IP Law Daily, TRADEMARK—2nd Cir.: Apple’s non-infringement of “ibooks” imprint affirmed on appeal, (Sep 30, 2014)

By Mark Engstrom, J.D.

A federal district court properly found that Apple’s “iBooks” trademark did not infringe the “ibooks” imprint of three independent book publishers, the U.S. Court of Appeals in New York City has ruled (J.T. Colby & Company, Inc. v. Apple Inc., September 29, 2014, Per Curiam). Because the publishers failed to raise a genuine issue of material fact about the likelihood of reverse confusion, the judgment of the district court was affirmed.

Background. J.T. Colby & Company, J. Boylston & Company, and iPicturebooks LLC began to publish physical books and e-books under the “ibooks” imprint in 2006, when they purchased the right to use that imprint in a bankruptcy proceeding. In 2010, Apple announced that it would be offering software for an “iBooks” e-reader, which Apple included in its hardware devices.

The plaintiffs sued Apple for trademark infringement under §43(a) of the Lanham Act, 15 U.S.C. §1125(a)(1)(A). The plaintiffs alleged reverse confusion—i.e., that consumers might believe that the plaintiffs were unauthorized infringers of Apple’s “iBook” mark. The district court granted summary judgment to Apple and the plaintiffs appealed.

Analysis. The Second Circuit concluded that the plaintiffs failed to raise more than a “mere possibility” that consumers were likely to be confused by Apple’s “iBooks” mark, which was part of a well-known international “i”-prefix brand. When viewed in context, the plaintiffs’ imprint was neither similar to the “iBooks” mark in appearance nor proximate to it in the marketplace.

The plaintiffs’ imprint, for example, appeared on physical books and e-books, and the imprint was frequently surrounded by contextual information (e.g., the publisher’s name and location, the title of the book and its author, and other copyright information) that associated the imprint with a publishing company. By contrast, Apple’s trademark identified a virtual marketplace for buying e-books, and the mark appeared exclusively on Apple-branded hardware. Apple did not publish books and the plaintiffs did not create a marketplace to purchase them. The parties’ products did not directly compete, serve a similar purpose, or appear in the same channels of commerce.

In light of those significant differences, the court rejected the plaintiffs’ argument that a reasonable jury could conclude, as a matter of “common sense,” that consumers were actually confused by the parties’ marks. The district court correctly concluded that a likelihood of confusion analysis did not even raise a genuine issue of material fact regarding the “likelihood that an appreciable number of ordinarily prudent purchasers [we]re likely to be misled … as to the source of the goods in question.”

Although a defendant’s bad faith or intentional copying could bolster a finding of consumer confusion, the plaintiffs failed to raise a genuine dispute of material fact about Apple’s bad faith. According to the court, Apple conducted an “extensive trademark clearance process” that did not reveal the plaintiffs’ use of the “ibooks” imprint.

For those reasons, the district court’s grant of summary judgment to Apple on the plaintiffs’ trademark claim was warranted.

The case is No. 13-2227-cv.

Attorneys: Robert L. Raskopf (Quinn, Emanuel, Urquhart & Sullivan, LLP) for J.T. Colby & Company, Inc.; J. Boylston & Company, Publishers LLC; iPicturebooks LLC. Richard P. Bress (Latham & Watkins LLP) for Apple Inc.

Companies: Apple Inc.; J.T. Colby & Company, Inc.; J. Boylston & Company, Publishers LLC; iPicturebooks, LLC

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