographic location of events and experiences; the term "Friends" describes a feature that lists a
user's friends and connections on Facebook; the tem1 "Photos" describes a feature that displays
photographs; and the term "Events" describes a feature that identifies and provides information
regarding specific events . (Hughes Dec!. ,-r,-r 69-70, Exs. 67-68 .)

RESPONSE:
Plaintiff objects to this fact statement on the grounds that it is not properly submitted into
e\ idence because it simply references prints from a webpage and provides an affidavit from
Defense counsel that the pages are true and correct prints. However, web pages are not selfauthenticating, and Defendant does not cite any admissible evidence authenticating this
statement.

See the authority cited in response to Paragraph 5.

Accordingly, it should be

disregarded.
Subject to its objections, if the Court were inclined to consider the statement, then as to
the reference to the "timeline" feature, the statement is a gross mischaracterization of the
"timeline" feature right down to the lower-case description of "timeline" in light of the
27

overwhelming evidence that Facebook treats "Timeline" as a trademark. See SAF

~~

25-51.

Timelines admits that the other terms describe certain parts of Facebook to which a user can
navigate (but whether those are features or otherwise is not something supported by any evidence
cited to support the fact statement).
Paragraph 51 states:
Facebook selected the term "time line" to identify the redesign of the profile
the term
a user's content as a timeline.

RESPONSE:
Denied.

Timelines denies this fact statement because the statement is a gross

mischaracterization of the "timeline" feature right down to the lower-case description of
"timeline" in light of the overwhelming evidence that Facebook treats "Timeline" as a
trademark. See SAF

~~

25-51.

Paragraph 52 states:
Facebook does not use any trademark symbols in connection with its use of the term
"timeline." (Hughes Decl. ~ 72, Ex. 70.)

RESPONSE:
Denied.

Timelines denies this fact statement because the statement is a gross

mischaracterization of the "timeline" feature right down to the lower-case description of
"timeline" in light of the overwhelming evidence that Facebook treats "Timeline" as a
trademark. See SAF ~~ 25-51.
Paragraph 53 states:
Facebook also uses the term "timeline" in textual sentences, such as the following:
"Your Stories: Share and highlight your most memorable posts, photos and life events on your
timeline."; "Your Cover: ... It's the first thing people see when they visit your timeline."; "You
choose what's featured on your timeline." (Hughes Decl. ~ 72, Ex. 70.)

RESPONSE:

28

Plaintiff objects to this fact statement on the grounds that it is not properly submitted into
evidence because it simply references prints from a webpage and provides an affidavit from
Defense counsel that the pages are true and correct prints . However, web pages are not self·
authenticating, and Defendant does not cite any admissible evidence authenticating this
statement.

See the authority cited in response to Paragraph 5.

Accordingly, it should be

disregarded .
If the Court is inclined to consider the statement, Timelines admits that Facebook uses
the term "timeline" in the textual sentences noted but further notes that the "Introducing
Timeline" web page from which Facebook lifts these sentences contains many references to
capital "T" Timeline as a product, including "Introducing Timeline" and "More About
Timeline,"

and

"Get

Timeline."

See

Introducing

Time line,

FACEBOOK.COM,

https ://www.facebook.com/about/timeline (last visited June 28, 20 12), a true and correct copy of
which is attached hereto as Exhibit 15; see also Deposition of Samuel Lessin at pp. 51·53
(admitting this is a true and correct document), a true and correct copy of which is attached
hereto as Exhibit 5.

29

TIMELINES, INC.'S LOCAL RULE 56.1(b)(3)(C) STATEMENT OF ADDITIONAL
MATERIAL FACTS THAT REQUIRE THE DENIAL OF
FACEBOOK, INC.'S MOTION FOR SUMMARY JUDGMENT
Timelines, Inc.
1.

Timelines, Inc. ("Timelines") is a small, Chicago company that was founded in

January 2007. See Declaration of Brian Hand ("Hand Dec!.") ,-r 2, a true and correct copy of
which is filed herewith as Exhibit 1; Deposition of Brian Hand ("Hand Dep. ") at pp. 25-31 . True
and correct copies of the Hand Deposition are filed herewith as Exhibit 2. It operated with five
employees, all of whom were let go so that the company could better afford this litigation. Hand
Dep. at pp. 30-31.
2.

Timelines offers a wide variety of online services, including two websites, which

are Timelines.com and LifeSnapz.com, an application services provider called "Timelines SE,"
and two applications, one called ;'Photogram" and the other called "Disaster of the Day." !d. at
133.
3.

