Trademark Attorney Morris Turek

Morris E. Turek

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iPhone + iTunes = iNfringement (Part 2)

Because I know you just can’t get enough of this fascinating topic, I now present to you Part 2 of my investigation into the rampant trademark infringement occurring throughout the iTunes App Store.  In my previous posting, I discussed the practice adopted by numerous iPhone application developers of openly using famous trademarks (such as “NFL” and the Mickey Mouse logo) in the titles of their applications or in the icons associated with their applications.  I pointed to multiple examples that are unquestionably dirty little infringements and also looked at some apps where the use of a particular trademark may be defensible.  This week, I thought it would be interesting to consider what I’ll call “behind the scenes” use of well-known trademarks by some developers in order to increase the visibility of their own applications in the App Store.

I decided to begin my investigation with a search of some famous trademarks in the video game industry.  Starting with a tribute to the best video game console ever manufactured, I typed in the word “Atari.”  Although the search revealed a number of classic Atari games actually created and distributed by the Atari corporation (such as the unbelievably awesome Centipede and Missile Command), it also returned the following app titled “Slug Bug.”

Come on, you remember playing the great Slug Bug on your Atari 2600, right?  No you don’t.  Slug Bug is created by a company called Axosoft, which as far as I can tell has no relation to Atari whatsoever.  Well, except for the fact that Slug Bug is nothing but a cheap rip-off of the classic Frogger, which was first made available on the Atari gaming system back in the 80′s.

Next, I conducted a search on the word “Nintendo.”  As with Atari, the search returned many apps that are at least related to Nintendo in some manner, including cheat codes, game guides, and even some games that were created specifically for Nintendo (although none of these apps appear to be created or distributed by the Nintendo company itself).  But, my search also revealed the following game called “GW Monkey.”

Needless to say, members of my generation have very fond memories of rushing home from elementary school to sit down and play GW Monkey on the Nintendo that we begged and begged our parents to buy us.  Well, I bet you we would if GW Monkey ever existed for the Nintendo.  Maybe the developer of this app, Aaron Ardiri, got GW Monkey confused with Donkey Kong.

This left me wondering why these apps are coming up in my search results when (1) the keywords I searched do not appear in the title of the apps, (2) the keywords are not in the description of the apps, and (3) the apps are wholly unrelated to the keywords I searched.  Fortunately, I have an acquaintance who is familiar with the App Store and he informs me that when a developer submits an app to Apple for its review and distribution, the developer is allowed to also provide 100 characters of keywords or key phrases, separated by commas, that are hidden from the view of consumers.

Clearly, developers such as Axosoft and Mr. Ardiri are using well-known trademarks in their list of keywords and key phrases in order to enhance the visibility of their programs in the App Store, which is crucial now that the App Store contains close to 130,000 apps.  Let’s face it, nobody in their right mind who is looking for games to download onto their iPhone are going to specifically search for “Slug Bug” or “GW Monkey,” but undoubtedly, many people will perform a search for “Atari” and “Nintendo.”  Although these developers may not necessarily be causing a whole lot of confusion, they are certainly riding on the goodwill, reputation, and popularity of these famous trademarks in order to get their apps in front of as many eyes as possible.  I guess there could be what is commonly referred to in the trademark world as “initial interest confusion,” which is when a consumer is lured into performing a preliminary investigation into a particular product or service due to the use of another’s more well-known trademark, but quickly realizes that the product or service is not actually related to the trademark owner.  Of course, if consumers like what they see regardless of the lack of affiliation with the owner of the famous trademark, then they might purchase the product/service anyway.  This is what these developers are partially counting on.

This business practice is all over the App Store.  The following is an app that was revealed in a search of the Major League Baseball acronym “MLB:”

And here is one that was returned in response to a search for both “Mickey Mouse” and “Mickey:”

And, finally, here’s one that came up in a search for the popular video game console “Wii:”

In my opinion, this is a highly unethical business practice that should not be employed by application developers.  But, evidently, developers have nothing to fear because nobody, including Apple, is policing the App Store.  Although I certainly don’t condone such infringing behavior and would strongly advise against such behavior (I am an upstanding trademark attorney after all), the fact remains that if one were to balance the low risk of being sued with the potentially lucrative reward of using another’s well-known trademark as a keyword, there is no question in what favor that equation tilts.

Oh, and I’ve decided to make this a three part series rather than just two.  Aren’t you the lucky ones!  Check it out next week.

