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Apple's trademark fight may be different this time

The company's recent volley of lawsuits accusing rival computer makers of stealing the look of its coveted iMac computer evokes a strange sense of deja vu.

Apple Computer's recent volley of lawsuits accusing rival computer makers of stealing the look of its coveted iMac evokes a strange sense of deja vu.

But because of the nature of these iMac disputes--which are different from an earlier, unsuccessful fight over the look of another Apple product--history may not repeat itself, analysts said. If successful, Apple has the potential to extend a category of trademark law known as "trade dress" to the computer hardware industry.

The iMac suits are reminiscent of a seminal one filed more than ten years ago, when Apple sought to protect the "look and feel" of another revolutionary product--the graphical user interface that defined the wildly popular Macintosh.

That suit claimed that icons and other features in Microsoft's new Windows operating system were so similar in appearance to those in the Macintosh that they infringed Apple's copyrights. Six years later, after spending many millions of dollars in legal fees, a federal appeals court tossed out the case.

Like that failed suit, Apple's recent actions seek to protect an innovation that is based on consumer perception and experience, rather than on underlying technology. But don't expect history to repeat itself, legal observers say, noting that a radically different set of facts and legal theories this time around put Apple on much more solid legal footing.

Apple has filed three suits accusing computer makers of illegally copying the iMac's shape and bright colors in their own machines. The latest suit came today, when the company sued Japanese firm Sotec to block sales of its eOne computer, which Sotec developed in conjunction with two Korean manufactures. In recent weeks, Apple has filed similar suits against Emachines, Future Power, and Daewoo.

Apple's lawsuit against Microsoft was based on copyright law, which is subject to broad limitations. Specifically, a copyright holder can not protect an idea itself but only a specific expression of an idea. For example, physicist Albert Einstein would be free to copyright particular essays about his famous theory of relativity, but he could not copyright the theory itself. Any other scientist is free to paraphrase Einstein, so long as the expression is not substantially similar to Einstein's particular writings.

The "look and feel" case was also mired in factual issues, the most damaging being a 1985 agreement granting Microsoft the right to use visual displays in the Macintosh's graphical interface. In 1994, the U.S. Court of Appeals for the Ninth Circuit issued a landmark decision throwing out most of the case.

The court ruled that Microsoft's license to use Apple technology, combined with the flexibility that copyright law gives companies to mimic a competitor's idea, entitled the interface to only "thin" protection. Apple's six-year battle to protect the look and feel of the Macintosh soon came to an end.

The recent lawsuits over the design of the iMac, by contrast, are based on trademark law, which afford Apple substantially more protection. In order to prevail, Apple need only show that the iMac design is either "inherently distinctive" or has acquired "secondary meaning" and that the rival computers will confuse consumers into thinking the machines are affiliated with Apple. Attorneys interviewed for this story said Apple should not have trouble meeting those requirements.

"The appearance of the iMac is readily identifiable, and therefore they would have a strong argument," said Ian Ballon, an intellectual property attorney at Finnegan, Henderson, Farabow, Garrett & Dunner. "That certainly puts them in a good position going forward."

Veronica Colby Devitt, an attorney at Limbach & Limbach, agreed, saying the shape and colors of the iMac "are pretty distinctive." What's more, she added, the features are essentially flourishes that are not tied to how the computer functions, an important distinction in the so-called trade dress doctrine on which the case rests. "If in fact the new Apple monitor functioned a lot better because of its shape they wouldn't be able to protect it," through the theory, Devitt said.

Apple's additional requirement, that it show that the rival machines will cause consumer confusion, also may not be too difficult to establish. Frequently, companies bringing trade dress suits rely on consumer surveys. Still, it raises the question: How similar is too similar? Attorneys say there is no precise answer.

"It's impossible to define in the abstract," said Tom McCarthy, author of the respected McCarthy's Desk Encyclopedia of Intellectual Property and a professor of law at the University of San Francisco. "It's all a matter of degree of how close is too close that a judge or jury will think there will be confusion."

Fiberglass and ironing boards
Historically, colors have not been eligible for trade dress protection, but that is beginning to change, said Claude Stern, an attorney at Fenwick & West. In 1985, the federal court that hears appeals from the Patent and Trademark Office ruled that manufacturer Owens Corning could trademark the color pink for its fiberglass insulation. The company for years had used the Pink Panther cartoon character to promote the product.

That decision was affirmed in 1995, when the U.S. Supreme Court in the landmark Qualitex v. Jacobson Products ruled that a dry cleaning company could trademark a distinctive shade of green for its ironing boards.

As in Apple's battle with Microsoft, many see the iMac suits as a case of the computer maker trying to prevent its competitors from pilfering a truly innovative idea. To that extent, the iMac suits may already have succeeded, said Ian Feinberg, an attorney at Gray Cary Ware & Freidenrich.

"If I were Apple, I'd ask myself, 'Do I have a reasonable basis for the lawsuit,'" Feinberg said. "As long as I can convince myself the case isn't malicious, I'd file the lawsuit, because it's critical they let the industry know that they won't tolerate people infringing on their rights."