13-2227-cv
J.T. Colby & Co. v. Apple Inc.

                            UNITED STATES COURT OF APPEALS
                                FOR THE SECOND CIRCUIT

                                        SUMMARY ORDER
RULINGS BY SUMMARY ORDER DO NOT HAVE PRECEDENTIAL EFFECT. CITATION TO A
SUMMARY ORDER FILED ON OR AFTER JANUARY 1, 2007, IS PERMITTED AND IS GOVERNED BY
FEDERAL RULE OF APPELLATE PROCEDURE 32.1 AND THIS COURT’S LOCAL RULE 32.1.1. WHEN
CITING A SUMMARY ORDER IN A DOCUMENT FILED WITH THIS COURT, A PARTY MUST CITE
EITHER THE FEDERAL APPENDIX OR AN ELECTRONIC DATABASE (WITH THE NOTATION
“SUMMARY ORDER”). A PARTY CITING A SUMMARY ORDER MUST SERVE A COPY OF IT ON ANY
PARTY NOT REPRESENTED BY COUNSEL.

       At a stated term of the United States Court of Appeals for the Second Circuit, held at the
Thurgood Marshall United States Courthouse, 40 Foley Square, in the City of New York, on the
29th day of September, two thousand fourteen.

PRESENT:

        DEBRA ANN LIVINGSTON,
        GERARD E. LYNCH,
        CHRISTOPHER F. DRONEY,

                        Circuit Judges.
______________________________________________

J.T. COLBY & COMPANY, INC., DBA BRICK TOWER PRESS,
J. BOYLSTON & COMPANY, PUBLISHERS LLC,
IPICTUREBOOKS LLC,

                                 Plaintiffs-Appellants,

                 -v.-                                              No. 13-2227-cv

APPLE INC., AKA APPLE, INC.,

                        Defendant-Appellee.
__________________________________________

                                        ROBERT L. RASKOPF (Todd Anten, on the brief), Quinn
                                        Emanuel Urquhart & Sullivan, LLP, New York, NY, PARTHA
                                        P. CHATTORAJ, David A. Shaiman, Allegaert Berger & Vogel
                                        LLP, New York, NY, for Plaintiffs-Appellants.

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                                         RICHARD P. BRESS, Latham & Watkins LLP, Washington,
                                         DC, PERRY J. VISCOUNTY, Latham & Watkins LLP, Menlo
                                         Park, CA, JENNIFER L. BARRY, Latham & Watkins LLP, San
                                         Diego, CA, MATTHEW W. WALCH, Latham & Watkins LLP,
                                         Chicago, IL, DALUE M. CENDALI (Claudia Ray, Bonnie L.
                                         Jarrett, on the brief), Kirkland & Ellis LLP, New York, NY,
                                         for Defendant-Appellee.


       UPON DUE CONSIDERATION, IT IS HEREBY ORDERED, ADJUDGED, AND

DECREED that the order of the District Court is AFFIRMED.

       Plaintiffs-Appellants J.T. Colby & Company, Inc.; J. Boylston & Company, Publishers LLC;

and iPicturebook LLC (“Plaintiffs”) are three independent book publishers owned by John Colby

(“Colby”). These companies have been publishing physical books and e-books under the imprint

“ibooks” since 2006, when they purchased the rights to use the imprint in a bankruptcy proceeding.

Defendant-Appellee Apple Inc. (“Defendant”) is a major technology corporation that uses the

trademark “iBooks” for an e-reader software program that appears on its hardware devices. On June

15, 2011, Plaintiffs filed suit in the United States District Court for the Southern District of New

York claiming, inter alia, that Defendant’s use of “iBooks” infringed on Plaintiffs’ trademark rights

in violation of section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a)(1)(A). After discovery, the

parties filed cross-motions for summary judgment. The district court (Cote, J.) granted summary

judgment for Defendant and dismissed, inter alia, Plaintiffs’ trademark infringement claim. J.T.

Colby & Co. v. Apple Inc., No. 11-cv-4060, 2013 WL 1903883 (S.D.N.Y. May 8, 2013). This

appeal followed. We assume the parties’ familiarity with the underlying facts, the procedural history

of the case, and the issues on appeal.




