Facebook Accused of ‘Eviscerating’ Small Tech Business’s META Marks
“Having failed to acquire Meta, whether by willful intent or by a due diligence oversight, Facebook is now attempting to simply overwhelm Meta and drive it out of business….” – METAx complaint
A small business owner is suing Meta Platforms, Inc., formerly known as Facebook (Facebook), accusing the internet giant of “brazenly violating fundamental intellectual property rights enshrined in U.S. law to obliterate a small business.”
METAx, LLC (Meta) was founded in 2010 by Justin “JB” Bolognino, who is described in the complaint filed in the U.S. District court for the Southern District of New York, as a respected figure in the virtual creator community and “a true pioneer of the industry involving immersive and experiential technologies, including augmented reality (“AR”), virtual reality (“VR”), and extended reality (“XR”).” Meta has continuously used the term “META” as part of a composite mark, and has been commonly referred to as Meta in trade and commerce, since 2010. The complaint details an exhaustive list of the goods and services offered by Meta, which include immersive experiences and a social network platform.
Meta’s U.S. trademarks are U.S. Reg. No. 5,194,332 in International Class 35 for various services including, but not limited to, “social media strategy and marketing consultancy focusing on helping clients create and extend their product and brand strategies by building virally engaging marketing solutions”; and (2) U.S. Reg. No. 6,055,841 in International Class 41 for various services including, but not limited to, “entertainment, namely, production of community sporting and cultural events using digital, virtual and augmented reality filmmaking and interactive displays of lights, sound and motion.”
Despite Meta’s registrations, and despite email exchanges as early as 2016 between Meta and Facebook in which the companies engaged in discussions about collaborating on future projects, Facebook began publicly using the trade name “Meta” and using the META mark as part of its rebranding, which was announced in October 2021. As part of its announcement, Facebook executives, including Mark Zuckerberg, explained that the company’s new focus would be on “experiences” like those offered by Meta.
Furthermore, Facebook began acquiring “third-party trademark applications and registrations for META-formative marks at a furious pace” prior to October 2021 in what the complaint describes as a direct acknowledgment of “the risk of infringing the rights of prior-existing businesses and attempting to gather arrows in its quiver to use to crush such prior-existing businesses.” However, Facebook did not reach out to Meta for acquisition. The complaint explains:
Having failed to acquire Meta, whether by willful intent or by a due diligence oversight, Facebook is now attempting to simply overwhelm Meta and drive it out of business by exploiting Facebook’s unmatched resources, market dominance, and public relations machine, which has saturated social media, mainstream media, the internet, streaming, and television.
Facebook’s communications with Meta in 2016 and 2017 prove willful infringement, according to the complaint. Meta notified Facebook in writing of the overlap among the companies’ goods and services in December 2021 and Facebook replied, claiming the two companies offered ““drastically different goods and services” and explaining that Facebook was merely a “social technology company.” Despite those assurances, in March 2022, Facebook announced it would offer experiential services at SXSW that the complaint says were “identical” to those rendered by Meta. Facebook offered similar experiences at Coachella in April 2022 and at the Smithsonian between May and June 2022. Facebook also recently partnered with fashion brands such as Balenciaga, Prada and Thom Browne to allow consumers to purchase clothes for their avatars in the metaverse via VR and AR technology, much like Meta did with Nike, Nieman Marcus and Y-3, in addition to other projects.
The complaint alleges that Facebook is targeting the same consumers, causing actual confusion, and that it has “destroyed” the META mark. “As a result of Facebook’s conduct…Meta’s business and the META Mark have been inextricably linked with, and eviscerated by, the veil of toxicity that has enshrouded Facebook — including allegations that Facebook knew its products detrimentally affected teen girls’ health, enabled terrorist and hate groups, aided human trafficking and human exploitation, spread religious hatred, proliferated COVID and political misinformation, and even facilitated genocide in countries such as Myanmar…”, says the complaint.
Meta, which is represented by Pryor Cashman, is seeking an injunction against Facebook’s use of the mark, actual damages, exemplary and treble damages for trademark infringement, including willful infringement, and unfair competition.
Eileen McDermott
Eileen McDermott is the Editor-in-Chief of IPWatchdog.com. Eileen is a veteran IP and legal journalist, and no stranger to the intellectual property world, having held editorial and managerial positions at […see more]
