Filed under: Macworld, Analysis / Opinion, Apple Corporate, Apple, iPhone
Cisco's General Counsel blogs about the iPhone suit
Mark Chandler, Cisco's SVP and General Counsel, has some things to say about Cisco's suit involving Apple's infringement of Cisco's iPhone trademark. Chandler says that this suit isn't about money, nor is it about derailing Apple's cool new phone. Rather, it is all about protecting Cisco's intellectual property, something that Steve said Apple would do aggressively with the iPhone (remember when Steve said that Apple has over 200 patents on the iPhone and they plan to enforce them? Kettle? Meet pot.).Chandler's post also gives us some details about how long Apple and Cisco have been engaged in talks about the iPhone. Cisco has owned the iPhone trademark since 2000 and they have had several conversations with Apple since 2001. The last several months have brought more intense discussions which were active even after Steve had unveiled the iPhone.
What was the stumbling block? Cisco hoped that Apple's iPhone and their iPhone could, at some point, be interoperable (how, we don't know) and Apple didn't seem so keen on that. It'll be interesting to see how this all turns out given the transparency Cisco is approaching this situation with, and Apple's notorious secretive nature. Either way, Chandler's post is well worth a read.
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Reader Comments (Page 1 of 2)
Jason said 12:19AM on 1-11-2007
Considering Apple's device does wi-fi, it seems apparent to me that there was some hope there of having it do VOIP.
In my opinion, Apple needs to lose this case. If one company owns a trademark, another one in a related industry can't just take it by fiat, no matter what public perception is. Beyond that, there already is no excuse for not doing due diligence over product names, but Apple went so far as to enter into long negotiations.
What went through Steve's mind, that made him think he could just take the name like this?
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Victor Agreda Jr said 10:19PM on 1-10-2007
Everybody wants a piece of the action, huh? Apple could call it a Sgt. McFuddlebottom's Ragtime Communication Doowhackey if they wanted to. I predict we won't be hearing about Cisco's little iFonie in a few years, whereas Apple's offering, despite this nonsense, will still be pretty popular.
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Caitlin said 10:41PM on 1-10-2007
Seems straightforward enough. I wonder what on earth Apple was thinking?
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Alex P. said 10:42PM on 1-10-2007
I wonder how Apple kept Cisco's mouth shut about the iPhone? Just courtesy to Apple and their under the wraps approach?
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wahoo scott said 11:07PM on 1-10-2007
to (3):
i'm sure that both parties were under an nda to not discuss any hint of negotiations regarding the project. it's just like when companies get in preliminary talks about joint ventures, mergers and acquisitions, etc. - the parties have to agree to keep everything on the hush hush. without that trust, there's no way you can expect a deal to go through.
businessman are only as courteous as they have to be in order to avoid getting screwed over. what does cisco get out of leaking info?
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Pilotzen said 11:16PM on 1-10-2007
hmmm... me thinks cisco has well and truly lost any chance of using any of apples 200 patents in any new update of their "iphone"..
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Allen Stern said 11:20PM on 1-10-2007
BTW if you want the full complaint - check it out - I spent some time highlighting the areas in blue that are most important - also made a pdf:
http://www.centernetworks.com/ciscos-full-filed-complaint-claim-v-apple
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Gandhi said 2:59AM on 1-11-2007
You know, I would not be surprised if Apple did to the iPhone what it did to the iTV - just call it the Apple (symbol) Phone and be done with it.
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fuzzybassoon said 11:45PM on 1-10-2007
Being pedantic here, but the pot/kettle phrase doesn't apply here, as neither party is being hypocritical, that is, accusing the other of being something that they are too.
Both are admitting to being protective with their IP.
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Carroll Wills said 1:08AM on 1-11-2007
The blog post is very informative, and I totally agree with the notion that a company should protect its intellectual property. They have the right to call Jobs out on his power play.
However, the guy lost me when he started chumming out all of that "we're all about openness" BS, in an attempt to cast their effort as some sort of crusade. Their "terms" for using the name betray their true intent -- to plug into Apple's innovation and "buzz" to elevate their own stagnant VOIP brand. And that court filing (thanks Allen Stern) is laughably self-serving.
Whatever they have or haven't done with the name, Cisco clearly owns it in the US, and Apple has no right to take it. But don't patronize us by wrapping yourself in a flag of self-righteousness.