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        We review the district court’s grant of summary judgment de novo. Mullins v. City of N.Y.,

653 F.3d 104, 113 (2d Cir. 2011). “In moving for summary judgment against a party who will bear

the ultimate burden of proof at trial, the movant may . . . point[] to an absence of evidence to support

an essential element of the nonmoving party’s claim.” Gummo v. Village of Depew, 75 F.3d 98, 107

(2d Cir. 1996). We “constru[e] the evidence in the light most favorable to the non-moving party,”

and uphold the grant of a motion for summary judgment if we conclude that “there is no genuine

dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Silverman

v. Teamsters Local 210 Affiliated Health & Ins. Fund, 2014 WL 3765933, at *6 (2d Cir. Aug. 1,

2014) (quoting Fed. R. Civ. P. 56(a)).

        Section 43(a) of the Lanham Act prohibits the use in commerce of “any word, term, name,

symbol, or device” that “is likely to cause confusion . . . as to the origin, sponsorship or approval”

of goods or services. 15 U.S.C. § 1125(a)(1). The provision protects both registered and

unregistered trademarks. Thompson Med. Co. v. Pfizer Inc., 753 F.2d 208, 212 (2d Cir. 1985). To

prevail on an infringement claim, a plaintiff must prove (1) that it owns a “protectable trademark”

and (2) that the defendant’s mark “is likely to confuse consumers as to the source or sponsorship of

[the plaintiff’s] product.” Nabisco, Inc. v. Warner-Lambert Co., 220 F.3d 43, 45 (2d Cir. 2000).

        In this case, the confusion that Plaintiffs allege is that consumers may believe the Plaintiffs

are “unauthorized infringer[s]” of Apple’s trademark, Kelley-Brown v. Winfrey, 717 F.3d 295, 304-

05 (2d Cir. 2013), or that their books are “produced by” Apple, Lang v. Ret. Living Publ’g Co., 949

F.2d 576, 583 (2d Cir. 1991). The Lanham Act guards against this “reverse confusion” to prevent

“a larger, more powerful company [from] usurping the business identity of a smaller senior

[trademark] user.” Commerce Nat’l Ins. Servs., Inc. v. Commerce Ins. Agency, Inc., 214 F.3d 432,


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445 (3d Cir. 2000). To assess the likelihood of confusion, we apply the eight-factor test from

Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492 (2d Cir. 1961). These eight factors are:

“(1) the strength of the mark, (2) the similarity of the two marks, (3) the proximity of the products,

(4) actual confusion, (5) the likelihood of plaintiff[s] bridging the gap, (6) defendant’s good faith

in adopting its mark, (7) the quality of defendant’s products, and (8) sophistication of the

consumers.” Louis Vuitton Malletier v. Dooney & Bourke, Inc., 454 F.3d 108, 116 (2d Cir. 2006).

This evaluation is not a “mechanical process”; instead, we focus on the “ultimate question of

whether consumers are likely to be confused.” Nabisco, 220 F.3d at 46 (citations omitted).

       Plaintiffs have not raised more than a “mere possibility” that consumers are likely to be

confused by Defendant’s trademark. Nora Beverages, Inc. v. Perrier Grp. of Am., Inc., 269 F.3d

114, 121 (2d Cir. 2001). Apple’s “iBooks” mark is, along with its suite of other “i”-prefix marks,

part of a well-known international brand. But Plaintiffs’ “ibooks” imprint, when viewed in context,

is neither similar to Defendant’s mark in appearance nor proximate to it in the marketplace.

Plaintiffs’ imprint appears on physical books and e-books. It is frequently surrounded by contextual

information that associates it with a publishing company, including the publishing company’s name

and location, the title of a book and its author, and other copyright information. See Star Indus.,

Inc. v. Bacardi & Co., 412 F.3d 373, 386 (2d Cir. 2005) (“[I]n assessing similarity, courts look to

the overall impression created by the logos and the context in which they are found . . . .”).

