Judge Denies Apple Injunction Request Against Amazon Appstore

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Apple vs. Amazon
Judge Phyllis J. Hamilton denied a request from Apple Inc. for a preliminary injunction against Amazon that would have prevented the online retailer from using “Appstore” in the name of its Amazon Appstore for Android. In doing so, Judge Hamilton said that Apple’s initial testimony and evidence failed to show how Amazon’s use of the term “Appstore” tarnished Apple’s trademark of term for its own App Store for iOS devices.

 

Today’s ruling is not a decision on the case itself, but rather a ruling on the request by Apple for a preliminary injunction. To gain a preliminary injunction, a plaintiff would have to prove to the judge they is likely to prevail in its case, and in her ruling, Judge Hamilton made it clear that Apple is not likely to do.

“The court finds that Apple has not established likelihood of success as to the infringement claims,” she wrote. “The court assumes without deciding that the ‘App Store’ mark is protectable as a descriptive mark that has arguably acquired secondary meaning.’

She added, however, that, “The court does not agree with Amazon that the mark is purely generic.”

Amazon’s defense in the suit centered around two main arguments, “that the ‘App Store’ mark is generic (and therefore not protectable), and that even if the mark is not generic, Apple cannot demonstrate any likelihood of confusion.”

While the judge rejects the notion that “App Store” is purely generic, as noted above, the rest of her ruling made it clear that she doesn’t believe there is much chance that consumers are going to be confused when shopping at one or the other, in part because the Android apps being sold at Amazon won’t work on iOS devices.

More broadly, there are eight factors that have been established by the courts as requirements for trademark infringement, and the judge felt that only two of those factors work in Apple’s benefit.

She wrote that, “Two of the eight factors somewhat favor Apple, and three factors somewhat favor Amazon. The remaining three factors are neutral, or do not clearly favor either side.”

“Accordingly,” she wrote, “under this analysis, the court finds that Apple has not established that it is likely to prevail on the ‘confusion’ element of its infringement claim.”

In her conclusion, she was even more succinct, writing, “In accordance with the foregoing, the motion for preliminary injunction is DENIED.”

The case isn’t over, and Apple and Amazon can both introduce new evidence and testimony, and in the meanwhile, there is an appeal before the Trademark Trial and Appeal Board from Microsoft, which had argued the term was generic.

In other words, while the case isn’t over, the judge in the case has made it abundantly clear that the bar is set quite high for Apple to prove infringement, and it’s always possible that the company’s mark on “App Store” will be declared invalid by the Trademark Trial and Appeal Board.

 

Comments

John Molloy

To Summarize: Remember this is a preliminary call not the final announcement - we have to wait until October 2012 for that!

Bosco (Brad Hutchings)

Remember that all of Apple’s adventures in the court room are marketing adventures, not legal ones. Even when they lose, they can call their opponents copycats and some people just eat that stuff up. Redmond, start your copy machines. Blah blah blah. Except now, Apple clogs our courts with it.

Bryan Chaffin

Brad, I don’t think the wider world beyond the tech blogosphere cares about this stuff. As such, it would be a fabulous waste of resources for Apple to spend the kind of money these cases require for the benefit of marketing.

I also think it a given that Steve feels very, very protective of the things his company does. He’s always hated it when other companies make money off of what he sees as his accomplishments (which is where a lot of the things that personally turn you (Brad, in this case smile) off stem from.

In that light, Apple popularized the term “app” as a term for mobile software, introduced the first successful mobile app store, has built up all sorts of goodwill and “secondary meaning” (the judge agrees that Apple has done this last bit) with its “App Store,” legitimizing the concept of the mobile app store in the process.

Apple (i.e. Steve) feels like it is entitled to profit from that good will and secondary meaning and wants to stop others from glomming on.

To do so, it must sue.

