or Connect
AppleInsider › Forums › General › General Discussion › Apple sued by publisher over iBooks trademark
New Posts  All Forums:Forum Nav:

Apple sued by publisher over iBooks trademark

post #1 of 46
Thread Starter 
A New York publisher is suing Apple for trademark infringement over the use of the term "iBooks."

Publisher John T. Colby filed suit in the U.S. District Court in Manhattan on Wednesday, Bloomberg reports. Colby is founder and publisher of Brick Tower Press and J. Boylston & Company, Publishers.

Colby purchased assets related to the "ibooks" mark in 2006 and 2007 from New York publisher Byron Preiss, who had published over 1,000 physical books under the name. The "ibooks" imprint was named "America's fastest growing small publisher" by Publishers Weekly in 2004, according to the company's website.

According to the lawsuit, Apple's original "iBook" trademark covered only the company's now discontinued iBook line of notebooks. Colby alleges that Apple only began using the term iBook to refer to either e-books or an application for the delivery of e-books in April 2010.

Apples use of the mark iBooks to denote the electronic library that can be accessed via its iPad tablet computer and its iPhone is likely to overwhelm the good will of plaintiffs ibooks and ipicturebooks marks and render them virtually worthless, the lawsuit read.

A quick search of the U.S. Patent and Trademark Office did not reveal Colby's trademarks, though three of Apple's live marks turned up. Trademark\t75182820 for the term "IBOOKS" for "computer [ hardware and ] software used to support and create interactive, user-modifiable electronic books" was originally filed for in October 1996 by Family Systems Limited Company but was eventually transferred to Apple.

A second "iBook" trademark by Apple covers computers and computer hardware and was filed in November 1998. Apple revealed the first iBook laptop in July 1999. The line was replaced by the MacBook in 2006 during the transition to Intel processors.

The most recent trademark filing is from April 2010 and encompasses a wide range of goods and services related to the iBookstore. Apple first announced the iBookstore in January 2010 alongside the iPad. Apple revealed last week that the iBookstore has reached 130 million book downloads.

post #2 of 46
Dang. Another poacher. Squish 'em.
post #3 of 46
Honestly, there would have never been an "i" anything had it not been for "iMac". I think they all owe Apple...
post #4 of 46
If the facts as stated are true it looks as if the NY publisher will have a large cheque coming his way very soon.
post #5 of 46
Quote:
Originally Posted by dualie View Post

If the facts as stated are true it looks as if the NY publisher will have a large cheque coming his way very soon.

Naw, in New York, they spell cheque without the history and a lot of 'ck'.
TouchMyApps - All things iPhone for those who like to touch
Reply
TouchMyApps - All things iPhone for those who like to touch
Reply
post #6 of 46
Quote:
Originally Posted by dualie View Post

If the facts as stated are true it looks as if the NY publisher will have a large cheque coming his way very soon.

If the facts are true it looks as if you have no effing clue what you're talking about.

Secondly...can July now be known as "Don't Sue Apple Month?"
I can only please one person per day.  Today is not your day.  Tomorrow doesn't look good either.  
Reply
I can only please one person per day.  Today is not your day.  Tomorrow doesn't look good either.  
Reply
post #7 of 46
Quote:
Originally Posted by dualie View Post

If the facts as stated are true it looks as if the NY publisher will have a large cheque coming his way very soon.

Except the fact is that there was an existing ibooks trademark from 1996 predating the complainants trademark claim which appears to not have been filed. So in this case the NY publisher has actually been infringing on a trademark now owned by apple.
post #8 of 46
post #9 of 46
Quote:
Originally Posted by dualie View Post

If the facts as stated are true it looks as if the NY publisher will have a large cheque coming his way very soon.

Did you even bother to read ANYTHING below the title of the article??? Sheesh!
post #10 of 46
Quote:
Originally Posted by dualie View Post

If the facts as stated are true it looks as if the NY publisher will have a large cheque coming his way very soon.

...



...



...you're kidding, right?
post #11 of 46
Quote:
Originally Posted by dualie View Post

If the facts as stated are true it looks as if the NY publisher will have a large cheque coming his way very soon.

I think it is the lawyers who will be seeing some large 'cheques', Mister Bond.
post #12 of 46
Quote:
Originally Posted by revilre View Post

Except the fact is that there was an existing ibooks trademark from 1996 predating the complainants trademark claim which appears to not have been filed. So in this case the NY publisher has actually been infringing on a trademark now owned by apple.

Not exactly, because the two products are in different categories and because Apple never filed a complaint the NY publisher would most likely not be considered to be infringing the original iBook trademark. In much the same way that Apple only had to pay a token amount to the Beatles' Apple Corps back when they first tangled.

