How One Patent Could Take Down One Comedian
The comedian in question is Marc Maron. He does a popular podcast, called WTF, out of his garage in California. It's an interview show, with other comedians and artists. Maron recently found an extraordinary letter in his mailbox. This letter said, basically, that by doing his podcast, out of his garage, he was violating a technology patent. His podcast was, according to the letter, illegal.
"They sent a copy of the patent with this letter," Maron says, "which looks like a large bunch of legal gibberish."
When Maron started up his podcast, he didn't think he was stealing anyone's invention. He's a comedian. He'd never seen a patent before.
A couple of other podcasters have received similar letters like this — Jesse Thorn, host of the public radio show Bullseye, for one. NBC, CBS and The Adam Carolla Show have all been sued.
The person behind these letters and lawsuits is Jim Logan, who claims to have invented podcasting, with a company called Personal Audio. Logan has a patent that he claims covers podcasting, part of a family of patents that dates back to October 2nd, 1996. That means, according to the letter his company sent out, every time someone creates a podcast — and distributes it — that person owes his company money.
Logan says back in the mid-'90s, he imagined a personal audio device that could "interact with the internet and your preferences to pull down, to your personal player, all the personal stuff you wanted to listen to."
"The idea of downloading playlists to your audio player, and podcasts, are how the world has gotten around to implementing those ideas," says Logan.
He tried to build an MP3 player and bring it to market. It didn't work out, but he did manage to put out a much lower-tech version of what he feels is the same idea. He brought the manifestation of this idea to our interview. It was a stack of cassette tapes. The idea was, you'd be able to pick from a selection of newspaper and magazine articles, and his company would send you a tape of those articles being read out loud.
The tapes didn't get much traction. And over the next 10 years, Logan says, he kind of forgot about these old audio patents — until 2007. That's when, as he tells it, his patent attorney, Charlie Call, was working on a project that involved iTunes. "I wasn't a big music listener, and Charlie Call wasn't, either," Logan says. "We didn't own iPods. We didn't use iTunes, so it was all kind of foreign to us."
When Call did discover iTunes, Logan says, he realized that our patent "was being infringed by iTunes."
Logan's company, Personal Audio, sued Apple over the ability to create a playlist. The jury sided with Personal Audio and awarded it an $8.5 million payout. Apple appealed, Personal Audio appealed back, and there was a settlement of some kind. The results are not public.
In the eyes of the law, Logan says, it doesn't matter that his company did not create iTunes or the iPod. "This is the road map," his licensing guy, Richard Baker, says, "that would tell someone how to do podcasting, how to do MP3 players." Even if the guy who had invented iTunes never read Logan's patent, publicly available on the U.S. Patent website, "that does not matter."
Right now that's how the system works, and a lot of people think this is a big problem. The fact that someone could even get a patent this broad, some say, means the patent system is not working like it's supposed to. Rather than encouraging more innovation, it's hurting it. Fear of being smacked down by an old patent could keep someone from trying something new. The Electronic Frontier Foundation, an advocacy group, is planning to challenge the patent at the patent office. It claims the patent is too broad, and too obvious.
To Logan, when he uses patents to make back money he lost on his failed business, that's the system working well. He says, having a patent makes it safer for people like him to try to build their next new idea, because of the possibility that they can make their money back later, through licensing fees.
The people he's threatening to sue, of course, don't see it that way.
"I'm not a tech company," comedian Maron says. "I'm a guy who turns on his computer and does his thing!"
Yesterday, in President Obama's call for reform of the patent system, he may have allied himself with Maron's side. He specifically called for more protection for what he calls "end-users of products containing patented technology." People who aren't even trying to make a new product — just turning on their computers, for example, and doing their thing.
LINDA WERTHEIMER, HOST:
This is MORNING EDITION from NPR News. I'm Linda Wertheimer.
RENEE MONTAGNE, HOST:
And I'm Renee Montagne. President Obama yesterday called for reigning in patent lawsuits, saying they've become a huge problem in the tech industry. And he announced several executive orders aimed at protecting innovators. It's not just big firms like Apple and Samsung suing each other.
Some companies have begun to use patents to sue small businesses and individuals, arguing that simply by using a technology or a piece of software they are infringing on a patent. NPR's Zoe Chace has the story of how one patent owner is going after a comedian.
ZOE CHACE, BYLINE: The comedian is Marc Maron. He has this very popular podcast - in fact, one of the most popular podcasts out there, called WTF. Can't tell you what it stands for here on the radio. The first two letters are What The. He interviews other comedians and artists out of his garage in California. He went to check the mail recently, a P.O. box, and inside, he found an extraordinary letter, saying, basically, by doing his podcast out of his garage He was violating a technology patent.
