Who needs a novel when there are juicy court filings to read?
When the news broke this week that Apple had filed a trademark suit against Amazon over the “App Store” phrase, the actual text of the complaint wasn’t yet publicly available in the online court records. But it is now, and it offers some interesting insights for anyone following the bizarre twists and turns of the long-running App Store trademark saga.
The suit lays out Apple’s case with behind-the-scenes details, seeming to channel Steve Jobs at times as it tries to impress upon the court the significance of Apple’s App Store.
Among other things, the text confirms my hunch that Apple’s recent “If you don’t have an iPhone, you don’t have the App Store,” ad would play into the trademark dispute. It features multiple appearances by “Angry Birds.” And it shows that Apple has been trying to get Amazon to stop using the name since January, even though the suit wasn’t filed until just before the launch of Amazon’s Android “Appstore.”
Read the original here: PDF, 15 pages. Or continue reading below for extended excerpts.
For the record, Amazon has declined to comment on the suit and hasn’t yet responded in court.
Plaintiff Apple Inc. (“Apple”) brings this action to enjoin Amazon.com, Inc.’s (“Amazon”) unauthorized use of Apple’s APP STORE (TM) trademark. Apple seeks preliminary and permanent injunctive relief and damages under the laws of the United States and the State of California and alleges on knowledge as to itself and its own acts, and on information and belief as to all other matters, as follows:
NATURE OF ACTION
Apple is a market leading computer hardware, software, and mobile computing technology and services company. Its APP STORE mobile software download service has transformed the way that mobile device users customize and expand the functionality of their devices. Apple, long renowned for its innovation and product design, introduced the APP STORE service and coined the APP STORE mark just over two and 1/2 years ago. In that short period of time, the service has experienced phenomenal growth and success, and the service is now used by over 160 million consumers worldwide who have downloaded more than 10 billion software programs.
Recently, Amazon has begun improperly using Apple’s APP STORE mark in connection with Amazon’s mobile software developer program. Amazon has also taken actions which, on information and belief, evidence Amazon’s intent to improperly use Apple’s mark in connection with Amazon’s mobile software download service. Amazon’s present and intended uses are unauthorized and unlawful.
On July 11,2008, Apple launched its APP STORE service. This service allows users of Apple’s iPhone, iPod and, most recently, iPad mobile devices, and users of computers running Apple’s iTunes software, to browse for and license a wide range of third party software programs, including games, business, educational, finance, news, sports, productivity, social networking, health, reference, travel, and utility software.
Prior to the introduction of the APP STORE service, operators of mobile communications networks offered a variety of downloadable mobile software such as ringtones, wallpapers, and games. The operators branded their download services with a variety of terms that bore no similarity to APP STORE. For example, Verizon called its mobile software download service the “Get It Now virtual store” and later changed the name of that service to the “Verizon Media Store.”
When it launched, the APP STORE service represented a revolutionary kind of online software service and was an instant commercial and critical success. As a columnist for The New York Times remarked soon after the launch of the service, “[n]othing like the App Store has ever been attempted before.” Apple coined the term APP STORE as a means of branding its new service. The term APP STORE was not in general use in connection with the distribution of software programs prior to Apple’s adoption of the term as a trademark.
The APP STORE service serves as the distribution center for a variety of software programs developed by third parties or by Apple. For example, if a user of an Apple mobile device wishes to play the popular “Angry Birds” video game, she would touch the “App Store” icon on her mobile device, search for the “Angry Birds” program and obtain a copy of that program on her device by licensing the software through the APP STORE service.
In order to distribute software programs through the APP STORE service, third party software developers are required to sign a distribution agreement in which the developer appoints Apple as its worldwide agent for delivery of the software programs. All of the software programs that are available through the APP STORE service are licensed to consumers, not sold.
To date, there have been more than 10 billion downloads of programs through the service by more than 160 million consumers worldwide. An average of over a million downloads take place every hour worldwide. There are currently more than 350,000 software programs available for download on the APP STORE service.