Timelines.com allows users to record and share events, and contribute

descriptions , photos, videos, geographic locations and links (collectively for ease of reference
"Content") related to events . Hand Decl. ,-r 5. Anyone can gain access and be able to post
Content to Timelines.com simply by creating an account at no charge. Id.
4.

Thus, by way of illustration, on Timelines.com, a user can record a personal or

historic event that he or she wants to share with the world , ranging from a daughter's one year
birthday party or a family wedding to an obscure basketball game or a much more public event
like the Inauguration of President Obama. !d. ,-r 6. In connection with any such posted event,
any user who accesses the website can add additional or new Content for that event. !d. For
example, USER A , a student, accesses Timelines.com and posts information about the American
Civil War. USER B, a professor with no relation to USER A, may access the website and post
30

additional Content about one or more of the battles of the Civil War. !d. USER B may also post
additional information about the Civil War, perhaps about the existing technology of the day. Id
Other Timelines.com users can contribute additional content related to the events, including
descriptions , photos, videos, geographic locations and links. See Deposition of Bob Armour
("Armour Dep.") at pp. 26-27. 68-69, 75-77. True and correct copies of the pages from the
Armour Deposition are filed herewith as Exhibit 3. The concept around Timelines.com was to
let the people of the world record the history of the world, however they detine that history. !d.
at p. 89.
5.

Timelines also owns and operates LifeSnapz.com, which is aimed specifically at

families to allow them to share and record events with designated people that they wanted to
share those events with. !d. at p. 45 .
6.

Timelines also owns and operates Timelines SE, an application service provider

("ASP"). Hand Dep. at p. I 33; Hand Decl.

1 7.

Before its customers cancelled or failed to

renew these services, Timelines organized certain newspapers' content regarding, for example,
sports information. ld
7.

Timelines also owns and operates Photogram, an application that allows people to

share photos quickly and easily on their phones to a designated group of people. Armour Dep. at
p. 39; Hand Dep. at p. 133-34.
8.

Timelines also owns and operates Disaster of the Day, an application that

showcased on a daily basis 700-plus disasters that happened over the course of history. Hand
Dep. at pp. 134-36.

Timelines, Inc.'s Federally Registered Trademarks

9.

Timelines is the owner of Federal Trademark Registration Nos. 3,684,074 for

"Timelines," 3, 764,134 for "Timelines.com," and 3,784,720 for its "Timelines" design mark.
31

See Facebook's Answer to Timelines' First Amended Complaint '1f 5 (admitting that Timelines
owns these three marks); Hand Decl. '1f3. True and correct copies of the three registrations from
the United States Patent and Trademark Office ("USPTO") are attached hereto as Group
Exhibit 4.
10.

Timelines uses the TIMELINES Marks in connection with its goods and services

described herein, including without limitation "[p]roviding a web site that gives users the ability
to create customized web pages featuring user-defined information about historical, current and
upcoming events" and "managing web sites of others in the fields of historical, current and
upcoming events." See Ex. 4.
11.

Timelines filed its first application for the mark "Time lines" on May 23 , 2008, its

first use was September 15, 2008, its first use in commerce was April 20, 2009, and its
subsequent registration for "TIMELINES" issued on September 15, 2009. See Ex. 4.
12.

Timelines filed for the Timelines.com mark on May 23, 2008, its first use was

September 15, 2008 , its first use in commerce was April 20, 2009, and the registration date was
March 23,2010. See Ex. 4.
13.

Timelines filed for the "Timelines" design mark on October 5, 2009, its first use

was April 20, 2009, its first use in commerce was April 20, 2009, and the registration date was
May 4, 2010. See Ex. 4.
14.

Timelines has continuously and consistently used the TIMELINES Marks on the

services enumerated in the foregoing registrations since on or about September 15, 2008 to
promote and endorse its business. Hand Decl.

~

11. Cumulatively, 3-4 million people have

visited the website. Hand Dep. at p. 186.
15.

During 2011 and 2012, the Timelines.com website has averaged approximately

94,000 visitors per month.

Hand Dec!. '1f 12.
32

Timelines believed that Timelines.com could

become a repository of information that happened all over the world, and that it could earn
revenue by selling advertising on the site. Hand Dep. at pp. 141-42
16.

Timelines has actively promoted Timelines.com and its goods and services using

the TIMELINES Marks. Such promotion has included the use of social media, such as Twitter
and Facebook, through posting events of the day, and Timelines frequently reaches out to
bloggers and educators to promote its products. Hand Dep. at pp. 167, 175-76; Hand Decl.
17.

~

13.