MARC MARON: The 504 patent covers important technology related to automatically identifying and retrieving media files representing episodes in a series of those episodes becoming available. These patented techniques are commonly used in podcasting.
CHACE: Turns out, there's this guy across the country in New Hampshire who says he invented podcasting. He says every time someone creates a podcast and distributes it, that person owes his company money. When Marc Maron started up his podcast he didn't think he was stealing anyone's invention. He's a comedian. He'd never seen a patent before.
MARON: And they sent a copy of the patent with this letter. Which is very helpful to a layman. A patent. Which looks like a large bunch of legal gibberish that he is now retrofitting into an extortion racket.
CHACE: A couple other podcasters have received similar letters - Jesse Thorn, host of the public radio show "Bullseye"; NBC; CBS; "The Adam Corrolla Show". They have all been sued. One major irony here - the patent holder doing the suing, he does not have a podcast himself. He doesn't really listen to them or know how they're put together. And yet...
JIM LOGAN: I am the co-inventor of podcasting, yes.
CHACE: This is Jim Logan, the man behind the letters. He fashions himself as a classic scrappy American inventor. In 1996, he had this idea. A device that could download audio from the Internet and play it.
LOGAN: All the personal stuff that you wanted to listen to. It has come to pass that, you know, we didn't use these words back then, but the idea of, you know, downloading playlists to your audio player and podcast are how the world has gotten around to actually implementing those ideas.
CHACE: Back in the mid-'90s, Jim Logan himself started a company called Personal Audio to try to build such a device. He wasn't able to and he went with a much lower tech version of what he feels is the same idea.
(SOUNDBITE OF TAPE PLAYER OPENING)
CHACE: This is the first podcast, says Jim Logan. It's a cassette tape.
(SOUNDBITE OF MUSIC)
UNIDENTIFIED MAN, HOST:
Welcome to Amazing, the best of popular science. Brought to you by Magazines on Tape.
CHACE: The idea was, that you, the listening public, would pick from a selection of articles, and his company would send you a tape of those articles being read out loud.
(SOUNDBITE OF PODCAST)
UNIDENTIFIED MAN: Coming up, answers to questions you have probably wondered about. What happens in your head when you have a headache? How does quicksand work?
CHACE: The tapes didn't work out. But he still had the patent on the idea. Over the next 10 years, Logan says he kind of forgot about these audio patents. Until, he remembers the year, 2007, when he and his patent attorney, Charlie Caul, realized that moment had come for the old audio patents.
LOGAN: I wasn't a big music listener, and Charlie Caul wasn't either. We didn't own iPods. We didn't even use iTunes. So it was all kind of foreign to us. So he went off on another project, explored iTunes and then he realized that the personal audio patents that we had filed years before were actually being infringed by iTunes.
CHACE: Jim Logan's company, Personal Audio, didn't create iIunes. Or the Zune. Or the iPod. And his patents wouldn't have told you how to build them, like what lines of code to put in the software, where exactly you'd put the microprocessor. But once the engineers at Apple do figure that out, he comes along and says, hey, this was all my idea. I asked his licensing guy, Richard Baker, you can really do that? If you have the idea of the thing, don't you have to invent the way to get it?
RICHARD BAKER: This is the road map that would tell someone how to do podcasting, how to do mp3 players. A lot of the roadmap is right here in the columns of this patent.
CHACE: Do you think the guy who invented iTunes read your roadmap? What if they just came up with it on their own but they actually had the capacity to build the thing?
LOGAN: That does not make a difference in the world of patents.
CHACE: That's how it works and a lot of people think this is a big problem. The fact that somebody like Jim Logan could even get a patent this broad means that the patent system is not working like it's supposed to. Rather than encouraging more innovation, it hurts it.
In Jim Logan's case, his company sued Apple saying the ability to make a playlist in iTunes, that infringed his patent, and he won. The jury awarded Logan's company $8.5 million. There have been appeals, a settlement - none of its public. To Jim Logan, this is the system working as it should. When he uses patents to make back money he lost on a failed business, that makes it safer for people like him to try to start the next one.
The people he's threatening to sue, of course, don't see it like that.
LOGAN: I'm not a rich guy. I don't run a tech company. I'm a guy who turns on his computer and does his thing.
CHACE: Marc Maron, scared podcaster, could find reason for hope that the president is on his side of this battle. Yesterday, in his call for reform, Obama specifically called for more protection for what he calls end users, people who aren't making a tech product - just turning on their computers and doing their thing.
Zoe Chace, NPR News. Transcript provided by NPR, Copyright NPR.