Create, Consult, Control
News & commentary on intellectual property issues.
Jul302009 | Steve O'Donnell
Scary podcast patent not that scary
Last Tuesday the patent office issued a patent to Volomedia for a “Method for providing episodic media content.” By Wednesday, the tubes were filled with commentary ranging from “the patent system is broken” to “Oh nos [sic], they're going to sue podcasters.” Most of those comments mentioned Adam Curry in some way.
I can't fault the media (I'm including bloggers of all ilk in that term) for getting up in arms. Patents are rather specialized and there is a reason why registration with the US Patent Office requires a separate bar exam. Analyzing a patent to determine exactly what it covers can take days or weeks, and then you're still not exactly sure what it means until a Judge issues a claim construction.
First things first, Volomedia's patent does not cover making, uploading, downloading or listening to podcasts. It covers a method to distributing them, so the iTunes store or Podcast Alley would be possible targets if Volomedia tried to enforce their patent against a current distributor, not a typical podcaster or a listener. Whether or not they would try to enforce against someone, or what would happen if they did is anyone's guess.
It might not make economic sense to go after a provider. Even if Volomedia won at a Motion to Dismiss, what would they get? Most podcasts are distributed for free, and the damages period would begin when the patent was first in force (since Tuesday). So, right at this minute, damages are probably pretty small. Volomedia could instead ask for a reasonable royalty, but because of the free nature of most podcasts, this probably also wouldn't be a huge award. Of course, maybe they would want to shut down all current podcast services and be the exclusive provider of all that podcast content, one can never guess exactly what lurks in a business' heart.
There are some questions about whether the current most common content dissemination schemes infringe the patent, but even if they do, they can probably be quickly redesigned to avoid the patent.
The patent contains nine claims, 8 eight of those are dependent, meaning they build off the single independent claim. I'm going to give a cursory look at part of claim 1 to point out what I think might be a couple issues for Volomedia if they would try to enforce this patent against something like Podcast Alley. This is in no way even approaching what would be required for a claim construction and shouldn't be relied on my anyone for anything. This is just for fun. Yea! Grab the patent and play along!
The first claim, which I've roughly diagrammed here reads:
1. A method for providing episodic media,
(a)the method comprising:
i.providing a user with access to a channel dedicated to episodic media,
A.wherein the episodic media provided over the channel is pre-defined into one or more episodes by a remote publisher of the episodic media;
ii.receiving a subscription request to the channel dedicated to the episodic media from the user;
iii.automatically downloading updated episodic media associated with the channel dedicated to the episodic media to a computing device associated with the user in accordance with the subscription request upon availability of the updated episodic media,
A.the automatic download occurring without further user interaction;
iv.and providing the user with:
A.an indication of a maximum available channel depth,
B.the channel depth indicating a size of episodic media yet to be downloaded from the channel and
C.size of episodic media already downloaded from the channel,
the channel depth being specified in playtime or storage resources, and
D.the ability to modify the channel depth by deleting selected episodic media content, thereby overriding the previously configured channel depth.
Ok, that's a mouthful. The first thing that one should understand is that to infringe a claim, one has to infringe all the elements of that claim. In other words, a claim to a “four-door, red car” has three elements, “four-door,” “red” and “car.” If you avoid any of of those elements, you don't infringe the claim. The second thing to realize is that just as there are a number of shades of red, each word in a patent claim is open to interpretation. That interpretation, or claim construction, during litigation is going to define how the infringement analysis will go.
The first questions that would need to be nailed down are “what is a channel” and “when is a channel dedicated to a type of media?” 1(a)(i) Is subscribing to a podcast the same as subscribing to a channel dedicated to episodic media? Looking at the rest of the patent, Channels are defined, in part, as a unit of media content organization that specify media that can be selected for immediate play. Could it be an issue if the play isn't immediate, but first requires a download? It very well could be, it could stop an infringement action in its tracks.
Next, the clause at 1(a)(ii) requires receiving a subscription request from the user. What if the user's request goes through a third-party proxy? At first blush, that would seem to get around the whole claim.