Timelines maintains a Facebook page at www.facebook.com/timelines, because

Facebook is the world's largest social media company. Hand Dep. at pp. 214-15.
18.

Timelines has been nominated or recognized for numerous awards and

accomplishments, including by way of example, an Open Web Award nomination, a
Mashable.com recommendation for web-savvy families, recognition on Television Channel G4 ' s
"Attack of the Show" program, a named finalist for the rllinois Technology Association's
City Lights Award in the Newcomer category, and as a finalist for the 2010 Chicago Innovation
Awards. Hand
19.

Dec!.~

14.

Timelines has invested several million dollars into its business. Hand Dep. at p.

32; Hand Decl. ,-r 15 .
20.

In addition to having a federal registration on the TIMELINES Marks and the

strong nature of the TIMELINES Marks due to their suggestive characteristics, the time and
effort that Timelines has put into developing and marketing the TIMELINES Marks has made it
so that the TIMELINES Marks have secondary meaning and the public associates the
TIMELINES Marks as identifiers for Timelines' goods and services. Hand Decl. ,-r 17; Hand
Dep. at p. 185.
21.

Timelines ' name, Timelines, was never about having a company where a person

could go to create or see a "timeline ." Hand Dep. at pp. 37-38, 46, 60 . The company is called
33

Timelines and has a site called Timelines.com with no timelines on it, because there are not
graphical displays of chronological information. ld. at pp. 46, 53 . For Timelines , a "timeline" is
a graphical presentation of things that happen over time with a horizontal or vertical line, with
appendages coming off of the line indicating different points in time and information about
something ascribed to that point in time. Jd.
22.

~~

37-38 . Timelines does not do this. ld.

~~

46.

After being in business for a period of time, Timelines added the phrase "Popular

Timelines" to its webpage in order to increase what is known as Search Engine Optimization
("SEO") value. Jd. at pp. 46-48, 59. This was done to increase traffic to the Timelines.com
website from web searches. Jd. at 60. One of the reasons that word had to be used was because,
among other reasons, Timelines believed that the popular search engine Google required the
words to actually appear on the web pages (and not in the metatags). Jd. at p. 61. Timelines had
seen that inbound traffic to its website from web searches was coming after searches for the term
"timeline." Jd. at p. 48. After the SEO benefit leveled off, Timelines removed the term and
noted that the removal did not have a difference in web traffic coming to the website. Jd. at pp.
223-24.

SEO is a way to make a website attractive to individuals who are conducting web

searches, such as on Google, Yahoo and Bing, by causing the subject site to be crawl able by the
search bots and to generate links back to the site. Armour Dep. at pp. 82-83.
23 .

Timelines acknowledges that it has a timeline on LifeSnapz.com, that the term

timeline was used in a generic sense to describe the graphical representation that it has on part of
that service in at least one instance, and that there is a graphical time line on Timelines SE. Hand
Dep. pp. 43 , 108. But, there are not timelines on Timelines.com because there is no graphical
presentation of information there. Jd. at pp. 43-44.
24.

Timelines was not concerned about Dipity's genenc use of the term timeline

because it was being used in the generic sense. I d. at p. 119. Timelines was not concerned with
34

other companies' use of the term timeline in a generic sense because Timelines does not use the
term in such a manner. Id. at p. 211. Dipity offers a technical solution to a person to create a
timeline for a task, while Timelines.com offers a service to record history collaboratively and in
an event-by-event basis and connect those events with anybody else that has recorded an event
on Timelines.com. Armour Dep. at p. 62.
Facebook Announces Its "Timeline.'' Holds A Televised Conference,
And Uses The Term In A Brand And Trademark Way
25.

Facebook has admitted that it was aware of Timelines before it announced

Facebook "Timeline." See Facebook's Answer to Plaintiffs First Amended Complaint and
Counterclaims Against Plaintiff~ 1, ECF No. 33.
See Deposition of Sam Lessin ("Lessin Dep.") at pp. 54-55. True

and correct copies of the pages from the Lessin Dep. cited herein are filed herewith as Exhibit 5.
Facebook was developing its "Timeline" to replace, in part, its prior "Wall." Id. at pp. 54-55,
111-12

A true and correct
copy of the first page

e-mail is attached hereto as Exhibit 6.

See also Face

a true and correct copy of

which is attached hereto as Exhibit 7, (noting at Highlight No. 3 therein as follows: -

-Facebook's Response to Timelines' Third Set of Requests To Admit No. 60, admitting that
t h e - document is an authentic document, a true and correct copy of which is filed
herewith as Exhibit 8; Lessin Dep. at p. 91.

