Waging Trademark War Against 'i-Pirates'

Worst of all, these “i-pirates” are unfortunately winning the war against trademark owners because serial trademark infringers frequently understand the technology better than the trademark owners, and are aware of the opportunities for infringement provided by newer avenues of commerce like iTunes. Such infringers know that many companies are not actively policing their trademarks in these densely populated marketplaces, and they understand that corporate behemoths like Apple and Google have historically been slow to respond to complaints about online copyright and trademark infringement. Thus, it is often profitable for an infringer to effectively play the odds that they will not be caught or punished for their acts.

However, all is not lost. Although online marketplaces can present frightening obstacles for trademark owners, there are strategies trademark owners can
employ to gain the upper hand in the fight against infringement.

Knowledge Is Power

The first step to crafting an effective enforcement strategy must involve understanding the particular policies and procedures established by Apple and Google for governing instances of alleged trademark infringement.

Although some attorneys may be tempted to rush to the courthouse and file a complaint against Apple or Google for trademark infringement upon discovering an infringing app, such a knee-jerk reaction generally does not represent the most efficient or cost-effective method for getting the content at issue modified or removed. As great as it might seem initially to imagine the headline “[Insert Name Here] Sues Apple for Trademark Infringment” featured in newspapers across the country, this approach typically does not lead to instant stardom or, more importantly, constitute the most prudent legal strategy.

Why incur the expense of filing a complaint and engaging in costly and time-consuming litigation with corporate giants like Apple or Google if the matter can be favorably resolved by simply filling out an online form or sending an e-mail? Both marketplace providers have implemented detailed terms and conditions of use that provide for the modification or takedown of an app that infringes a third-party's trademark. For example, the terms and conditions set forth by Apple outline broad authority for
Apple to remove any content it deems to be “unsuitable.” Under the terms, “unsuitable” expressly includes any apps that “infringe trademark rights of Apple or any third party or otherwise violate the rights of any third party.” See, www.apple.com/itunes/affiliates/terms.html.

Using the forms and procedures set forth by Apple and Google for a trademark infringement takedown request is typically a much more reliable and cost-effective approach than pursuing litigation. Such effectiveness, though, is contingent upon following the particular procedures provided by the online marketplace, which can vary greatly among providers.

For example, Apple requires that any trademark infringement complaint be sent via e-mail to their App Store department. The complaint must include information such as the trademark at issue, the trademark owner's name, any federal or state trademark registration numbers, and a copy of the URL address from iTunes for the allegedly infringing app.

Google, by contrast, explicitly requests that any trademark infringement complaints be sent to Google Legal Support by regular mail or online form, but not by e-mail. In addition to including basic information about the trademark being enforced and the infringing app at issue, Google also requires that the complainant include particular statements such as: “I have a good faith belief that use of the trademarks described above in the Android Market application described above are not authorized by the trademark owner or its agent.” Google's online form can be found at www.google.com/support/androidmarket/bin/request.py?contact_type=trademark_complaint.

It is important to note that while Apple and Google expressly prohibit apps that infringe third-party trademarks, they do not conduct any type of trademark screening searches to determine whether an app does in fact infringe another's trademark before approving it for inclusion in the iTunes Store or Android Market. Instead, they rely on a hands-off approach that places the onus on trademark owners to police their trademarks.

The Timing of an Online Takedown

Google and Apple both provide confirmation of receipt of a trademark infringement complaint generally within a day of the complaint's filing. However, after issuing this confirmation, Apple and Google handle the subsequent removal efforts quite differently.

Upon receipt of a complaint, Google internally investigates the app at issue based on the information provided, and removes the app if it concludes that it includes an infringing use of the complainant's trademark. If the app is ultimately removed, Google notifies the app developer of the removal and sends the complainant confirmation of the takedown. On average, Google's review process currently takes about one business week to complete.

Apple, on the other hand, contacts the developer of the app at issue upon receipt of a trademark complaint, but does not immediately investigate or remove the app in question from its iTunes Store. Rather, Apple provides the developer with the complainant's contact information and requests that they look into the request, review Apple's terms and conditions, and respond within five days. Although this procedure often results in the app developer's removal of the app, it does not always guarantee the prompt removal of the infringing content.

If an app developer is not responsive to Apple's initial request, Apple does not automatically conduct a follow-up or remove the app from iTunes. Instead, the burden falls on the trademark owner to perform the follow-up with Apple and/or the developer. In most cases, if more than two weeks have passed since the initial cease-and-desist request was sent to Apple and the app developer has yet to respond, Apple will then remove the app in question from iTunes if the complainant notifies it about the developer's unresponsiveness. Therefore, while Apple initially tries to act more like a mediator, it eventually will take action if the developer is uncooperative or unresponsive and the trademark owner follows up persistently. Nonetheless, because of Apple's approach, it can take substantially longer to have infringing content in an app removed from iTunes than it does to have such content removed from Google's Android Market.