By a similar argument however, iBooks has been around for a year now and it was launched in a huge blaze of PR, so the publishers have failed in their duty to defend their mark.
post #13 of 46
Quote:
Originally Posted by Mister Snitch View Post

'cheques'

why the scare quotes? There's nothing wrong with spelling English correctly
post #14 of 46
Quote:
Originally Posted by cloudgazer View Post

why the scare quotes? There's nothing wrong with spelling English correctly

Even though I am English, given the French - English history I prefer the US spelling
Enjoying the new Mac Pro ... it's smokin'
Been using Apple since Apple ][ - Long on AAPL so biased
nMac Pro 6 Core, MacBookPro i7, MacBookPro i5, iPhones 5 and 5s, iPad Air, 2013 Mac mini.
Reply
Enjoying the new Mac Pro ... it's smokin'
Been using Apple since Apple ][ - Long on AAPL so biased
nMac Pro 6 Core, MacBookPro i7, MacBookPro i5, iPhones 5 and 5s, iPad Air, 2013 Mac mini.
Reply
post #15 of 46
I am feeling left out. I hope Apple makes an iWovel soon so I can sue them.
post #16 of 46
Quote:
Originally Posted by ruel24 View Post

Honestly, there would have never been an "i" anything had it not been for "iMac". I think they all owe Apple...

You cannot trademark a single letter. Similarly you cannot trademark a number which is why Intel stopped using numbers and started using actual names for their CPUs.
post #17 of 46
Quote:
Originally Posted by revilre View Post

Except the fact is that there was an existing ibooks trademark from 1996 predating the complainants trademark claim which appears to not have been filed. So in this case the NY publisher has actually been infringing on a trademark now owned by apple.

Trademarks are market specific. It is perfectly legal for Apple to have the mark for iBooks as a computer and Colby to have it for books. Apple Records v Apple Computers is an example (the first suit was dropped because of the different market issue)

HOWEVER. the article says that the original publisher HAD published using that mark but nothing about Colby continuing to use it. And use is a point considered in the validity of a mark (see Cisco's last minute attempt to produce an iphone to keep their mark). As is also protecting the mark. The fact that it's been a year since Apple started publishing iBooks is not going to look good for Colby's 'protection' case. And that combined with a lack of active and current use could invalidate their claim.

A non tech's thoughts on Apple stuff 

(She's family so I'm a little biased)

Reply

A non tech's thoughts on Apple stuff 

(She's family so I'm a little biased)

Reply
post #18 of 46
Quote:
Originally Posted by digitalclips View Post

Even though I am English, given the French - English history I prefer the US spelling

But with that spelling we'd have a Chancellor of the Exchecker - which would be an abomination.
post #19 of 46
Quote:
Originally Posted by dualie View Post

If the facts as stated are true it looks as if the NY publisher will have a large cheque coming his way very soon.

Based on this article, Colby has no registered trademarks and Apple has little to worry about:

<i>"A quick search of the U.S. Patent and Trademark Office did not reveal Colby's trademarks, though three of Apple's live marks turned up. Trademark\t75182820 for the term "IBOOKS" for "computer [ hardware and ] software used to support and create interactive, user-modifiable electronic books" was originally filed for in October 1996 by Family Systems Limited Company but was eventually transferred to Apple."</i>

It seems Apple has been covered for this specific use. If anything, Colby might have to pay Apple for using a registered trademark Apple owns.
post #20 of 46
Quote:
Originally Posted by cloudgazer View Post

But with that spelling we'd have a Chancellor of the Exchecker - which would be an abomination.

Touché.
post #21 of 46
Quote:
Originally Posted by digitalclips View Post

Even though I am English, given the French - English history I prefer the US spelling

Americans certainly do have a lot to thank the French for, and I hope you send them all a nice "Thankyou for blockading York Town" card every September 5th. Or, you could just lump it in with your July 4th celebrations, I guess.
post #22 of 46
I'll tell my own experience in this area.

When the company I eventually ran began, they named themselves "New York Colorworks Inc.".

The companys' lawyers did a trademark search, and everything seemed ok. More than a year later, we got a call from the lawyer of, you guessed it; New York Color works. We were a commercial film lab, and they were (are) a printing company. Nevertheless, being both in NYC, they weren't happy, so we changed our name to New York Filmworks Inc.

This was in the early '80's, so computer searches for this purpose weren't very advanced, but still...

Even now, it's difficult to find all those who own trademarks. Some slip through the cracks. It's inevitable. I don't know if that's the case here, but so far, they don't seem to be claiming they've been trying to get Apple to change the trademark, or pay for it. So Apple may never know about it. And if they didn't file, that makes it even harder, because that's what they search on.
post #23 of 46
From what I've been able to dig up so far, this guy Colby has created a shirt-tail business and given it a couple imposing names, for the purpose of peddling used books on the Internet out of his garage or his basement. Check out his catalog. About the only title that sounded remotely interesting is "Confessions of a Romantic Pornographer." This is just another nuisance lawsuit, in other words.

