Welcome Cyberlaw Students Spring 2012 – Chinese case example

This site is intended for students enrolled in Cyberlaw: Privacy. Ethics, and Digital Rights in the IA program.  This semester’s blog will feature new cases and laws, discussions related to our coursework, and guest bloggers from fields such as Information Assurance, IP Law, Cybercrime, and others.

For the year’s opening entry I would like to highlight the diverse nature of law and business decisions by courts around the world.  If I say the word “iPad” most people think “Apple, Inc.”  However, according to a court in China last month, that may no longer be the case. 

Will Apple have to change the name of theiPad in China?  A Chinese court has dismissed a trademark lawsuit brought by Apple against a company called Proview Shenzhen.  Incredibly, the Shenzhen Intermediate People’s Court held that Proview Shenzhen is the lawful owner of the iPad mark in China.  The case is titled: Apple (UK) IP Application Development Company Limited v. Proview Technology (Shenzhen) Co., Ltd., (Shenzhen Intermediate People’s Court, Dec. 6, 2011).    

Now, China’s trademark business is booming.  In 2009 China’s Trademark Office (TMO) accepted a total of 830,000 trademark applications, 55,804 trademark renewal applications, 39,436 trademark opposition submissions, and 64,517 applications for trademark transfer.  Amazing.

This case is the latest development in a series of back-and-forth lawsuits between the two parties since 2006.  The story starts in 2000, long before Apple launched its iPad product. Proview’s subsidiaries registered the marks “iPad” and “IPAD” in the China, Mexico, South Korea, Singapore, Indonesia, Thailand, Vietnam and the European Union.  Proview then introduced a tablet computer in 2001 under the IPAD mark.  It was not a runaway commercial success.

In 2009, Proview’s Taiwan subsidiary (which is a flat screen contract manufacturer) entered into an agreement to sell the global trademark rights for IPAD to a UK company (connected to Apple) for approximately $55,000.  The deal transferred all of Proview’s iPad trademark registrations, including two Chinese trademark registrations for iPad registered in 2001 by Proview Shenzhen.  The purchaser then assigned the rights to Apple.

In 2010, prior to launching its iPad tablet computer in China, Apple, as any good company would, applied to the China TMO to transfer ownership of the two Chinese trademark registrations to their control.  The TMO rejected Apple’s request because, according to the TMO, the Chinese trademark registrations were not owned by the Taiwan subsidiary that assigned the trademarks, but instead were owned by Proview’s Chinese subsidiary, Proview Shenzhen.  In other words: you can’t assign what you do not own.

The Shenzhen Intermediate People’s Court explained that 1) Proview Shenzhen was not involved in the negotiations between the UK purchaser and Proview Taiwan, 2) Proview Shenzhen did not sign the trademark transfer agreement, and 3) Proview Shenzhen had not authorized others to dispose of its trademarks.  The court also held Apple to “a higher duty of care” to make sure that the “necessary procedures for the transfer of a trademark” were completed.  Here in the states we call that Due Dilligence,  Proview has now sued Apple resellers in China, seeking to halt sales of Apple’s iPad tablets and seeking damages of approximately $1.5 billion.  It seems a bit high for a trademark that the world over thinks is owned by Apple.  Combine that with the original 2000 IPAD failure, and I think Apple may appeal the judgement.  I can only assume this may settle – with a large (but not $1.5 billion) offer for the proper transfer of rights to Apple. [NOTE: Apple turned down their original offer of $10 million for the trademark transfer and chose to resort to legal means as a result - and this is the outcome.... lesson learned for Apple in a foreign court.]

 

IHOP vs. Evangelical Group: A Sticky Situation

International House of Pancakes LLC (IHOP) filed a trademark infringement suit against a church in Missouri.  The complaint accuses the International House of Prayer of improperly using the breakfast restaurant’s famous acronym. IHOP alleges that the House of Prayer is guilty of dilution, trademark infringement and unfair competition in violation of the Lanham Act.  We have studied these laws in class this semester, so this is a good chance to review the trademark laws in a typical trademark case

According to the complaint, IHOP was founded in Toluca Lake, Calif., in 1958.  By1960, the company began to franchise. The complaint states that use of the “IHOP” trademark began as early as 1973.

Remember that under U.S. common law a company can claim trademark of a word, phrase, symbol, or design by being the first to use the mark in commerce.  “Use in commerce” is one of the most important aspects of trademark law.  Therefore, the lawyers who drafted the complaint carefully stated that there are 1,500 IHOP restaurants in the U.S., including at least one in every state, with 45 restaurants located in Missouri alone (where the suit was filed).

