Is there anything I can do about a cease and desist from Apple?

September 20, 2010 8:17 PM

Our small stationery project just received a cease and desist order from our dear leaders at Apple. YANAL etc etc, but I am feeling rage out of my eyeballs and am wondering if there is anything we can do, or if we just have to bend over and take it? Juicy details inside!

So The story goes something like this-

While working on an iPhone app, we developed these to help us mock up our ideas. They got quite popular, and we even got an awesome distributor in the US, which was nice. Then these two pages came to us via fedex, so we did what we had to do.

I'm not looking for legal advice here, but just trying to get an understanding of why this has happened, and if we have any recourse. There seem to be a few novelty apple products, from the chopping boards to even people who were obviously inspired by our idea. Surely apple isn't going to be going into the paper business anytime soon?

Ironically, we actually spent all our profit on buying more Apple products.

For what its worth, we are located in Australia.

posted by LongDrive to law & government (15 answers total)

Your best answer is to contact a lawyer in Australia who specializes in intellectual property matters and present the letter you received to him, and ask him this question.
posted by dfriedman at 8:27 PM on September 20, 2010

Companies may send out these letters without any real ground to stand on or any intent of actually taking things farther. I'd also suggest finding a lawyer who knows the law where you are, and finding out whether there's anything to be concerned about. Even if they wouldn't have any chance of winning, of course, you probably don't want to deal with a court battle if they decided to sue; but a lawyer can help you figure out what the odds are and give you the information you're looking for.
posted by Lady Li at 8:31 PM on September 20, 2010 [1 favorite]

just trying to get an understanding of why this has happened

Apple's IP lawyers get paid to police its IP. IP lawyers (especially trademark lawyers) operate under the principle that any dilution is a Bad Thing. They send out nastygrams as a matter of course.

They went after you on a twofer: trade dress and product name. You might want to drop a line to the people who've been C&D'd to see if they'll tell you how they dealt with it.

and if we have any recourse.

Lawyer lawyer lawyer lawyer lawyer. IP lawyer, to be precise.
posted by holgate at 8:40 PM on September 20, 2010

In addition to the IP rights mentioned in the cease & desist letter, Apple has design protection for the iPhone/iPod Touch in Australia (for example). Your options are basically to comply with the C&D or to hire an attorney and try to open up talks with Apple to engage in a licensing deal.

The other companies doing the same thing will almost certainly receive their own C&D letters.

As to why it happened: In the US at least trademark holders must police their trademarks or else risk losing their trademark protection. The same is true of trade dress. As Australia is a common law country it would not surprise me if the rule was similar there. A competent IP attorney in Australia could tell you more.

Surely apple isn't going to be going into the paper business anytime soon?

Again, I can't speak to the law in Australia, but in the US the field of use of the trademark stops mattering once the mark becomes 'famous.' Thus, for example, you can't start selling Kodak Hamburgers in the US even though Kodak is not in the restaurant business and likely never will be. I believe the roughly corresponding concept in Australian law is when a mark is "well known in Australia."

Bottom line: You should talk to an IP attorney in Australia. Or a therapist, depending.
posted by jedicus at 8:52 PM on September 20, 2010 [2 favorites]

If it's any consolation, it's not about you. If Apple doesn't police its trade dress and product names in the small ways, that could bite it in the butt later. It has to go after all conceivable infringements so that when someone comes up with a really close derivative, Apple can say "Look! All along we've been fighting with these silly nincompoops and this is just another example of the people who try to rip us off!"

If you are inclined to fight, go to an IP lawyer who can tell you what your rights are. I'm in the US, so I don't know what your options are in terms of low cost legal assistance in Australia, but here we have legal aid organizations who are willing to give free or low cost advice to entrepreneurs or startups.
posted by slmorri at 8:55 PM on September 20, 2010

Or on preview, what jedicus said.
posted by slmorri at 8:56 PM on September 20, 2010

One wonders what John Gruber of Daring Fireball fame thinks of your plight.

Aside from that, yeah, you need an IP lawyer.
posted by fairytale of los angeles at 9:25 PM on September 20, 2010

For companies like Apple, the nightmare scenario is what happened to Bayer.

Everywhere in the world except the US, "Aspirin" is a Bayer trademark. Other people sell the same medicine, but they have to use a different name.

But in the US, Bayer lost control of their trademark, and now it's considered generic. Any company that wants to may call their chemically-identical product by that name.
posted by Chocolate Pickle at 10:27 PM on September 20, 2010

(Really? I thought Bayer lost their trademark on Aspirin— as well as Heroin, another Bayer trademark— because it was an asset confiscated after one of the world wars. Not because of trademark dilution.)
posted by hattifattener at 10:45 PM on September 20, 2010 [2 favorites]

This is par for the course. If you guys were making Big Coin, hire an attorney. If it was relatively small potatoes, forget about it. They can out wait and outspend you, no problem.
posted by maxwelton at 2:58 AM on September 21, 2010

If you decide to go the lawyer route, I have used Molins successfully in the past for IP work in Australia.
posted by exogenous at 4:22 AM on September 21, 2010

You can probably fight this. Making a pad of paper that looks like a phone is not infringing -- Apple's not even doing too well against companies that make phones that look like Apples'.
posted by jrockway at 4:58 AM on September 21, 2010

Lawyer.

Anyone who is giving you legal advice in this thread -- and by that, I mean applying what they think the law is to the specific facts in this situation, and coming to a conclusion -- is (1) probably not a lawyer because lawyers won't give legal advice here and (2) probably wrong.

This situation sucks for you and your business and the only way to find out what your options are is to talk to a trademark lawyer.

Good luck.
posted by devinemissk at 5:52 AM on September 21, 2010

Yes - to make you feel better (apart from lawyers etc etc).

Re open your website selling a range of whale related paper products - a note book for recording whale sightings maybe. The NOTEPOD.

AND a pouch that holds several note books together in the same place. A collection of note books in fact - a NOTEPOD.

AND a bean shaped pad of paper, used for writing on - a NOTEPOD

AND, in a similar vein, a note book used to record observation about all kinds of legumes - a NOTEPOD


You never know - one may be a hit.

Good luck.
posted by Xhris at 6:16 AM on September 21, 2010 [1 favorite]

I wonder if you could make notepads out of copies of the cease and desist letter.
posted by 4ster at 9:33 AM on September 21, 2010