TimesLines, Inc v. Facebook, Inc.

Filing 131

MEMORANDUM by Facebook, Inc. in support of motion in limine 130 to Exclude Evidence, Argument, and Testimony Regarding Facebook's Unrelated Trademark Prosecution and Enforcement Efforts (Willsey, Peter)

IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION
TIMELINES, INC.
Plaintiff,
v.
FACEBOOK, INC.
Defendant.

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

MEMORANDUM IN SUPPORT OF FACEBOOK, INC.’S MOTION IN LIMINE NO. 3:
TO EXCLUDE EVIDENCE, ARGUMENT, AND TESTIMONY REGARDING
FACEBOOK’S UNRELATED TRADEMARK PROSECUTION AND
ENFORCEMENT EFFORTS
I.

INTRODUCTION
Defendant Facebook, Inc. (“Facebook”) respectfully moves this Court in limine for an

order excluding evidence, argument, and testimony regarding Facebook’s unrelated trademark
prosecution and enforcement efforts under Federal Rules of Evidence 401, 402, 403, and 404.
Such evidence, which concerns Facebook’s alleged efforts to register and/or protect certain
trademarks that are not at issue in this action, is wholly irrelevant to the issues in this case — the
validity of Plaintiff’s alleged “timelines” trademark and Facebook’s allegedly infringing use of
the term “timeline” — and therefore is inadmissible. FED. R. EVID. 402. Even if this evidence
could be deemed relevant, it should be excluded because its probative value is substantially
outweighed by the danger of unfair prejudice, confusion of the issues, wasting time, and
misleading the jury. FED. R. EVID. 403. Further, this evidence should also be excluded because
it constitutes improper character evidence. FED. R. EVID. 404.
II.

BACKGROUND
In its complaint, Plaintiff alleges that Facebook’s use of the term “timeline” to refer to a

feature of its user interface infringes Plaintiff’s purported trademark rights in the terms

“Timelines,” “Timelines.com,” and a stylized version of “Timelines” (the “Alleged TIMELINES
Marks”). (Dkt. No. 27, Am. Compl. ¶ 5.) No other terms or alleged trademarks are at issue in
this case.
Despite the narrow scope of this trademark infringement action, Facebook anticipates that
Plaintiff will attempt to rely on Facebook’s unrelated trademark prosecution and enforcement
efforts at trial to argue that either (a) Plaintiff owns protectable trademark rights in the Alleged
TIMELINES Marks, or (b) Facebook is not making fair use of the term “timeline” but rather is
using the term as a trademark. In its opposition to Facebook’s motion for summary judgment,
Plaintiff alleged that:


Facebook’s “name comes from the ‘generic’ name that was given to certain
college picture books known as ‘face books.’” (Dkt. No. 112 (Pl. Opp. to
Facebook’s Motion for Summary Judgment) at 11.)



Facebook has “trademarked and enforced the terms ‘like,’ ‘poke,’ ‘wall,’ to name
just a few.” (Id. at 2.)



“Facebook’s own trademark history demonstrates that it seeks trademark
protection for terms that appear in dictionaries ….” (Id. at 11.)



“Facebook aggressively litigates its own trademarks that appear to be generic.
When other entities have attempted to register or use any term close to
Facebook’s registrations, such as ‘WALL’ or even terms using ‘BOOK,’
Facebook has attacked those entities (including one that sought to trademark ‘F*’)
in courts and before the Trademark Trial and Appeal Board.” (Id.)



“Given Facebook’s history, there is no question that were it not for this legal
dispute, Facebook already would have applied for its own trademark for the term
TIMELINE, and presumably would argue that the term is suggestive and also that
it has acquired secondary meaning. That is because Facebook has filed lawsuits
or USTPO objections against many companies for many similar terms, and this
case falls within the ambit of those efforts.” (Id.)

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III.

ARGUMENT
A.

Evidence Regarding Facebook’s Unrelated Trademark Prosecution and
Enforcement Efforts Is Irrelevant and Thus Inadmissible.

Evidence is relevant if it “has any tendency to make a fact more or less probable than it
would be without the evidence.” FED. R. EVID. 401. Irrelevant evidence is inadmissible. FED.
R. EVID. 402; see Abbot Labs. v. Sandoz, Inc., 743 F.Supp.2d 762, 777-78 (N.D. Ill. 2010)
(excluding irrelevant evidence under Fed. R. Evid. 402).
The sole issue in this case is whether Facebook’s use of the term “timeline” for a feature
that organizes user content in chronological order infringes Plaintiff’s purported rights in the
Alleged TIMELINES Marks. Evidence relating to Facebook’s prosecution and enforcement
efforts for words other than “timeline”, such as FACEBOOK, LIKE, POKE, and WALL, has no
bearing on Facebook’s fair descriptive use of the term “timeline.” Nor does the validity of
Facebook’s trademarks have any bearing on the validity of Plaintiff’s alleged TIMELINES
Marks, or on the issue of whether Facebook’s use of the word “timeline” is likely to lead to any
confusion. This evidence is wholly irrelevant and inadmissible under Federal Rules of Evidence
401 and 402.
B.

Evidence Regarding Facebook’s Unrelated Trademark Prosecution and
Enforcement Efforts Is Also Highly Prejudicial and Thus Inadmissible.