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bud said 12:54AM on 1-11-2007
Similar conceits could be said of Cisco merely trademark squatting themselves, without a working product. At least one site reported that Cisco has been paid off already, but now it seems they are milking it for publicity at least (as if a router and switch company that owns their segment of the market needs such...)
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bud said 1:04AM on 1-11-2007
Several morons on TV have continually referred to it as the iPod Phone anyway... do you think they are seriously doing this because of CISCO, or merely because that is the way news monkeys fling it these days?
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NKHK said 1:06AM on 1-11-2007
I haven't read Cisco's tm registration (i.e. the specific goods and/or services that the tm is registered in respect of) in detail but Apple does seem to be on the worse end of the stick.
I don't know a great deal about the finer points of US trade mark law, but there aren't too many ways that this could work for Apple unless they purchase the tm or even Cisco itself.
Some jurisdictions have time period where is a tm is registered for a certain amount of time (often 7 years) then it cannot be adjudged invalid unless on ownership grounds. If US has such a provision then no doubt this time period has passed.
Some jurisdictions also have an "it's gone generic" argument where you can argue that the tm is no longer recognised as a badge or origin, and is a commonly used description (Rollerblade and Velcro are two trade marks that have been attacked for genericism in some countries I believe). Arguing that iPhone is already generic would be pretty difficult, as a) it's not, and b) if successful, basically anyone could use it.
Apple should either purchase Cisco, purchase the tm, form an alliance with a long-term license or co-ownership, or change their trade mark. Given that the earliest release date is not for another 5 months, it's not such a huge ask to change it (assuming that they aren't manufacturing on a large scale until FCC approval comes through).
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NKHK said 1:11AM on 1-11-2007
I should add that much as I love Apple and its products, Cisco is not the bad guy here, and they certainly aren't "squatting" on the tm - in the trade mark world a true squatter has obtained the trade mark in bad faith. Apple knew about the trade mark and went ahead anyway. The company building the multi-lane highway rolls over the little guy's house without permission, if you will.
Another way in for Apple is to have the tm removed from the USPTO register for non-use, but they would need to show that there was absolutely no commercial use of the iPhone trade mark by Cisco or its subsidiaries for continuous period of time (I can't recall exactly what it is, it might be 3 or 5 years).
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Ciprol said 2:02AM on 1-11-2007
Get real Mark Chandler, it is all about MONEY!
What a joke of a blog.
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gr33n said 3:47AM on 1-11-2007
"it is all about protecting Cisco's intellectual property"
and not about trademark?
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Andrew Eller said 2:24AM on 1-11-2007
Hey....I'm partial to the iPhone name, but if Apple does have to change the name, they should just follow the name that the web gave it after Cisco came out with their iPhone...call it the ApplePhone. I know it's not as pretty, but they are already naming devices that way....
itv ---> tv
iPhone ---> phone
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mike said 2:28AM on 1-11-2007
Seems straightforward enough. I wonder what on earth Apple was thinking?
--
Um. Pay Cisco 20 mil to fuck off, and then go on to revolutionize the Phone?
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niclet said 2:57AM on 1-11-2007
Mmm, I don't understand. For the majority of consumers, a product called iSomething is related to be from Apple and that since the first iMac. Cisco knew this from the start. Also, if they didn't want to share this trademark, they had just to say NO from the very start and don't let the hope persist until after the keynote, it's unfair (or it's just busyness). Ho! one more thing(!), I think that if Apple wasn't totally sure about the agreement with Cisco they wouldn't kept iPhone.
Cisco looks like jealous. Waiting to see if you friend toy is better than yours. This is not about intellectual property. As n°14 said, it is absolutely about money. Boooo! Cisco.
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Mandla said 5:36AM on 1-11-2007
I agree with Carroll. A trademark is not a crowbar for opening up someone else's intellectual property. It's there to avoid confusion in the marketplace and to protect property. Cisco's argument runs completely counter to the basic premise of trademark law. They wanted to use their trademark to sow confusion in the marketplace in the hopes that they could piggy-back on the iPhones success.
Apple probably wanted this to be about money and nothing else. And by turning it into a legal case, that's what it has now become. Cisco has no further hope of getting access to Apple's technology so they now need to decide whether to licence the name to Apple, sell the name to Apple or prevent Apple from using the name. Which is probably wanted Apple wanted the issue to be about from the start. Apple no doubt strung Cisco along because they didn't want word to get out.
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