Additionally, the complaint plainly states, “Each of the IHOP marks is distinctive, strong, and widely recognized among the general consuming public as a designation of goods and services originating with, sponsored by, approved by, or affiliated with IHOP.”  Why do they include that language?  That is another important aspect of trademark law.  It is critical to trademark law the mark identifies and distinguishes the source of the goods of one party from those of others in the mind of the public consumer.  Because the public’s perception of the word, phrase, symbol, or design may be relevant to the legal dispute, attorneys will occasional use consumer surveys or public opinion polls as evidence. In trademark cases, the law will protect those marks which, in the minds of the consuming public, identify the producer of the goods.  In this case I don’t believe that IHOP will have to use such evidence – IHOP is an nationally recognized trademark.

In the present case, House of Prayer adopted the names “International House of Prayer,” “IHOP,” “IHOP-KC,” “International House of Prayer University,” and “IHOPU” to refer to House of Prayer Kansas City’s evangelical mission organization and the services it provides.  According to their website, the International House of Prayer Missions Base was founded on May 7, 1999, by Mike Bickle and twenty full-time “intercessory missionaries.”

IHOP alleges confusion based on their mark: “Several persons have either been confused by House of Prayer’s use of ‘IHOP’ or felt the need to clarify whether the “IHOP” reference was to House of Prayer Kansas City or plaintiffs.”

I am fairly sure this is a win for the Pancake IHOP (or a settlement.)

If you want to read the complaint, Justia has the docket linked online.  The case title is IHOP IP LLC et al. v. International House of Prayer et al., in the U.S. District Court for the Western District of Missouri.

 

UK Office: No Cookies Without Informed Consent

We will be discussion international regulations later in the semester, but the Information Commissioner’s Office (ICO) in the UK issued a big announcement this week, and I wanted to mention it now, as it will be relevant to our future discussions.  The ICO told all UK public and private sector businesses that from May 26, 2011, when the EU-backed new e-Privacy law comes into effect, they will be required to get “informed consent” from their website visitors in order to store and retrieve information on their devices.  The law is mainly focused around the use of cookies – small text files placed on a user’s computer for the purposes of logging data such as registration information, user preferences, pages visited, shopping basket items, etc.

The UK regulations were amended last week to comply with the 2009 amendments to the EU’s Privacy and Electronic Communications Directive (Directive 2009/136/EC).

In order to help businesses get ready for the change, the ICO has recently published guidelines providing practical advice on the new cookies rules, explaining what steps you need to take to ensure you comply.  The guidance features many examples for businesses to get a sense of what is covered.  For example, interestingly, the only applicable exception to the cookies rule for most website operators is if the cookie is “strictly necessary” for a service requested by the user.  While there is little guidance on what is “strictly necessary,” the guidelines provide some information.  According to the ICO, cookies used to implement a shopping cart may fall under the “strictly necessary” exception, if the cookies are necessary to ensure that items selected on previous pages are available during check-out.  However, the ICO stressed that this exception is very narrow and would not apply to cookies used to make the website more attractive by remembering users’ preferences.

The guidance is intended to help organizations to start to think about the practical steps they will need to take to remain compliant with the new law. According to the ICO, it will be supplemented by additional content as innovative ways to acquire users’ consent are developed.

What does this mean for other countries that do business in the UK?  Well, when a company offers a UK or EU version of a website, for example, it may be required (or at least expected by users) to follow the EU rules – now implemented locally in the UK.

Facebook v. Teachbook, Round 2

On May 6th, 2011, Facebook Inc. refiled its trademark infringement suit against Teachbook.com LLC, in an Illinois court. Teachbook is a social networking site for teachers. This action comes a few days after the original suit between the two companies was dismissed by a Californian court for lack of jurisdiction. The new case is Facebook Inc. v. Teachbook.com LLC, case number 1:11-cv-03052, in the U.S. District Court for the Northern District of Illinois and the complaint is available here.

Facebook filed the new suit in Illinois, where Northbrook, Ill.-based Teachbook is based. Facebook argues in the new complaint that Teachbook selected its name to capitalize on Facebook’s popularity. According to Facebook’s new suit, Teachbook offers social networking features similar to those offered by Facebook and has promoted itself as a substitute for Facebook.

