NY publisher sues Apple over 'iBooks' name trademark

NY publisher sues Apple over 'iBooks' name trademark

Summary: Apple has found itself in another lawsuit regarding one of the names of its products, and this time it's the target of another legal case.

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Apple has found itself in another lawsuit regarding one of the names of its products, and this time it's the target of another legal case.

The name in question is "iBooks," which is Apple's e-book reader app and portal to the iBookstore for the iPad, iPhone and iPod touch.

However, New York publisher John T. Colby is claiming that he had the moniker long before iBooks became a familiar term because of the Cupertino, Calif.-based company. Bloomberg reports:

Colby bought in 2006 and 2007 the assets of various entities owned by New York publisher Byron Preiss, who had published more than 1,000 hardcover and paperback books under the “ibooks” name starting in September 1999, according to the lawsuit, which was filed in U.S. District Court in Manhattan today.

Colby also noted in his lawsuit that Apple only started using the term in April 2010 after the launch of the first iPad. It looks like he also wants to distinguish "iBooks" from "iBook," which was the name of today's standard MacBook before it was upgraded to its current title.

Apple has not commented about the lawsuit publicly (and it likely won't), nor have financial claims been revealed yet.

Apple was also recently sued over the name of its new cloud-computing solution iCloud, which was previously known as MobileMe. The plaintiff on that side is iCloud Communications, a Phoenix-based VoIP service.

And for just one more example, Apple was sued by Cisco way back in 2007 over the iPhone brand name as Cisco claimed it owned the trademark to that name. Nevertheless, Apple is still selling the "iPhone."

Related:

Topics: Hardware, Apple, Laptops, Mobility

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11 comments
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  • RE: NY publisher sues Apple over 'iBooks' name trademark

    A search of the USPTO shows that Apple filed for 'IBOOK' in 1998, and was granted the trademark in 2001.

    It also shows that 'IBOOKS' was filed by Family Systems Ltd of the UK in 1998, and Apple bought it from them.

    There is no record of a Byron Preiss ever owning that mark.
    msalzberg
    • RE: NY publisher sues Apple over 'iBooks' name trademark

      @msalzberg
      It doesn't matter. Similar to copyrights as long as that publisher being the first to use the mark in commerce, he's got the trademark claim, with the limitation of the geographic area that product being sold.
      Samic
  • RE: NY publisher sues Apple over 'iBooks' name trademark

    But plenty of evidence that apple constantly steals other peoples rights instead of making up new titles. Seems like they got caught again...check the records again. See the thousands of sales using the name?
    timspublic1@...
    • Ya gotta love people who think they know trademark law

      I've run into trademark bullies before, and Apple is not the trademark bully in this instance. I also find it interesting that you rip into Apple for stealing other people's rights when it is clearly stated that they bought the iBooks trademark from Family Systems Ltd. News flash for you. When someone steals something, they don't pay money for it.

      Of course, a trademark is an intangible, kind of like an MP3 download from a bit torrent site; no actual property is involved, and I'll lay money right now you don't have a problem with pirating music from the evil RIAA or movies from the evil motion picture industry.

      Which, of course, brings us to the real issue you have: Envy at someone who is successful and has more than you do.
      fr_gough
      • I agree Mr. fr_gough

        @fr_gough
        You act as though you understand trademark law, but clearly you do not.

        :|
        Tim Cook
    • Except for there is no such 'evidence', actually; just a lot of claims

      @timspublic1@...
      DDERSSS
  • RE: NY publisher sues Apple over 'iBooks' name trademark

    That "iBook" was for Apple's line of computer, not for book publishing business. It is possible for 2 companies has the same trademark name but in different industry, i.e. Delta faucets, airlines, hotel etc.

    It was okay for the New York publisher to file "iBooks" because they were not in direct conflict with Apple's computer business. But now Apple is in book selling/publishing business now, so they might just have enough ground to sue Apple for it.
    Samic
    • Three additional points

      @Samic

      Three additional points about US tradename/mark law:

      1) Unlike domain names, where people can register any name, a trade name must actually be used, both before and after registration--"Use it or lose it." It cannot be registered until there is evidence that it has been "used in commerce". The common approach is to sell one copy of something to someone and then immediately file the application. But a company can't just come up with 200 names, put each name on 1 copy, register all 200 and then preempt the field. A name that is not routinely used [b][i]in commerce[/i][/b] is considered "abandoned", even if registered.

      2) To qualify as a trade name, there must be a connection in the public mind between the trade name and the company or product. The idea is that our company has added value to the name by our efforts. Unrelated people should not be able to get the benefit of our goodwill. If I hand-manufacture surfboards with the tradename "Surf" and sell about one board a year in a small town for 5 years, no one who decides to use that name is going to get any benefit from [b][i]my[/i][/b] efforts.

      3) There is a principle called "tradename diminution"--even if the product is totally unrelated, if "everybody and his brother" can use it for other things, it will lose the goodwill value the main owner has created.

      Unlike patent and copyright law, trademark law is a combination of state statutory or common law and federal law. A New York (a major publishing center) company that has used a tradename for over a decade and sold "over a thousand" book titles has a [b][i]solid[/i][/b] claim to [b][i]exclusive[/i][/b] use of the name to prevent tradename diminution.
      Rick_R
      • RE: NY publisher sues Apple over 'iBooks' name trademark

        @Rick_R
        But why now? Why not in 2010 when Apple starting using the ibooks name just like iCloud communications immediately sued when Apple released information about iCloud?
        athaki
      • RE: NY publisher sues Apple over 'iBooks' name trademark

        @Rick_R I'm wondering the same thing athaki is - why the wait? IF Apple was indeed in violation of the iBooks trademark why didn't Byron Preiss sue when iBooks was first released with Apple's iOS 4?
        athynz
  • RE: NY publisher sues Apple over 'iBooks' name trademark

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