Apple has extensively advertised, marketed and promoted the APP STORE service and the APP STORE mark, spending millions of dollars on print, television, and internet advertising. News outlets have also commented extensively and repeatedly on the operations of the APP STORE service in the months and years following its launch. The enormous public attention given the APP STORE service, and the success of the service, have cemented the public’s identification of APP STORE as a trademark for Apple’s service. Moreover, Apple has obtained registrations of the APP STORE mark covering more than fifty foreign jurisdictions, including the European Union, Japan, and China.
Apple has applied to register the APP STORE mark in the United States. The U.S. Patent and Trademark Office approved Apple’s application to register APP STORE as a trademark. Microsoft has opposed that application’s registration. The matter is currently subject to opposition proceedings before the Trademark Trial And Appeal Board.
From Apple’s launch of the APP STORE service in 2008, Apple has prominently featured the APP STORE mark in print advertising in the United States, California, and elsewhere. The mark has been featured in such print advertising sponsored both by Apple as well as AT&T (which offers wireless connectivity for certain Apple mobile devices), These ads have appeared in such magazines and newspapers as Fortune, The New Yorker, The Economist, Newsweek, Time, The New York Times, the Washington Post, as well as numerous other regional and local newspapers.
As part of its marketing for the APP STORE service, Apple has implemented a unique television advertising campaign. Most recently, Apple has aired nationwide television commercials that state “If you don’t have an iPhone – you don’t have the App Store.” These commercials highlight the different computer software programs available through the APP STORE service and the variety of functions each computer software program serves. These commercials verbally refer to the APP STORE mark and also depict the APP STORE mark as featured on Apple’s devices. Apple has aired these and other commercials regarding its APP STORE services on all the major television broadcast stations in the United States, including ABC, CBS, NBC, FOX, The CW, BET, Comedy Central, CNN, ESPN, MTV, TBS, TNT, and VH1. As a result, millions of consumers in the United States and California have been exposed to Apple’s television campaigns.
Not surprisingly given the success of Apple’s APP STORE service, the service and Apple’s APP STORE mark have been the subject of an overwhelming amount of high-profile positive unsolicited media coverage in the United States and California. These articles recognize the APP STORE mark as referring exclusively to Apple’s service.
The phenomenal popularity of Apple’s mobile software download service has prompted a number of competitors to offer their own services. In fact, Microsoft, Google, Nokia, Research in Motion (Blackberry), Sprint, Verizon and other major companies now offer software download services for mobile operating systems that compete with Apple’s mobile operating system. These competitors have found ways of branding and describing their own mobile software download services without using the term APP STORE. For example, Microsoft uses the term MARKETPLACE to refer to its service and uses the descriptor “virtual store for apps.”
In limited instances, third parties have made improper use of the term APP STORE. In response, Apple has contacted those parties and requested that they 1 cease and desist from further use of the mark. In almost every instance, the entities contacted by Apple agreed to cease use of Apple’s APP STORE mark.
In approximately January of 2011, Amazon began soliciting software developers to participate in a future mobile software download service offered by Amazon. On information and belief, Amazon began unlawfully using the APP STORE mark in or about that same month.
Amazon has unlawfully used the APP STORE mark to solicit software developers throughout the United States, including in the Northern District of California. Amazon’s unlawful use includes, but on information and belief is not limited to, such use at web pages accessed through the developer.amazon.com URL.
At no time has Amazon received a license or authorization from Apple to use the APP STORE mark.
On or about January 19, February 9, and March 14,20 1 1, Apple communicated with Amazon and demanded that Amazon cease its use of the APP STORE mark. Amazon has not provided a substantive response to any of Apple’s communications.
Amazon is currently unlawfully using the APP STORE mark in connection with what Amazon terms the “Amazon Appstore Developer Portal” and the “Amazon Appstore Developer Program.”
Amazon’s website indicates that “Angry Birds Rio Is Coming Soon,” which indicates that Amazon intends to expand its unlawful use of the APP STORE mark by using that mark “soon” in connection with the launch of Amazon’s mobile software download service. Apple is informed and believes that Amazon intends to use the APP STORE mark in the Northern District of California in connection with Amazon’s mobile software download service.
Amazon’s ongoing unlawful use of the APP STORE mark has irreparably harmed Apple, and Amazon’s threatened expansion of that unlawful use will increase the irreparable harm to Apple.