35

-

Lessin Dep. at p. 86.
26.

Contemporaneous with the development of Facebook's "Timeline," Mr.

Zuckerberg commented internally to Face book's employees on a number of topics in advance of
an upcoming Facebook developers conference to be held in September 2011 (referenced below).

See Ex. 7 (emphasis added); see also Ex. 8 No. 60 (admitting that
Ex. 7 is an authentic document; Lessin Dep. at p. 91 (admitting that Ex. 7 is an authentic
document).
27.

-

See Sam Lessin, September 16, 2011 "post," a true and correct copy of which is filed

herewith as Exhibit 9; see aLso Lessin Dep. pp. 134-37 (admitting that Ex. 9 is an authentic
document).
28.

On September 22, 2011, Facebook held its fourth annual Developers' conference

(also known as the f8 Conference). A video of the opening presentation from this F8 conference
is filed with these Response Materials as Exhibit 10. See Facebook' s Response to Request to
Admit No. 1 in Time lines' First Set of Requests to Admit, a true and correct copy of which is
filed herewith as Exhibit 11.
29.

At this conference, Mr. Zuckerberg, announced Facebook's new "Timeline" in his

live presentation (which appears after the Andy Samberg humorous introduction). See Ex. 10.
36

Mr. Zuckerberg's presentation begins at approximately 7 minutes and 40 seconds into the video
(hereafter we refer to 7:40, etc. for time references).

30.

The precursor to Facebook's "Timeline" was a page called the "Wall." Ex. 10

(discussion begins at approximately 12:05). Facebook had trademarked the term "Wall." A true
and correct copy of the USPTO registration with Reg. No. 3,723,894 is attached hereto as
Exhibit 12.
31.

At approximately 13:35, Mr. Zuckerberg begins the announcement of Facebook's

new "Timeline," which he calls the "heart of your Facebook experience." Ex. I 0. He then says
that Facebook is calling it "Timeline," with a capital "T," which is projected onto a screen
behind him in a brand and trademark ¥.-ay. Jd. at 14:00 - 14:30. Mr. Zuckerberg notes that
"Timeline" is just like the "Wall," which it replaced, but is "much more nicely designed." Id.
Throughout the presentation, "Timeline" appeared behind Mr. Zuckerberg, used with a capital

"T." Id.
32.

At 31:20, a video that Mr. Zuckerberg played for the audience about Facebook's

"Timeline" finishes and the screen flashes "Introducing Timeline" (again using a capital 'T'').

!d.
3 3.

Attached hereto as Exhibit 13 are true and correct copies of certain of the pages

from Facebook's Amendment No. 8 to is Form S-1 Registration Statement that Facebook filed
with the Securities and Exchange Commission in connection with its Initial Public Offering
("IPO"). See Ex. II at No. 7. Within this filing with SEC, Facebook referred to its "Timeline"
in a brand and trademark way, calling it a "product," Ex. 13 at pp. 4, 83, 86, 94, 95, 96
(underlined), and always using a capital "T" to describe it, !d. at pp. 4, 53, 83, 86, 94, 95, 96
(underlined).

37

34.

Facebook's Rule 30(b)(6) corporate deponent, Sam Lessin, who also is

Facebook's Director of Product Placement, referred to Facebook's "Timeline" as a product.
Lessin Dep. at pp. 23, 29-30.
35.

Eric Antonow, Facebook's vice president of product marketing consistently refers

to Facebook's Timeline as a product See Deposition of Eric Antonow ("Antonow Dep.") at pp.
73, 80, 81, 87. True and correct copies of the pages cited from the Antonow Dep. are filed
herewith as Exhibit 14.
36.

Facebook describes its Timeline product as a feature which allows Facebook's

users to review the timeline of all posts that they have made to Facebook. See Lessin Dep. at p.
49. Face book also describes it as a chronological expression of information that a Facebook user
has entered into Facebook. Id.
37.

Facebook also describes its Timeline to its users as "your collection of photos,

stories and experiences that tell your story."

See Lessin Dep. at pp . 51, 52-53; see also

Facebook's Marketing and Help Center page, a true and correct copy of which is attached hereto
as Exhibit 15.
38.

Lessin Dep. at p. 64.
39.
and secured
headlines from media such as "Facebook Timeline Review:

This is the Greatest Thing

Facebook's Ever Done." See Facebook's post-f8 PowerPoint presentation, a true and correct

38

copy of which is filed herewith as Exhibit 16; see also Ex. 8 at No. 71 (admitting this is true and
correct document).
40.

