Podcast Trademark Controversy

[MacRumors]

http://www.macrumors.com/images/macrumorsthreadlogo.gif

A recent apparent cease-and-desist letter sent to Podcast Ready (makers of a software product called myPodder) by Apple has lit a firestorm in the blogosphere and online community. According to Eliot Van Buskirk at Wired.com, the cease-and-desist letter claimed that both the company's name and software infringed on Apple's trademarks.

While Apple's attempts at safeguarding its trademarks is nothing new, the move is striking fears that Apple is trying to take over the term "podcast". ZDNet's Russel Shaw posts a good summary of recent trademark attempts by Apple to register such terms as iPodcast.

Indeed, MacRumors' own research has found evidence that Apple has attempted to further the reach of its existing trademarks. The following describes a change Apple proposed to its existing iPod trademark (change applied for 06/18/05, final denial 05/22/06):

A full line of electronic and mechanical accessories for portable and handheld digital electronic devices for recording, organizing, transmitting, manipulating, and reviewing text, data, audio and video files; electronic docking stations; stands specially designed for holding portable and handheld digital electronic devices; battery chargers; battery packs; electrical connectors, wires, cables, and adaptors; wired and wireless remote controls for portable and handheld digital electronic devices; headphones and earphones; stereo amplifier and speaker base stations; automobile stereo adapters; audio recorders; radio receivers; radio transmitters; image scanners; video viewers, namely video monitors for portable and handheld digital electronic devices; and, electronic memory card readers; a full line of computer software for portable and handheld digital electronic devices for recording, organizing, transmitting, manipulating, and reviewing text, data, audio, image, and video files; computer application software for recording and organizing calendars and schedules, to-do lists, and contact information; computer game software; and, computer software for clock and alarm clock functionality; carrying cases, sacks, and bags, all for use with portable and handheld digital electronic devices for recording, organizing, transmitting, manipulating, and reviewing text, data, audio, image, and video files.

Currently, Apple's existing iPod trademark is much more restrictive.

Portable and handheld digital electronic devices for recording, organizing, transmitting, manipulating, and reviewing text, data, and audio files; computer software for use in organizing, transmitting, manipulating, and reviewing text, data, and audio files on portable and handheld digital electronic devices

In addition, Apple has an open trademark application for "pod":

portable and handheld digital electronic devices for recording, organizing, transmitting, manipulating, and reviewing audio files, and peripherals for use therewith; computer software for use in organizing, transmitting, manipulating, and reviewing audio files on portable and handheld digital electronic devices

Currently, the "pod" trademark appears to be encountering some resistance, as a request for an extension of time to file an opposition to the trademark has been filed with the Trademark Trial and Appeal Board. It was not immediately clear who is asking for the extension.

Of additional possible relevance, it appears a few enterprising individuals have already attempted to trademark the term "podcast". In both cases found by MacRumors, non-final action has been mailed by the U.S. trademark office, which either indicates a initial refusal or a request for additional information. Currently, no corporation or individual appears to hold a trademark (in the U.S.) to the term "podcast."

[iAlan]

I can undestand Apple's motivation on this -- they have conciderable investment in all things iPod.

What if another company wanted to trademark 'Podcast' or a similar term? Would there be as much controversy about them wanting to own it as there is against Apple?

[coday182]

why did they wait till now to worry about this?

[wchong]

Originally Posted by coday182

why did they wait till now to worry about this?

b/c of the popularity today

[randyharris]

I don't think this will serve Apple any good to stop podcasters from using Pod in the name. It will only create ill-will and lessen the use of Pod which I would think would be a good thing for Apple.

[spicyapple]

Would Apple have a case with PODcast? (Programming on Demand-casting)

[WildCowboy]

According to US law, a trademark holder MUST defend their trademarks, or they risk losing them. Google is struggling with this, as they're trying to encourage people not to use it as a generic verb.

Wikipedia Linky

[theBB]

Originally Posted by WildCowboy

According to US law, a trademark holder MUST defend their trademarks, or they risk losing them. Google is struggling with this, as they're trying to encourage people not to use it as a generic verb.

Wikipedia Linky

I was going to point out that Bayer already lost Aspirin and Xerox came very close, but thanks for the link. Still, podcast is different enough compared to iPod that Apple is probably not at risk. However, "probably" is not the same as "definitely".

[longofest]

Originally Posted by WildCowboy

According to US law, a trademark holder MUST defend their trademarks, or they risk losing them. Google is struggling with this, as they're trying to encourage people not to use it as a generic verb.

Wikipedia Linky

The question is, what trademark is Apple defending? Going after a podcasting company when all you have trademarked is the iPod may be trying to stretch your trademark a bit far.

[Gasu E.]

Originally Posted by WildCowboy

According to US law, a trademark holder MUST defend their trademarks, or they risk losing them. Google is struggling with this, as they're trying to encourage people not to use it as a generic verb.

Wikipedia Linky

Absolutely. Having received a couple of cease-and-desist letters myself (from Microsoft, actually), I think Apple's letter to Podcast Ready is extremely polite and accomodating for letters of this type. Also, note it was carefully crafted just for Podcast Ready, undoubtedly at significant expense. If Apple had a larger agenda of controlling the term "podcast" in all its uses, I suspected this note would have been a bit more boiler-plate and re-usable.

My take on this is not that Apple is trying to own all uses of the term pod or podcast, but to establish the legal boundaries between the reach of their trademarks and common usage. In order to do this, Apple has to take a somewhat aggressive stance. The actual boundary will be adjudicated by negotiation, and at some point, probably the courts.