I admit to being a Fanatical Moderate. I Disdain the Inane. Vyizderzominymororzizazizdenderizorziz?

Reply

I admit to being a Fanatical Moderate. I Disdain the Inane. Vyizderzominymororzizazizdenderizorziz?

Reply
post #24 of 46
Quote:
Originally Posted by digitalclips View Post

Even though I am English, given the French - English history I prefer the US spelling

I just bought "That Sweet Enemy on iBooks!
post #25 of 46
Quote:
Originally Posted by ruel24 View Post

Honestly, there would have never been an "i" anything had it not been for "iMac". I think they all owe Apple...

iMac wasnt the first use of the prefix i in electronic/internet world. The iMac was announced on May 6 1998.

http://www.windowsitpro.com/article/...unces-the-imac

Before the apple iPod there was the internet kiosks called iPod. The first public demonstration of an iPod internet kiosk was in March 1998, two months before apple announced the iMac. Apple ended up getting the iPod trademark from the owner of the iPod kiosks.
post #26 of 46
First, I want to scream, so please cover your ears -- aaaaaaaaaarrrrrrrrrrrrrrgggggggggghhhhhhhh.

Wow, that feels much better.

Don't people read and digest/comprehend?

Quote:
Trademark 75182820 for the term "IBOOKS" for "computer [ hardware and ] software used to support and create interactive, user-modifiable electronic books" was originally filed for in October 1996 by Family Systems Limited Company but was eventually transferred to Apple.
post #27 of 46
Quote:
Originally Posted by Nairb View Post

iMac wasnt the first use of the prefix i in electronic/internet world. The iMac was announced on May 6 1998.

http://www.windowsitpro.com/article/...unces-the-imac

Before the apple iPod there was the internet kiosks called iPod. The first public demonstration of an iPod internet kiosk was in March 1998, two months before apple announced the iMac. Apple ended up getting the iPod trademark from the owner of the iPod kiosks.

Apple really hasn't been the first to do anything: they didn't build the first tablet, they didn't build the first portable digital music player, they didn't build the first all-in-one desktop computer, but what they did was bring a market into the public consciousness. Yes, the "i" prefix has been around for a while before the iMac came along. I think a lot of these plaintiffs are being pretty shrewd by taking a "wait and see" approach to protecting their trademarks (I'm not saying this as a compliment). In most cases, when we hear of these lawsuits, it's usually at a minimum, months after Apple makes some kind of announcement, but very often, it's years. This iBooks thing is a case in point. Clearly (in my non-lawyer eyes), Apple attained the rights to the "iBooks" name back in the late 1990s. It's really Apple that could/should have sued these New York folks for trademark violation. But even if they didn't, John T. Colby can't come now and sue Apple.
"Don't be a dick!"Wil Wheaton
Reply
"Don't be a dick!"Wil Wheaton
Reply
post #28 of 46
Yet another trademark/Patent leecher. imo the US patent/trademarks system is broken if all those lawsuit are allowed. How hard can it be, its either reserved or not and when you reserved a new one you check if its available...
post #29 of 46
They have no actual LIVE trademark for iBooks, anything they bought has expired so they are shit outta luck. Neither their iBooks or iPicturebooks trademarks are live, they are cancelled / abandoned.
post #30 of 46
At least the guy suing for iCloud did it right away. This company waits 2 YEARS before filing suit?

BS. Protect your marks or lose them.
post #31 of 46
Quote:
Originally Posted by herbapou View Post

Yet another trademark/Patent leecher. imo the US patent/trademarks system is broken if all those lawsuit are allowed. How hard can it be, its either reserved or not and when you reserved a new one you check if its available...

Actually the trademark system is working pretty well, and is much more sophisticated than you give it credit for being. It has to be able to handle disputes between small local businesses that dont' bother registering their marks at one end and large multinationals with international brands at the other.

The patent system is a different matter, particularly software patents. Most of them should never have been allowed.
post #32 of 46
Quote:
Originally Posted by enjourni View Post

At least the guy suing for iCloud did it right away. This company waits 2 YEARS before filing suit?

BS. Protect your marks or lose them.

Not really since the guy suing for iCloud didn't sue the previous owners of the iCloud mark for 2 years, and they were in a similar cloud business to the one that Apple is launching.
post #33 of 46
Quote:
Originally Posted by ruel24 View Post

Honestly, there would have never been an "i" anything had it not been for "iMac". I think they all owe Apple...

Quote:
Originally Posted by dualie View Post

If the facts as stated are true it looks as if the NY publisher will have a large cheque coming his way very soon.

Quote:
Originally Posted by SDW2001 View Post

If the facts are true it looks as if you have no effing clue what you're talking about.

Secondly...can July now be known as "Don't Sue Apple Month?"


