Mag Flashlights is claiming my app violates their intellectual property...

[dagger55]

Today I received an email from Apple notifying me that my app LED iLight violated Mag's copyright. I created a flashlight in photoshop, and use that as the background. I'm guessing Mag thinks they have a copyright on the gray flashlights that have a screw on top? What do yall think?

Here is the email I received from Apple:

Dear Sir or Madam,

**Please include *REMOVED* in the subject line of any future correspondence on this matter.**

On 11/4/2010, we received a notice from Mag Instruments Inc. that Mag Instruments Inc. believes your application named "LED iLight" infringes Mag Instruments Inc.'s intellectual property rights. In particular, Mag Instruments Inc. believes you are infringing their copyright.

You can reach Mag Instruments Inc. through *REMOVED*. Please exchange correspondence directly with Mag Instruments Inc..

We look forward to receiving written assurance that your application does not infringe Mag Instruments Inc.'s rights, or that you are taking steps to promptly resolve the matter. Written assurance may include confirmation that your application does not infringe Mag Instruments Inc.'s rights, an express authorization from Mag Instruments Inc., or other evidence acceptable to Apple.

Under our terms of agreement, Apple may remove your application from the App Store at any time. You may remove your application using the steps provided below, for example, while you make any necessary changes to your application.

Visit iTunes Connect at http://itunesconnect.apple.com

1) Access your app in the Manage Your Applications module.
2) Click on the "Rights and Pricing" button from the App Summary Page.
3) Click on the "Deselect All" button to uncheck all App Store territories.
4) Click on the "Save Changes" button.

We look forward to receiving confirmation from you within 5 days.

Thank you for your immediate attention.

 

[184550]

Couldn't you just go back into Photoshop and add/ remove a certain detail or two to further differentiate your flashlight?

 

[dagger55]

Couldn't you just go back into Photoshop and add/ remove a certain detail or two to further differentiate your flashlight?

I have emailed them asking what exactly I am infringing on. I have a hard time believing my quick photoshop job is infringing...

 

[triptyx]

MAG may think that the depiction of a flashlight on your app is close enough to their trademarked lights that they need to defend their trademark. The nature of trademark law in the U.S. is that if you don't vigorously defend the trademark, it can subsequently become indefensible in future, possibly unrelated litigation.

If you feel like lawyering up and trying to fight it, or playing chicken with their legal department, you're welcome to attempt to assert that the depiction of the flash light on your app is different enough from a Mag Light that they have no case. Were it me, I might find it easier to change the artwork enough to make them happy. Perhaps contact their department and ask what specifically they're requesting that you change and attempt to work it out like gentlemen.

I found the following on the bottom of a MagLite ad:
Maglite® Trademark Disclaimer: The distinctive shapes, styles and overall appearances of all Mag-Lite® flashlights, and the circumferential inscriptions extending around the heads of all Mag® flashlights are trademarks of Mag Instrument, Inc. The circumferential inscription on the head of every Maglite® flashlight signifies that it is an original Mag-lite® flashlight and part of the Mag® family of flashlights. U.S. Trademark Registrations for the shape, style and overall appearance trademarks of Maglight® flashlights and for circumferential inscription trademarks of Mag-lite® flashlights include Nos. 1,808,998; 2,074,795; 2,687,693; 2,745,460; 2,765,978 and 2,765,979

 

[coolbreeze]

Tell them to eff themselves. It's no different than Michelin saying the pic of a tire on your app infringes on their intellectual property.

A flashlight isn't a precision designed piece of equipment. It's a pretty generic design that MAG can't claim ownership to. Just like Michelin can't trademark a tire image.

They are just mad that they didn't think of the app first.

 

[lucifiel]

Tell them to eff themselves. It's no different than Michelin saying the pic of a tire on your app infringes on their intellectual property.

A flashlight isn't a precision designed piece of equipment. It's a pretty generic design that MAG can't claim ownership to. Just like Michelin can't trademark a tire image.

They are just mad that they didn't think of the app first.

Yes yes, piss off the people who can hire lawyers that will bleed you dry. Real smart.

 

[Frosticus]

MAG may think that the depiction of a flashlight on your app is close enough to their trademarked lights that they need to defend their trademark. The nature of trademark law in the U.S. is that if you don't vigorously defend the trademark, it can subsequently become indefensible in future, possibly unrelated litigation.

If you feel like lawyering up and trying to fight it, or playing chicken with their legal department, you're welcome to attempt to assert that the depiction of the flash light on your app is different enough from a Mag Light that they have no case. Were it me, I might find it easier to change the artwork enough to make them happy. Perhaps contact their department and ask what specifically they're requesting that you change and attempt to work it out like gentlemen.