Clause 1(a)(iii) requires automatic downloads upon availability of the episode. One interpretation of that would be that it requires a “push” technology and not a “pull” like iTunes uses. The next subclause requires that the download occurs without further user interaction. Would that cover a podcast downloading program that required the user to specify when to check for new podcasts, even if that specification only need to be made once per podcast subscription? After all, it does require a user interaction separate from subscribing.
In short, you can't jump to conclusions about what a patent actually means based on it's title or what a press release says. . . they almost always demand a lot more work to analyze. I might not think the claim reads on the iTunes store, but ultimately, if it gets litigated, that's for a judge to decide. If it does get litigated, come back and we'll play with the prior art cited by the defendant.
I'm not trying to suggest that my take on the claims is what a court should adapt or that the drafters erred in prosecuting the patent. Not at all. I think the claims are quite good and this patent could be an important piece of IP for Volomedia. I don't think, as others have suggested, that this will kill podcasting as we know it.
Jul282009 | Steve O'Donnell
Open Source Chili
When I'm not managing my law office, writing or playing Wii Sports, I like to cook. As a patent attorney and cook, one of the most common questions I get is “can I copyright/trademark/patent my recipes?” The answer is a qualified “no.” but you can protect them as trade secrets.
Copyright protects artistic expression, so it can protect a story or narrative attached to a recipe, but won't give any protection to the recipe itself. There is an argument that cooking is an art so such artistic expression should be copyrighted, but that won't work. A particular dish may be art, delicious art, but its recipe is at least partially useful in that it instructs a reader how to make the dish. In cases where the artistic elements of a piece cannot be separated from the useful elements then the usefulness trumps and copyright will not protect it. Useful items can be protected by patents, but probably not recipes.
Unlike copyrights, patents undergo a ridged examination proceeding and must satisfy a number of requirements. For recipes, the big issues are probably going to be novelty and obviousness. That muffin recipe might be great, it might be the best muffin I've ever tasted, but based on all muffin recipes to have ever existed isn't there some prior art that teaches the same thing? Or maybe two or three other recipes that teach certain aspects of the recipe? It seems to be a very difficult requirement for a recipe to meet. Another requirement that could be a problem is utility, patents will only issue for useful goods. Although the level of usefulness needed is very low, I'm not sure that “delicious” would cover it. On the other hand, some recipes are patentable, such as this one for savory baking chips and this one for treating chest pain with lime juice. Granted, the lime juice patent is not much of a recipe, but it's one of my favorite patents and I wanted to use it. It has expired because the patentee didn't pay a maintenance fee, so if you feel a touch of angina coming on and want to try sucking a lime, go ahead. Let me know how that works out for you.
Trademarks also don't fit the bill. Trademarks identify the source of some goods, even if you printed an entire recipe on a t-shirt and tried called that your trademark, that wouldn't stop someone from taking your recipe and using it. It might stop them from being able to sell their own t-shirts marked with the same recipe, but why anyone would want to do that is beyond me.
What one is left with is trade secrets. As the name implies, trade secrets are secrets. They have served Coca-Cola and KFC quite well over the years. As an aside, I once knew someone that did some engineering work for KFC. He was able to automate 10 of the 11 secret herbs and spices, but the last one was added manually by a guy that would come out with an unmarked brown sack containing the most secret of the secret ingredients. Trade secrets won't help you at all if someone figures out your recipe, just look at how many copycat recipes one can find, so some extraordinary measures are taken to keep these secrets.
So, the bottom line is, if you don't want people to know your recipe, don't tell them.
Now, on to my non-patented, non-trademarked, non-copyrighted chili recipe:
Open Source Chili
from Steve O'Donnell (http://www.3cpatents.com)
time 4 hours
yield 6 servings
ingredients:
3 cans beans
1 t dried thyme
1 t dried oregano
1 t dried coriander
1 t dried red pepper flakes
4 t cumin powder
3 garlic cloves minced
1lb beef chopped
2 beef bouillon cubes
4 slices bacon chopped
1 red pepper chopped
1 onion chopped
4 oz mushrooms chopped
1.5 cup ketchup
1 tomato chopped
3 c water
2 oz corn chips
directions
1. Throw everything into a crockpot and cook on low about 4 hours or until done.
2. I trim the beef, usually a tip steak or something on sale and add it raw to utilize the rendered fat, lean hamburger can also be used, or any other protein you like. The bacon also goes in raw.