Since many schools forbid teachers from having Facebook accounts due to the risk that students may learn personal information about their teachers, Teachbook allows users to manage their profile so that only other teachers may see it, the suit says.

These substantive arguments were also made in the original California complaint, but the suit was dismissed on jurisdictional grounds before the court had a chance to decide the trademark claims.

As we will discuss in class, in most internet-based cases, jurisdiction is one of the first major hurdles in any legal battle. Jurisdiction is the authority of a court to hear and decide a case.

We will discuss this in more detail in class, but the standard for what is called “long arm jurisdiction” is that there are minimum contacts with forum state such that the maintenance of the suit does not “offend traditional notions of fair play and substantial justice.”  We will also review the different types of personal jurisdiction: “general” or “specific.”

General jurisdiction arises when a defendant maintains ‘continuous and systematic’ contacts with the forum state even when the cause of action has no relation to those contacts. In contrast, specific jurisdiction exists based on isolated or sporadic contact with the forum state if the claim “arises out of” that contact.

So, the California judge ruled that the California court was the wrong venue for the suit because Teachbook does not have any members in California. The court applied the well-known “effects test” from Calder v. Jones, 465 U.S. 783 (1984), which will read in class in a couple of weeks.

Facebook is currently engaged in various pending legal battles with a number of sites that use “-book” in their names, such as Lamebook. Additionally Facebook also sued the startup travel site PlaceBook, which changed its name to TripTrace to avoid an expensive lawsuit.

This case will be important to watch over the semester, and will help settle the question: Can Facebook claim a right to the suffix “-book” on any other company with a web presence?

Tyson Face Tattoo in Hangover 2 Now a Lawsuit

Tattoo IP Litigation: Apparently, Warner Bros. failed to ask for permission from S. Victor Whitmill, or credit his creation most famously marked on Mike Tyson’s face, before it placed the image on the face the character Stu Price , played by actor Ed Helms, in its upcoming motion picture “The Hangover 2.”

Whitmill sued Warner Bros. Entertainment Inc. in Missouri on Thursday.  According to the suit, the film features an exact reproduction of the original tattoo: “The pirated tattoo is a recurring device and plays an important role in the plot of the movie.”   The suit was accompanied by a motion for an injunction blocking the defendant from infringing Whitmill’s work.

How can a tatoo designer own something that is tattooed on another face?  According to the complaint, Whitmill made the design for Tyson in 2003, and at that time Tyson signed a release form acknowledging the work was the property of Whitmill’s business, called Paradox Studio of Dermagraphics.  The contract is an exhibit in the lawsuit, and, clear enough, the clause states “all artwork, sketches and drawings related to my tattoo and any photographs of my tattoo are property of Paradox-Studio of Dermagraphics.”  Just another example of how you can contract rights to just about anything.  Coincidentally, Techdirt featured two posts earlier this month on the role of tattoos under intellectual property law. (Is the face “the place of publication?”)

I think there is a settlement in the future.  Suing a movie before its release seems to happen more frequently [Da Vinci Code, Harry Potter, and the sculptor who sued Warner Bros. for the large sculpture prominently featured in Al Pacino's apartment (Mr. Pacino plays the Devil) in the film The Devil's Advocate] and typically ends in either settlement or dismissal.  This one seem closer to settlement.

Another Year, Another “World’s Largest” Data Breach

Just when you thought Heartland Payment Systems was the largest data breach of “all-time,” this month’s breach has the potential to beat that record.  On April 1, 2011, Epsilon Data Management, a marketing services provider based in Texas, announced that its clients’ customer data had been “exposed by an unauthorized entry into Epsilon’s email system” on March 30, 2011.

Many major American companies do business with Epsilon, like  TiVo,  JP Morgan Chase, Walgreens, Capital One, Citibank, and LL Bean (I also got an email from Blockbuster about a breach, but was unsure if it was related to Epsilon).  According to Epsilon’s official press release (and the various notices from the companies listed above) the breach was limited to email addresses and customer names.  No other personal information (such as bank account information, credit card numbers or Social Security numbers) was compromised.