I found the following on the bottom of a MagLite ad:
Maglite® Trademark Disclaimer: The distinctive shapes, styles and overall appearances of all Mag-Lite® flashlights, and the circumferential inscriptions extending around the heads of all Mag® flashlights are trademarks of Mag Instrument, Inc. The circumferential inscription on the head of every Maglite® flashlight signifies that it is an original Mag-lite® flashlight and part of the Mag® family of flashlights. U.S. Trademark Registrations for the shape, style and overall appearance trademarks of Maglight® flashlights and for circumferential inscription trademarks of Mag-lite® flashlights include Nos. 1,808,998; 2,074,795; 2,687,693; 2,745,460; 2,765,978 and 2,765,979

^what he said. Should be fairly simple to resolve without things getting nasty.

 

[rdowns]

Told you you should have done a fart or tip calculator app.

 

[triptyx]

Tell them to eff themselves. It's no different than Michelin saying the pic of a tire on your app infringes on their intellectual property.

A flashlight isn't a precision designed piece of equipment. It's a pretty generic design that MAG can't claim ownership to. Just like Michelin can't trademark a tire image.

They are just mad that they didn't think of the app first.

Did you know that Gulfstream, (they make private jets) has trademarked the shape and size of the windows on their aircraft? They are able to make sure that other manufacturers, and even people who make airplanes for games like Flight Simulator, are unable to depict or build an aircraft with similar windows. Certain aesthetic and functional features of a product can indeed be trademarked and protected by law. Mag has done something similar with their flashlights, though I don't have the kind of access I'd need to find out exactly what aspects of their lights are trademarked.

While I personally don't believe he is infringing their trademark, it's very easy for Mag to throw lawyers at him until he is broke and destitute. Working with them will likely result in him being able to make a couple of quick and minor changes and everyone will walk away happy.

 

[Apple OC]

Tell them to eff themselves. It's no different than Michelin saying the pic of a tire on your app infringes on their intellectual property.

A flashlight isn't a precision designed piece of equipment. It's a pretty generic design that MAG can't claim ownership to. Just like Michelin can't trademark a tire image.

They are just mad that they didn't think of the app first.

Oh yes ... they must be Mad because they did not make an App for the iPhone.

They sell Flashlights period ... they most likely do not care about iPhones and their little Apps.

Plus they probably use Blackberrys that would better suit their business needs.

 

[dagger55]

Just heard back from their lawyer. I guess I'll need to rephrase my question to them to be "What exactly do you want me to change?"

Thank you very much for your timely attention to the November 8, 2010 AppStoreNotice.

It is my understanding that Apple may not have fully advised you on my client's intellectual and industrial property rights, although Itunes/Apple are aware of these rights. In any event, I should like to add the following information and request for your review and consideration:


A. I act as intellectual property counsel for Mag Instrument, Inc., 2001 South Hellman Avenue, Ontario, California 91761, USA (“Mag”).



As you will likely be aware, my client is the manufacturer of the world-renown MAG-LITE® assortment of high quality flashlights sold under the designations MAG-LITE®, MINI MAGLITE®, SOLITAIRE®, and MAG CHARGER®. For your convenience and information, please visit www.maglite.com to review pictures of the original Mag flashlights.



It can be stated without exaggeration that MAG-LITE® is a famous trademark and one of the leading brands in the flashlight and handheld lighting sector worldwide. The client’s flashlight products are not only well-known due to their superior quality and workmanship, but also and particularly because of their characteristic shape, style and overall appearance, which has reiteratedly been recognized by leading design institutions and art museums in the world. Unfortunately, however, Mag Instrument is frequently the victim of product piracy on a worldwide scale.



B. With regard to the individual flashlights of its MAG-LITE® product assortment, Mag Instrument claims copyright protection, protection under unfair competition law, and protection under the doctrine of passing-off. In particular, however, Mag Instrument is also the holder of registered trademarks (3-dimensional product shape marks) for the design of its MAG-LITE®, MINI MAGLITE®, MAG CHARGER®, and SOLITAIRE® flashlights that protect the shape, style and overall appearance of these products.



It may suffice for the purpose of this letter to advise you that Mag Instrument owns, inter alia, Community trademark registrations 1688563 and 2351831 and German trademark registrations 394 10 754, 394 10 755 and 398 05 079 for the shape, style and overall appearance of the MINI MAGLITE® and MAG-LITE® flashlights. An excerpt reflecting the Community trademark registration 2351831 for the shape, style, and overall appearance of the MAG-LITE® flashlight is attached for your information. Your attention is drawn to the fact that both Community trademark registrations 1688563 and 2351831, as well as the German trademark registration 398 05 079 have been obtained on the basis of acquired distinctiveness (secondary meaning), i.e., because of the overwhelming public awareness of the design and due to the shape, style and overall appearance of the MINI MAGLITE® and MAG-LITE® flashlights being perceived as an indicator of source.



