A year ago, New York publisher John Colby salvaged a trademark case against Apple Inc. when he drummed up new counsel from Quinn Emanuel Urquhart & Sullivan. Unfortunately for Colby, Quinn Emanuel had a harder time winning over the judge.
U.S. District Judge Denise Cote in Manhattan tossed the case on Wednesday, ruling that J.T. Colby & Company Inc. can’t claim that Apple’s popular iBooks service violates Colby’s own "ibooks" mark. Siding with Apple’s lawyers at Kirkland & Ellis and Latham & Watkins, Cote held that Colby’s mark doesn’t warrant trademark protection. Consumers, she ruled, weren’t likely to to confuse the companies’ use of the term, which Colby uses to refer to physical books, not to digital fodder for e-readers.
J.T. Colby, which does business as Brick Tower Press, was originally represented by a team from Manatt, Phelps & Phillips. The Manatt lawyers withdrew last May, however, citing shifting demands from an unnamed third-party litigation funding firm that wanted Manatt to handle the rest of the case on contingency. Quinn Emanuel’s Robert Raskopf agreed to take over, telling us at the time that the case was strong and he was eager to get it in front of a jury.
Barring a successful appeal, a jury trial is now out of the question. Cote showed little patience for Colby’s claims in her ruling Wednesday, pointing out that the publisher had provided no evidence of how consumers perceived the "ibooks" mark. Cote also found that J.T. Colby hadn’t shown that the mark connotes anything other than books being available over the Internet — something that the Patent and Trademark Office considers weak grounds for a registered trademark.
According to the opinion, J.T. Colby acquired the "ibooks" mark in 2006 from publisher Byron Preiss, who tried to register it in 1999 but was turned down by the PTO. Preiss went ahead and used an unregistered mark when he launched his "ibooks" imprint that same year. The "ibooks" logo contains a lightbulb with an "i" printed on it. Cote suggested that the logo might indeed qualify for trademark protection, but she ruled that it didn’t matter since J.T. Colby’s lawyers were only claiming protection for the term itself.
"While we have a great deal of respect for Judge Cote, we think have a great case on the issues and that it should have gone to trial," said Quinn Emanuel’s Raskopf, who vowed to appeal.
Claudia Ray of Kirkland & Ellis and Perry Viscounty of Latham & Watkins, lawyers for Apple, didn’t respond to requests for comment.
Victor Li is a reporter with The Litigation Daily, a Recorder affiliate.