I’m don’t often make legal predictions, but I’m going to go out on this nice sturdy limb here and predict that Apple’s attempt to assert trademark rights in the word “podcast” will fail. There are multiple grounds why it should fail (the term is in no way dilutive of “iPod” for one), but if I were a judge I would be very receptive to the suggestion that the term is now generic and thus part of the public domain.
Podcasting is the method of distributing multimedia files, such as audio or video programs, over the Internet using syndication feeds, for playback on mobile devices and personal computers. The term gained wide popularity as a portmanteau of iPod and broadcasting, but was seen before that as an acronym for “portable on demand”.
The term podcast, like ‘radio’, can mean both the content and the method of delivery. The host or author of a podcast is often called a podcaster. Though podcasters’ web sites may also offer direct download or streaming of their content, a podcast is distinguished from other formats by its ability to be downloaded automatically using software capable of reading feeds like RSS or Atom.
Incidentally, a quick search at the USPTO finds 20 filings with the word ‘podcast’ in them…but only two for the word alone. One, dated Feb. 10, 2005, is for “online prerecorded radio or other recorded program over the Internet for purposes of allowing users to download, in electronic audio or video files, information regarding entertainment and educational to MP3s or other portable audio and video players.” The other, for “SOUND RECORDING FEATURING AUDIO INFORMATION FOR DOWNLOAD-SPOKEN WORD AND MUSIC” claims a first use in commerce of only Feb. 2006. Neither is from Apple.
As so many of us predicted, law designed to prevent cybersquatting can too easily be mis-used to intimidate core First Amendment speech. Via The Trademark Blog, here’s a link to Blogger shuts down Web site that mocked legislator in the Honolulu Advertiser.
An irreverent local blogger has chosen to give up a Web site making fun of state Rep. Bev Harbin after Harbin threatened to take him to court under the state’s law against cybersquatting.
Jon Asato, a tour guide and writer, said he agreed to drop the domain names BevHarbin .com and BeverlyHarbin.com after Harbin sent him two letters warning of a civil lawsuit. Asato said his Harbin Web site, which had cartoons that likened Harbin to The Incredible Hulk and the Joker character from the movie “Batman,” should be protected as free speech.
The law at issue is a state law, not the federal Anti-Cybersquatting Consumer Protection Act. And I think that any law which reached this sort of political criticism would be unquestionably unconstitutional. But fighting those fights is expensive, and most regular citizens don’t have the money and the time to do it. Intimidation works.
In case you care, Ann Bartow explains the trademark law behind the decision in the Hooters case. I especially liked the post title, “Hooters” Loses Its Appeal.
MARTY SCHWIMMER is not a bicycle or a water-exercise product for men. I am a law professor and I should know.
(Sorry Marty, I couldn’t resist.)
In the course of a domain name arbitration awarding mymorganstanleyplatinum.com to Morgan Stanley, arbitrator Richard Hill had this to say,
Respondent maintains that it is a cat, that is, a well-known carnivorous quadruped which has long been domesticated. However, it is equally well-known that the common cat, whose scientific name is Felis domesticus, cannot speak or read or write. Thus, a common cat could not have submitted the Response (or even have registered the disputed domain name). Therefore, either Respondent is a different species of cat, such as the one that stars in the motion picture “Cat From Outer Space,” or Respondent’s assertion regarding its being a cat is incorrect.
If Respondent is in fact a cat from outer space, then it should have so indicated in its reply, in order to avoid unnecessary perplexity by the Panel. Further, it should have explained why a cat from outer space would allow Mr. Woods to use the disputed domain name. In the absence of such an explanation, the Panel must conclude that, if Respondent is a cat from outer space, then it may have something to hide, and this is indicative of bad faith behavior.
On the other hand, if Respondent’s assertion regarding its being a cat is incorrect, then Respondent has undoubtedly attempted to mislead this Panel and has provided incorrect WHOIS information. Such behavior is indicative of bad faith. See Video Direct Distribs. Inc. v. Video Direct, Inc., FA 94724 (Nat. Arb. Forum June 5, 2000) (finding that the respondent acted in bad faith by providing incorrect information to the registrar regarding the owner of the registered name). …
The Panel finds that Respondent’s assertions that it is a cat provide sufficient evidence to conclude that the Respondent registered and is using the disputed domain name in bad faith. And this despite the fact that the Panel, unlike Queen Victoria, is amused.
Have I mentioned how mean-spirited and contemptible the official UNICCO strike blog is is both tone and content? Here’s the latest screed,
With the deadline looming on its 30-day recognition strike, the SEIU has to end its picketing, chanting and tub-thumping today and the few striking workers have to come back to work. Meanwhile, a meeting between all the parties called for by UM President Donna Shalala will convene soon and we expect the message in that gathering will be clear: Let em vote. The union really has no alternative except to try and bolster more support among students, but they will soon be departing for summer vacation. Its over. I feel kind of sorry for the students whose heads have been filled with union mush. But, hey, students and protests used to go hand in hand and its actually good to see students seriously engaged in something other than keg parties. And, its the last chance they get to stick it to the man before they become the man.
(The “university truth” blog has neither links to individual items, nor does it allow comments, so that link will only take you to a category; look for today’s entry, currently at the top.)
Some colleagues of mine have also noted that the site — especially the main UNICCO page’s link to it — uses colors, type and language in a way meant to evoke the official UM pages. I’m doubtful that this is actually a trademark violation as I think the likelihood of confusion is low; that said there might be an initial interest confusion claim based on this item,
currently found at the UNICCOtruth
page with a link to UNICCO’s (not UM’s!) “UniversityTruth” blog.
I mention this not because I think trademark law should be used to stomp UNICCO’s advocacy, and I don’t, but rather because it’s somewhat surprising that UM’s trademark lawyers, normally quite protective of the University’s rights, don’t seem to have sent a cease and desist letter which I would presume would be immediately complied with by UNICCO, whose customer they are. Just something to think about when UM touts its neutrality…
Laura Quilter writes,
derivative work – Nintendo Threatens Cancer Researchers: Sloan-Kettering Cancer Center has apparently received a trademark cease & desist from the Pokémon company (Nintendo) after cancer-related research on the Pokemon gene which Pandolfis lab named four years ago, in 2001 received headlines like Pokemon Causes Cancer. Sloan-Kettering has knuckled under, now calling the gene Zbtb7.
Lots more on this if you follow the link…
I understand why Nintendo were mad, but like Ms. Quilter, I can’t understand why the doctors caved in. If their use was non-commercial it is not banned by the the Lanham Act. Even if it was commercial the claim for confusion is nil. The claim for tarnishment under a dilution theory would I think fail under federal law; unlike Ms. Quilter I do think it’s possible that some state law claim might have had a little more juice…if the court could keep a straight face…although I agree Nintendo would have to be complete idiots to bring the case and face the bad publicity.
What’s next, the estate of James Joyce suing everyone who writes about quarks?