C. Against this background, it is obvious that Mag Instrument considers your advertising, sale and distribution of iPhone® application software that incorporates a flashlight with a shape, style and overall appearance that is almost identical to its MAG-LITE® flashlight as an infringement of its intellectual property rights. It is evident that the characteristic design elements of the original MAG-LITE® flashlight have been copied for the torch reflected in your iPhone® software application.



Accordingly, it is requested on behalf of Mag Instrument that you immediately remove/delete from your iPhone® software application and/or your pertinent advertising any picture, icon or reproduction that is identical to or confusingly similar with my client’s original flashlight products and/r the pertinent trademark registrations.



I look forward to receiving your written confirmation in this regard with the 5 days period set forth in the November 8, 2010 App Store Notice sent to you by Apple, Inc.’s iTunes Music Marketing & IP Legal Department. It is requested that you include detailed name and address information in your confirmation letter, reflecting the source of the picture(s), icon(s) or reproduction(s) of the pertinent MAG-LITE® imitation(s) used as part of your iPhone® application.



While all further Mag Instrument claims are being expressly reserved, your immediate attention to this matter and your cooperation are greatly appreciated.

 

[GoCubsGo]

^ Stop asking them and just change the look of it. Or change it to the shape of a dick and write MAG on it, release it on Cydia where people can download it within the jailbreak community.

But really, they're not going to give you a straight answer, rest assured. They answered exactly what they wanted to answer and giving you any direction on how to change your app is not going to be something they'll do. They likely think you'd pop off and say "with the help of MAG USA, redesigned!"

 

[msavwah]

I'm gonna say its the shape and especially the bulb housing part. It looks like a mag....
Just the silhouette does it.

 

[rdowns]

Call your local consumer reporter and complain that a big bad corporation is picking on you. With any luck, the story will get picked up national and you'll sell a ton of your Mag lite app.

 

[freelancing]

I'm gonna say its the shape and especially the bulb housing part. It looks like a mag....
Just the silhouette does it.

I have to agree. If I saw just the illustration and didn't know anything about this, my knee-jerk reaction would be that this is a Mag Light. The slope from the flat front of the head down to the neck down to the notches along the top make it look just like one. The button on the neck shows the functionality is a bit different, but it's still their design.

If someone else created a flashlight app (there are several) using the design you created in Photoshop, you'd be rightfully pissed, too. Even if it was inadvertent - they came up w/ the design first.

 

[triptyx]

My recommendation, holding a 3-D MAG in my hand and looking at your illustration:

Remove the vertical hash grip knurls near the head - maybe replace with checkerboard knurls.
Remove the seam at the tip of the head.
Change the oval switch depression to a squarish/rectangular shape.
Change the switch itself to a textured rectangular slide switch.

The knurls and switch/switch depression shapes are likely most of what's ticking them off. As they've given you a timeline, I'd do so posthaste and inform them that you're submitting the change to Apple immediately.

 

[tritonj]

the thing looks like a mag lite, just change the switch to a slide and it will be different

 

[ogdogg]

Mag has specific copywrites on the flashlight design. You are infringing.

That leaves you 2 choices. Redesign your flashlight to look different than a Mag Light, or partner with them on the app.

Or of course you could do nothing, get sued, and lose everything. Good luck. Keep us posted with what route you take.

 

[paj]

Just heard back from their lawyer. I guess I'll need to rephrase my question to them to be "What exactly do you want me to change?"

They told you in paragraphs 'B' and 'C' exactly what you need to change... "shape, style and overall appearance".

There's no question that your artwork depicts a Mag Light, even if it wasn't intentional.

 

[fhall1]

I kinda like that suggestion!

 

[EvilC5]

I'm gonna say its the shape and especially the bulb housing part. It looks like a mag....
Just the silhouette does it.

I agree also, the knurled edge looks very much like maglite.

GM owns the shape of the corvette, and people who try to sell photos of a corvette run into the same situations.

 

[SFC Archer]

Why dont you just use your strobe flashlight image. It does not look like a mag where as the other one surly does. Your last image in iTunes, in my opinion would be totally acceptable and not look like you dragged the image off of a google search and did some photoshop work.

Good Luck with your dilemma

 

[Cartaphilus]

Well, if you're taking a poll, and when it comes to trade dress and the likelihood of confusing the public that isn't a bad idea, put me down as voting against your depiction. As others have pointed out, there are several design features that instantly evoke the characteristic Mag designs.

Let me suggest that you search the web for stock drawings of flashlights, and try to make your illustration close to those. A number of royalty-free images can be found here

I'm no marketeer, but I doubt very much that your iPhone app will be less successful with an image of a generic flashlight than with an image that resembles a Mag-Lite ©.

That way you can get on with your life, and we can move the discussion of the morality of trade dress protection to a place where your interest in the outcome is merely academic.