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Welcome to the website of the Internet and Intellectual Property Justice Clinic, a University of San Francisco School of Law clinical program that provides legal assistance to parties in intellectual property matters. For more information, see the "About Us" page.

Our website includes commentary from our students on cutting-edge internet law and intellectual property topics. Those posts are listed below, and more are archived under "Pages" on the right. Enjoy!

Apple v. Apple: 30 Years in Court

By Joanna L.

   Apple makes over $65 billion in yearly revenue, sits on an enormous pile of cash, and will take anyone to court who tries to threaten a dime of it. With over 300 registered trademarks and service marks, Apple has created a lot of its wealth from this mark ownership (along with Apple’s patents, copyrights, etc).  The tech giant has registered font names (“Chicago,” “New York,” and “Geneva”), words beginning with “i” (“iMovie,” “iCal,” “iLife,” “iMac,” “iPod,” “iPad”), and slogans (“There’s an app for that.”).

   Between January 2008 and May 2010, Apple, Inc. filed over 350 cases with the US Patent and Trademark Office. Most of these are in regards to the use of words like “apple,” “pod,” and “safari.”  Ironically, a lot of these have been directed at actual apple sellers. However, a brand like Apple needs to keep an eye on the bottom-line for shareholders and protect its name and reputation. At times, it seems Apple goes too far in asserting trademark rights, but that’s for the courts to decide… if they ever get to court! Apple has been known to get a lot of cases settled with those piles of cash I mentioned. But this is nothing new for the company – in fact, one suit lasted 30 years.

   In 1978, the Beatles’ record company, Apple Corps. sued Apple Computers (they changed it to Apple, Inc. in 2007 to reflect its growing line of products) for trademark infringement for use of the name “Apple” for their new computer company. The parties settled in 1981 with $80,000 paid to Apple Corps., and added a condition: Apple Computer agreed not to enter the music business and Apple Corps. agreed not to enter the computer business. Seems simple enough, right? Not so…

   Apple Computer added MIDI, other audio recording capabilities, and a synthesizer sound chip to its new Apple II line of computers in 1986. In 1989, Apple Corps. sued citing a breach of their prior agreement and the court agreed. The decision effectively ended the Apple II line and all further development of advanced, built-in musical hardware.  However, the Apples found themselves pitted against each other yet again in 1991 when Apple Computer sampled a sound system called “Chimes” and added it to the Macintosh operating system. Once again the parties settled, but this time for $26.5 million and a new set of guidelines for future use of the word “Apple” and the apple logo. Apple Corps retained the right to use "Apple" or their apple logo on any "creative works whose principal content is music."Apple Computer retained the right to use "Apple" or their apple logo on "goods or services...used to reproduce, run, play, or otherwise deliver such content," as long as it isn't on physical media (like a CD). Later, Apple Computer would rename “Chimes,” calling it “Sosumi,” pronounced “So-sue-me.”
   When Apple started developing the iTunes Music Store, the company became nervous about breaching the agreement and offered Apple Corps. $1 million in 2003 for use of “Apple” in conjunction with the digital music service. The Beatles turned them down only to see the online music store launched with the “Apple” name anyway. Cue massive lawsuit. But, surprise! Apple Computer wins this time - essentially, the computer company prevailed because they argued that the issue turned on whether they were a service supplier or a content carrier. In 2006, the court said that they were only acting as a service supplier, and based on the wording of the previous agreement, it was found that "no breach of the trademark agreement [had] been demonstrated." Apple Corps was ordered to pay over $2 million to Apple Computer in legal fees. The Beatles appealed and nothing new about the dispute surfaced. However, in the 2007 keynote address given by Steve Jobs, Apple’s CEO, the Beatles were featured throughout the presentation. One month later, it was announced that the two companies had reached a new agreement: Apple, Inc. would own all trademarks related to "Apple" and the respective logos. Apple, Inc. agreed to license back to Apple Corps certain trademarks for their continued use. Soon after, Apple started selling the Beatle’s catalog on iTunes. Some have speculated that the Beatles were paid $500 million to end the dispute and allow the sales.

   Apple has been involved in many trademark suits over the years, and it seems will continue to be as long as they operate. Some of the claims seem almost silly at first glance, but in examining the dispute with Apple Corps., I hope I’ve explained one of the more interesting ones. With companies like Apple expanding its services and products every day, who knows how far these trademark and service mark suits will go…