Even relevant evidence can be excluded if its probative value is substantially
outweighed by the danger of unfair prejudice, confusion of the issues, misleading the jury, or
wasting time. FED. R. EVID. 403; Thompson v. City of Chicago, 472 F.3d 444, 456-57 (7th Cir.
2006) (citation omitted) (“Rule 403 provides a district court with discretion to exclude evidence
where ‘its probative value is substantially outweighed by the danger of unfair prejudice,
confusion of the issues, or misleading the jury.’”)

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Here, Plaintiff’s theory appears to be that if Facebook is able to register and enforce
allegedly descriptive or generic terms, then Plaintiff should have the ability to do so, too. This
“evidence” amounts to nothing more than Plaintiff’s own unsupported allegations regarding the
alleged genericness of Facebook’s unrelated trademarks. If Plaintiff is permitted to introduce
those allegations at trial, Facebook will have to use time at trial responding to them. This
evidence should be excluded under Federal Rule of Evidence 403 because a mini-trial on the
validity of Facebook’s marks and its prosecution and enforcement efforts relating to those marks
will confuse the issues, mislead the jury, and waste trial time. Fed. R. Evid. 403 Advisory
Committee Notes; see Thompson, 472 F.3d at 457 (citations omitted) (excluding evidence under
Fed. R. Evid. 403 “because its admission makes it likely that the jury will be induced to decide
the case on an improper basis ….”).
C.

Evidence Regarding Facebook’s Unrelated Trademark Prosecution and
Enforcement Efforts Constitutes Improper Character Evidence and Thus
Should Not Be Admitted.

Furthermore, to the extent that Plaintiff attempts to introduce evidence of Facebook’s
unrelated trademark prosecution and enforcement efforts as “character” evidence, Federal Rule
of Evidence 404(b) prohibits the admission of such evidence. Specifically, under Rule 404(b),
evidence of prior acts is not admissible “to prove a person’s character in order to show that on a
particular occasion the person acted in accordance with the character.” In order for evidence of
prior acts to be admissible, such evidence must: (1) “be directed toward establishing a matter in
issue;” (ii) “show that the other act is similar enough and close enough in time to be relevant to
the matter in issue;” (iii) “be sufficient to support a jury finding that the defendant committed the
similar act;” and (iv) “have probative value that is not substantially outweighed by the danger of

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unfair prejudice.” United States v. White, 698 F.3d 1005, 1017-18 (7th Cir. 2012) (quoting
United States v. Perkins, 548 F.3d 510, 513-14 (7th Cir. 2008)).
In opposition to Facebook’s summary judgment motion, Plaintiff used Facebook’s
unrelated trademark prosecution and enforcement activities to allege that:


“Given Facebook’s history, there is no question that were it not for this legal dispute,
Facebook already would have applied for its own trademark for the term TIMELINE, and
presumably would argue that the term is suggestive and also that it has acquired
secondary meaning” (Dkt. No. 112 (Pl. Opp.) at 2); and



“Facebook’s own trademark history demonstrates that it seeks trademark protection for
terms that appear in dictionaries …” (Id. at 11).
Plaintiff hopes to convince the jury that Facebook must be using the generic term

“timeline” as a trademark and not in its fair and descriptive sense because Facebook has
previously sought registrations for and asserted rights in other, unrelated marks that Plaintiff
characterizes as generic. This theory is not only illogical and unsupported by the facts, but also
would likely result in unfair prejudice to Facebook and confusion about the allegedly infringing
acts at issue.
Given that the only purpose for this evidence is to attempt to establish Facebook’s
propensity towards a certain course of conduct, it constitutes improper character evidence and is
therefore inadmissible. FED. R. EVID. 404(b).
IV.

CONCLUSION
Based on the foregoing, Facebook respectfully requests that the Court exclude evidence,

argument, and testimony regarding Facebook’s unrelated trademark prosecution and enforcement
efforts.
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Dated: April 8, 2013

Respectfully submitted,

COOLEY LLP
By:

/s/ Peter J. Willsey
Peter J. Willsey (pro hac vice)
Brendan Hughes (pro hac vice)
1299 Pennsylvania Avenue, NW, Ste 700
Washington, DC 20004-2400
Tel: [phone]; Fax: [phone]
Email: [e-mail],
[e-mail]
Michael G. Rhodes (pro hac vice)
101 California Street, 5th Floor
San Francisco, CA 94111-5800
Tel: [phone]; Fax: [phone]
Email: [e-mail]
Counsel for Facebook, Inc.

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Steven D. McCormick (#1824260)
KIRKLAND & ELLIS LLP
300 North LaSalle
Chicago, IL 60654-3406
Tel: [phone]; Fax: [phone]
Email: [e-mail]

CERTIFICATE OF SERVICE
The undersigned, an attorney, hereby certifies that he served the foregoing
MEMORANDUM IN SUPPORT OF FACEBOOK, INC.’S MOTION IN LIMINE NO. 3:
TO EXCLUDE EVIDENCE, ARGUMENT, AND TESTIMONY REGARDING
FACEBOOK’S UNRELATED TRADEMARK PROSECUTION AND ENFORCEMENT
EFFORTS by means of the Court’s CM/ECF System, which causes a true and correct copy of
the same to be served electronically on all CM/ECF registered counsel of record, on April 8,
2013.

Dated: April 8, 2013
/s/ Brendan J. Hughes
Brendan J. Hughes (pro hac vice)
COOLEY LLP
1299 Pennsylvania Avenue, NW, Ste. 700
Washington, DC 20004-2400
Tel: [phone]
Fax: [phone]
Email: [e-mail]

1109663 HN

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