Gettin' Sued (Part 1)
Read to the end for an hour long video of fake Nightmare on Elm Streets
Very quickly before the article — I am never going to charge for my Substack. I don’t write enough to justify that, and a lot of the writing I do in here is just selfish navel gazing anyway. But I am really enjoying writing on here, and I feel like if I can get a couple hundred subscribers, I might be able to start doing it more regularly (also I am not employed full-time at the moment.) So if you like these occasional missives and feel like contributing, I would really appreciate it. If not, I still appreciate you reading. Thanks.
It was my wife, Sarah, that came up with the name for our podcast, “Reply All.” She spent an evening saying a bunch of vaguely tech-ish phrases at me and writing them down in a little nautical themed notebook she had, and Reply All was among them.
Reply All was produced by a fledgling podcast company called Gimlet, and in our first office, a crumbling bizarre relic in downtown Brooklyn, we spent an afternoon brainstorming names for the show. Some of the competitors were “Never Better” (because the internet always gets worse, never better), “Alltogether Now” (because we’re all together now. on the internet), “Fake World,” “Invite Them In,” and, for some reason, “Acme Fireworks.” And at the end of the meeting, I said “what about Reply All,” and everyone was like “oh yeah, of course, Reply All.”
In the end, it’s kind of meaningless as a title. It says nothing about the content of the show, we don’t really reply to anyone on the show. It felt good as a recognizably internetty phrase but considering how much everyone actually hates the accidental overuse of the reply all function specifically and email in general, it’s a wonder it didn’t cause some kind of bilious backlash. Still, it stuck, and it made sense.
I suppose the problem began, as it usually does, with Twitter. Matt Lieber, our boss and co-founder of Gimlet, had some connection at Twitter, who was able to procure the @replyall twitter handle for us. At the time, it was in a state of inaccessability where the previous owner had been suspended, but the company had opted not to release it back into the pool of available screennames. It was a cool trick to have gotten it though, it gave us the immediate legitimacy. We weren’t the only ones who wanted it, apparently.
The first episode of Reply All aired on November 24, 2014. On November 25, 2015 we received this tweet:
I suppose now is the time to talk about Reply All Dot Me.
I want to be careful, because the owner (who I am not going to name because I want nothing to do with the guy) is, as you’ll find out, pretty litigious. But the way I understood Reply All Dot Me was that was a web app that would allow people to have text conversations on a website in real time and give others the ability to ask questions based on that conversation. Sort of like attending a moderated panel discussion, except in text form, and on a website. I say that it’s my understanding because the website is no longer up, and the app itself seems to have disappeared from any place it was once embedded.
Now it was my bosses that handled the bulk of this legal dispute, so I’m operating on second hand info for a lot of the facts here. But what is not in dispute is that Reply All Dot Me had a trademark for the phrase ‘Reply All.’ when it came to “Computer services, namely, creating an on-line community for registered users to form groups and create publicly viewable conversations where group members are the only individuals who can contribute to the conversation.” I suppose, if you squint really hard, that could sound something like a podcast, but it’s a reach. However, the people at Reply All Dot Me seemed very concerned about people confusing Reply All the podcast for Reply All the web app, and wanted to know what we were going to do about it.
Again, I had nothing to do with the legal side of our young company, so again, so I wasn’t in the conversations about this. I have only second hand conversations to go on, and I’ve long since lost access to my Gimlet/Spotify email account, so I can’t check to see if there’s a paper trail. But the way I remember it is that Gimlet and Reply All Dot Me came up with an agreement where Reply All the podcast would license the “Reply All” trademark, and the trademark situation would be the subject of an episode of the StartUp podcast (which was a podcast my boss made about starting his own podcast company. It was, all at once, a weird solipsistic exercise and a hauntingly accurate portrait of that period of my life). It seemed like a win-win; Reply All the podcast keeps its name, Reply All Dot Me gets some publicity, Gimlet gets to avoid a legal morass, and StartUp gets to do an illuminating story about the vagaries of trademark law.
