Apple mobile application disputes involving copyright and trademark. If you are embroiled in an Apple Store or Google Play IP dispute, contact us at (877) 276-5084.
Introduction
Can you hold Apple liable for copyright or trademark infringement for failing to take action regarding an IP dispute in regard to copyright issues (ex. a copycat game) or trademarks (a confusingly similar app name that may infringe on registered or common law trademark rights? This legal information blog (not legal advice) provides some general insights in the burden required to try to hold Apple liable for contributory infringement and the indemnification clause in their mobile application developer agreements.
Burden of Proof
It is important to realize that a party seeking to hold an internet platform liable (such as Google Play, Apple Store, Facebook Marketplace or other social websites) there is a high standard of proof. For example, federal caselaw requires a finding of "willful blindness" on the part of the marketplace, requiring both: (1) a “subjective belief that infringement was likely occurring” and (2) “deliberate actions to avoid learning about the infringement.” See Luvdarts, LLC v. AT&T Mobility, LLC, 710 F.3d 1068, 1073 (9th Cir. 2013). These are high standards. Moreover, the 9th Circuit has previously held that contributory infringement liability requires a defendant to have "specific knowledge of infringers or instances of infringement." See Y.Y.G.M. SA V. Redbubble, Inc., No. 21-56236 (9th Cir. 2023) which held:
“Willful blindness of specific facts would establish knowledge for contributory liability,” we explained, but the plaintiff's allegation of “indifferen[ce] to the risk of copyright infringement” was legally insufficient. Id. And because “trademark infringement liability is more narrowly circumscribed than copyright infringement,” the standard for contributory trademark infringement would be at least as demanding. See Fonovisa, 76 F.3d at 265. Such a rule also accords with our sister circuits. In a case involving counterfeit Tiffany jewelry being sold on eBay, the Second Circuit held that “a service provider must have more than a general knowledge or reason to know that its service is being used to sell counterfeit goods” to be liable for contributory trademark infringement. Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93, 107 (2d Cir. 2010). Instead, defendants must have “contemporary knowledge of which particular listings are infringing or will infringe in the future.” Id. (emphasis added); see also Omega SA v. 375 Canal, LLC, 984 F.3d 244, 255 (2d Cir. 2021) (“[C]ontributory trademark infringement based on willful blindness does not create liability simply because of a defendant's ‘general knowledge as to counterfeiting on its' property . . . or because a defendant ‘fail[ed] to anticipate that others would use its service to infringe a protected mark.'” (quoting Tiffany, 600 F.3d at 107, 110 n.15)). Because Tiffany “did not identify particular sellers” who were offering counterfeit goods and eBay removed counterfeit listings identified by other sources, eBay was not liable for contributory trademark infringement. Tiffany, 600 F.3d at 109.
The Fourth Circuit reached a similar conclusion. “[G]eneral knowledge that some percentage of the purchasers of a product or service is using it to engage in infringing activities” is insufficient for contributory trademark infringement because “the defendant must supply its product or service to ‘identified individuals' that it knows or has reason to know are engaging in trademark infringement.” Rosetta Stone Ltd. v. Google, Inc., 676 F.3d 144, 163 (4th Cir. 2012). There, the plaintiff survived summary judgment with evidence of “the dates when Rosetta Stone advised Google that a Sponsored Link was fraudulent, the domain names associated with each such Sponsored Link, the text of each Sponsored Link, and the date and substance of Google's response.” Id. (citation omitted). This amounted to over 200 instances of infringement, and Google apparently allowed the same advertisers to use the Rosetta Stone mark after these notices. Id. This evidence precluded summary judgment because it established a question of fact as to whether Google refused to act upon specific knowledge. Id. at 165. So too in the Tenth Circuit. That court's decision concerned Google's AdWords program, which allowed advertisers to bid on keywords that, when entered into Google's search engine, returned the advertiser's sponsored links. See 1-800 Contacts, Inc. v. Lens.com, Inc., 722 F.3d 1229, 1235 (10th Cir. 2013). 1-800 Contacts owned the mark “1800CONTACTS.” Id. After discovering that Google searches for its own mark resulted in paid ads for Lens.com websites, 1-800 Contacts sued Lens.com for service-mark infringement.1 Id. Discovery revealed that Lens.com did not bid on 1-800 Contacts's service mark, but two Lens.com affiliates (third parties who publish ads on its behalf) had bid on the keyword “1800Contacts” and its close variants. Id. at 1237. One of those affiliates had published an ad for a Lens.com website that used the phrase “1800 Contacts.” Id. The Tenth Circuit concluded, on summary judgment, that “a rational juror could find that Lens.com knew that at least one of its affiliates was using 1-800's service mark in its ads yet did not make reasonable efforts to halt the affiliate's practice.” Id. at 1252. The identity of the affiliate did not matter because Lens.com did not need to “know the identity of the infringer to stop the allegedly infringing practice without affecting legitimate conduct[.]” Id. at 1254. Rather, once Lens.com “learned that one of its affiliates had used 1-800's mark in the content of an ad,” sending an email blast to all affiliates forbidding such use would stop infringement without interfering with lawful conduct. Id. That said, the court recognized that the defendant “has no obligation under contributory-infringement doctrine to stop a practice . . . simply because the practice might be exploited by infringers.” Id. at 1253–54. But because Lens.com knew of a specific instance of infringement and was uniquely positioned to stop infringement without shutting down lawful business, its failure to do so could result in contributory liability.
