A brewing legal fight initiated by Personal Audio, a Texas-based company that claims to have invented podcasting technology, has entered a new policy arena.
The company has five lawsuits pending against producers of popular podcasts, and independents who contribute to public media claim they’re being harangued by the company to negotiate licensing agreements. Policy makers and digital advocates in Washington, D.C., recently began to weigh in on the dispute.
In a June 4 announcement of legislative recommendations and policy initiatives to be taken up by his administration, President Obama issued executive actions to curtail patent lawsuits in the technology industry. Depending on how federal agencies such as the U.S. Patent and Trademark Office (USPTO) interpret the President’s order to protect "end-users" of technology, the move could prevent Personal Audio from pursuing its claims against media companies that produce podcasts.
In his announcement, Obama used the pejorative term “patent trolls” to describe organizations that file vaguely worded patent claims with the intention of ensnaring large swaths of people in litigation if their claim is awarded.
The term has been leveled at Personal Audio, which has filed lawsuits against companies that produce some of the most popular podcasts on iTunes. The Electronic Frontier Foundation, a digital-rights advocacy group, recently established a legal fund to challenge Personal Audio’s claim with the Patent Office and asked its supporters to submit evidence that could help disprove the patent.
The foundation’s fundraising campaign reached its stated goal of $30,000 within 10 hours of its May 30 launch. As of June 6, contributors had donated more than $68,000.
‘No interest’ in public media?
Personal Audio, which filed for a patent in October 1996 on a “system for disseminating media content representing episodes in a serialized sequence,” has targeted Jesse Thorn, host of the NPR-distributed Bullseye, and comedian Marc Maron, whose popular WTF podcast is edited to broadcast standards and distributed to stations by Public Radio Exchange.
Personal Audio’s v.p. of licensing, Richard Baker, Jr., said in February that the company “is not interested in public media at this point in time.” Yet Thorn and Maron say they have continued to receive licensing requests from Personal Audio over the past several months. As recently as late May, Maron received an invitation to join a “conference call” to reach “a business solution” regarding the licensing of podcasting technology, he said in an interview.
Personal Audio also initiated contact with Steven Levitt, an occasional guest of the Freakonomics Radio podcast based on his book, according to Jennifer Roussel, spokesperson for New York’s WNYC. The letter “seems to have been misaddressed,” Roussel said, because Levitt is not directly involved in production work related to the podcast, which is co-produced by WNYC and American Public Media. Freakonomics Radio also airs as a stand-alone public radio program and as a recurring segment on American Public Media’s Marketplace. Roussel said WNYC is “looking into the matter.”
Personal Audio has recently expanded its litigation against major podcast producers. Two lawsuits filed April 12 against NBC and CBS claim that the networks are “unauthorized users of Personal Audio’s podcasting technology.”
Meanwhile, three lawsuits filed in January are gradually working their way through the court system. HowStuffWorks, a subsidiary of Discovery Communications, and Togi Entertainment, which runs a network of special-interest talk shows, have responded to the suits by denying Personal Audio’s allegations of patent infringement.
Another suit, which had been incorrectly addressed to ACE Entertainment, has been amended to identify ACE Broadcasting, which produces a popular podcast hosted by Adam Carolla, as the defendant.
With Obama’s actions and recent mainstream media coverage, a once-niche legal story has taken on broader national significance. Four days before the executive order was announced, NPR’s Planet Money economics unit and Public Radio International’s This American Life reported on Personal Audio’s litigation. Both Planet Money and TAL also offer popular podcasts that could be affected should Personal Audio’s suits go forward.
The targets and the response
Thorn and Maron produce their podcasts out of for-profit corporations, which is the criterion Personal Audio uses to determine whom to contact as it seeks licensing agreements, according to Baker. The company consulted the top-ranked podcasts in iTunes and other markets, disregarding any that Baker could discern were obviously connected to NPR, he explained.
None of the podcasters that Personal Audio contacted have acknowledged the company’s requests, let alone informed Baker of their involvement with public broadcasting, Baker said. “I would assume that they would call me up and talk to me,” he said. For legal reasons, he said, he deals with each podcaster on a case-by-case basis and could not guarantee Personal Audio would stop contacting any individual.
“I don’t bite,” he said. “I’m not going to say, ‘You don’t have to pay.’ But [public media] should be part of the discussion.”
Thorn and Maron acknowledged that they have no plans to contact Personal Audio.
According to Jorge Contreras, a patent-law professor at American University’s Washington College of Law, they have little incentive to do so.
Baker’s assurance that Personal Audio is “uninterested” in public media “has no real binding effect,” Contreras told Current. “You’re really at the mercy of this patent holder, so I wouldn’t take a heck of a lot of comfort from that. And why would you? This is a money-making entity. Once they’re successful with some suits, they could do anything.”
Since its initial round of letters soliciting licensing deals, Personal Audio hasn’t undertaken additional research to determine which podcasters fall within the category of public media, Baker said. “We’re a very small organization that’s incredibly busy, and we don’t have any spare time,” he said. “Honestly, it is not a high concern.”
“You can spend weeks doing Google searches,” Baker added. “It probably would be a couple hours’ worth of work.”
But the Electronic Frontier Foundation has begun research as it prepares to challenge Personal Audio’s patent claim. The foundation is soliciting examples of “prior art” – proven uses of technology that allowed serial distribution of media content over the Internet prior to Personal Audio’s patent filing date of Oct. 2, 1996.
Though podcasters and the EFF expressed confidence that President Obama’s executive action would provide relief, Contreras warned that the fight isn’t likely to end so easily.
“I think nothing is going to happen this term,” he said, referring to President Obama’s remaining years in the White House. “There’s a pretty significant lobby that is behind patent holders. . . . They make billions of dollars off of these suits, and so it’s going to be a fight.”