But nestled in the proposed agreement (and again, I hasten to add for anyone who might read this with an eye toward litigation, this is from memory and I might be wrong but I believe this was the deal breaker), was a clause that said something about Reply All Dot Me, the trademark holder, having some kind of editorial say on our podcasts. Obviously, that wasn’t going to fly, so we had to refuse. And then it got ugly pretty quickly.
So I apologize if you already know this, but the basic function of a trademark is to make sure people aren’t trying to sell things under the name of your product. My son is always asking me if he got his own printing press and started making his own Pokémon cards and selling them at the store if he would run afoul of any laws, because he really wants to do this. And the answer is yes, the Pokémon company has a right to go after anything that would cause a “reasonable likelihood” of confusion with actual Pokémon cards.
It is not only reasonable to go after people infringing on your trademark, it is a requirement in order to keep it. There’s a legal precedent that failure to “vigorously enforce” a trademark can cause you to lose it entirely. This can force uncomfortable public confrontations like the time This American Life sent a cease and desist to a podcast called This American Whore. At the time, Ira Glass responded to public outcry by saying:
the way trademark law works is that we or any business with a trademarked name has to protect that name. If you don’t take action when you hear about people knocking off your name, and get them to stop, you can lose your trademark rights.
Whenever we find out about any podcasts with names similar to ours, our lawyers review what action would be appropriate. Some names and shows are parodies, which are a protected class under the law. Some have audiences that are so negligible that they pose no trademark threat.
Last year, we had an issue with a podcast called This American Startup, and they eventually agreed to modify their name. In the past we’ve taken similar actions which didn’t get press attention. There are some other shows and podcasts out there still with names similar to ours that our lawyers are planning to approach. This American Whore is not being singled out.
The flipside of this is that there are legal standards for what constitutes infringement. In order for there to be actual trademark infringement, there needs to be a real chance that two products could be mistaken for one another. If I made a movie called The Thing, and oh god how I wish I had, and then someone makes a candy bar called “The Thing,” they may have the same name, and they may both be trademarked, but there is no chance that a person will accidentally eat a The Thing candy bar thinking that they are watching the The Thing movie. Make sense?
On top of that, generic phrases or words can’t be trademarked. I can trademark “foursquare” or “flickr” or “Def Jam” or “Tony Romo’s,” but I can’t trademark “beer.” Well I mean I probably can’t. The law is a matter of interpretation, so “Apple” is trademarked by Apple, inc., but that’s only because it is only protecting a trademark for electronics and software. If they tried to expand into the fruit business they would have significantly more trouble (and they’ve already run into some legal issues with The Beatles’ Apple Corporation)
In our case, the product we were making (a podcast about the internet), was already significantly distinct from an app for people to have a text conversation one a website. On top of that, as a phrase “reply all” is pretty generic. But that didn’t stop Reply All Dot Me. And in (I believe) late summer/early fall 2015 they filed suit. And to strengthen their case, IN MY OPINION (don’t sue me, I don’t have a full time job), they tried muddying the waters a bit. The first thing they did was host a Reply All Dot Me text conversation about podcasts, which prompted this exchange:
After that, they began collecting every example they could find of people tweeting at @replyall when they meant to tweet at @replyalldotme as evidence of brand confusion. But that’s not evidence of brand confusion, it’s evidence of people not really knowing how to use twitter.
While my bosses seemed annoyed at the extra work and the cost of defending the suit, if it got to them, they didn’t let on. It got to me, though. Some guy I had never heard of with what felt like a meritless case to me seemed not just to be personally pissed at me, it felt like he was targeting this thing that was the culmination of my entire career at the time. I mean he didn’t just sue Gimlet, or the CEOs, he sued me and PJ (my co-host). It’s an uncanny feeling to be named in a lawsuit. You feel implicated in something icky, even if it was just innocently naming a podcast after a generic function of email. By getting the @replyall twitter account, we tripped some kind of alarm for him and it felt like he was going to pursue us to the ends of the earth. And he wanted us to know that.
