Some good comments in this thread. I agree that a cross license is probably in the works.
Interesting that nobody has actually talked about the claims of the Creative patent. Since the claims are what define the scope of the patent, that's really the only thing Apple is concerned about. These claims are pretty broad--just about any at least three-level hierarchical interface for selecting tracks in a portable media player will be covered. So if the risk to Apple is real (i.e., either having to a) pay up or x-license; b) stop selling iPods; or c) rework the interface so that it does not infringe), then they'll need to take this seriously. By asserting their own patents, it puts them in better position on the cross-license front. (One lesson to be learned here: patents can be used for defense, too)
Also interesting is that the claims are all methods of selecting a track. That means that technically, it isn't Apple who is infringing--it's the end user. So Creative must prove "contributory infringement" or "inducement" of infringement. Each of those have their own legal requirements, which are probably not so tough to meet here, but are hurdles nevertheless.
Interesting how they expect the Tiger OS to conflict with the mail-order business.
You're missing their argument. They claim that Apple is using the Tiger mark to sell things other than just operating systems, including iPods. They give examples of promotions and giveaways. Don't forget that Apple is also a retailer, and for some goods, such as iPods, a direct competitor of TigerDirect. That's how the Google thing plays in -- customers intending to buy from TD are instead shown (via the Tiger mark) that Apple (and probably other retailers) sells the same goods.
I've written elsewhere on this thread about "initial interest confusion" and how it works. I think TigerDIrect's claim is pretty weak, but I don't think it's frivilous -- there is a little bit of merit to their case.
Actually, they've only posted the Complaint on macmerc. That just states the claims, but doesn't get into the meat of the legal arguments. The real juice is found in the Memorandum, which I have obtained and am happy to email to anyone who requests it (I don't have access to an ftp or web server).
Basically, the argument is that Apple is using the name "Tiger" to promote not just its OS, but also other products, such as iPods, which is in direct competition with TigerDirect. There is some merit to this, and it's not as frivilous as people are suggesting.
Tiger's best argument may be for "initial interest confusion". It's a growing area of trademark law that works, for example, against one who registers a slightly misspelled domain name, (e.g., amzon.com) in order to glean unsuspecting customers headed for the correct domain.
Here's how it could have to work here: Joe User wants to buy an iPod from TigerDirect. He goes to Google and types in "Tiger" to get TigerDirect's web page. But instead, he sees Apple come up, and winds up buying his iPod from Apple. A bit far-fetched (which is why I think TD loses - it's just not likely consumers would be confused or misled in this way), but it works logically.
Actually, checking out the court records shows that Tiger is somewhat active on the litigation front. In one particular case, they sued WhenU.com for placing pop-up / pop-under ads on the TigerDirect web page. The problem was that the ads were for direct compeitors such as OfficeMax. The case wound up settling, though I don't know any terms.
That case and this one have some similarities, and some important differences. There, there was a clear case of confusing customers and directly using the Tiger mark to whenU's advantage. Here, it's not so clear on confusion, and the "initial interest confusion" argument is pretty weak IMHO (who would go to Google to find TigerDirect's website?).
Well, there's too much we don't know to judge the Global thing. Does Systemax have a trademark on Global Computer? Does Global Computing have a mark? And perhaps there was some suit we don't know about.
Actually, checking out the court records shows that Tiger is somewhat active on the litigation front. In one particular case, they sued WhenU.com for placing pop-up / pop-under ads on the TigerDirect web page. The problem was that the ads were for direct compeitors such as OfficeMax. The case wound up settling, though I don't know any terms.
That case and this one have some similarities, and some important differences. There, there was a clear case of confusing customers and directly using the Tiger mark to whenU's advantage. Here, it's not so clear. Instead, Tiger is arguing for "initial interest confusion". It's a growing area of trademark law that works, for example, against one who registers a slightly misspelled domain name, (e.g., amzon.com) in order to glean customers headed for the correct domain.