3. The corn chips are the “secret.” They disintegrate and add body and flavor. Without them, or masa powder, you get chili-soup instead of chili. I prefer Fritos, because if you buy a bigger bag you can make Frito Pie.
Chile pepper image from Forest and Kim Starr
Jul252009 | Steve O'Donnell
PEZ takes on the Museum of PEZ
On June 22, 2009, the PEZ candy company sued the proprietors of the Museum of PEZ for trademark infringement and the story was picked up by the press. I'll admit, at first glance I thought it was a bit draconian to sue over what many would consider free advertising, but there is more going on here than what most articles mention.
The basic story is not so new, in fact it happens pretty often. FOX has gone after Simpsons fan sites and an Australian company that tried selling Duff beer; McDonalds has attacked restaurants around the world that have used “Mc” or Mac,” including a topless one in Australia called “McTits.” Really, “McTits.” (note to self, consider vacation tax deductible business trip to Australia for research.)
In the PEZ case (complaint), a couple, presumably on a sugar high, began a PEZ museum celebrating all things PEZ. If that was all they did, the PEZ company might not have cared. Coca Cola has not tried to shut down the Coke fan page on Facebook, in fact, they are working with the page's creators. Why then has PEZ taken such a heavy handed approach?
The museum was not just a tribute to PEZ, but it was also a money making venture that traded off the PEZ marks. One point being made in all the reports I've seen on the case is the giant “Dispenser of PEZ” that ejected packages of PEZ through a familiar and delicious tracheotomy. The PEZ company is not happy that the museum has made it's own dispenser and has promoted it as “The World's Largest PEZ.” That is clearly a violation of the PEZ company's rights to the name and image of PEZ, but by itself, maybe not enough to get too riled up over.
As a bit more serious infringement the museum has manufactured and sold t-shirts bearing the PEZ trademark without permission from the PEZ company and has also reused original PEZ shipping boxes for their own shipments, both actions could reasonably make a person think that museum is authorized by the company.
But what I consider the clearest infringement, the museum has produced altered “PEZIDENT” dispensers for the 2008 election for both President Obama and Senator McCain, something the PEZ company has never done, and the museum has also produced an altered dispenser bearing the name “Burlingame Museum of PEZ Memorabilia.”
At a certain point, the trademark owner really has to do something. If they allowed someone else to use their trademarks with impunity, they could lose any rights they have in the trademark.
What the museum's owners should have done was hire a lawyer to advise them on what they could do and try to work out licenses with the PEZ company. It certainly would have complicated things since PEZ would probably want to be involved with the museum's operations, but that also would have kept them out of the trouble they're in now.
As I said at the beginning, these kind of trademark cases come up from time to time. I bet the next one is the Mexican Duff beer, in fact I'm not sure why FOX hasn't done something about that yet.
Jul232009 | Steve O'Donnell
Robbing the logo graveyard
What happens when a company goes out of business or rebrands itself? Can someone else step in and start using the abandoned trademarks? Sure, but make sure it's dead before you dig it up.
The strength of a trademark comes from its use. A trademark that isn't used, doesn't identify the business that owns it and doesn't have much, if any, power to go after someone using a similar mark. If an established mark is abandoned, it will take a while before any of it's brand-recognition muscle will deteriorate to where someone else could appropriate it.
For example, Lancaster General Hospital recently underwent a brand overhaul and they now have a spiffy new logo and a new name.
This is the old logo. I like their old logo, the hands holding a person seems like the perfect image for a hospital to convey.
The new logo is more colorful and abstract. For some reason it reminds me of the Tron video game. Generally, abstract is good for trademarks and over time, this logo will become associated with the hospi. . . excuse me, health system.
Could someone use the old logo to mark their new business? It is a good logo, I could see it being used by a chiropractor, massage therapist, or any one of a number of health care businesses. What, if anything is stopping people from dusting off and repurposing old trademarks?
There are at least two things to think about if you want to use an abandoned mark: the first is whether the mark still has any breath left in it; the second is whether there is any copyright issues to worry about.
