Trade marks – Music – IT – Breach of worldwide trade mark sharing agreement – Similar/identical marks – Fields of trade mark use
In 1991 Apple Computer and Apple Corps (the Beatles record label) entered into an agreement as to how they would use their respective trade marks. The agreement reserved for the parties different fields of use for the apple logo they shared: Apple Computer’s rights were restricted to computing (including software), telecommunications and data processing and transmission and Apple Corps rights were reserved to the music business and the Apple Corps catalogue, or, broadly speaking, content. Apple launched the iPod in 2001 with iTunes playback software. In 2003 Apple luanched the iTunes online store. Apple Corps claimed use of the apple logo when connecting to iTunes and certain selling arrangements constituted use in connection with content, in breach of the 1991 agreement.
Whether Apple Computer exceeded the restrictions placed on the use of the Apple mark by the 1991 agreement by launching iTunes, its own-brand MP3 online download store and using the apple logo in connection with musical content.
Dismissing the claim: the relevant clauses of the 1991 agreement could, in their drafting, be said to anticipate the convergence of the two fields of IT and music content. The iTunes music store constituted a data transmission service in conjunction with which Apple Computer used the apple logo. Although this service delivered musical content, it was not a use that breached the 1991 agreement. The use in relation to selling arrangements and advertising came closest to the limit of Apple Computer’s field of use but remained in connection with data transmission and so not did not breach the agreement. The limits of Apple Computer’s use would be a fair and reasonable use when applied to the data service but would not extend to originating content itself.
Tech-savvy Mann J proved to be something of an iJudge and was firmly of the view that matters of construction favoured Apple Computer’s use of its logo on iTunes. Consumers do not, in reality, discern an association between retailers and purchased music other than the sale itself — something that would be familiar to users of other download sites as well as high street shops. Users of the online store would come to it having noticed the logo denoting the origin of the ‘parent’ software. Apple Corps plan to appeal.