One of the most common defenses to patent infringement is that the asserted patent is invalid. The reasons for invalidity regularly range from lack of utility, to incorrect inventorship, and even to fraud (as I’ve recently written about). Often, the defendant asserts that the patent is invalid for lack of novelty or non-obviousness–pointing to some piece of evidence that the defendant says conclusively shows that the invention was already in the public domain before the plaintiff even applied for the patent. That evidence is called invalidating “prior art.”

Prior art can spell the unexpected demise of an otherwise valid patent, and it comes in many forms. For several decades, published prior art (not to be confused with prior art in the form of prior uses or sales) consisted of already-existing patents (and applications), trade journals, drawings, articles, websites, standards, whitepapers, etc. But Congress expanded the scope of published prior art dramatically in passing the America Invents Act in 2012. Whereas before prior art consisted merely of “printed publications,” post-AIA, prior art also encompasses things that are “otherwise available to the public.”

The larger–and more modern–universe of possible published prior art is easy to imagine. For example, prior art references are no longer limited to traditional publications and documentary evidence. Instead, additional forms of multimedia come into play–which is fitting in today’s multimedia-packed times. Videos, movies, broadcasts, and recordings all now qualify as prior art, so long as they are available to the public.

But despite this expansion, litigants have not yet fully taken advantage of the change. There have been a few recent uses of video as prior art, such as the iconic iPhone keynote speech made by the late Steve Jobs demonstrating a technology described in an Apple patent. Ironically, in commenting on the “bounce-back” effect that was the subject of the patent, Steve Jobs stated, “boy have we patented it.” But Apple failed to patent it fast enough after the speech.

Samsung used clips from Stanley Kubrick’s 2001: A Space Odyssey to argue that Apple’s design patent for the shape of a tablet was invalidating prior art.

Apple really seems to be taking the brunt of video prior art challenges.

Just one week ago, a Federal district judge in the Northern District of Florida addressed–apparently for the first time–whether a YouTube video could constitute prior art. The court, in HVLPO2, LLC v. Oxygen Frog, LLC, 4:16-CV-336 (MW/CAS) (Dkt. No. 133), held that a YouTube video can constitute prior art and that YouTube videos are “sufficiently accessible to the public interested in the art.” Not exactly a groundbreaking finding to someone of my generation, who grew up with YouTube and the internet. Indeed, the USPTO’s own training guides (slide 15) specifically state that YouTube videos are a perfectly acceptable form of prior art. The USPTO has stated that videos qualified prior to the AIA, but there is conflicting authority.

The plaintiff in HVLPO2 had argued that the particular YouTube video in question was uploaded on a random account, so no one interested in the art would have found it. The court pushed back in eccentric fashion, stating:

It appears that Plaintiff is unfamiliar with how YouTube works. A familiar user would know that you don’t need to search for a particular channel to watch the videos uploaded on it. For example, if you want to watch a video of a cat skateboarding, you can search “cat skateboarding”; you don’t need to know that it might have been “CatLady83” who uploaded the video you end up watching.

The court held that the YouTube video in question appeared within the first 20 videos when using appropriate search terms on the site. “Surely, the effort involved in composing a basic search query and scrolling down the page a few times does not exceed the ‘reasonable diligence’ that the law expects of a hypothetical prior art subject.” I couldn’t agree more, and I recommend this fun cat skateboarding video:

But even though most YouTube videos are generally accessible, not all are available to the public. For example, YouTube videos may be “private” or “unlisted,” potentially removing them from the “otherwise available to the public” category or at least undermining the argument for their accessibility. Thus, as even the court in HVLPO2 noted, the defendant still has to prove the existence of public access to the video prior to the applicable date. This can be accomplished by proffering screenshots of the video in the browser and evidence of that video’s publication date (which is disclosed on the YouTube website and many other video sharing platforms).

Besides the above, there are few other examples of videos (online or otherwise) being used as prior art. This is probably due in part to the current difficulty of searching the vast amount of video and audio–as opposed to text, for example–available on the internet. But as computer learning gets better and better, I expect audiovisual prior art will play a bigger role in both patent prosecution and litigation, so long as that prior art is “otherwise available to the public.”

Over Thanksgiving weekend, I had the pleasure of visiting my grandmother’s farmhouse in northwest Iowa. I don’t think I had been there in probably five years, as she had been living in California for most of that time.

Upon entering, I was immediately taken back to my childhood. Nearly everything was exactly the same. The only noticeable change was that the old 24 inch tube television in the corner of the living room had now been replaced with a 24 inch flatscreen television. I guess there was also a new VCR/DVD combo, but the sizable library of “time shifted” VHS tapes were still there (thanks Sony v. Universal!).

I have a lot of childhood memories from visiting that place, but one thing that has always stuck with me is watching the David Copperfield specials on that 24 inch television. My absolute favorite, both as a kid and an adult, was where he made an entire Orient Express train car elevate and then disappear.

After returning home from Thanksgiving, I had to watch it again. Thanks to YouTube, it was pretty easy to find. You can watch it here. I quickly was sucked into the internet wormhole looking for more information about David Copperfield. Turns out, David Copperfield recently filed an intent-to-use trademark for logo, a DC and Design mark, shown below:

The application sets forth a number of goods and services: various entertainment services in class 41, magic kits and other toys in class 28, clothing and shoes in class 25, and  a number of paper goods in class 16, including calendars, books, color pencils, school supplies, and comic books.

And poof goes the dynamite, er, chances of avoiding a likelihood of confusion refusal. Although the design elements are distinct, the literal element of David Copperfield’s logo is identical to a number of registered DC and Design marks owned by DC Comics (you might have heard of them), including Reg. No. 1,084,736, Reg. No. 3,336,223, and Reg. No. 4,415,431 for DC DC COMICS and Design. Oh, and don’t forget Reg. No. 1,003,409 for a standard character DC mark for comic books. It’s probably not helpful that the standard character mark has a first use date of 1940, 16 years before David Copperfield was born.

Unsurprisingly, an Office Action was issued on Dec. 1. Surprisingly, though,  the examiner “found no conflicting marks that would bar registration under Trademark Act Section 2(d).” The DC Comics registrations were not cited, nor were any of the DC / DC SHOES marks cited based on David Copperfield’s inclusion of shoes, athletic shoes, and “skateboarding boots.”

Apparently this is David Copperfield’s “make records of registrations disappear” illusion. Not quite as dramatic as a train car, but impressive nonetheless.

We’ll pay attention to see if the application is approved for publication. If it is, forget the summer blockbuster movies. Grab your popcorn and let’s watch magic take on might as David Copperfield battles Superman, Batman, and the rest of the D.C. Comics universe. My money is on DC Comics, but maybe David Copperfield can pull a bunny out of his hat (or an amendment to his identification of goods…).