Apple under fire again – this time over iBook

Posted on by

Apple’s ongoing trademark battles seem set to continue, with a new suit filed in connection with their iBooks service hot on the heels of a dispute with iCloud Communications (reported online last week).

This time Apple is being sued by a New York book publisher, John T Colby for trademark infringement of the name ‘iBooks’.  The lawsuit was filed less than a week after the iCloud claim.

John T Colby bought the rights to a series of books which have been published under the iBooks imprint for over a decade, and believes that Apple’s use of the term iBooks for its eBook store and reader app is clear trademark infringement.

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.’

Apple has been using the term ‘iBook’ for their line of laptops sold between 1999 to 2006 and have already registered the mark (International Registration Number 874453) against computers, computer hardware, computer peripherals and users manuals sold therewith. It was only when Apple decided to use the term for electronic books, something not explicitly covered by their trademark, that Colby took action. In 2010 Apple started using the term ‘iBooks’ and Colby wants to preserve the existing goodwill in the ‘iBooks’ name, as distinct from ‘iBook’ in this case.     

However, Colby fears that Apple’s trademark will have negative repercussions for the iBooks imprint. The complaint is reminiscent of the troubles envisaged by iCloud, and reads ‘Apple’s 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’. 

Due to their legal resources, and on occasion some technicalities, Apple have so far managed to fight or settle the majority of trademark disputes brought against them.  In this case, the fact that Colby does not own a trade mark for the brand will make their case more difficult.  Apple last year secured ownership of a separate IBOOKS trademark, previously in the hands of an Isle of Man corporation, which covers software used to support electronic books, and also filed for a far more comprehensive IBOOKS mark (US serial number 85008412). However the new application comes long after Colby’s use of the brand, and the first commercial use of the earlier registration is recorded in 2000, also after the iBooks imprint was used.

Colby seeks injunctive relief and monetary damages (which have so far been unspecified). Both Apple and Colby have so far not commented on the lawsuit.  In light of Apple’s success in holding onto the iPad and iPhone brands against tech giants Cisco and Fujitsu, and their considerable marketing efforts, it is hard to imagine their letting go of the brand.  It will be interesting to see how far Colby is willing to go to retain control.