One can argue that App Store is generic (the judge doesn’t think so), and one can argue that it’s obvious (so obvious that no one had done it before), but calling this suit a marketing ploy requires one to ignore the things that motivate Steve Jobs and Apple.

Bosco (Brad Hutchings)

Bryan, I’d simply say that Apple would be better served focussing its energy on making devices that people who buy competing devices would want to buy. They won’t win this lawsuit against Amazon. They won’t win their ITC complaint or lawsuit against Samsung. So I stand by my conclusion that these adventures are basically a marketing exercise where Apple gets to call its competitors copycats. The media on Apple’s side get all excited that Apple is sticking it to the copycats. Meanwhile, the copycats gain market share and eventually marginalize Apple. Then we all sit around and whine for a decade about how the world doesn’t want the better product, blah, blah, blah.

As a point of reference… I broke my 15 month no-Apple policy and ordered a new MBP this week to replace an aging MBP as my main computer. I ordered it because it’s the best value for my immediate needs and the way I work right now. So I’m not anti-Apple, just anti their BS, like these silly lawsuits. Apple has not been taken to the woodshed by Android phones because they “copy”. They are losing because there are too many silly strings that come with the iPhone.

Bryan Chaffin

I wasn’t trying to defend Apple…well, mostly. Here, let me offer my quick defense:

No one had an “app store” before Apple’s App Store. When you hear “App Store,” you know what I mean. When tens of millions of Americans hear “App Store,” they know what I mean. They know it’s Apple’s App Store. I think that merits some protection.

I also think it unlikely to get that protection (in other words I agree that Apple is very likely to lose).

The point of my earlier post, however, wasn’t to defend Apple it was to explain the mindset of Apple’s leadership as I see it. They might well lose, but to say that losing is proof that the suit is a marketing ploy is a logical fallacy.

I’ll reassert that the only people paying attention to the suit are partisans who have already made up their mind. If suing Amazon and calling them copycats is a marketing move, it’s the worse marketing move Apple has made since Steve Jobs came back to Apple.

In the real world, people don’t care about whether or not Apple has a trademark on “app store,” and they don’t care about Flash. They don’t care about how many cores their tablet’s processor has, and they don’t give a crap about 4G speeds on their tablets, which are overwhelmingly used on WiFi networks.

The Flash/processor/4G thing is aimed at Verizon which is trying to use stuff like that to peddle Android tablets.

This stuff is pertinent to nerds like us and the other nerds who pay attention to what nerds like us say.  Apple doesn’t market to nerds like us.

Now the Samsung battle is another issue. Apple is likely to win at least some of its complaints against Samsung and other hardware makers.  They might lose some, as well, but they do have some clear patents on things being used on some Android devices. Why shouldn’t Apple defend its inventions? These are legitimate inventions. Legitimate creations.

Of course, Apple won’t win them all, and the company is no doubt infringing on at least some patents owned by other companies, which may even include Samsung.  These suits and FTC complaints are much more about cross-licensing negotiations than they are about stopping the import of devices into the U.S., and that’s where it’s fair to call the suits theater.

Bosco (Brad Hutchings)

So here’s what I don’t get… Why double down on the App Store thing with a C&D to GetJar today when it’s pretty obvious they are going to lose the claim against Amazon? I just don’t buy that it’s sincere self-righteous indignation on Steve’s part. Look to your own story about GetJar today. They’re laughing at the C&D, just like Bezos laughed them off a few months ago when they got upset with his plans. How socially tone deaf does Apple have to be to think that its targets aren’t going to laugh at it and then ultimately fend off your challenge in court? What do these quixotic actions do aside from sully the brand and basically reinforce the oft-made point that, for other tech companies, Apple isn’t worth dealing with? That’s how I arrive at these legal adventures being a marketing exercise.

Of course, the part that continues to flummox me is why there are no popular Mac press/fans who can work with the message that they love some of the things Apple makes, but don’t like the Apple BS. Seriously Bryan, you are so close with that GetJar article today. All it needs is a big windmill picture with “App” and “Store” on opposite blades grin.

