Facebook Vs. Placebook

(NECN: Peter Howe, Boston) This past weekend's Number 1 smash hit at the cinema was the new Sony Columbia Pictures Aaron Sorkin film, "The Social Newtork,'' a movie about Facebook.com growing from Harvard College dorm project to $7 billion juggernaut.

It's a movie that depicts Facebook founder Mark Zuckerberg as a ruthless empire builder -- something a Boston wireless technology company, Where Inc., says it learned itself the hard way as Facebook threatened legal action over an application Where calls "Placebook."

It's a story about a particularly vigorous effort at trademark protection, raising the question: Now that Facebook has 500 million "friends" around the world, does that mean it now owns the word "book" -- if the context is (Anything)book.com ?? Facebook's arguing, effectively, yes. Where Inc. is saying: Not so fast.

Walt Doyle, is CEO of the five-year-old, 70-person Where (formerly known as uLocate), which makes location-aware software that tells you cool places to eat, drink, or visit near where the wireless network shows you are currently. A year ago it launched, and trademarked with the US Patent and Trademark Office, the service called "Placebook," a way for people to compile and share a list of places they like to go to regularly.

"People save their people friends to address books,'' Doyle said. "We found that people want to save their places to a 'place book.' It's a logical name.'' Facebook, which is, loosely, a business partner of Where because it lets Where use Facebook Connect as a registration engine for people using the Where service, seemed to have no problem with Placebook.

That ended abruptly, however, on Sept. 21, when San Francisco attorney Gavin L. Charlston of Cooley LLP sent Where's lawyer a nastygram threatening legal action unless Where stopped using the Placebook name. "[W]ith Facebook's fame comes imitation, and unfortunately an increasing number of third parties in this space are choosing their name based on the fame and success of Facebook,'' Charlston wrote. "These parties have launched or attempted to launch websites with names that combine a generic or descriptive name for the subject matter of their site with the distinctive and arbitrary BOOK suffix of the federally-registered FACEBOOK mark. The use of such names can lead to consumer confusion as to affiliation with or sponsorship by Facebook and can also dilute the distinctiveness of Facebook's famous FACEBOOK mark.''

Charlston said in the letter examples of where Facebook "diligently polices" against such names have included Doctorbook, an online forum for physicians; Geezerbook, an online forum for senior citizens; and RedneckBook.com , which was to be a site where good old boys could post hunting and fishing stories.

"Facebook is willing to accommodate a reasonable phase-out of the PLACEBOOK mark and work with Where Inc. to minimize the interruption to its business, provided that Where Inc. immediately begins developing a plan for completing a timely transition to a new name," Charlston added.

Doyle, however, said the move was surprising and disappointing. "It did seem a little bit odd that all of a sudden Facebook would send a cease and desist letter without calling first,'' Doyle said. "It was a little disappointing, particularly for the fact that, again, we hadn't heard from them directly, only from their attorneys.''

Where's lawyer, Kimberly B. Herman of Sullivan & Worcester LLP in Boston, said late Monday she had spoken with Facebook attorneys, and was afterwards optimistic they could come to an agreement to avoid litigation and possibly even come to agreement on services that would more tightly and efficiently link Where and Facebook services for users.

"Facebook came out of the gate very rough and very predatory, but I think this would be a good resolution for the companies, both companies,'' Herman said.

Was it just a coincidence Facebook seemed to be calling off the lawyer-attack-dogs within days of the unflattering movie hitting the big screen? Who knows, but Doyle said, he's eager to pursue any opening he can to enjoy peaceful coexistence, or even commercial cooperation, with the 500-million-user giant.

"We're reasonable people and we know what we're doing with [the Placebook name], but it'd be very good to understand how they feel that we are at all on their turf,'' Doyle said.

So there may be one more chapter -- hopefully a happy ending -- to be written in the Facebook-Placebook ... book.

With videographer John J. Hammann

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