My argument today is not about the law.  As we will discuss in class, the average American Internet users may be numb to this news.  There is a feeling of a collective *yawn* about data breaches.  We get these notices annually, quarterly, or monthly.  It seems as if nothing is “safe,” especially involving massive data-driven companies.  Scholars (and myself) have argued that our notions of privacy are slowly being limited by society’s new outlook on privacy.  The Katz test we study in class plays a role here. It’s not on point, but the “society” based argument is relevant.  The right to privacy is measured by a two-part test: 1) the person must have a subjective expectation of privacy; and 2) that expectation must be one that society recognizes as reasonable. Katz v. United States, 389 U.S. 347, 360 (1967).  Arguably, I doubt we can honestly say that anything we put into the internet (name, email, zip code, address, phone, etc.) has a shot of remaining private.  And, arguably, the generational shift has shown (through social media) that society may no longer recognize a reasonable right to privacy in anything we do post on the net, or add to a company’s database, no matter what the law says.  These companies, password protected websites, dual authentication schemes, etc. still get breached.  What’s left to do?

Symposium: Cybersecurity Law (Part II)

After lunch there was a panel on “Privacy Concerns in Cybersecurity Panel” which was moderated by Susan Landau a Fellow at the Radcliffe Institute of Harvard University.  Ms. Landau led a discussion with a mix of participants (lawyers from the EFF, former government policy makers,  and private industry).  The moderation was good, except that she did cut off EFF from responding to some of the allegations by the last speaker, Dr. Joel Brenner, a former National Counterintelligence Executive, which was too bad.  Right in the beginning it was asked “Can I respond?” and she said “no.”  That was really too bad becasue the conversation was starting to heat up.

David Hoffman, the Director of Security and Privacy Policy at the Intel Corporation said that there was a sense in the earlier Zittrain debate that there was a shared problem – but Mr. Hoffman wasn’t sure that there was one problem – there are different solutions for the different problems (hacking vs. bank theft vs. cybercrime, etc.)

Attribution wouldn’t fix all of those problems: All security, no privacy.  Saying there should be a balance is not actually living in the present.  We are well on our way to the 3rd wave generation of computing (the computing continuum) which involved a huge diversity of devices and data, remote storage (cloud), creating unique and interesting problems to manage security in an environment for information that is important for individuals, organizations, and countries.  Can you improve both privacy AND security in that future environment, instead of separating the two?  The Global Digital infrastructure designed for global application –> goes against a silo oriented consumer/government environment.

Kevin Bankston a Senior Staff Attorney at EFF had a harder panel debate.  I thought EFF took a bit of a beating in this panel.  The EFF was accused of “selling the world stuff that they don’t really want.”  The public, most of the panel stated, doesn’t want or care about the protections EFF is demanding through litigation and legislation.  Is the EFF defending our rights, or telling us what to do?  Should we put the burden on the individuals (public)?  To his defense Mr. Bankston said that EFF cares quite a bit about the sorry state of the Internet right now.  The EFF’s encryption offerings are  very popular with the public at large. 

Mr. Bankston is concerned with climate of exaggeration of vague definition of cyberwar.  The DHS has been debating the cybersurity emergency powers bill – and pointing to the Hoover Dam as an example of a potential target of internet based attacks.  The need a “kill switch” on the dam, just in case there was a cyber attack?  (Would Hoover Dam just cut the power if they asked, instead of needing a federal government program?)  The media spin did not state that the Hoover Dam isn’t even connected to the Internet because of security mandates and good business practice.  He also claimed that the Estonian internet attacks were trumped-up a bit.  They were actually easy to deal with – if the same attack happened to Amazon.com it would have been swatted away easily. (I think he missed the point on that.  Estonia is not a huge multinational corporation like Amazon.  The fear that some of these smaller nation-states could easily be overrun by a simple attack should be worrisome)

He did press the software issue – that we need to build and use better software (bugs).  Why isn’t Microsoft asked about the bugs before a Congressional panel or a security infrastructure group?  Why doesn’t the security debate focus on software?  He argued for ”Cyber hygiene” – better management, standardization, and budgeting.

Dr. Joel Brenner, a former National Counterintelligence Executive started his talk about personally identifiable information (PII).  PII is the foundation of so much of privacy law.  The California Supreme Court has ruled in Pineda v. Williams-Sonoma Stores, Inc., that ZIP codes are also “personally identifiable information” for purposes of the Song Beverly Credit Card Act (California Civil Code § 1747, et seq.).  This law initially was passed to significantly restrict retailers’ ability to request or record PII in connection with processing credit card transactions. Under the Act, “personal identification information” is “information concerning the card holder, other than information set forth on the credit card, and including, but not limited to, the card holder’s address and telephone number.”  He asked if there is any “real” category of PII anymore?  Is nothing (or everything) PII?  All of these decisions and laws boil down to hostility towards targeted advertising. 

