Blockchain NPO Dfinity, Meta Settle Trademark Lawsuit

Definity Foundation, a nonprofit that provides blockchain and internet technology, and Meta Platforms, the technology company that owns Facebook, Instagram, and WhatsApp, settled a trademark lawsuit involving logos. The case was dismissed with prejudice, which means that the participants will not be able to litigate it further.

In the ruling, both sides agreed to be responsible for their own legal fees and costs. In November 2022, an earlier complaint was dismissed, but Zurich-based Dfinity retained the right to amend the complaint.

The lawsuit, originally filed by Dfinity in 2022, stemmed from Dfinity’s belief that two of its trademarks were disturbingly close to a trademark sought by Meta. The first Dfinity trademark, a gray infinity loop resembling a sideways 8 above the organization’s name (the “Dfinity Mark”) was registered in the United States in 2018 and a multicolored infinity loop (“Rainbow Mark”) was registered in the United States in 2021. The organization has consistently used the marks since 2017, according to court papers.

In late 2021, Facebook founder Mark Zuckerberg announced that his company would be renamed Meta, a name that symbolized the company’s shifting focus toward facilitating the metaverse, a vast multi-platform digital landscape. In 2022, officials at Meta sought to register the Meta Mark, a double-loop configuration of variable size, shape and color that in some configurations suggests an infinite loop and in others suggests a large M.

According to court documents, when the Meta mark was unveiled in October 2021 – before Meta applied for registration – users responded to Dfinity’s Twitter account with comments about the similarities between the Dfinity marks and the Meta mark, and opportunities for partnership or collaboration between the two entities. “

In April 2022, Dfinity sent a cease-and-desist letter to Meta to cease Meta’s use of the Meta Mark. Meta did not respond, and Dfinity filed suit, alleging trademark infringement, false designation of origin, unfair competition and violation of the California Unfair Competition Act.

Dfinity’s executives argued that the commonalities between the brands and both organizations’ presence in online and digital communities would lead consumers to “falsely believe that Meta and its services . . . are connected, sponsored by, associated with, or related to Dfinity and the Internet computer,” according to court papers.

Dfinity’s first complaint was dismissed with leave to amend by U.S. District Judge Charles R. Breyer of the U.S. District Court for the Northern District of California in November 2022. In that dismissal, Breyer agreed with Meta that “Dfinity has failed to establish a protectable interest in the Dfinity Mark, and that there is minimal likelihood of consumer confusion in the use of both the Rainbow Mark.” Breyer also noted that Meta had not used its marks in conjunction with Dfinity’s marks, reducing the potential for confusion regarding the relationship between the two organizations.

Breyer also noted that Dfinity appeared to have carefully selected a single frame from a video that shows continuous changes in the Meta brand as it morphs between different iterations and styles. As Breyer wrote, “Dfinity appears to have taken a screenshot of the Meta Mark as it mutates in this video, timing the image to the exact split second where it most closely resembles the Rainbow Mark.”

Breyer further wrote “While Meta’s logo can and does appear in different colors, and is not always in the traditional blue…its shape remains unlike Dfinity’s: Although it includes two loops and bears some resemblance to an infinity sign, the lines cross over the vertical center point and the two loops are pressed together into vertical oblong shapes; Meta likens its logo to the letter “M” for Meta, or a video game controller… The marks are even more distinct when accompanied by the parties’ names, which is often the case ( but not always) in a commercial setting.”

Dfinity’s cause was not helped by the crowd’s sophisticated offering. Addressing the potential for confusion, Breyer observed “Dfinity’s customers are “tech-savvy developers” who understand how to leverage Internet computing for their own projects and businesses, or who seek to learn how to do so.”