Bryan Chaffin

Come on, mate, you know Apple has to defend its mark or lose it.

wab95

his stuff is pertinent to nerds like us and the other nerds who pay attention to what nerds like us say.? Apple doesn?t market to nerds like us


Hey, who’re you calling a nerd? Talking to me? I’m taking off my pocket protector and unhooking my HP-67CX scientific calculator, and I dare you to step outside…

I have to agree with your logic, Bryan.

I?d simply say that Apple would be better served focussing its energy on making devices that people who buy competing devices would want to buy

Not to team up on you, Bosco, but to drive home a point about business strategy, and why and how I see Apple (and other successful companies) garnering marketshare. (I’ve got 10 minutes of downtime, so why not.) I’ll just point out that no Fortune 500 company operates as you’ve suggested above (at least none that I’ve studied), particularly those that are consistently in the top tiers. They study the industry, define a market (which in most cases is subset of the larger generic market, and more often than not, a minority subset) and design a product or suite of products to address that market; and then defend that market as if it were Iwo Jima. And for a company, like Apple, that has materially suffered from inadequate patent protection (think MS and OS’s in the ‘80s - 90’s), they are going to defend every inch as if it were hallowed ground.

Courts as marketing venues or tools? I don’t know of a single business that likes to be in court; or that regards it as anything other than an immediate to medium term resource sink. If anything, it threatens performance if it takes leadership’s eyes off of the ball. No, courts are tools and arenas for defending turf, maybe even staying alive. Why is it such a poor venue for marketing? Because most of the court-time is opaque to the public until decisions are made, hardly a smart marketing venue. And even when decisions are made, they get their one day of press coverage and then the mainstream press move on. Where is the added value proposition for marketing? More importantly, where are the data, the hard data sought by investors, that court time is value added and leads to increased sales and market share? That is a distinct question from the one regarding court judgements, which can affect valuation, but almost never has any direct sales effect.

I might be sympathetic to that argument for an inconspicuous start-up run by a novice who goes to court against a heavy weight; it could be their big break, or the end of the world as they know it. Court is a gamble. I find it wholly implausible for a company that sets industry standards on marketing and creates adverts that win mindshare, if not market share (think “I’m a Mac”, or the media frenzy around new product releases). Other tech companies would kill for that kind of attention, and Apple have it already. How does court time add anything to this, especially when over 90% of it is out of the public eye? Simply put, it doesn’t. 

I think Bryan sums it up succinctly; if this were a marketing ploy, it is the worst marketing move Apple have made - but I would add - in the history of modern business.

Bosco (Brad Hutchings)

@wab95: The 10% that the public does see—the PR announcing lawsuits—has more than backed up my premise over the past couple of years. Every one of these lawsuits, Apple in their PR announcing it, says something like “We take IP seriously. So and so needs to invent their own stuff rather than copying ours”. Fair enough, but then just today, we learn that Apple lost an $8M verdict for iPod playlists. Or, in the case of Nokia, they shipped 3G phones without first securing a license. So it’s fair to conclude that the part about Apple taking IP seriously is at least selective, if not outright poppycock.

It’s not like Apple’s sole source of income is IP licensing (e.g. Kodak) or like licensing is a key business component (e.g. Microsoft or Nokia). Nor is it like Apple has been effective in defending market share with its IP. See iPhone over the past 18 months, despite Steve announcing all the wonderful IP they were going to use to defend the iPhone when it was introduced.

Perhaps Bryan is right, in that Apple’s execs and Steve (especially) feel cheated by other companies “copying” them. Perhaps they’ve got enough cognitive dissonance going on to not feel that they have done the same blatantly to the likes of Nokia or even small patent holders (“trolls”) picking at countless little features in their OSs and apps. They’ve made their bed in this business process (“software”) patent cesspool, and I wish them nothing but ill will playing aggressively there, just as I wish the same to any other company that does. Holding IP for defense is one thing. Actively going after competition with them is entirely different. I just think they’ve been playing these cards for too long to not understand that they’re not going to get favorable treatment in court or from the ITC. Everyone else seems to get it at this point, and is playing the game against Apple as if they get that part. And that’s what leads me to believe that Apple’s litigiousness and self-righteousness on these matters is more marketing than anything else.