This lawsuit dragged on and on and on for years. According to my bosses there were a number of attempts at a settlement, but the Reply All Dot Me folks always wanted several times the amount Gimlet were willing to settle at. To the great credit of Gimlet, they generally kept the Reply All team far away from the legal proceedings. I never had a deposition, I never had to testify, but every time I was reminded of it — every time there was a new filing or court date and I had to be notified — it would trigger a cycle of anger and fear. Again, I don’t know this to be true, but I was told by my bosses that after losing in one jurisdiction Reply All Dot Me either threatened or made good on a threat to file again. Also, when Gimlet was bought by Spotify, the lawsuit was amended to demand many more millions of dollars. At some point post-acquisition, Reply All Dot Me actually started its own Reply All podcast (which I no longer see on line) again, IN MY OPINION, to bolster the claims that we were infringing on a space that they had rightful ownership to.
It wasn’t until February of 2021, six years after the original lawsuit was filed, that the case was decided in our favor. From an article on Bloomberg Law
“The vast majority of Gimlet’s consumers listen to their podcasts, including Reply All, and those consumers encounter the Reply All show wherever they get their podcasts,” the court said. “By contrast, RAC’s services are embedded within webpages—primarily third-party websites. An end consumer would therefore rarely, if ever, view the parties’ respective marks in the same trade channels.”
RAC’s isolated examples of actual confusion—such as accidental tags on social media and “Reply All” listeners mistakenly contacting the company—also didn’t convince the court that confusion was likely. The Second Circuit also said that advertisers were “reasonably sophisticated” and unlikely to be confused and that RAC didn’t provide any evidence that the average internet user would be confused.
I don’t know hard numbers, but I was told more than $1million was spent defending the show from this trademark dispute. And the irony is that by the time the case was settled, it’s not clear that Reply All Dot Me even existed anymore. Reply All Dot Me’s last tweet was in November of 2019, a full year and a half before the lawsuit was settled. By the end, the lawsuit seemed to be the only force animating the company at all, and once that didn’t materialize, the company dematerialized as well.
A few months after the pandemic began, my co-host and I started a podcast called Scaredy Cats, a limited series where I (a horror movie lover) tried to get PJ (a horror movie hater) to enjoy horror movies in the way that I enjoyed them. We were both huge fans of a podcast called Analyze Phish where the late Harris Wittels tried to get Comedy Bang Bang’s Scott Aukerman to enjoy the band Phish, and essentially used that as a template for our show.
Almost as soon as Scaredy Cats launched, the host of a YouTube channel called Scaredy Cats that does horror movie analysis said that we were stealing the name of his show, in spite of several other pre-existing podcasts with that name (and one that launched on the same day as ours! At the same time, a podcast we had never heard of but shared the same premise called Horror Virgin began sounding off too, accusing us of stealing their premise, when we were in fact stealing Analyze Phish’s. Our show was always meant to be a limited run, but after seeing how hard it was to produce two shows simultaneously and having this small but vocal group of people calling us thieves, we decided to cap Scaredy Cats at 5 episodes. That was a big personal disappointment for me, because, honestly, I had such sights to show him.
There were no legal interventions in that particular dust up, and it mostly went away after the series ended. I think the host of the Scaredy Cats Youtube channel would hate to hear me say it, but I became a huge fan and a subscriber, and I never miss an episode of their show. But it got me thinking about how tech companies name their products almost complete gibberish and we have come to accept it as normal. What does the prefix Uber have to do with ride sharing? What the hell is a Depop? Why is Amazon called Amazon? Why was our podcast company named after a cocktail? I can’t say it’s the only reason, but coming up with names completely disconnected from the service they provide does limit exposure when it comes to trademark infringement. I suppose I learned that lesson the hard way. To avoid ever dealing with a dispute like this again, I am excited to announce my new podcast, with the wholly original title The Joe Rogan Experience.
An hour long video of fake nightmare on elm streets
On the subject of infringement, I have been really into this YouTube channel that does massive roundups of popular movie knock-offs, for movies like Star Wars, A Nightmare on Elm Street, Die Hard, and more. It could be mean-spirited, but it’s clear how much they love all these movie, regardless of their relative qualities.
It's nice to finally know why the Scaredy Cats podcast ended so abruptly, but I'm still sad. It got me to watch all the movies ya'll featured, and I enjoyed them all.
Can't wait to listen to The Joe Rogan Experience!