Here's how it could have to work here: Joe User wants to buy an iPod from TigerDirect. He goes to Google and types in "Tiger" to get TigerDirect's web page. But instead, he sees Apple come up, and winds up buying his iPod from Apple. A bit far-fetched (which is why I think TD loses - it's just not likely consumers would be confused or misled in this way), but it works logically.
"But when it comes to price, I can understand the argument quite well. Especially because they charge one price in the US and other in other countries:"
Don't be fooled -- it is actually a good thing that Pharms can charge differently to different countries. In economics, it's known as "price discrimination", and (despite the negative sounding name), is the ideal situation given that there is a monopoly on a product.
What it means is that the Pharm can negotiate and charge everyone a different price on the same patented product, based on how they value it (i.e., what they are willing to pay). The bottom line is that everyone (here, everyone means 'countries', not individuals, but the argument extends) gets the product. There is no incentive for Pharm to not sell to one country--as long as it's actually selling above cost--since they will be getting some profit out of it.
Contrast that to the situation where Pharm is forced to sell its patented drug to every country at the same price. Now they have to set the single price such that they maximize profit. That price will almost certainly be above what some countries are willing to pay, and hence, those countries lose out. In fact, everyone loses -- the country's inhabitants die since they are denied access to what should be a cheap drug for them, and Pharm is denied the opportunity to sell their product for even a very small profit to the that country.
Forcing Pharm to sell cheap here means third world inhabitants die over there.
Lessig made this point in a Wired article a few months ago, I believe.
However, in fact TigerDirect does not own the trademark to Tiger-- Apple does.
Incorrect. TigerDirect does own the mark on "Tiger" for, among other things, "retail store services featuring computers and computer related products." Reg. No. 256739.
Apple's mark, currently in opposition, is limited to "computer operating system software."
But Apple's mark really is not relevant to this inquiry -- it would only come up if it was enforcing its own rights against, say, a new "TigerStripe OS". The question is whether Apple, by associating Tiger with other computer products (like the promotional iPods and iBooks they're giving away at the Premiere) is infringing TigerDirect's mark. It's a bit of a stretch, but it's not frivilous.
How has Apple not limited it to the OS? "Come to Premiere for Tiger and have chance to win iPods and Powerbooks" for one. If they are associating the Tiger mark with other products, that's potentially problematic.
You've noted well the differences in scope of TigerDirect's mark and Apple's proposed one. But take one more step and you'll understand TD's legal position:
Apple is using it's Tiger mark to sell things (via its retail stores) other than OSes, such as iPods and Powerbooks (via promotions and general PR). That turns Apple's use of "Tiger" into one that is for retail services, and directly competes against TigerDirect, who also sells those products.
That's the legal hook for TD. They still need to show likelihood of confusion, however, which I think is tough.
Again, to be honest, I think this case fails on the "likelihood of confusion." But there's a lot of merit to the rest.
I actually think that Apple's rejected attempt to obtain broader coverage for its Tiger mark plays well for TigerDirect -- they are arguing that Apple is effectively using its Tiger mark to sell non-OS hardware, such as iPods and Powerbooks.
What needs to be noted (as I've said elsewhere) is that Apple and TigerDirect are direct competitors in the sale of many of these items. It's Apple's use of the "Tiger" mark to sell these items via its own retail outlets that's potentially problematic from a trademark perspective. It's especially a problem after the USPTO said expressly that Apple couldn't obtain a Tiger mark to cover such broad products and activities.
I understand what you are saying about the name "Tiger" being well-known since last year. But that doesn't mean anything about when that term would be used in commerce. Theoretically, Apple could have said they were releasing it "at some undisclosed date way in the future" and that might not have given rise to a lawsuit -- the case may not have been "ripe", in legal terms.
So knowing the date of release is an important point, and that wasn't available until April 12.
Your reasoning is good, but you're missing a key piece.