Bryan Chaffin

So it?s fair to conclude that the part about Apple taking IP seriously is at least selective, if not outright poppycock.

It’s definitely selective. For instance, Apple launched iTools knowing full well about Tenon’s iTools product. The Nokia 3G licensing issue is another example, though that one has an added wrinkle that Apple accused Nokia of trying to charge higher licensing fees than it charged the rest of the industry.

There have been a couple of other examples from the last ten years that I can’t quite remember.

Whether Apple has been selective in its principles doesn’t have much to do with whether or not the specifics of this case have merit.

When everything is said and done, I expect Apple to be left with a legitimate trademark on “app store” that applies only to iOS (and maybe Mac) online software download services. In other words, it will be completely unenforceable against anyone competing on other platforms.

Bryan Chaffin

Brad, I am very curious about your thoughts on this point that I made above:

No one had an ?app store? before Apple?s App Store. When you hear ?App Store,? you know what I mean. When tens of millions of Americans hear ?App Store,? they know what I mean. They know it?s Apple?s App Store. I think that merits some protection.

Bosco (Brad Hutchings)

Nobody had “gas station” or “service station” before the first person did. Amazon and Microsoft’s point about “App Store” is that it’s just blatantly generically descriptive of function rather than a unique brand. Fine, you might make the same argument about “Windows” being generic, but nobody of any significance ever made a bold challenge to MS’s trademark in the early years of its use. And if you really want to use the “Windows” analogy, it would work better if Apple called its app store “Shelves”.

Anyone remember Gulf War One when Sadam’s henchmen would put up “baby milk factory” signs in English in front of bombed out buildings in some Batman-esque (in the sense of the campy Adam West TV series) attempt to attract media sympathy? Like they didn’t even think to throw an internationally recognized brand like Nestl? on those signs? That’s kind of how farcical “app store” as a trademark seems to people who don’t side with Apple on this.

And yes Bryan, I agree with you on what the outcome will probably be. Apple might have to keep a close eye on Cydia for infringing use when all is said and done. I still don’t get what Apple gains by dragging it out other than calling everyone else copycats. It’s so 3rd grade.

Bryan Chaffin

Perhaps the reason why we are at odds on this, Brad are these differences in opinion:

1.) Apple popularized the use of “app” for mobile software.

2.) Apple popularized the concept of online software downloads, which was a continuation of its popularization of online music downloads. GetJar and other online software stores may have been around, but they weren’t “app stores” because Apple hadn’t introduced the concept yet.

I doubt either concept applies to the first “gas stations,” which were generally called “service stations” before they became just “gas stations.” I don’t know what they were called back in the early days of the 20th century, but the point is that the “gas station” comparison isn’t really analogous.

In addition, this never applied to any individual gas station, and I quote:

No one had an ?app store? before Apple?s App Store. When you hear ?App Store,? you know what I mean. When tens of millions of Americans hear ?App Store,? they know what I mean. They know it?s Apple?s App Store. I think that merits some protection.

Furthermore, Amazon wants an “app store” because Apple has The App Store. Microsoft, which had a smartphone years before iOS made them start over from the ground up, has an online “Apps Marketplace” because Apple has “The App Store.” Google itself has its own Marketplace because Apple has “The App Store.” There was at least a year of heavy criticism about Google not having an answer to Apple’s “App Store.”

The point is that Apple made this a thing. “App Store” has secondary meaning that go far and above the value of either term in its generic usage. Had Apple not introduced “The App Store,” Amazon wouldn’t have used the concept in its name (or so I assume while readily acknowledging that we can never know).