When Facebook "rolled out" Timeline after the aforementioned f8 Conference, it

made engineering changes to the Facebook website that caused people searching for Timelines'
Facebook page to, instead, be directed to Facebook's Timeline page, and this lasted for at least a
week. Lessin Dep. at p.

277~83.

Facebook only corrected the

re~direction

after Timelines filed

this lawsuit. !d.
41.

Facebook's use of Timelines' trademarks has dried up Timelines' funding, and

has called into question Timelines' business model because it is difficult for Timelines to
compete in an environment where the world's biggest social media company is "stomping" all
over it. Hand Dep. at pp. 32-33.
42.

Facebook's Founder and CEO Mark Zuckerberg refers to Facebook's "Timeline"

See September 5, 2011

e~mail

from Mr. Zuckerberg

to a number of Facebook recipients (emphasis added), a true and correct copy of which is
attached hereto as Exhibit 17; see also Ex. 8 at No. 53 (admitting this is a true and correct
document).

See Ex. 8 at
No. 54 (admitting this is a true and correct document).
43.

See Ex. 7; see also Ex. 8 at No. 60 (admitting this is a true
and correct document).
39

44.

See "f8 for Marketers," a true and correct copy of which is attached
hereto as Exhibit 19; see also Ex. 8 at No. 62 (admitting that this is a true and correct document).
45.

See September 5, 201 I email from Mr. Zuckerberg to
Chris Cox, a true and correct copy of which is attached hereto as Exhibit 20; see also Ex. 8 at
No. 64 (admitting this is a true and correct document).
46.

-

See Draft of Outline of Mark Zuckerberg's Keynote Address for the Facebook f8

conference, a true and correct copy of which is attached hereto as Exhibit 21 (emphasis added);
Ex. 8 at No. 65.

40

See Ex. 17; see also Ex. 8 at No. 53 (admitting this is a true and
correct document).
47.

true and correct copy of which is
attached hereto as Exhibit 22; see also Ex. 8 at No. 70 (admitting this is a true and correct
document).
48.

Facebook uses "Timeline" in a trademark way in a marketing video that

introduces the "Time line" product. See Face book's "Introducing Time line Video," a true and
correct copy of which is filed herewith as a DVD as Exhibit 23; see also Ex. 8 at No. 67
(authenticating the video). After the video shows a montage of clips that demonstrate what
"Timeline" is, it cuts to a screen shot with "Introducing Timeline." See Ex . 23 ; see also Ex. 8 at
67 (authenticating the video).
49.

Facebook also refers to "Timeline" in a trademark way in a Roadshow Video

marketed to potential investors in connection with Facebook' s initial public offering.

See

Facebook's Video Roadshow, a true and correct copy of which is filed herewith as a DVD at
Exhibit 24 (see video at approximately 4:45); see also Ex. 8 at No. 68 (authenticating video). In
its Road Show Video, Facebook explains that "Timeline" is one of the two most critical products
offered by Facebook.
50.

Facebook does not charge its users to use "Timeline." See Lessin Dep. at p. 157-

58.

41

51 .

Facebook maintains "Community Standards" that it asks its users to respect,

which include requesting that its users respect others' trademarks. See Facebook Community
Standards, a true and correct copy of which is attached hereto as Exhibit 25; see also Lessin Dep.
at pp. 295-97 (admitting this is a true and correct document).

Media refer to Facebook's "Timeline" in a Brand and Trademark Manner
52.

News media refer to "Timeline" in a trademark and brand way when they mention

"Time line" as a product offered by Facebook. See Ex. 16; see also Ex. 8. at No. 71 (admitting
that this is a true and correct document).

People Confused Timelines and Facebook's "Timeline" After Facebook's Announcement
53.

When Facebook announced "Timeline," people who were aware of Timelines

were confused by the announcement and wrote or called Timelines believing that it had done a
deal, or otherwise had made an agreement, with Facebook. See Deposition of Randy Cassidy at
p. 50 ("I picked the phone up to congratulate [Brian Hand] ... on the fact that Facebook had
picked his Time lines software .... "), p. 52 ("I truly believe that whatever ... Face book was
offering was the same product that Brian [Hand] had invented himself; obviously, with the help
of his staff."); Deposition of Keith Koeneman at p. 32 ("I immediately think of [Brian Hand's]
company, Timelines, Inc., and, and LifeSnapz."), p. 51 ("And my immediate reaction was, was
actually positive. Brian must have either sold his company to Facebook or did some sort of
business deal with Facebook because that's how they have his feature."), pp. 87-88 ("And my
first reaction was that's great. Brian [Hand] either sold his company to Face book or he did some
deal with Facebook. So if, you're asking me if I was confused, I was definitely confused."), p.
88 ("And I thought how does Face book have a timeline feature if Brian [Hand] didn't either sell
his company to them or do a deal with them. So J was confused then."), p. 89 ("And I was very
confused about how Facebook could have a timeline feature without either buying Timelines,