He also strongly refuted the concept that it is perfectly fine to connect the national electrical grid connected to the internet.  From Dr. Brenner’s point of view the system was never intended to be connected to the internet.  It’s an industrial system, and not supposed to have the communicative values that the internet has. (He talked a bit about the series of cyberattacks in Brazil: one north of Rio de Janeiro in January 2005 that affected three cities and tens of thousands of people, and another, much larger event beginning in Sept. 2007.)  unfortunately, Dr. Brenner said, we don’t know how to protect the grids properly.  And this is not a civil liberties issue – this is a problem that can be solved now, without privacy concerns, or litigation.

Dr. Richard Falkenrath, Principal of the Chertoff Group and former Deputy Homeland Security Advisor had some interesting comments about information sharing.  Data sharing between private companies could really hep the fight against cybercrime.  The private sector does a way better job at protecting themselves vs. the govt.  He accuse the U.S. government of “Wanting to borrow our watch, and tell us the time.”   How do we update these laws?  Many laws require an update regarding real-time observation, packet inspection, private company information – but these updates start to violate privacy/ or at least concern the companies about the potential for privacy litigation.  As the laws are being revised, he said we need to look at the purpose for the intervention by the government (search vs. seizure).  The US is massively dependant on electronic surveillance above all for cases involving international crime, and the laws need to reflect that dependency and modernize.

Symposium: Cybersecurity Law, Privacy, and Warfare in a Digital World

Today I am attending Harvard National Security Journal’s Symposium titled “Cybersecurity: Law, Privacy, and Warfare in a Digital World.”  The full list of speakers and topics are listed here.

First on the list is my colleague at the school of law Jonathan Zittrain, who is Co-Director of the Berkman Center for Internet and Society and Professor of Law at Harvard Law School.  He is taking part of a lunchtime debate with Stewart Baker former General Counsel of the National Security Agency.  Mr. Baker is now a partner in the Washington office of Steptoe & Johnson LLP.  (He was also described as “the lone coat and tie wearer on internet anarchists list-servs.”)

The debate topic was “The Future of the Internet.”

Baker’s point was two-fold.  First, the “bad guys” on the Internet are continuing to get faster and better.  We are increasingly at risk.  He used the Dali Lama network-hack attack as an example.  There was social engineering with an attached virus ->  Spyware  infiltrated his system – camera, keystrokes, etc. all accessed. He called it a 1984 style surveillance, only George Orwell did not know that we would be buying and using our own equipment against us.  The fear is that there is no assurance of privacy except by remaining silent.

Cyberwar is an increasing danger and is inevitable that people will seek to wage cyberwar against the US govt.  The classic power grid scenario was discussed. He said there was a likelihood of SCADA attacks happening increasing every year.  The question is what are we going to do about it?  The thing we most need is a mechanism that can ID the perpetrators and impose consequences: criminal prosecution or cyber-attack.  Or, Baker said, there was an idea of altruistic punishment: People derive reward from punishing those who broke the rules, even if it costs them money.  He went on to cite a study that talked about a deep seeded need in our DNA to punish those who violate social norms.  The danger is that if we build a system where there are no repercussions – the system will fail.  We need to find way to ID people in cyberspace and impose penalties on them for violating social norms.  If we don’t punish – we risk continuous attacks.

The lawyers, justices, etc. find it to be a wonderful problem which they are reveling in, but not addressing.  “Back off” and let us solve some of these problems.

JZ: There is a problem.  And this problem has formed a type of anarchy that even the techno-libertarian does not want: Utter anarchy (he used the Anonymous — the “hacktivist” group as an example) is not a functional, innovative, rights-respecting state of existence on the Internet.   He talked a bit about Baker’s call for “Attribution and imposing consequences” mode.  At the  weak level -> good forensics tools should do it.  But will it actually deter future  hackers (wikileaks).  If we could truly attribute something back to the country or that hacked the Dalia Lama could we impose consequences?  Even the most sophisticated of attacks might require changing the Internet itself to track the different ways we are attacked.  Do we have to lock down routers – attribution through someone’s wireless router.  Are we creating a world that is much less free for the sake of getting better attribution?  Does this have a cold war flavor to it?  The Cold War model won’t work.  Look at wikipedia - let’s make it so that the costs of the attacked are easily mitigated, with some light anonymity, that actually works as a structure of mutual aid that is more robust when facing DDOS service attacks, etc.  He talked a bit about a model of Mutual aid through mirror sites – more information, more communication, with no “real” punishment. 

