Beatles suing Apple over iTunes

[Nottingham]

Beatles suing Apple over iTunes
Reuters News Service

LONDON - The Beatles management company said today it is seeking a court injunction against Apple Computer Inc., insisting the computer maker's iTunes online music store breaches the band's trademark.

Apple Corps., the company formed in 1968 by the Fab Four to manage its business interests and serve as the band's music label, issued a brief statement Friday saying it had filed court papers in a London High Court in July seeking penalties and an injunction against the computer maker.

"Specifically, (the) complaint is made over the use by Apple Computer of the word "Apple" and apple logos in conjunction with its new application for downloading pre-recorded music from the Internet," the London-based company said in a statement.

The company did not elaborate on the penalties it is seeking, but said the computer maker violated a 1991 agreement specifying that it could use the Apple trademark for computer products only.

http://www.chron.com/cs/CDA/ssistory.mpl/headline/tech/2095424

:bounce: Now Apple is getting sued!

[unblock]

1. i remember the earlier action the beatles' mgmt. co. took

they sued, or threatened to sue, over apple using the name apple at all. of course, using the same name in an entirely different industry is not a problem. if i open a shoe store called "ibm shoes", then i'm free to do so, as there would be no customer confusion between my shoe store and the giant technology company.

but now that apple computers is expanding into the music business, the beatles' management companty probably has a real case.

of course, they'll wind up settling for cash, which is probably all they're after ....

[Dookus]

2. Yup!

When Apple first made the iPod, I thought "hmm.... I wonder if that's gonna piss off Apple Records".

Then, when they announced iTunes, I KNEW they would piss off Apple Records.

Yes, Apple Records is trying to get money. They should. Apple Computer took their name.

[mediaman007]

3. Not the first time Apple Records has sued Apple Computer

As I was told at a tech seminar in the early 90's, Apple actually had a forerunner of the Macintosh in the middle eighties. At that time the Apple IIE had evolved into a nice little package called the Apple GS. "G" for graphics and "S" for sound. It certainly was the forerunner of the multimedia computers of today. It was the "S" that raised the interest of Apple Records. Apparently there had been some agreement in earlier years between the two companies. The agreement included some issues about Apple Computer not using the "Apple" name for music, or "s"ound.

Well, after a settlement with Apple Records, the computer company moved its multimedia efforts into the Macintosh.

Since they have been down this road before, Apple Computer must have anticipated that this lawsuit would be a possibility. The result may hinge on the agreement after the first lawsuit.

[sendero]

4. more trademark silliness....

... it's absurd to think that anyone would confuse Apple computers and Apple records. In fact, I suspect that many times more people are familiar with Apple computers than the record company.

These sorts of suits are just nonsense and should be tossed in the dustbin post haste.

[unblock]

6. hmmmmm

and should apple computers be permitted to license the commercial rights of a beatles song that apple records no longer owns (doesn't michael jackson own a bunch now?) and use a beatles song in their ads?

[madrchsod]

9. mikey owns the whole

beatles catolog-ouch-and many other songs. that was pauls advice to mike to buy publishing rights and other licences he did, he out bid paul for his own music...

[Dookus]

10. I disagree...

I think when Apple Computing deliberately got into the music business, they were infringing on Apple Records. And it doesn't matter which one is better known today - Apple Records was FIRST.

[Impolitico]

19. That's not how trademark works....

Context plays a huge role in a trademark.

Apple records does not (cannot and should not) have the word "Apple" all to theirselves forever and eternally. But they CAN corner the market on contextual use related to music, specifically, as would their trademark be written.

Now that said, part of enforcement has to do with proliferation. Coca-Cola, for example, is deeply entrechned in the consumer marketplace as meaning one thing to almost the entire world. So I don't know that it would be possible for any other company to capitalize on the name "Coca-Cola" given the market saturation; it might be a bad example, actually, as I wouldn't be surprised if there were specific regulations at USPTO about conjunctive-phrase marks and limitation from competitive marks being accepted.

A name as ubiquitous as "Richardson", on the other hand... well there are no less than 47 live and active trademarks either of "Richardson" or containing that name. All of which are registered in their own separate industries, for their own unique purposes.

Now I'm not a lawyer, just a lowly marcom consultant... But I'd wager that it's very possible a case could be made for Apple iTunes based on the proliferation of the Apple name as pertains to technology, computers and consumer electronics. Apple Records, unlike the Beatles brand itself, faded into obscurity a long time ago. Still running things behind the scenes, perhaps, but not a household name. (Do they even have any other artists on their roster besides the Beatles?? LOL Aren't they just kind of a vanity thing to facilitate the Beatles brand?)

Basically, it's all about application.

[Impolitico]

20. That's not how trademark works...

Ack! A double post, how did that happen? :-P



Context plays a huge role in a trademark.

Apple records does not (cannot and should not) have the word "Apple" all to theirselves forever and eternally. But they CAN corner the market on contextual use related to music, specifically, as would their trademark be written.

Now that said, part of enforcement has to do with proliferation. Coca-Cola, for example, is deeply entrechned in the consumer marketplace as meaning one thing to almost the entire world. So I don't know that it would be possible for any other company to capitalize on the name "Coca-Cola" given the market saturation; it might be a bad example, actually, as I wouldn't be surprised if there were specific regulations at USPTO about conjunctive-phrase marks and limitation from competitive marks being accepted.

A name as ubiquitous as "Richardson", on the other hand... well there are no less than 47 live and active trademarks either of "Richardson" or containing that name. All of which are registered in their own separate industries, for their own unique purposes.