42

Inc., or doing a legitimate business transaction with Timelines, Inc. So for the last year I've been
consistently confused about that every time I thought about it."), pp. 94-95 ("I thought Facebook
either bought Timelines, Inc., or they did some sort of legitimate business transaction with
Timelines, Inc., and that's how they had the capability."), p. 95 ("I thought they copied it. You
know, like Samsung copied Apple's iPhone, I thought they copied it."). p. 96 ("I thought that
Facebook had ripped off Time lines, Inc.'s, concept, just like, you know, Samsung ripped off
Apple's concept."), Deposition of Esther Barron at p. 42 ("I mentioned to Brian Hand that when
I learned of Facebook's Timeline update or application, that I wondered whether it was
connected to his company in some way."), Deposition of Don Jenkins at p. 36 ("What happened
was I saw information that led me to believe that the company had been purchased by Facebook.
At least that was my assumption. And then looked on the website to find a press release that
would say, hey, we've just purchased this company for so many X of millions of dollars or what
have you and none of that information was available .... "); Deposition of Pam Cole at p. 30 ("I
didn't know if[Timelines, Inc.] had sold it to Facebook or if they had some sort of software that
you could use on Facebook or what it was."), Deposition of Thomas R. Fallon, at p. 23 ("I
thought maybe [Timelines, Inc.] sold their service to Facebook."). True and correct copies of the
pages from the Cassidy, Koenenman, Barron, Jenkins, Cole, and Fallon Depositions are filed
herewith as Exhibits 26 through 31, respectively.
54.

Other individuals, believing that Timelines was Facebook, wrote Time lines (often

m harsh terms) asking Timelines to change their Facebook settings.

See Group Ex. 32

(containing collection of these requests); see also Hand Decl. ,-r 19 (stating that the documents
contained in Group Ex. 32 are true and correct documents). By way of example, the comments
include: "timelines sucks," ''how do i get this off my facebook.it has screwed everything up,"
"Timeline, I am having trouble with the new account layout on facebook.

43

How can I take

time line off my profile, and go back to the old face book layout? Thanks for the help," "how do I
get a timeline," "heelo how do I get timeline on my facebook," "can you add timeline in my
facebook," and "What the hell, I am not getting the timeline.
please ............ ... " See Grp. Ex. 32; see also Hand Decl.

~

Someone help me

19 (stating that these are true and

correct documents).

Facebook AggressiYely Litigates Trademark Terms That Appear To Be Generic
55.

Facebook's own name arises from the generic college yearbooks that were known

as face books.

See Alan J. Tabak, Hundreds Register for New Facebook Website, HARV.

CRIMSON, Feb. 9, 2004, available at http://www.thecrimson.com/article/2004/2/9/hundredsregister-for-new-facebook-website/. A true correct copy of which is attached hereto as Exhibit
33.
56.

When other entities have attempted to register or use any term close to

Face book's registrations, such as "WALL" or terms using "BOOK," Facebook has aggressively
attacked those entities in courts and before the Trademark Trial and Appeal Board ("TTAB").
including challenges to efforts to trademark: FACEMAIL (Ex. 34.), BLACKFACES (Ex. 35.),
DWC FACES (Ex. 36.), FACEPLACE@ORU (Ex. 37.), DATEBOOK (Ex. 38.), FACE DIAL
(Ex. 39.), SUPERWALL (Ex. 40.), DRUNK WALL (Ex. 41.), VETBOOK (Ex. 42.),
TALKBOOK (Ex.

43.), DOCTORBOOK (Ex. 44.),

GEEZERBOOK.COM (Ex.