Routine Policing Pays Off

Routine policing of online marketplaces is important, as new apps are being posted by the thousands every day. Potentially infringing apps can turn up on a regular basis, and must be promptly targeted with a cease-and-desist request before they have a chance to be downloaded en masse. Given that the online marketplaces are not screening for trademark infringement before approving apps, the burden falls on the trademark owners to regularly police their marks.

This can generally be done in a timely and cost-effective manner by simply conducting keyword searches for the mark(s) of interest in the online marketplaces on a weekly basis. When performing such searches, the descriptions and screenshots of the apps that turn up in the results must be reviewed in addition to the titles, as a keyword search in either marketplace will retrieve results that include the search terms in the title as well as the description of the app. Therefore, it is possible that an app might have a title that differs significantly from the trademark being enforced, but contains an infringing use of the mark in its description.

Always remember that the app developer might have also posted the infringing software on its own or other websites. Consequently, in addition to contacting the online marketplace provider, it is also beneficial to search the Internet at large via a common search engine to determine if the developer has in fact posted the infringing content elsewhere. If the infringing app is posted in other places, it is generally prudent to target the administrators of those websites with cease-and-desist requests directly as well.

Account for Evolution

Online marketplaces like iTunes are constantly evolving. Accordingly, a procedure that might prove effective for having an infringing app removed from iTunes at this time might not hold true six months from now. Trademark owners and their counsel must recognize the growing importance of policing trademarks in online marketplaces, and work hard to stay up-to-date with the enforcement policies and procedures set forth by companies like Apple. Through awareness and diligent policing, trademark owners can successfully combat infringers in online marketplaces and effectively protect their brands.

In search of tickets to the next sold-out baseball game? Need to book a vacation to Bora Bora? Well, have no fear, because you can almost certainly download an app to your mobile device that can answer these questions and have you sitting in the ballpark or on that dream beach in no time.

Although the term “app” (short for application) has been used among software developers for decades, it has recently gained popular acclaim as a result of Apple's online App Store and Google's new Android Market. From games to cookbooks, there are apps of all shapes and sizes that address almost any topic of interest imaginable. While such apps might initially seem to represent infinite solutions for every possible problem, the app marketplace possesses a dark underbelly that hosts some of the most nefarious evildoers of all: trademark infringers.

Trademark infringers have preyed on the fertile software marketplaces opened by companies like Apple and Google by offering apps for download under names that are identical or confusingly similar to other well-known brand names. These online trademark bandits are effectively engaging in a form of “i-piracy,” whereby they attempt to profit from the goodwill associated with established trademarks by pirating those marks for use in their own knock-off apps.

Worst of all, these “i-pirates” are unfortunately winning the war against trademark owners because serial trademark infringers frequently understand the technology better than the trademark owners, and are aware of the opportunities for infringement provided by newer avenues of commerce like iTunes. Such infringers know that many companies are not actively policing their trademarks in these densely populated marketplaces, and they understand that corporate behemoths like Apple and Google have historically been slow to respond to complaints about online copyright and trademark infringement. Thus, it is often profitable for an infringer to effectively play the odds that they will not be caught or punished for their acts.

However, all is not lost. Although online marketplaces can present frightening obstacles for trademark owners, there are strategies trademark owners can
employ to gain the upper hand in the fight against infringement.

Knowledge Is Power

The first step to crafting an effective enforcement strategy must involve understanding the particular policies and procedures established by Apple and Google for governing instances of alleged trademark infringement.

Although some attorneys may be tempted to rush to the courthouse and file a complaint against Apple or Google for trademark infringement upon discovering an infringing app, such a knee-jerk reaction generally does not represent the most efficient or cost-effective method for getting the content at issue modified or removed. As great as it might seem initially to imagine the headline “[Insert Name Here] Sues Apple for Trademark Infringment” featured in newspapers across the country, this approach typically does not lead to instant stardom or, more importantly, constitute the most prudent legal strategy.

Why incur the expense of filing a complaint and engaging in costly and time-consuming litigation with corporate giants like Apple or Google if the matter can be favorably resolved by simply filling out an online form or sending an e-mail? Both marketplace providers have implemented detailed terms and conditions of use that provide for the modification or takedown of an app that infringes a third-party's trademark. For example, the terms and conditions set forth by Apple outline broad authority for
Apple to remove any content it deems to be “unsuitable.” Under the terms, “unsuitable” expressly includes any apps that “infringe trademark rights of Apple or any third party or otherwise violate the rights of any third party.” See, www.apple.com/itunes/affiliates/terms.html.

