Apple's Claim to 'Pod' Rights Questionable

As it waits for a ruling, Apple has been peppering the corporate landscape in both the United States and United Kingdom with cease-and-desist letters directed toward companies it believes to be unfairly using the word.

Now, Apple is taking aim at those adopting the term "podcast," having reportedly sent a cease-and-desist letter to Podcast Ready, a company that offers podcasts for download along with a software application that supports many portable devices, including the iPod.

Apple appears to be treading carefully in this case, noting in the published letter to the company that it does not object to the descriptive term "podcast" in a trademark -- if it does not infringe on Apple's rights to "Pod" and "iPod."

Did Apple Invent the Podcast?

It is unclear whether Apple does indeed have exclusive rights to what is arguably now a generic word, said patent and trademark attorneys contacted for this report.

"Apple may be able to prove it was the first to use this term," Ernest W. Grumbles III, a partner in Merchant & Gould's litigation practice in Minneapolis, told MacNewsWorld. "But it will run up against a very voluminous use of the word."

Last year, the New Oxford Dictionary declared "podcasting" the word of the year, he pointed out, defining it as "a digital recording of a radio broadcast or similar program made available on the Internet for download to a personal device."

Given how common the word has become, Grumbles said, "it strikes me that a court would think it is unfair to create a new generic term and then try to establish rights to it."

This particular use of the word "pod" is not a slam-dunk case for Apple, agreed Gregory Rutchik, senior counsel at Liner Yankelevitz Sunshine & Regenstreif in San Francisco. "Podcast Ready is a service, and 'podcasting' describes a behavior," he told MacNewsWorld. That said, it can also be argued that Podcast Ready is an assault on iTunes, he added.

TightPod et Al

Indeed, Apple's claim to "pod" in connection with more relevant uses -- such as by a company marketing a computer product -- is not always straightforward either.

"It strikes me that some companies have gone too close to the line," Grumbles said. "There are third parties using 'pod' that are selling iPod accessories -- and 'iPod' is definitely a protectable trademark."

The fact that "pod" is part of "iPod" doesn't automatically give Apple rights to the name, Marc Levy, a partner in Preston Gates & Ellis' Seattle office , told MacNewsWorld. "Unless Apple is out there marketing goods and services using 'pod' as opposed to 'iPod,' I have a hard time understanding that view."

Some of Apple's cease-and-desist targets are at least one degree removed from the world of music and portable players. One example is a start-up called "TightJacket," which markets a product called "TightPod" -- a custom-made fabric sheath for a laptop. According to the Web site, the name is derived from the fact that the product -- which comes in all kinds of designs and textures -- is tight and also because it suggests "tights," a spandex pantyhose-type garment. "The 'pod' part comes from 'peapod,' because the cover fits snugly and is form fitting," according to the company's Web site.

The case can be made that a reasonable person who hears the word "pod" connected to a computer or music player will associate it with Apple, Rutchik said. "The weakest marks are generic names, like 'cassette holder,'" he explained. "The strongest are arbitrary and fanciful like 'Google' or 'Xerox.'" "Pod," he said, falls in between, because it is an actual word.

More to Come

There may be another reason why Apple has become so protective over the word "pod," Levy speculated. Apple's application is an Intent to Use, or ITU, application as opposed to a use-based application. Basically, this means the company intends to use the word in the future. It's a standard operating procedure for companies that are planning a new product and want to develop a brand around it.

"I think it is fair to extrapolate (from Apple's cease-and-desist letters regarding pod) that the company might be planning to launch a product called 'Pod,'" said Levy.

Apple might want to reevaluate whether its right to the word is worth the damage being done to its brand by the legal missives, Rutchik said. "At one time, everyone was supportive of Apple because it was perceived to be the underdog," he observed. "Now, people are viewing the company as 'one of them,' not 'one of us.' I would say it is almost a cultural shift."