Apple sued by publisher over iBooks trademark

2

Comments

  • Reply 21 of 45
    melgrossmelgross Posts: 31,797member
    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.
  • Reply 22 of 45
    kibitzerkibitzer Posts: 1,113member
    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.
  • Reply 23 of 45
    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!
  • Reply 24 of 45
    nairbnairb Posts: 253member
    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 wasn?t 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.
  • Reply 25 of 45
    sipsip Posts: 210member
    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.



  • Reply 26 of 45
    futuristicfuturistic Posts: 599member
    Quote:
    Originally Posted by Nairb View Post


    iMac wasn?t 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.
  • Reply 27 of 45
    herbapouherbapou Posts: 2,221member
    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...
  • Reply 28 of 45
    irnchrizirnchriz Posts: 1,590member
    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.
  • Reply 29 of 45
    enjournienjourni Posts: 254member
    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.
  • Reply 30 of 45
    cloudgazercloudgazer Posts: 2,161member
    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.
  • Reply 31 of 45
    cloudgazercloudgazer Posts: 2,161member
    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.
  • Reply 32 of 45
    dualiedualie Posts: 333member
    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.
  • Reply 33 of 45
    cloudgazercloudgazer Posts: 2,161member
    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?
  • Reply 34 of 45
    melgrossmelgross Posts: 31,797member
    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.
  • Reply 35 of 45
    ecphorizerecphorizer Posts: 533member
    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!
  • Reply 36 of 45
    leonardleonard Posts: 528member
    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.
  • Reply 37 of 45
    hirohiro Posts: 2,663member
    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 38 of 45
    cloudgazercloudgazer Posts: 2,161member
    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.
  • Reply 39 of 45
    melgrossmelgross Posts: 31,797member
    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.
  • Reply 40 of 45
    cloudgazercloudgazer Posts: 2,161member
    Quote:
    Originally Posted by melgross View Post


    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.



    Given the vestigial state of the ebook industry in 1996 it's highly improbable that Family Systems Limited Company ever produced a product. As the iPhone itself demonstrates, you have to actually use the mark to keep it.



    Quote:

    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.



    Except that Family Systems Limited or Apple Computers, whichever then owned the IBOOKS mark related to book production, didn't 'cease and desist' him. If he really was reported on by Publishers' weekly then that would screw them because it would imply that if they were actively using the mark in the publishing world they should have been aware of him and forced him to stop - in EXACTLY the same way that he really should have been aware when iBooks launched seeing as it was done in a huge blaze of worldwide publicity. I guarantee that if you misuse the term Rollerblade (TM) in a sporting goods trade publication you will receive a stern letter



    My point is that if he had issued a Cease & Desist back at the start of 2010 and sued promptly, he'd have stood a chance - in spite of the messy history of the mark. It would have hinged on exactly how actively Family Systems were in using their mark and how dim a view the court took of their failure to defend it, but it would have been a chance.



    As it is he has no chance of any meaningful win, Apple may pay a few thousand dollars in settlement just to reduce their legal bills and get everything squared away. but that will be all
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