Now I'm not a lawyer, just a lowly marcom consultant... But I'd wager that it's very possible a case could be made for Apple iTunes based on the proliferation of the Apple name as pertains to technology, computers and consumer electronics. Apple Records, unlike the Beatles brand itself, faded into obscurity a long time ago. Still running things behind the scenes, perhaps, but not a household name. (Do they even have any other artists on their roster besides the Beatles?? LOL Aren't they just kind of a vanity thing to facilitate the Beatles brand?)

Basically, it's all about application.

[tsipple]

5. Seems They Have a Case

This lawsuit might have some legs, assuming there are not complicating contracts between the two companies (from previous settlements).

I wonder what Apple will do, though, to fix the problem. And I suppose Apple Corps. will have to factor in any Beatles tunes Apple Computer sold through iTunes, since that's additional revenue to Apple Corps.

[mediaman007]

7. Apple Records has not made Beatle music available to iTunes

[Nottingham]

8. Al Franken Needs to be called in! for Fair & Balanced Lawsuit

Hasn't the Beetles made enough money :bounce:

[Voltaire99]

11. Apple Computer's taken a calculated risk

And the risk has yet to backfire. If they settle for a sum no larger than that paid in the previous two actions by Apple Corp., then it's a fixed cost that will ultimately be recouped by iTMS sales.

However, if, as is likely, Apple Corp. pushes ahead for much larger damages, then good thing Jobs & Co. still have deep pockets. But too bad for the shareholders.

[wtmusic]

12. Get a life

Will anyone sincerely confuse the two?

Gimme Gimme Gimme

[Emillereid]

13. It's a wonder that my local farmers market is allowed

to post a sign informing me that 'apples' of the edible label are for sale. Sometimes this copyright stuff goes overboard. I have no problem distinguishing apple computer, itunes, or apple employment agency, etc. from apple records.

[LightTheMatch]

14. But WAIT --

Here in Austin, there's a company called Apple Moving. If the moving guys sing or whistle whilst loading or unloading furniture, are they going to be sued next?

[Jim Ryalto]

15. bound to happen sooner or later

The "sosumi" alert sound that comes with all macintosh computers is said to be a reference to apple records. When Apple added sound with the Mac, their sly reply via the alert sound to Apple Records was "So Sue Me," or so the story goes.

[newyawker99]

24. Hi Jim Ryalto!!

Welcome to DU!! :toast:

[Enraged_Ape]

16. You mean Apple records is still around?

Didn't it kind of die around the time that Badfinger left?

[Atlant]

18. Corporations can be like the undead.

Corporations can be like the undead; they have the legal rights
of a natural-born person, but they don't die in the same way.

Atlant

[Atlant]

17. Years ago, one of the Macintosh system sounds was "sosumi"

(Sorry -- I missed Jim Rialto's earlier reply!)

Years ago, when Apple and Apple first concluded their legal
wrangling, one of the provisions was that Apple Computer
could not enter the "music" business (whatever that meant).

When the Mac came out, though, it had a very capable sound
system built-in to every Macintosh. Along with that came a
series of "system alert sounds" (the Mac version of the PC
"Beep"). One of those was a musical chord; it's name was
"sosumi".

Pronounced, of course, "So Sue Me!"

Atlant

[AP]

21. It sounds like the terms of the contract will determine the outcome

and since we don't know what those terms were, it's hard to guess the outcome.

However, if this were a straight-up TM question, it's unlikely Apple Comp. would lose. The point of TM law is that you can't infringe someone else's TM in way that's likely to create confusion (ie, people think that you're some other company or product). For many reasons that isn't the case here.

When you have a TM registered in one of the 33 or so specific classes you have a monopoly right in that class in the jurisdiction in which you're registered. (If it's unregistered, you have a monopoly right in your field of business in the geographic location in which you do business.) As somemone else noted, if you have a two-part name, you have monopoly rights in both parts together and, sometimes, just one part of the name, but if one part of the name is not distinctive or clever (which Apple isn't isn't) you might not have a monopoly right over just part of the name.

A couple things here: Apple music is record label (they record and sell music performances). Apple is a computer company which sells hardware and software for the distribution of music recorded by different record labels. They might not even be in the same class. It's not clear that it's even in the same class. Both companies have built up reputations in those fields separately, making it highly unlikely that there'd be any likelylihood of people confusing one's business for the other's. "Apple" is so undistinctive in the context of music sales, it's unlikely that either company could have a monopoly over the use of the word alone (it would have to be used with "Records" or "iTunes" for it to be protected) -- but you can actually look up the registration to see if the TM was granted for the whole name and the Apple part of the name.

Like I said, however, none of this probably matters. The issue here is most likely entirely the terms of their contract (which they probably agreed to keep confidential). Apple would have been crazy to agree to do anything more than whatever Apple Records was entitled to have under TM law, and Apple Records would have been crazy to agree to anything less than whatever they were entitled by TM law. However, that's exactly what one of them did, and that party did so probably because they got a little bit of money (or some other consideration, like a promise not to sue). So, you can be pretty sure that the outcome of this will probably be that one of these parties will get more or less than they were entitled to get according to TM law.

[NashVegas]

22. Going By Previous Music Industry Spats Like This

I'd say Apple Computers could easily add a "USA" on the end of their name and it becomes the end of it.

Many times, there have been bands with similar names between the US and UK where the simple addition has taken care of things.

Example: Dan Hicks' old band the Charlatans from the '60s '70s forced the British Charlatans of the '90s to become known as Charlatans UK over here.

It's not *exactly* the same thing, but there's plenty of precedent.

I think this is a very bad PR move on Apple Corp's part. It only serves to highlight that Apple Corp is more or less a dead entity, as product distributors go. It also won't endear them to a younger generation that's fighting to establish its own cultural identity against their elders' wishes.

[BiggJawn]

23. Uh, doesn't the whole "Beetle" catalogue belong to Mike Jackson now?

I thought Michael bought all the rights to the Beetles tunes several years ago?