They also talked about the boring solutions: True factor authentication helps a lot, but it’s the consumer-hated boring, slowing, yet more secure version.  But it slows down the interaction.  The real security of the net: “can packets reliably go from point A to B?” - that’s a secure net.  Bank money stolen is a different problem – why reform the whole net architecture based on that?

Baker: No one thinks there is any real risk when they commit cybercrime today -> many factors in the real world that deter crime do not exist in cyberspace.

Zittrain: We are much more monitor-able than we know – consumer privacy is a problem.  Firms desperately want to know what you are buying – what is the danger in looking at my purchase of cat food?

Baker: The EFF tells RIAA that the music information wants to be free.  By and large their argument is “It’s a shame about your business model.”  But the bits about you (not music) are fully private!

The internet kill switch bill: Baker said “There is no internet kill switch bill.  It’s bullswitch!”

FCC may tell ISP’s to fight computer viruses

The U.S. government is considering asking ISP’s to adopt “voluntary” standards to fight computer viruses.   The Federal Communications Commission (FCC) set up a Working Group of the Communications Security, Reliability, and Interoperability Council (CSRIC) to create recommendations for securing residential broadband systems.  In December, this working group issued a report identifying “best practices” for the ISP’s.  Reports state that the FCC is mulling over asking the ISP’s to adopt these standards to fight viruses and malicious software.

And remember, the FCC’s authority over Internet access providers is still being debated.  How is this still a lingering argument?  Well, on December 21^st the FCC approved new rules regarding Net Neutrality.  As we have talked about, these Net Neutrality rules directs that all websites should be treated the same by ISPs (e.g. Verizon, Comcast, AT&T, etc.).  Additionally, ISPs are forbidden to block websites that may compete with other services the ISP offers.  Well, Verizon has directly challenged the FCC’s authority over the Internet in the federal appeals court in the District of Columbia. Now, while that is pending, several Republican congressmen have come out against Net Neutrality – no sir, they don’t like it one bit.  Rep. Fred Upton (R-Michigan) and Rep. Greg Walden (R-Oregon) assert that the FCC may have overstepped its bounds when it comes to regulating the Internet. [Why are they speaking up now?  Could it be that Comcast was one of several contributors to Rep. Upton’s campaign in 2008, and that both Verizon and AT&T contributed to Rep. Walden's campaign during the previous election? - thanks to Crunch Gear for pointing this out].  True to form, these House Republicans have said the private sector is better suited to setting rules for the Internet.

Despite the arguments on either side, there is a dire need for some anti-virus/malware standards to be adopted.  According to PandaLabs, Panda Security’s anti-malware laboratory, 43 percent of U.S. computers are infected with malware, compared to 50 percent of total global users.  PandaLabs’ announcement, on February 9, made the Homeland Security’s Daily Open Source Infrastructure Report, which is a summary of open-source published information concerning significant critical infrastructure issues.

These Net Neutrality rules and “voluntary” standards all hinge on the FCC’s right to regulate the Internet.  It will be interesting to see how this plays out in the federal courts.  Stay tuned.

Who owns the trademark “App Store?” Apple and Microsoft fight

Who owns the trademark “App Store?”  Well, Apple filed a trademark application in 2008, the same year it launched its iTunes App Store and the iPhone 3G.  Now there is a mandatory period that allows opposition from other parties.  Not so surprisingly, Microsoft is disputing the proposed trademark, claiming that the term is a generic one and that “app store” should “continue to be available for use by all without fear of reprisal by Apple.” (Microsoft’s filing is here.)

According to the BBC’s report, Russell Pangborn, Microsoft’s general counsel said “An ‘app store’ is an ‘app store’….Like ‘shoe store’ or ‘toy store’, it is a generic term that is commonly used by companies, governments and individuals that offer apps.”

Apple’s application specifies that the phrase describes “retail store services featuring computer software for use on handheld mobile digital electronic devices and other consumer electronics.”  Under trademark law, a generic name of a product can never function as a trademark to indicate origin. The function of a trademark is to identify and distinguish the goods or services of one seller from those sold by all others.  Because a generic term is not capable of distinguishing the source of one product from another, it cannot be registered as a trademark or service mark on the federal register.  If Microsoft can prove the mark is generic, they may have won the battle… for now.