45.),

SHAREWALL (Ex. 46.), LAWYERBOOK (Ex. 47.), TEACHBOOK (Ex. 48.), BOSS BOOK
(Ex. 49 .), SAFARIBOOK (Ex. 50.), MYBOOKSPACE (Ex. 51.), FACEMAIL (Ex. 52.),
PLACEBOOK (Exs. 53-54.), FACEPILES (Ex. 55.), FACEBROKER (Ex. 56.), SHAGBOOK
(Ex. 57.), POCKETBOOK.COM (Ex. 58.), ROTTENBOOK (Ex. 59.), ETORO OPENBOOK
(Ex. 60.), F* (Ex. 61.), FACEBARKK (Ex. 62.), FACEDATE (Ex. 63.), HEALTHBOOK (Ex.
64.), SCIENCEBOOK (Ex. 65.), FACADEBOOK (Ex. 66 .), FAITHBOOK (Ex. 67.),
44

FACEMEETING (Ex. 68.), BOOK (Ex. 69.), GRACEBOOK (Ex. 70.), FACEMOD (Ex. 71.),
FACEBROKER (Ex. 72.), FACETALK (Ex. 73.), LIFEBOOK (Ex. 74.), FACEDEKK (Ex. 75.),
PRA YBOOK (Ex. 76.), and BUDBOOK (Ex . 77.), TEACHBOOK, (Exs. 78-79.), LAMEBOOK
(Ex. 80.), FACEPORN (Ex. 81.), FACE BOOK OF SEX (Ex. 82.). Facebook admitted to each
of these oppositions via its Objections and Responses to Plaintiff Timelines, Inc.'s Second Set of
Requests for Admission, Nos. 9-52, a true and correct copy of which is attached hereto as
Exhibit 83 . Facebook's TTAB Notice of Opposition filings, referenced next to each of the
attempted marks noted above are filed herewith as Exhibits 34 through 77. See Ex. 83 at Nos. 952 (admitting these are true and correct documents). Facebook further admitted to each of the
complaints. Ex . 11 at Nos. 2-5. Facebook's complaints, referenced next to each of the marks
noted above, are filed herewith as Exhibits 78 through 82. See Ex. 11 at Nos. 2-5 (admitting
these are true and correct documents). (To save paper, only the Notice of Oppositions and
Complaints are included.)
57.

Face book has applied for and registered several marks, including " WALL,"

"POKE," "FACEBOOK POKE," "LIKE," "LIKE & design ," "FACEBOOK," "FACEBOOK &
design,"

"FB,"

"F8,"

"FACEBOOK

PAGES,"

"FACEBOOK

ADS,"

"FACEBOOK

INSIGHTS," "FACEPILE," "FACE," "REACH GENERATOR," "GRAPH SEARCH,"
"SOCIAL ADS," and "SOCIALADS." True and correct copies of Facebook's applications and
registrations from the USPTO are attached hereto as Group Exhibit 84. (To save paper, only the
first page is included.)

58.

Timelines provided Facebook with the expert report of its damages expert David

Haas. A true and correct copy of Mr. Haas' report is filed herewith as Exhibit 85. Therein, Mr.
Haas opined that Timelines has suffered in excess o~in losses because that is the
45

approximate advertising revenue that Facebook has earned using Timelines' federally registered
trademarks to earn advertising revenue on Facebook Timeline. !d. at

~

31 (and as generally

explained in the report). Facebook's expert did not dispute Facebook' s total advertising sales on
Facebook "Timeline."

Third Party Uses Are Not The Same As Timelines
59.

Third-parties that use the terms timeline or timelines generically are not the same

as Timelines. While Timelines permits collaborative sharing of information, the "time lines" that
generically are created at or with Mnemograph, SmartDraw LLC, KIDASA, International
Reading Association, and Tom Snyder Productions are static. See Deposition of J. Anthony
Patterson, SmartDraw LLC ' s Rule 30(b)(6) corporate deponent ("Patterson Dep."), at p. 63, a
true and correct copy of which is attached hereto as Exhibit 86; Deposition of Michael
Richardson, Mnemograph ' s Rule 30(b)(6) corporate deponent (" Richardson Dep."), at p. 64, a
true and correct copy of which is attached hereto as Exhibit 87; Deposition of Richard Abrams,
Abrams Dep ., Tom Snyder' s Productions' Rule 30(b)(6) corporate deponent ("Abrams Dep."), at
p. 33, a true and correct copy of which is attached hereto as Exhibit 88 ; and Deposition of
Bridget Hilferty ("Hilferty Dep."), International Reading Association ' s Rule 30(b)(6) corporate
deponent, at pp. 42-43 , a true and correct copy of which is attached hereto as Exhibit 89.
60.

With respect to the sharing of information, while Timelines shares events and

history with others, SmartDraw LLC, KIDASA, International Reading Association, and Tom
Snyder Productions are presentation-based. See Patterson Dep. at pp. 32-33, 67-68 ; Abrams
Dep. at pp. 14; Hilferty Dep. at pp. 38-39.
6I.