Tiger and Apple are direct competitors for certain products, including computer systems and iPods. (Recall that Apple is a retailer in addition to a manufacturer.) Tiger is claiming (as described in their filed court papers) that Apple is using its "Tiger" mark to sell not only the OS, but ALSO this hardware. They give evidence already of Jobs touting Tiger as an incentive for people to buy new Macs, and of iPod and Powerbook giveaways at the 10.4 Premeire. So that's the big gripe... Apple's trademark on 'Tiger' is limited to operating systems only, and not hardware.
So it's not really the Google issue (though that's undoubtedly important to them) -- it's Apple's broadening its use of the Tiger mark to expand into a directly competing market.
You actually are making TigerDirect's argument -- Apple is using the Tiger mark to push its own iPod sales. If Apple didn't have its own store that directly competed against TigerDirect, I think much of this case would be moot.
But Apple was limited to using Tiger for OS only, not hardware. In fact, TigerDirect (according to their court papers) opposed Apple's Tiger trademark back in December, and attempted to settle back then. They do have a beef.
And their filing was in response to Apple's public announcement of 10.4's availabiltiy -- which was made on April 12. So it's not that last minute. And they aren't looking to hold up the launch -- it's only asking for no "Tiger" going forward.
That said, I think they won't pass the 'likelihood of confusion' test. And they certainly didn't handle this well from a PR perspective.
I just read the complaint and memorandum of TigerDirect. They have some legitimate beef:
1) Apple only announced the April 29th launch date publicly on April 12, 2005. That's critical in asking "Why only now?" -- there was nothing imminent prior to that.
2) Apple tried registering "Tiger" as a trademark (with intent-to-use) in July 2003, but was denied b/c of possible confusion. Apple won the Tiger trademark by agreeing to limit its use to computer operating software.
3) Tiger attempted to settle, and then filed an opposition to Apple's mark in December 2004.
4) Tiger has six registered marks, and several other common-law marks.
Much of this wouldn't matter (IMHO) if Apple wasn't a reseller itself. But since they do sell many of the same products as TigerDirect, there is a beef. Tiger makes a good case that Apple is using the Tiger mark more broadly that it is entitled, to venture into other sales areas than just operating systems, and that that can affect Tiger's revenues. Here's a quote from their court memorandum:
"Apple Computer's use of its infringing family of Tiger marks to expand sales of products besides its operating system software is already evident -- for example, Apple Computer is offering free iPods and laptops as part of its Tiger World Premiere giveaway. In short, notwithstanding its representation to the PTO that it would only use Tiger in connection with their unique computer operating system software, Apple Computer has in recent weeks used a family of Tiger marks in connection wiht a substantially broader group of products and services, including the very products and services currently offered by Tiger Direct under its famous family of Tiger marks."
Personally, I don't think this passes the "likelihood of confusion" test, but that's for a court to decide. If I were in TigerDirect's shoes, I'd similarly be upset.
Slashdot Mirror
Interesting that nobody has actually talked about the claims of the Creative patent. Since the claims are what define the scope of the patent, that's really the only thing Apple is concerned about. These claims are pretty broad--just about any at least three-level hierarchical interface for selecting tracks in a portable media player will be covered. So if the risk to Apple is real (i.e., either having to a) pay up or x-license; b) stop selling iPods; or c) rework the interface so that it does not infringe), then they'll need to take this seriously. By asserting their own patents, it puts them in better position on the cross-license front. (One lesson to be learned here: patents can be used for defense, too)
Also interesting is that the claims are all methods of selecting a track. That means that technically, it isn't Apple who is infringing--it's the end user. So Creative must prove "contributory infringement" or "inducement" of infringement. Each of those have their own legal requirements, which are probably not so tough to meet here, but are hurdles nevertheless.