As if you do. Perhaps you can't understand what you read, but that's pretty common on an Apple apologist sight like this one. I should've expected some simpleton to reply with a moronic attack.
post #34 of 46
Quote:
Originally Posted by dualie View Post

As if you do. Perhaps you can't understand what you read, but that's pretty common on an Apple apologist sight like this one. I should've expected some simpleton to reply with a moronic attack.

Yes but you're still substantively wrong about the law here. The facts as stated would indicate this guy is fishing for a settlement that he won't get, because he failed to act to defend his mark. Do you have a response to the actual issue or do you really think that pointing out that some people who disagree with you are as uninformed as you are constitutes a vindication of your views?
post #35 of 46
Quote:
Originally Posted by dualie View Post

As if you do. Perhaps you can't understand what you read, but that's pretty common on an Apple apologist sight like this one. I should've expected some simpleton to reply with a moronic attack.

And a moronic post defaming the posters here? Your post is no better.
post #36 of 46
Quote:
Originally Posted by dualie View Post

If the facts as stated are true it looks as if the NY publisher will have a large cheque coming his way very soon.

That's "check" pardner!
post #37 of 46
Quote:
Originally Posted by Futuristic View Post

Apple really hasn't been the first to do anything: they didn't build the first tablet, they didn't build the first portable digital music player, they didn't build the first all-in-one desktop computer, but what they did was bring a market into the public consciousness. Yes, the "i" prefix has been around for a while before the iMac came along. I think a lot of these plaintiffs are being pretty shrewd by taking a "wait and see" approach to protecting their trademarks (I'm not saying this as a compliment). In most cases, when we hear of these lawsuits, it's usually at a minimum, months after Apple makes some kind of announcement, but very often, it's years. This iBooks thing is a case in point. Clearly (in my non-lawyer eyes), Apple attained the rights to the "iBooks" name back in the late 1990s. It's really Apple that could/should have sued these New York folks for trademark violation. But even if they didn't, John T. Colby can't come now and sue Apple.

Very true. Alot of people all of a sudden want to make money off of Apple's good fortune. But I don't think this one has a very good case. Of course that's why Apple employs a good group of lawyers.
post #38 of 46
Quote:
Originally Posted by cloudgazer View Post

Yes but you're still substantively wrong about the law here. The facts as stated would indicate this guy is fishing for a settlement that he won't get, because he failed to act to defend his mark. Do you have a response to the actual issue or do you really think that pointing out that some people who disagree with you are as uninformed as you are constitutes a vindication of your views?

No, you cannot sue to defend a mark somebody else (Apple) already owns, and had owned 10 years before the plaintiff "bought" it. So it's galactically worse for the plaintiff than you even think.
.
Reply
.
Reply
post #39 of 46
Quote:
Originally Posted by Hiro View Post

No, you cannot sue to defend a mark somebody else (Apple) already owns, and had owned 10 years before the plaintiff "bought" it. So it's galactically worse for the plaintiff than you even think.

Yes you actually can. Apple had an iBook brand that was inactive, and had been since 2006. They didn't sue the publisher for his use of iBooks, which would mean that he ended up owning the mark when the context was publishing, at least in the geographic markets he operated in, in much the same way that Apple could have sued the Beatle's Apple Corps if they had started making computers before the original Apple vs Apple lawsuit.

If the guy had actively defended his mark he'd probably have been able to force Apple to pay him for his mark.
post #40 of 46
Quote:
Originally Posted by cloudgazer View Post

Yes you actually can. Apple had an iBook brand that was inactive, and had been since 2006. They didn't sue the publisher for his use of iBooks, which would mean that he ended up owning the mark when the context was publishing, at least in the geographic markets he operated in, in much the same way that Apple could have sued the Beatle's Apple Corps if they had started making computers before the original Apple vs Apple lawsuit.

If the guy had actively defended his mark he'd probably have been able to force Apple to pay him for his mark.

It's complicated. The original mark was filed for in 1996, and was used by that company until Apple bought it from them. So it was active. That mark has nothing to do with the iBook mark for Apples' laptops. So it was in use all that time.

Secondly, not all violators of a mark have to be defended against, if it can be shown that a reasonable search failed to turn up an entity using the mark. In this case, since this guy failed to register the mark, which he wouldn't have been able to do since the mark was already being use for the purpose of "books", he wouldn't have the mark now. So in attempting to sue Apple, he may lose all that he's had.

But the courts are funny about this. So it's impossible to know how it will be ruled. But I would say that he was probably not aware that Apple owns the mark for electronic books, and that the marks was used for that since 1996, before he started using it.
New Posts  All Forums:Forum Nav:
  Return Home
  Back to Forum: General Discussion
AppleInsider › Forums › General › General Discussion › Apple sued by publisher over iBooks trademark