It’s for those reasons that I think Apple deserves trademark protection.

Bosco (Brad Hutchings)

The first use of the wordlet (to coin a word) “app” by Apple that I can recall was in “MacApp”, an object oriented application framework first released in 1985. “App” as a word was most definitely not invented for mobile. I’d have to dig through my own email archives from the 90s for proof, but I’m pretty sure I often described what I did back then as “writing apps for several platforms, including Mac, Windows, BeOS, and Palm”. The “app” word was definitely a common colloquialism, and not one recently invented for mobile applications. Note also that Apple doesn’t even restrict it to mobile applications, e.g. Mac App Store.

Nor did Apple invent the idea of a mobile application. A recurring recent topic on the Palm Entrepreneurs Form (PEF-TALK), a mailing list long hosted by Brian Hall (Missing Sync fame) is that a few of the competing stores for Palm devices were pretty close to doing what Apple did with its app store, and Palm was close to either buying one or copying one or something like that. As for mobile phone applications themselves, I wrote my first around 1998 to support near real time court record lookups for an up and coming pre-employment background screening company. The “app” was deployed on Qualcomm (later Kyocera) PalmOS phones, the first such devices on the market. I can’t think of much that distinguishes a vertical data collection app on a mobile device today than at that point, other than incorporation of more data such as GPS, photos, etc.

But I suppose that your arguments and my arguments are the kinds of evidence the judge will have to weigh. If Apple had kept with “iTunes Store”, that’s slam dunk trademarkable. The problem is that they are using two very generic words that fully describe, in just their generic sense, what the thing is. “Baby Milk Factory”, “Gas Station”, “App Store”. That’s a lot tougher to claim.

Bryan Chaffin

Just a semantic tweak: Please note that I said that Apple popularized the term for mobile apps, as opposed to inventing it.  Apple definitely didn’t invent mobile apps, either—I downloaded my share of software for my old Palm V, and before that there was, of course, Newton.

Moving on, I remember clearly having used “app” as a shortening of application now and again, but it definitely had a connotation to it that made it a shorthand of some sort. In fact, I remember having to clarify myself a couple of times when people didn’t know what I meant.

I also remember distinctly thinking that Apple calling software for iPhone an “app” was kind of weird, and definitely different. I think it’s because they were making it a thing, and not a contraction.

When it comes to mobile apps, the term “app” is not short for application, it’s a noun in and of itself, and that was brought about by Apple, the iPhone, and The App Store.

I strongly believe that “app store,” or “The App Store” as the case may be, is only obvious in hindsight.

And I think that’s what chaps my hide so much with some of the people screaming about it being obvious is that many of them haven’t created anything in their life. They’re just a pack of secondhander craptots (to coin a new term that I immediately love!) who would rather whine about what their betters do. “I could have done that,” or “anyone could have thought of that.”

Then why didn’t you? I’ve little doubt that some of these folks are the same kind of cheating thieves who think all their music, TV, and movies should be free.

Not all, of course, but some. And it gets me all worked up. smile

I am NOT aiming that at you, Brad, because I know you have created much and more in your life and career. That little siderant has zero to do with our discussion, but I thought an explanation of why I get riled up on this issue was in order.

I just got taken off on the tangent while writing this semantic tweak. smile

Bryan Chaffin

I’ve frequently thought about how much this situation would have been different had Apple used “iTunes” in the name, as you alluded to, Brad.

Had it trademarked “iTunes App Store,” would that have made it harder or easier to defend? I don’t know about the law here to have an opinion, but it’s an interesting intellectual exercise to me.

Bosco (Brad Hutchings)

Bryan, why is the Mac App Store called that? It does not sell mobile apps. I think that works against your contention that “app store” denotes any kind of mobile context.

Bryan Chaffin

Cart and horse, and all that.  The Mac App Store exists because The App Store exists.

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