Common to these cases is that willful blindness requires the defendant to be aware of specific instances of infringement or specific infringers. Without that knowledge, the defendant need not search for infringement. General knowledge of infringement on the defendant's platform— even of the plaintiff's trademarks—is not enough to show willful blindness. See Tiffany, 600 F.3d at 110 (“eBay appears to concede that it knew as a general matter that counterfeit Tiffany products were listed and sold through its website. . . . Without more, however, this knowledge is insufficient to trigger liability.”). We hold that willful blindness for contributory trademark liability requires the defendant to have specific knowledge of infringers or instances of infringement."
Attorney Steve® Tip: As you can see, the standard to hold an internet platform or marketplace liable for copyright or trademark infringement requires a fairly high degree of specificity. But even so, if Apple is found to be liable, the Apple mobile application developer agreement would require the infringing party to pick up the defense and indemnify a company like Apple. This, of course, can become quite an expensive event.
More on the Apple Developer Program License Agreement ("Indemnification" clause)
When you are seeking to upload your mobile application to Apple Store, you will be required to sign this agreement. As noted above, you agree to indemnify Apple if you get them into legal trouble.
10. Indemnification
To the extent permitted by applicable law, You agree to indemnify and hold harmless, and upon Apple's request, defend, Apple, its directors, officers, employees, independent contractors and agents (each an “Apple Indemnified Party”) from any and all claims, losses, liabilities, damages, taxes, expenses and costs, including without limitation, attorneys' fees and court costs (collectively, “Losses”), incurred by an Apple Indemnified Party and arising from or related to any of the following (but excluding for purposes of this Section, any Application for macOS that is distributed outside of the App Store and does not use any Apple Services or Certificates):
(i) Your breach of any certification, covenant, obligation, representation or warranty in this Agreement, including Schedule 2 and Schedule 3 (if applicable);
(ii) any claims that Your Covered Product, or Corresponding Product or the distribution, sale, offer for sale, use or importation of Your Covered Product or Corresponding Product (whether alone or as an essential part of a combination), Licensed Application Information, metadata, or Pass Information violate or infringe any third-party intellectual property or proprietary rights;
(iii) Your breach of any of Your obligations under the EULA (as defined in Schedule 1 or Schedule 2 or Schedule 3 (if applicable)) for Your Licensed Application;
(iv) Apple's permitted use, promotion or delivery of Your Licensed Application, Licensed Application Information, Safari Push Notification, Safari Extension (if applicable), Pass, Pass Information, metadata, related trademarks and logos, or images and other materials that You provide to Apple under this Agreement, including Schedule 2 or Schedule 3 (if applicable);
(v) any claims, including but not limited to any end-user claims, regarding Your Covered Products, Your Corresponding Products, Licensed Application Information, Pass Information, or related logos, trademarks, content or images;
(vi) Your use (including Your Authorized Developers' use) of the Apple Software or services, Your Licensed Application Information, Pass Information, metadata, Your Authorized Test Units, Your Registered Devices, Your Covered Products, Your Corresponding Products, Configuration Profiles, or Your development and distribution of any of the foregoing; or
(vii) any MDM Customer claims about Your MDM Compatible Products, as well as any claims that Your MDM Compatible Products violate or infringe any third-party intellectual property or proprietary rights.
You acknowledge that neither the Apple Software nor any Services are intended for use in the development of Covered Products or Corresponding Products in which errors or inaccuracies in the content, functionality, services, data or information provided by any of the foregoing or the failure of any of the foregoing, could lead to death, personal injury, or severe physical or environmental damage, and, to the extent permitted by law, You hereby agree to indemnify, defend and hold harmless each Apple Indemnified Party from any Losses incurred by such Apple Indemnified Party by reason of any such use.
In no event may You enter into any settlement or like agreement with a third party that affects Apple's rights or binds Apple in any way, without the prior written consent of Apple.
Contact an Experienced Apple IP Disputes Law Firm
Our firm has represented companies and individuals being accused of copyright and trademark infringement regarding mobile phone applications. We also defend companies accused of advertising, marketing, and distributing Apple counterfeit products, claims typically brought by Legal powerhouse firm Kilpatrick Townsend. If you received a demand letter, notice of a lawsuit, subpoena, or cease and desist letter, contact us to discuss our services at (877) 276-5084 or fill out the contact form on the right side of this page.
