Facing an astronomically larger opponent, Teachbook went for an aggressive strategy that has tempted many a defendant: to see if, despite the very high hurdle imposed by Rule 12, it could get the suit dismissed prior to discovery. It’s very difficult to win such motions even under the more defendant-friendly Iqbal standard, and this one was denied.
Teachbook’s main argument was one with some initial appeal. The only overlapping portion of the marks, it argued, were the “-BOOK” elements, and “book” is a generic term. The district court held, however, that while “book” is indeed generic for certain purposes — such as in LeBook Publishing, Inc. v. Black Book Photography, Inc., 418 F.Supp.2d 305 (S.D.N.Y. 2005), where the district court judge held on a Rule 12 motion that “The Black Book” as used on a printed directory did not infringe “Le Book NY” as used on a similar directory — it is not generic as used by these parties. The court wrote: “Even in this age of ‘e-books,’ social networking services do not fall within the category of what one would traditionally call ‘books.’” (According to a footnote in the opinion, Teachbook had attempted to fudge the distinction between the LeBook case and the present one by claiming that “book” is generic for “directory and networking services.”)
Interestingly, Teachbook also tried to obtain dismissal based on the following statement appearing on its website:
Many schools forbid their teachers to maintain Facebook and MySpace accounts because of the danger that students might learn personal information about their teachers. With Teachbook, you can manage your profile so that only other teachers and/or school administrators can see your personal information, blogs, posts, and so on. Teachbook is all about community, utility, and communication for teachers.
Teachbook argued that this showed that it “publicly and affirmatively distinguished its services from those of Facebook,” so that it could not be alleged to have bad intent. Facebook, however, countered that Teachbook was creating more confusion by “touting itself as a substitute for Facebook.” The district court was unwilling to resolve this issue in Teachbook’s favor. It asked, “who is to say these teachers might not think that Teachbook is Facebook’s response to some schools banning teachers from using Facebook?”
Teachbook made many more arguments in the case, none of which carried the day. Having now made all its best arguments and received a lukewarm evaluation from the district court judge, Teachbook now faces a long and difficult battle against an imposing opponent.