Using the forms and procedures set forth by Apple and Google for a trademark infringement takedown request is typically a much more reliable and cost-effective approach than pursuing litigation. Such effectiveness, though, is contingent upon following the particular procedures provided by the online marketplace, which can vary greatly among providers.

For example, Apple requires that any trademark infringement complaint be sent via e-mail to their App Store department. The complaint must include information such as the trademark at issue, the trademark owner's name, any federal or state trademark registration numbers, and a copy of the URL address from iTunes for the allegedly infringing app.

Google, by contrast, explicitly requests that any trademark infringement complaints be sent to Google Legal Support by regular mail or online form, but not by e-mail. In addition to including basic information about the trademark being enforced and the infringing app at issue, Google also requires that the complainant include particular statements such as: “I have a good faith belief that use of the trademarks described above in the Android Market application described above are not authorized by the trademark owner or its agent.” Google's online form can be found at www.google.com/support/androidmarket/bin/request.py?contact_type=trademark_complaint.

It is important to note that while Apple and Google expressly prohibit apps that infringe third-party trademarks, they do not conduct any type of trademark screening searches to determine whether an app does in fact infringe another's trademark before approving it for inclusion in the iTunes Store or Android Market. Instead, they rely on a hands-off approach that places the onus on trademark owners to police their trademarks.

The Timing of an Online Takedown

Google and Apple both provide confirmation of receipt of a trademark infringement complaint generally within a day of the complaint's filing. However, after issuing this confirmation, Apple and Google handle the subsequent removal efforts quite differently.

Upon receipt of a complaint, Google internally investigates the app at issue based on the information provided, and removes the app if it concludes that it includes an infringing use of the complainant's trademark. If the app is ultimately removed, Google notifies the app developer of the removal and sends the complainant confirmation of the takedown. On average, Google's review process currently takes about one business week to complete.

Apple, on the other hand, contacts the developer of the app at issue upon receipt of a trademark complaint, but does not immediately investigate or remove the app in question from its iTunes Store. Rather, Apple provides the developer with the complainant's contact information and requests that they look into the request, review Apple's terms and conditions, and respond within five days. Although this procedure often results in the app developer's removal of the app, it does not always guarantee the prompt removal of the infringing content.

If an app developer is not responsive to Apple's initial request, Apple does not automatically conduct a follow-up or remove the app from iTunes. Instead, the burden falls on the trademark owner to perform the follow-up with Apple and/or the developer. In most cases, if more than two weeks have passed since the initial cease-and-desist request was sent to Apple and the app developer has yet to respond, Apple will then remove the app in question from iTunes if the complainant notifies it about the developer's unresponsiveness. Therefore, while Apple initially tries to act more like a mediator, it eventually will take action if the developer is uncooperative or unresponsive and the trademark owner follows up persistently. Nonetheless, because of Apple's approach, it can take substantially longer to have infringing content in an app removed from iTunes than it does to have such content removed from Google's Android Market.

Routine Policing Pays Off

Routine policing of online marketplaces is important, as new apps are being posted by the thousands every day. Potentially infringing apps can turn up on a regular basis, and must be promptly targeted with a cease-and-desist request before they have a chance to be downloaded en masse. Given that the online marketplaces are not screening for trademark infringement before approving apps, the burden falls on the trademark owners to regularly police their marks.

This can generally be done in a timely and cost-effective manner by simply conducting keyword searches for the mark(s) of interest in the online marketplaces on a weekly basis. When performing such searches, the descriptions and screenshots of the apps that turn up in the results must be reviewed in addition to the titles, as a keyword search in either marketplace will retrieve results that include the search terms in the title as well as the description of the app. Therefore, it is possible that an app might have a title that differs significantly from the trademark being enforced, but contains an infringing use of the mark in its description.

Always remember that the app developer might have also posted the infringing software on its own or other websites. Consequently, in addition to contacting the online marketplace provider, it is also beneficial to search the Internet at large via a common search engine to determine if the developer has in fact posted the infringing content elsewhere. If the infringing app is posted in other places, it is generally prudent to target the administrators of those websites with cease-and-desist requests directly as well.

Account for Evolution

Online marketplaces like iTunes are constantly evolving. Accordingly, a procedure that might prove effective for having an infringing app removed from iTunes at this time might not hold true six months from now. Trademark owners and their counsel must recognize the growing importance of policing trademarks in online marketplaces, and work hard to stay up-to-date with the enforcement policies and procedures set forth by companies like Apple. Through awareness and diligent policing, trademark owners can successfully combat infringers in online marketplaces and effectively protect their brands.