Apple’s use of “iBooks” isn’t trademark infringement, says court

May 9, 2013
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Apple’s use of “iBooks” isn’t trademark infringement, says court

Apple began using the term "iBook" quite a few years ago, having applied it to various computers in days-gone-by that are now obsolete, only recently shifting to a slight variation of the word for its digital books app. Such a change prompted John T. Colby, a New York publisher, to file a lawsuit against Apple alleging trademark infringement. The case was initiated in the summer of 2011, and after nearly two years of a back-and-forth legal battle, Apple has won.

Colby filed the lawsuit under the DBA name Brick Tower Press, having purchased a variety of assets from multiple entities previously owned by another New York publisher - Byron Press - in both 2006 and 2007. The issue at play involves Byron Press's use of the term "ibooks" to publish many paperback and hardback books, a process that began in late 1999, long before Apple began using the term for its digital books app.

According to the lawsuit, Apple's shift to using the term for books-related purposes in 2010 following the launch of the iPad could spell the end for the publisher's ibooks mark, making them effectively worthless. A quick look at the two logos used by the respective companies shows that - visually speaking - they are quite different, with Brick Tower Press's displaying a picture of a lightbulb above the term and Apple using a distinctly iOS icon next to its own.

It is important to note that neither Byron Press, nor Brick Tower Press after purchasing the assets, registered the trademark, something both had ample time to do before Apple eventually registered it in 2010. Such would end up being one of the problems for the publisher, with U.S. District Judge Denise Cote stating that on its own the term "ibooks" was generic in nature, a descriptive term for digitally-sold books.

Because the term itself isn't enough, the logo as a whole comes into play, with Cote saying that the publisher only retains any sort of meaning in the use of the word in conjunction with its lightbulb logo. As we mentioned, Brick Tower Press's logo is quite different from the one used by Apple, and that ultimately lead to the ruling in the latter company's favor. Said the court in its ruling, "[Brick Tower Press has] offered no evidence that consumers who use Apple’s iBooks software to download ebooks have come to believe that Apple has also entered the publishing business and is the publisher of all of the downloaded books, despite the fact that each book bears the imprint of its actual publisher."

Because those buying books aren't likely to mistake the publisher for Apple based on the differences in their logos, and because the term "ibooks" alone isn't sufficient with the Press failing to register the trademark, the court has ruled in Apple's favor.

[via Gigaom]


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