If the mark still has some identity to it, then a new use is an infringement. It is going to take time for people to forget that an old logo used to be associated with a certain business. For example, if people see a massage therapist using the old LGH logo, they will probably think that the therapist is associated with the hospi. . . health system. It may be years before people in Lancaster, PA forget about the old LGH logo to the point where someone else could use it in Lancaster. That might not be such a concern if the new user wanted to use the logo in another state where people don't recognize it.
Another possible problem would occur if the logo was copyrighted. Copyright duration in this context has nothing to do with whether something is used or displayed, so even if there wasn't a trademark issue a new user might not be able to make the logo its own.
The possible problems are usually much smaller if a business has gone out of business than if they've rebranded, but not always. Often a business will sell its IP when dying so it can be an issue to figure out if someone else owns the rights to the mark and is planning on resurrecting the brand.
In short, if you want to revive someone else's abandoned logo as your own you should speak with an attorney before you start printing your business cards.
Jul202009 | Steve O'Donnell
Monitoring your brand using a Yahoo Pipe
This is a slight diversion from my usual series of patent, copyright and trademark posts, but it's been said that variety is the spice of blogs. . . or something like that.
I'm a huge fan of RSS feeds. I use them to get a constant stream of information from my favorite blogs as well as keep me up to date on a number of sites that are updated often. Using them removes, or at least lessens, the possibility of me forgetting to check a site or missing a story that I would want to read.
Over the last year I've been spending time on Twitter. Apart from the social aspect of Twitter it is a constant, immediate news source. Granted, no great journalistic pieces are being tweeted in 140 characters, but for short breaking news, nothing beats it. . . yet. An aspect of this that relates back to my RSS affinity is that all the blogs or new sites that I follow either have their own Twitter presence or have fans that tweet links to their posts. Twitter also lets users grab an RSS feed for whatever searches they've run. For example, if I search Twitter for “patent” I can grab an RSS feed for those results and plug it into my RSS reader.
Yahoo pipes is a way of building custom RSS feeds from existing feeds, and tweaking the output. One of the things I use it to do is to monitor multiple Twitter searches, consolidate them, remove some irrelevant information and output a single RSS feed I monitor from my reader. There is quite a bit more than they can do and browsing those pipes listed on the site will demonstrate that. Here I'm going to demonstrate how to make my simple IP aggregator pipe which can be easily modified to monitor a brand name. A pipe customized to monitor a brand name will allow the user to search for mentions of the brand, or for mentions of competing brands, and identify potential customers as well as keep on top the chatter surrounding the brand name. Similarly, a Twitter search could also identify others using the same.
First, go to http://pipes.yahoo.com/pipes/ You'll have to log in with your yahoo id and password, so I guess if you don't have those, this is really step 2, so go to yahoo, start an account and come back. Once you're logged in, click “create a pipe.”
Open a new browser tab and go to http://twitter.com and locate the search box on the right side of your home page. Type in your search and hit return. Now, go the bottom of the column containing the search field and click on “RSS feed for this query.” Copy the resulting URL. It should be something like “feed://search.twitter.com/search.atom?q=[term]” where [term] is what you typed in the search field.
Go back to your yahoo pipes page, under the “Sources” menu on the left, click “Fetch Feed” and drag that to the grid [below, 1]. Now, we'll add the Twitter feed already in your clipboard by pasting it into the open field in the “Fetch Feed” module [below, 2]. You'll notice that the module “Pipe Output” was created automatically. We need to connect those two to see the output, so click on the circle at the bottom of the “Fetch Feed” module and drag to the circle on the top of the “Pipe Output” module [below, 3]. Down at the bottom of the screen is the debugging window where you can see the results of your pipe [below, 4]. Right now, it''s essentially just an RSS feed that's been renamed. Go back to your Twitter page and enter some more searches and copy/paste each one's RSS feed into another line in the “Fetch Feed” module.
At this point, I have three feeds coming into the pipe, all Twitter searches for the terms “patent,” “copyright,” and “trademark” which are being aggregated into a single feed. [below, 1] You might need to click “Refresh” in the debugging window to see changes. Save your pipe by clicking the “Save” button. [below, 2]
Now, you could stop right there and have a useful RSS feed that contains the results of multiple Twitter searches. If you click on “Back to My Pipes” [below. 3], then on the name of your newly created pipe, you'll be presented with a number of options on what to do with your pipe, such as posting to Google Reader, MyYahoo, or grabbing an RSS feed that you can use in other readers. There are also other options that should satisfy nearly any of your content needs.