[kev0476]

whenever i hear podcast i immediately think of apple, so why is apple shutting down free advertising?

[Tommyg117]

Originally Posted by kev0476

whenever i hear podcast i immediately think of apple, so why is apple shutting down free advertising?

Very good point, I associate it with Apple as well. I think it is a part of iTunes kind of like a cd in relation to a best buy.

[revjay]

Originally Posted by kev0476

whenever i hear podcast i immediately think of apple, so why is apple shutting down free advertising?

Ever think that Apple might not want you to think of them when you download some of the crap podcasts that would be, and have already become available???

Apple would lose control of something they have been able to, for the most part, control up to now.

Like Janet Jackson, Apple likes control.

[Bern]

The phrase Podcast didn't exist until the development of Apple's iPod so I don't see why they shouldn't own the rights to it or at least have some level of control for it's use.

[Abstract]

Originally Posted by Bern

The phrase Podcast didn't exist until the development of Apple's iPod....

So? Some words like "Podcast" are adopted from popular culture. I still talk about Walkmans, not "Portable Audio Cassette Decks". Imagine how annoying that would be to say every time?

I can understand why they want to protect the iPod name. That is their name, and that is their product. However, they really should leave "Podcast" alone. Having a "Podcast" is like the ultimate insult to everyone like Creative, Microsoft, etc. The name "Podcast" exists not because people want to leech off of the iPod's popularity, but because of the iPods popularity, and how endeared it is by our culture. These "Podcasts" were created to be downloaded onto iPods so that people can listen. In our society, iPod comes to mind first. Nobody was thinking of creating these audiocasts with the Creative Zen or MS Zune in mind. If they end up on a Zune, that's fine, but the thought was to get their content on iPods, which is really quite a compliment to Apple when you think about it.

Apple should really reconsider their actions.

[Deputy-Dawg]

Kimberly Clark fought, and lost, the same battle over 'kleenex' becoming a generic noun for facial tissue. Bayer lost it over 'asprin' as the name for sodium acetosalcylate. And there are numerous other examples. All were lost because the owners of the trade name did not vigorously defend their trade name. Apple is doing what it must. Will they suceed? If history is any clue probably not

[NewSc2]

This is a stupid move by Apple. The term "podcast" inherently advertises iPod. Now everybody (such as ESPN and etc.) is going to get scared and change their daily podcasts to some other name that doesn't automatically conjure a connection to an iPod.

[VanMac]

I'm sure the Lawyers will all makes lots of money either way....

[fastred]

Cripes... it helps to *read* around a bit before loosing your rag...

Bloggers always go overboard on this stuff. It is clear that Apple is trying to protect their "iPod" brand, not attack "podcast" per se...

See the Zdnet dicussion of this, which includes an excerpt of a letter from Apple which specifically excludes "podcast" as a term they are seeking to protect...

http://blogs.zdnet.com/ip-telephony/?p=1252

To many people jump on bandwagons before they check their facts...

[Some_Big_Spoon]

I say they sue Leonard Nimoy and the entire cast of the remake of the Invasion of the Body Snatchers.

[alFR]

See that roughly spherical, green/red piece of fruit in your lunchbox? Better start thinking of another name for it before the cease-and-desist letters start arriving....

[tekmoe]

money hungry wolves. makes me wonder if it's just some bigshot lawyers who are reallying trying to win the battles and Apple is giving them the OK. nonetheless, i think it is wrong and it's pretty sad that Apple is doing it to begin with. just another corporate slaughterhouse.

[BenRoethig]

Podcast is a generic term now. This is complete B.S.

[rashdown_online]

Ok, iPod is fine for a TM.

aiPod and eyePod, That's a bit different.

But POD!!!

So, are Apple going to sue the BBC (amongst other) for having Pod casts? Everytime a member of the media of the celeb mention podcast, are Apple going to chase royalties???

This is really quite close to the mark!

What about the the phrase "2 peas in a pod"?...

It may just be me, but if this continues, I'm going to throw out all my things MAC, and go back to Micr$oft. That's how really ANTI them I'm feeling at the moment.

OI! APPLE LAWERS!!! YEAH YOU!!! Read some Mintzberg, or Mead, or (and I'd strongly advise this) Andrew Bailey. Basically, get those HBS grads out of your org and stop using crappy outdated Business School Methods. It was once the way to go. But what they don't consider are Gender and Cultures! You wanna piss me off: You loose my custom.

Sorry for the moan, but the litigation era was over in the 90's.

It's about Love Marks now, and your Lawers are hurting your brand!!! Fix it before it's too late!

[Gasu E.]

Originally Posted by rashdown_online

OI! APPLE LAWERS!!! YEAH YOU!!! Read some Mintzberg, or Mead, or (and I'd strongly advise this) Andrew Bailey. Basically, get those HBS grads out of your org and stop using crappy outdated Business School Methods. It was once the way to go. But what they don't consider are Gender and Cultures! You wanna piss me off: You loose my custom.

Sorry for the moan, but the litigation era was over in the 90's.

It's about Love Marks now, and your Lawers are hurting your brand!!! Fix it before it's too late!

Oh, calm down and read all the links. There's been no litigation. Apple was pretty damn polite in its one cease-and-desist. Under US law, if you don't defend your trademarks you lose them, and the links discussing their trademark applications indicate that Apple may already be in trouble on that score already.

P.S. I read Mintzberg in business school in 1981. "Gender and Cultures" is a non sequiter right out of a university course catalog. ROFL. YDKWTFYATA.