California - New York U.S. District Court Judge Denise Cote recently ruled in Apple's favor in a lawsuit initiated by a New York publishing company which alleged that Apple's use of the "iBooks" trademark was an infringement.
J.T. Colby & Co. Inc. filed the complaint in 2011 alleging prior use of the "ibooks" trademark, false designation of origin, wrongful misappropriation, unjust enrichment and conversion. J.T. Colby & Co. sought a permanent injunction barring Apple's use of iBooks.
In December, Apple filed a Motion for Summary Judgment to have the case thrown out. Judge Cote granted Apple's motion stating that J.T. Colby had no evidence to support either that its use of IBOOKS was entitled to trademark protection or that consumers were likely to be confused between Apple's use and J.T. Colby's use. The judge held that J.T. Colby's use of "ibooks" was merely descriptive and rejected the assertion that anyone would somehow confuse Apple's iBooks with J.T. Colby's ibooks.
J.T. Colby began using ibooks and ipicturebooks as a result of its 2007 acquisition of assets from Byron Preiss, another New York publishing company. J.T. Colby claimed in the complaint that Byron Preiss had originally been using ibooks since as early as 1999 in the publishing of thousands of books made available on the Internet.
In 2010, Apple became interested in the iBooks name for its new downloadable software program which allows the purchase, storage and reading of books on iPhones, iPods and iPads. At the time Family Systems Ltd. owned the IBOOK trademark, Reg. No. 2,446,634 for "computer software used to support and create interactive, user-modifiable electronic books." Apple then cut a deal with Family Systems, who ultimately assigned the trademark to Apple in February of 2010.
Apple did not comment on the recent decision handed down by Judge Cote.