You're missing their argument. They claim that Apple is using the Tiger mark to sell things other than just operating systems, including iPods. They give examples of promotions and giveaways. Don't forget that Apple is also a retailer, and for some goods, such as iPods, a direct competitor of TigerDirect. That's how the Google thing plays in -- customers intending to buy from TD are instead shown (via the Tiger mark) that Apple (and probably other retailers) sells the same goods.
I've written elsewhere on this thread about "initial interest confusion" and how it works. I think TigerDIrect's claim is pretty weak, but I don't think it's frivilous -- there is a little bit of merit to their case.
Basically, the argument is that Apple is using the name "Tiger" to promote not just its OS, but also other products, such as iPods, which is in direct competition with TigerDirect. There is some merit to this, and it's not as frivilous as people are suggesting.
Tiger's best argument may be for "initial interest confusion". It's a growing area of trademark law that works, for example, against one who registers a slightly misspelled domain name, (e.g., amzon.com) in order to glean unsuspecting customers headed for the correct domain.
Here's how it could have to work here: Joe User wants to buy an iPod from TigerDirect. He goes to Google and types in "Tiger" to get TigerDirect's web page. But instead, he sees Apple come up, and winds up buying his iPod from Apple. A bit far-fetched (which is why I think TD loses - it's just not likely consumers would be confused or misled in this way), but it works logically.
Actually, checking out the court records shows that Tiger is somewhat active on the litigation front. In one particular case, they sued WhenU.com for placing pop-up / pop-under ads on the TigerDirect web page. The problem was that the ads were for direct compeitors such as OfficeMax. The case wound up settling, though I don't know any terms.
That case and this one have some similarities, and some important differences. There, there was a clear case of confusing customers and directly using the Tiger mark to whenU's advantage. Here, it's not so clear on confusion, and the "initial interest confusion" argument is pretty weak IMHO (who would go to Google to find TigerDirect's website?).
Actually, checking out the court records shows that Tiger is somewhat active on the litigation front. In one particular case, they sued WhenU.com for placing pop-up / pop-under ads on the TigerDirect web page. The problem was that the ads were for direct compeitors such as OfficeMax. The case wound up settling, though I don't know any terms.
That case and this one have some similarities, and some important differences. There, there was a clear case of confusing customers and directly using the Tiger mark to whenU's advantage. Here, it's not so clear. Instead, Tiger is arguing for "initial interest confusion". It's a growing area of trademark law that works, for example, against one who registers a slightly misspelled domain name, (e.g., amzon.com) in order to glean customers headed for the correct domain.
Here's how it could have to work here: Joe User wants to buy an iPod from TigerDirect. He goes to Google and types in "Tiger" to get TigerDirect's web page. But instead, he sees Apple come up, and winds up buying his iPod from Apple. A bit far-fetched (which is why I think TD loses - it's just not likely consumers would be confused or misled in this way), but it works logically.
What it means is that the Pharm can negotiate and charge everyone a different price on the same patented product, based on how they value it (i.e., what they are willing to pay). The bottom line is that everyone (here, everyone means 'countries', not individuals, but the argument extends) gets the product. There is no incentive for Pharm to not sell to one country--as long as it's actually selling above cost--since they will be getting some profit out of it.
Contrast that to the situation where Pharm is forced to sell its patented drug to every country at the same price. Now they have to set the single price such that they maximize profit. That price will almost certainly be above what some countries are willing to pay, and hence, those countries lose out. In fact, everyone loses -- the country's inhabitants die since they are denied access to what should be a cheap drug for them, and Pharm is denied the opportunity to sell their product for even a very small profit to the that country.
Forcing Pharm to sell cheap here means third world inhabitants die over there.
Lessig made this point in a Wired article a few months ago, I believe.
Incorrect. TigerDirect does own the mark on "Tiger" for, among other things, "retail store services featuring computers and computer related products." Reg. No. 256739.
Apple's mark, currently in opposition, is limited to "computer operating system software."