In terms of visual presentation, while Timelines does not show information in a

linear fashion, Mnemograph, SmartDraw LLC, KIDASA, International Reading Association and

46

Tom Snyder Productions do. See Patterson Dep. at pp. 48-50, 53; Richardson Dep. at pp. 65-67;
Abrams Dep. at pp. 25; Hilferty Dep. at pp. 24, 26.
62.

While Timelines is web based, SmartDraw LLC, KIDASA, and Tom Snyder

Productions are software based. See Patterson Dep., at pp. 23, 26, 29, 32, 33; Abrams Dep. at pp.
14, 20, 28.
63 .

While Timelines is free, Mnemograph, SmartDraw LLC, KIDASA, and Tom

Snyder Productions require payments (except for one subset of Mnemograph). See Richardson
Dep. at pp. 63 , 68 ; Paterson Dep . at p. 66; Abrams Dep. at pp. 51-52.
64.

While Timelines is open and anyone can visit, Mnemograph, KIDASA , and Tom

Snyder Productions are all closed. See Richardson Dep. at p. 34; Abrams Dep. at p. 14, 20, 33.

USPTO
65 .

A search of the USPTO database shows that in the last four years- since 2009

when it first granted one of Timelines' trademark applications for TIMELINES-the USPTO has
granted multiple trademark registrations on the Principal Register for marks incorporating the
term "timeline" or "timelines," including, among others, "THE TIMELTNE OF YOUR LIFE"
(Reg.# 4,208,948), for six different classes and including services such as "software applications
for virtual community, social networking, photo sharing, and transmission of photographic
images; computer services, namely, hosting online web facilities for others for organizing and
conducting online meetings, gatherings, and interactive discussions; computer services, namely,
providing customized web pages featuring user-defined information and personal profiles;
computer services, namely, creating an on-line community for registered users to participate in
discussion, get feedback from their peers, form virtual communities , and engage in social
networking in the field of social and business events; . .. Internet based introduction and social
networking services; providing on-line computer databases and on-line searchable databases in
47

the field of social networking." A true and correct copy of the registered trademark is attached
hereto as Exhibit 90.
66.

The USPTO database also shows various applications using the term "timeline"

or "timelines" that the Office has already reviewed and found acceptable and published for
opposition, but registration just has not issued yet. Among those additional marks found
acceptable by the USPTO are: "TIMELINE OF EYE DISEASE" (Serial No. 85572679) and
" DYNAMIC TIMELINE" (Serial No. 85794452) (whose services are listed as "[p]roviding an
interactive website featuring technology that allows users to preserve memories and personal
stories"). True and correct copies of these applications from the USPTO are attached hereto as
Group Exhibit 91.
February 14, 2013

Respectfully submitted,

TIMELINES, INC.,
Plaint!ff/Counter-Defendant

By: Is/ Douglas A. Albritton
James T. Hultquist (SBN 6204320)
Douglas A. Albritton (SBN 6228734)
Michael L. DeMarino (SBN 629833 7)
Bruce R. Van Baren (SBN 631 0375)
REED SMITH LLP
J 0 South Wacker Drive
Chicago, IL 60606-7507
Telephone: + 1 312 207 I 000
Facsimile: + 1 312 207 6400
Counselfor Plaint({f!Counter-Defendant
Timelines, Inc.

48

CERTIFICATE OF SERVICE
I, the undersigned attorney, certify that I electronically filed TIMELINES, INC.'S

LOCAL RULE 56.1(b)(3) RESPONSE TO FACEBOOK, INC.'S LOCAL RULE 56.1(a)(3)
STATEMENT OF MATERIAL FACTS, AND TIMELINES' ADDITIONAL LOCAL
RULE 56.1(b)(3)(C) STATEMENT OF ADDITIONAL MATERIAL FACTS THAT
REQUIRE THE DENIAL OF SUMMARY JUDGMENT . Pursuant to Rule 5(b)(3) of the
Federal Rules of Civil Procedure and Local Rule 5.9, I have thereby electronically served all
Filing Users.
February 14, 2013

Respectfully submitted ,

TIMELINES, INC.,
Plaint[ff/Counter-Defcndant

By: Is/ Douglas A. Albritton
James T. Hultquist (SBN 6204320)
Douglas A. Albritton (SBN 6228734)
Michael L. DeMarino (SBN 6298337)
Bruce R. Van Baren (SBN 631 03 75)
REED SMITH LLP
10 South Wacker Drive
Chicago, IL 60606-7507
Telephone: [phone]
Facsimile: +I 312 207 6400
Counselfor Plaintifj!Counter-Defendant
Timelines, Inc.
US_ACTIVE-111856808

49