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Judge Cote ruling
Judge Cote ruling

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Published by: jeff_roberts881 on May 09, 2013
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 UNITED STATES DISTRICT COURTSOUTHERN DISTRICT OF NEW YORK----------------------------------------J.T. COLBY & COMPANY, INC. d/b/a BRICKTOWER PRESS, et al.,Plaintiffs,-v-APPLE INC.,Defendant.----------------------------------------X:::::::::::X11 Civ. 4060 (DLC)OPINION AND ORDERAPPEARANCESPlaintiffs:Partha Pratim ChattorajDavis A. ShaimanAllegaert Berger & Vogel LLP111 Broadway, 20th FloorNew York, NY 10006Robert RaskopfClaudia BogdanosTodd AntenQuinn Emanuel51 Madison Avenue, 22nd FloorNew York, NY 10010Defendant:Claudia RayDale CendaliBonnie JarrettKirkland & Ellis LLP601 Lexington AvenueNew York, NY 10022Perry ViscountyLatham & Watkins140 Scott DriveMenlo Park, CA 94025
Case 1:11-cv-04060-DLC Document 186 Filed 05/08/13 Page 1 of 71
2Jennifer BarryLatham & Watkins600 West Broadway, Suite 1800San Diego, CA 92101DENISE COTE, District Judge:In this lawsuit, a book publisher alleges that theprominent technology company Apple Inc. (“Apple”) has infringedits trademark and created a likelihood of reverse confusion, inthat consumers will likely believe that its books are in factpublished by or affiliated with Apple. The plaintiffs J.T.Colby & Company, Inc. d/b/a Brick Tower Press, J. Boylston &Company, Publishers LLC and iPicturebooks LLC, (collectively“J.T. Colby & Company”) employ the unregistered trademark ibooksand bring this trademark infringement action against Apple inconnection with Apple’s use of the mark iBooks to designateApple’s e-reader software. Apple moves for summary judgment onall of the plaintiffs’ claims. The defendant’s motion isgranted. The plaintiffs have failed to present sufficientevidence that their ibooks mark is entitled to trademarkprotection or that their mark is likely to suffer from reverseconfusion with Apple’s iBooks mark.
Case 1:11-cv-04060-DLC Document 186 Filed 05/08/13 Page 2 of 71
3BACKGROUNDThe following facts are either undisputed or taken in thelight most favorable to the plaintiffs, unless otherwiseindicated.I. 1999: Launch of ibooks ImprintTwo publishing companies created by Byron Preiss (“Preiss”)-- ibooks, inc. and Byron Preiss Visual Publications (“BPVP”) --launched the ibooks imprint in 1999. As explained to thepublic, the imprint was intended to take advantage ofopportunities in publishing provided by the Internet. In May1999, Publishers Weekly ran an article describing theforthcoming imprint:
Byron Preiss Visual Publications will launch a newimprint in September that will focus on books withcontent appropriate for marketing on the Internet.Free chapters of all the books appearing under theimprint will be available over the Internet atibooksinc.com, and in some cases the complete bookwill be sold through the site. “We believe this is agood way to use the Internet to market books,” BPVPpresident Byron Preiss said. . . . .According to Preiss, the imprint is actively lookingfor authors’ backlists as well as original works than[sic] can benefit from the relationship between printand the Internet. . . .In August of 1999, Preiss put out a press release introducingthe new imprint. In the press release, Preiss explained thatibooks is the first publishing imprint designed totake full advantage of the promotional anddistribution potential of the [I]nternet through
Case 1:11-cv-04060-DLC Document 186 Filed 05/08/13 Page 3 of 71

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