But Apple's mark really is not relevant to this inquiry -- it would only come up if it was enforcing its own rights against, say, a new "TigerStripe OS". The question is whether Apple, by associating Tiger with other computer products (like the promotional iPods and iBooks they're giving away at the Premiere) is infringing TigerDirect's mark. It's a bit of a stretch, but it's not frivilous.
How has Apple not limited it to the OS? "Come to Premiere for Tiger and have chance to win iPods and Powerbooks" for one. If they are associating the Tiger mark with other products, that's potentially problematic.
Apple is using it's Tiger mark to sell things (via its retail stores) other than OSes, such as iPods and Powerbooks (via promotions and general PR). That turns Apple's use of "Tiger" into one that is for retail services, and directly competes against TigerDirect, who also sells those products.
That's the legal hook for TD. They still need to show likelihood of confusion, however, which I think is tough.
I actually think that Apple's rejected attempt to obtain broader coverage for its Tiger mark plays well for TigerDirect -- they are arguing that Apple is effectively using its Tiger mark to sell non-OS hardware, such as iPods and Powerbooks.
What needs to be noted (as I've said elsewhere) is that Apple and TigerDirect are direct competitors in the sale of many of these items. It's Apple's use of the "Tiger" mark to sell these items via its own retail outlets that's potentially problematic from a trademark perspective. It's especially a problem after the USPTO said expressly that Apple couldn't obtain a Tiger mark to cover such broad products and activities.
So knowing the date of release is an important point, and that wasn't available until April 12.
Tiger and Apple are direct competitors for certain products, including computer systems and iPods. (Recall that Apple is a retailer in addition to a manufacturer.) Tiger is claiming (as described in their filed court papers) that Apple is using its "Tiger" mark to sell not only the OS, but ALSO this hardware. They give evidence already of Jobs touting Tiger as an incentive for people to buy new Macs, and of iPod and Powerbook giveaways at the 10.4 Premeire. So that's the big gripe... Apple's trademark on 'Tiger' is limited to operating systems only, and not hardware.
So it's not really the Google issue (though that's undoubtedly important to them) -- it's Apple's broadening its use of the Tiger mark to expand into a directly competing market.
You actually are making TigerDirect's argument -- Apple is using the Tiger mark to push its own iPod sales. If Apple didn't have its own store that directly competed against TigerDirect, I think much of this case would be moot.
But Apple was limited to using Tiger for OS only, not hardware. In fact, TigerDirect (according to their court papers) opposed Apple's Tiger trademark back in December, and attempted to settle back then. They do have a beef.
And their filing was in response to Apple's public announcement of 10.4's availabiltiy -- which was made on April 12. So it's not that last minute. And they aren't looking to hold up the launch -- it's only asking for no "Tiger" going forward.
That said, I think they won't pass the 'likelihood of confusion' test. And they certainly didn't handle this well from a PR perspective.
One other thing.. the case was actually filed on Tuesday the 26th, not today. Not quite as last minute as we thought.
1) Apple only announced the April 29th launch date publicly on April 12, 2005. That's critical in asking "Why only now?" -- there was nothing imminent prior to that.
2) Apple tried registering "Tiger" as a trademark (with intent-to-use) in July 2003, but was denied b/c of possible confusion. Apple won the Tiger trademark by agreeing to limit its use to computer operating software.
3) Tiger attempted to settle, and then filed an opposition to Apple's mark in December 2004.
4) Tiger has six registered marks, and several other common-law marks.
Much of this wouldn't matter (IMHO) if Apple wasn't a reseller itself. But since they do sell many of the same products as TigerDirect, there is a beef. Tiger makes a good case that Apple is using the Tiger mark more broadly that it is entitled, to venture into other sales areas than just operating systems, and that that can affect Tiger's revenues. Here's a quote from their court memorandum:
Personally, I don't think this passes the "likelihood of confusion" test, but that's for a court to decide. If I were in TigerDirect's shoes, I'd similarly be upset.