Simply aggregating multiple feeds is useful, but there is still quite a bit of chatter on Twitter that we can filter out without losing relevant posts. To do that, I use “Filter” module under the “Operators” menu on the left of the pipe grid. [below, 1]In this filter I'm blocking posts that are ReTweets or responses, so I only see original posts. Also, shortly after first making this pipe I noticed a number of posts about “patent leather” that I didn't need, so I filtered out those. Then, when Michael Jackson died there was a huge spike in people tweeting about his patented dancing illusion so I added to my filter to block items mentioning him. To attach the “Filter” module to the pipe, move your mouse over one of the circles with a thread leading to another module and when the scissors icon appears, click it and then trade the new links. In my example, “Fetch Feed” gets linked to “Filter” which is linked to “Pipe Output.” [below, 2]
Now, I have a functional Twitter search aggregator that contains mostly relevant material. One very nice thing about the way this works is that once established, the output RSS feed stays the same, so I can go into this pipe and add searches or filter items without having to change any settings in my RSS reader. A similar pipe for a business monitoring it's brand might aggregate mentions of the brand itself along with common misspellings and the names of competitors. Keywords related to the business might also yield usable data, but maybe too much noise. If Twitter eventually adds geocoding data to tweets, a pipe can extract that data and limit results to a certain area, which would make keyword searches much more valuable to small to mid sized businesses.
This is really just a very small example of what Yahoo Pipes can do. Going back to the Yahoo Pipes home page will let explore how the modules work or let you look for public pipes that others have built. From there, you can save the pipes you like them under your profile and tinker with them.
Update: August 21, 2009, Twitter will soon be embedding location data in messages. Imagine the targeted campaigns this will make available to the small business person. If someone in your area mentions "restaurant," a savvy restauranteur will be able to reply to their message and optionally provide a link to a coupon. Someone in town mentions "wedding" and techie wedding photographers can reply with information about themselves; someone grumbles about their grass. . . well, you get the idea. Twitter is about to become a much more useful advertising medium.
Jul082009 | Steve O'Donnell
Metro Bank sued after failing to clear a mark
My thanks to Metro Bank for making my last post on the importance of researching a brand before investing in it seem especially relevant.
As reported in the Central Penn Business Journal, Metro Bank has found itself on the receiving end of a trademark infringement lawsuit that could have easily been avoided.
Recently, Commerce Bank in central Pennsylvania changed its name to Metro Bank because their rights to use "Commerce" were expiring. During their time as Commerce Bank they used a bright red “C” as their logo. When the name changed to Metro, the bank decided to use a bright red “M” as their logo. At first blush, that sounds like a great idea because not only does the similarity ease consumers into the new brand, it is also different enough to distinguish the new Metro Bank from the old Commerce Bank. Unfortunately for Metro, Members First Federal Credit Union uses a very similar bright red “M” as their mark, and Members First had the foresight to trademark it.
Rebranding is never easy or cheap. I'm not sure how much Metro Bank spent to change their logo from the “C” to their “M,” but between all of the signs on their branches, their ATMs, their online presence, their stationary and business cards, as well as whatever they spent a designer to create the logo, they are probably out a substantial amount if they now have to redo all of it.
If they had simply called a trademark attorney first they would have discovered that Members First filed their application in 2006 and would have been struck by the similarity between what Members First was using and what Metro wanted to use. This is not a situation where reasonable minds could disagree on whether the mark was confusingly similar or not: both marks are bright red “M”s with similar breaks in the legs and both businesses are banks that serve the same areas. The article I linked to above additionally notes that the banks' advertising overlaps and, most damning, that customers have actually walked into the wrong bank.
Metro could have hired a trademark attorney to research the mark and apply for their own trademark for a fraction of what it is going to cost them to put this infringement lawsuit to rest and redo their logo. I would bet that they'll look a little more into clearing the next mark they decide to use.
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