Apple Corp. is the publisher/markholder for Beatles recordings, and long predates Apple Computer. If you don't believe me, pull out an LP of Let It Be and… ok, I'm giving away my age again. In any event, the mark used by Apple Corp. (which, for clarity, I'll refer to as "Beatles") is a sliced-open green apple, presumably of the Granny Smith variety or similar. The mark later adopted by Apple Computer is the notorious silhouette, probably of a Macintosh or Empire/Rome, with a bite taken out on the right side. In the spirit of cooperation common to the entertainment industry, Beatles objected to Apple's logo. After protracted negotiations and litigation, the companies signed an agreement in 1991. Justice Mann quotes that agreement as intending to slice apples as follows:
Whereas, the context in which this Agreement arises is the parties' desire to reserve for Apple Corp's field of use for its trademarks, the record business, the Beatles, Apple Corp's catalog and artists and related material all as set forth in section 1.3 herein and to reserve for Apple Computer's field of use for its trademarks, the computer, data processing and telecommunications business as set forth in section 1.2 herein and to co-ordinate the use of their respective trademarks in such fields of use as set forth in section 4 herein.
Id. ¶ 6. The problem is that, in 1991, the parties did not (and reasonably could not) anticipate the possibility of iTunes.
I preface my conclusions on the proper construction of the TMA with two points. First, I am aware that I must be careful to keep the TMA in its correct place in the chronology and the development of technology and to construe it accordingly. The use of the internet, and the ready availability of all sorts of downloads, was not part of the technological scene at the time, and I cannot approach the question of construction as though the particular activity now conducted by Computer (and other digital suppliers) was in the parties' minds at the time. It is true that it remains necessary to consider how the words of the agreement apply to the more technologically advanced age which has supervened. This is done in the context of statute and statutory instruments (for example, the classification of computer files as "documents") and should be done for this contract. However, I must be careful not to transpose modern circumstances back to 1991 where that would be inappropriate. Second, it is not my function to draw definitive boundary lines so as to fix the operation of the TMA for all time. I have to rule on whether specified acts were breaches of the TMA. This will inevitably result in some clarification of the demarcation between permitted and non-permitted activities (or at least I hope it will) but it will not necessarily definitively mark all boundaries for all future purposes.
Id. ¶ 66 (reference to counsel omitted).
Justice Mann's decision points out that, unlike copyrights, trademarks are limited to comparable uses. One example that I like — primarily because it has some local application a couple of counties away — is "Ford." A dairy farm could call itself "Ford Dairy" if located in Ford County or on the historically named Ford Farm or if owned by a family named Ford, without infringing on Ford Motor Company's word mark. It would be dicier for the farm to adopt a cursive "Ford" inside a horizontal ellipse as a graphical mark, but that's another story.
Although Justice Mann does not say so explicitly, there is a strong civil procedure aspect to this lawsuit. In nontechnical terms, the party claiming infringement in a trademark matter must show not only the fact of copying (or inappropriate reference), but that the copying in question falls within the mark's scope in the stream of commerce and that reasonable end-users might be confused by that use. Conversely, the burden of the party claiming infringement in a copyright matter stops with showing the fact of copying (or inappropriate reference); the defendant has the burden of showing fair use — which is the logical equivalent of the second burden in trademark litigation — and the third burden just doesn't exist in a copyright action.
This difference in burdens is one of the main reasons that protecting and reusing character and setting in fictional works have received so much less attention under trademarklike analysis than under copyright analysis: The holder tactically focuses on the cause of action for which it must prove less, forcing the alleged infringer to focus on the cause of action alleged. Justice Mann's decision does a nice job of showing how the scope of a mark is limited not just by the parties' 1991 agreement, but by general principles of trademark law (id. ¶¶ 85–110). Proponents of the distinction between satire and parody in American fair-use analysis should think carefully about Justice Mann's presentation. As I've probably made clear by now, I'm not one of those proponents; if anything is the epitome of what the First Amendment implies should constitute fair use, it's satire — as Larry Flynt and Jerry Falwell's place in the history of American libel law should tell us — and, for that matter, the fate of John Peter Zenger. Although that's not precisely relevant to this particular barrel of Apples — however wormy and rotten both of them may be — it's nonetheless an interesting correlation.
Now if only Fiona Apple had moved to intervene…