Defendant’s mark, on the other hand, identifies a virtual marketplace for buying e-books and appears

exclusively on Apple-branded hardware. See id.; Lang, 949 F.2d at 581-82 (finding trademarks

dissimilar because “the general impression conveyed to the public by the[] designations differs

significantly”). The Defendant does not publish books and the Plaintiffs do not create a marketplace


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to purchase them; their products do not directly compete, serve a similar purpose, or appear in the

same channels of commerce. See Lang, 949 F.2d at 582.1 Plaintiffs’ argument that they will bridge

that gap is no more than speculation. See Lane Capital Mgmt., Inc. v. Lane Capital Mgmt., Inc., 192

F.3d 337, 346 (2d Cir. 1999). In light of these significant differences, we reject Plaintiffs’

contention that a reasonable jury could conclude, as a matter of “common sense,” that consumers

are actually confused by the two marks. Indeed, the district court correctly decided that these factors

do not even raise a genuine issue of material fact as to “whether there is any likelihood that an

appreciable number of ordinarily prudent purchasers are likely to be misled . . . as to the source of

the goods in question.” Mushroom Makers, Inc. v. R.G. Barry Corp., 580 F.2d 44, 47 (2d Cir. 1978)

(emphasis added).

       The circumstances surrounding Defendant’s decision to adopt the “iBooks” trademark also

do not plausibly support a likelihood of consumer confusion. A defendant’s bad faith or intentional

copying can “bolster[] a finding of consumer confusion.” Charles of the Ritz Grp. Ltd. v. Quality

King Distribs., Inc., 832 F.2d 1317, 1322 (2d Cir. 1987). But here, Plaintiffs have failed to raise a

genuine dispute of material fact about Defendant’s bad faith. Apple conducted an extensive

trademark clearance process that did not reveal Plaintiffs’ use of the “ibooks” imprint. See Star

Indus., 412 F.3d at 388 (“This Court has never held adoption of a mark with no knowledge of a prior


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          Although we have previously held that products are proximate when they are
“complementary,” see Plus Prods. v. Plus Discount Foods, Inc., 722 F.2d 999, 1008 (2d Cir. 1983)
(holding that a food store’s offering of vitamins was proximate to a nutritional company’s vitamin
product); Am. Int’l Grp., Inc. v. London Am. Int’l Corp., 664 F.2d 348, 352-53 (2d Cir. 1981)
(holding that a junior user’s service of “arrang[ing] insurance for its customers” was complementary
with a senior user’s insurance product), here only a very small fraction of Plaintiffs’ products —
1.83% — are complementary. The vast majority of Plaintiffs’ products are physical books that
cannot be sold through Defendant’s product. Such a small fraction of products is unlikely to induce
the consuming public to associate Plaintiffs’ and Defendant’s products sufficient to sow confusion.

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similar mark to be in bad faith even in the total absence of a trademark search . . . .”). While Colby

informed Defendant that his companies used the “ibooks” imprint, he did so only after Apple had

publicly announced its “iBooks” e-reader program. That tardy knowledge does not evince an intent

to “capitaliz[e] on [Plaintiffs’] reputation” or “promote confusion” between the marks. W.W.W.

Pharm. Co. v. Gillette Co., 984 F.2d 567, 575 (2d Cir. 1993), abrogated on other grounds by Deere

& Co. v. MTD Prods., Inc., 41 F.3d 39, 46 & n.10 (2d Cir. 1994); see also Lang, 949 F.2d at 584

(“[A]doption of a trademark with actual knowledge of another’s prior registration of a very similar

mark may be consistent with good faith.”).

       We have reviewed Plaintiffs’ remaining arguments in support of a likelihood of confusion

and find them to be without merit. Since Plaintiffs have failed to raise a genuine dispute of material

fact about the likelihood that consumers will be confused by Defendant’s use of the “iBooks” mark,

we need not and do not address whether their “ibooks” imprint is a protectable trademark under the

Lanham Act. The judgment of the district court is AFFIRMED.



                                                      FOR THE COURT:
                                                      Catherine O’Hagan Wolfe, Clerk




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