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5 Responses to iPhone + iTunes = iNfringement (Part 2)

  1. Markusn says:

    Hello,

    question: how do you know this is not just the way the apple search algorithm is implemented? Maybe it is smart?
    isn’t that the same problem class as a Google search result, which can return any results when entering a trademark as search term?
    Point is while u might be right I think you can’t force apple to reveal how their app search works

    Plus keywords are non public, so it”s again speculation if a dev used a trademarked word.
    (Disclaimer: I’m an app developer and worked with apple through a TM violation, feel free to
    contact me. Great posts!)

  2. Aaron Ardiri says:

    as the developer of GW Monkey (and, other games like it) i can respond directly to this.

    Mobile 1UP developed a number of game and watch clones/copies; which, did not use Nintendo’s trademarked characters (specifically, Mario, Donkey Kong) – however, due to the success of press around the games; we were forced to remove them as they could cause confusion being associated with Nintendo. GW Monkey is based on the game GW Chef – we replaced all the graphics, naming etc – the fact that it is a monkey has nothing to do with donkey kong.

    we have dealt with Nintendo’s legal team and changed our applications – to remove any confusion and legal recourse around trademark and copyright infringement – we didn’t have to; we did it anyway because fighting the legal case would require significant funds.

    BTW: the keywords for GW Monkey are:

    game, watch, lcd, monkey, classic, fun, addictive, kids, simple

    we used to have the word Nintendo; which we also removed – maybe the search indexes are cached? our description also used to mention the previous game and that it was removed on request by Nintendo.

    // Aaron Ardiri
    Mobile 1UP
    http://www.mobile1up.com/

  3. Aaron Ardiri says:

    Apple also reviews keywords when you submit an application.


    Thank you for submitting “XXXXXX” to the App Store. We’ve reviewed “XXXXXX” and determined that we cannot post this version of your iPhone application to the App Store at this time because of inappropriate ‘Keywords’ used to identify your application. We will not post applications that reference other applications in their search criteria. It would be appropriate to remove “YYYYYY”.

    Please visit iTunes Connect, Manage Applications to remove the inappropriate ‘Keywords’, and resubmit your binary for review.

    Note: Keyword terms must be related to your application content and cannot contain offensive terms. It is not appropriate to reference other applications. Keywords can be single words or phrases; keep in mind the text field is limited to 100 characters. All Keywords must be separated by commas otherwise the system will see it as one keyword.

    i have changed the application name and the keyword; but this is the template that they use for this response. You cannot use a competitors product name or trademark in the keywords. one example; that i have seen is rejections for using a word like “facebook” – it is not acceptable in the keyword list.

    i’ll be happy to answer any questions :)

    // Aaron Ardiri
    Mobile 1UP
    http://www.mobile1up.com/

  4. Morris Turek says:

    Mr. Ardiri,

    I very much appreciate you leaving a comment regarding your app and telling me about your experience with Nintendo. It’s a good lesson for all app developers. However, I am confused as to why your app would continue to show up in response to a search for “Nintendo,” if that keyword has been removed. Perhaps the search indexes are cached as you suggest

    As you point out, I understand that Apple does review keywords for relevancy and that it will not allow the name of another application to be used as a keyword. But, I wonder if Apple allows part of an app’s name to be used as a keyword. For instance, if my app’s name is “Big Fat Pink Pig,” and somebody else had another app with a pig theme and wanted to use the word “pig” as a keyword, I would think Apple would allow that. Am I wrong?

    Again, thank you for commenting on my post.

  5. Morris Turek says:

    Markusn,

    Thanks for leaving a comment. You’re exactly right in that I am speculating as to whether a developer used a specific keyword since they are non-public. However, in the case of GW Monkey, the word “Nintendo” did not appear in the name of the app or anywhere in the app description. So, that leads me to believe that it was used as a non-public keyword. And, in fact, Mr. Ardiri admitted that he used “Nintendo” as a keyword.

    You make the suggestion that this may all be a result of Apple’s algorithm being “smart.” I certainly do not claim to know much about search algorithms or computer programing, but I highly doubt it. Even when you do a Google search, the results you receive in at least the first few pages either use the keyword in the “behind the scenes” code or the keyword appears in the text of the web page. I guess you could analogize keyword use in the App Store to website metatags or even keyword use for paid sponsored links on Google and other search engines.

    Again, I appreciate your feedback and look forward to receiving further comments from you and other developers on this topic.

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