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.”

The internet was aflutter yesterday over a lawsuit involving Angry Birds.  The artist who created a pet toy line is apparently quite angry that she’s not racking up gold coins from a lucrative license agreement for the mark ANGRY BIRDS with Rozio.  If you haven’t been living off the grid, and if you’re maybe somewhat tech savvy, you’ve probably heard of Rozio’s popular tablet game by the same name where colorful birds hurl objects at unsuspecting animals.

According to the complaint, in 2006, artist Juli Adams was approached by Hartz to create and design a pet toy line based on her cartoonish animal paintings.  In the context of copyright law at least, where a work is created within the scope of one’s employment or the work is a specially commissioned work and the parties have agreed that the work is a “work made for hire,” ownership rests with hiring party.  Patent law is similar when it comes to works made during the scope of employment.  But here, the artist and Hartz had a different agreement relating to Adams’ “intellectual property” – the two parties agreeing that the rights remained with her and Hartz licensed the intellectual property from her.  In addition to her intellectual property rights for her work developing the products, the artist also coined the trademark ANGRY BIRDS for the line according to the complaint.  The product packaging features her bio and states in general terms “Licensed from the art of Juli Adams.”  The term of the agreement began after the first sale of a licensed product, according to the complaint.

Following Hartz’s “key responsibilities” in the agreement to renew and protect the intellectual property of Adams, Hartz filed a trademark application for ANGRY BIRDS for pet toys.  The intent-to-use application was filed by Hartz on March 28, 2007 listing Hartz as the owner of the intellectual property, in contrast to the apparent terms of the agreement as described in the complaint.

By signing a trademark application, the signatory confirms that “the applicant declares that it has a bona fide intention to use or use through the applicant’s related company or licensee the mark in commerce on or in connection with the identified goods and/or services.”  Furthermore, the signatory declares that:  “he/she believes the applicant to be the owner of the trademark/service mark sought to be registered, or, if the application is being filed under 15 U.S.C. Section 1051(b), he/she believes applicant to be entitled to use such mark in commerce; to the best of his/her knowledge and belief no other person, firm, corporation, or association has the right to use the mark in commerce, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, to cause confusion, or to cause mistake, or to deceive.”  The signatory here was Hartz’s attorney, who confirmed Hartz’s rights, interest, and ownership in the mark by signing the document.  This application likely should have been filed in Adams’ name as the owner of the intellectual property rights, if this was intellectual property contemplated by the agreement as being owned by her and licensed to Hart.

Not all the facts appear to be out here yet, as the complaint leaves a lot of unanswered questions, especially regarding the scope of her intellectual property rights.  For instance, and importantly allegedly months after the ANGRY BIRDS application was filed, an amendment to the license agreement was executed that granted Hartz “the right to file copyright, trademark and other intellectual property right filings in Hartz’s name, in its discretion, for all of the Licensed Products” including a mark for THE JULI ADAMS COLLECTION (an application for which was filed by Hartz at the same time as ANGRY BIRDS).  The complaint disputes the validity of that amendment.

What does this mean for the marketers, product developers, advertisers and others of you who create intellectual property?  One takeaway may be to pay more attention to obtaining a well-crafted agreement that meets your objectives and your understanding of your rights.  Even if the intention is to license your intellectual property, an owner of trademarks puts themselves in the best position, even if they don’t want the responsibility for the filings going forward, by filing applications in their own name and let the licensee agree to pay all fees associated with them.  It also helps clarify issues related to the owned rights to be able to refer at least to a filed copyright, patent or trademark application.

On the cusp of its 10 year anniversary, Facebook announced the “Facebook Paper” app – a combination of social networking and content feed that seems strikingly similar to one of my favorite apps Flipboard, with some of the Facebook features included in the app.  While there may be a patent dispute on the horizon there, first up is a trademark dispute ignited on the day of the announcement.


If you follow tech-related blogs, you have probably heard that after the announcement of the app, Paper by FiftyThree, another highly popular smartphone and tablet application that allows you to write and draw with a stylus, was a little jilted by Facebook’s use of PAPER.

As we have seen more and more lately (like here and here), the “little guy” FiftyThree took to their blog as a platform for their dispute to fight against the Goliath.  The post indicates some evidence of confusion by consumers and the press, thinking that Paper by FiftyThree had been bought by Facebook.  The post also mentions some fairly strong ties already between FiftyThree and Facebook and that Paper by FiftyThree supports sharing to Facebook.   And, the post uses the dirty “bully” word to describe what Facebook might become with these tactics.

In an effort to protect its rights in the wake of Facebook’s announcement, FiftyThree smartly filed a use-based trademark application for PAPER for “computer application software and services for smart phones and tablets, namely, software for use in writing on smart phones and tablets with either a stylus or finger; computer application software and services for creating, editing, and compiling content to share with others via a social network; computer graphics software; computer hardware and computer software programs and services for the integration of text, audio, graphics, still images, and moving pictures into an interactive delivery for multimedia applications.”    They already have a registration for PAPER BY FIFTYTHREE for “computer application software for smart phones and tablets, namely, software for use in writing on smart phones and tablets with either a stylus or finger.”

Surprisingly, I could not find a pending trademark application for FACEBOOK PAPER or PAPER applied for by Facebook as of today.  Given the strong ties between the companies, it would likely be hard for Facebook to claim they were unaware of FiftyThree’s use of PAPER.  There are, however, over 150 pending applications and active registrations incorporating PAPER for goods and services relating to computer software and/or social  networking, which lends credence to an argument that the term is diluted in the relevant industry.  And by all accounts, it does not look like Facebook will be caving anytime soon to FiftyThree’s demands to change their name.

The dispute here is somewhat analagous to the SATURDAY dispute between SATURDAYS NYC and KATE SPADE SATURDAY, where a court ultimately determined that despite actual confusion by consumers, Kate Spade did not infringe Saturdays NYC’s trademark because SATURDAY was relatively weak in the apparel industry, the distance between the products, and the inclusion of the famous mark Kate Spade.

One takeaway from this latest public trademark spat is yet another reminder to encourage communication between your legal team and your marketing team, especially prior to launching a new product.  This dispute has overshadowed Facebook’s advancements in their technology and their services.  You have the chance to drive the narrative when you have a thoughtful legal, marketing, and PR strategy.

On April 15, Apple launched a massive suit against Samsung alleging various counts of patent and trademark infringement arising from Samsung’s Galaxy line of products. (The Complaint is here.)

While the lawsuit involved claims of trade dress infringement and patent infringement, I was most interested in the trade dress aspects of the case.  Of particular interest to me is the alleged “trade dress” that Samsung is accused of infringing. Apple claims that Samsung has infringed its exclusive rights in:

  • a rectangular product shape with all for corners uniformly rounded
  • the front surface of the product dominated by a screen surface with black borders
  • substantial black borders above and below the screen having roughly equal width and narrower black borders on either side of the screen having roughly equal width
  • metallic surround framing the perimeter of the top surface
  • display grid of colorful square icons with uniformly rounded corners
  • a bottom row of icons set off from the other icons and that do not change as the other pages of the user interface are viewed

Hardware 2.0 provides some good color comparisons of the products in his article questioning whether Samsung is “paying homage” or “ripping off.” In my opinion, Samsung is doing neither. It would be odd if Samsung were paying homage to a direct competitor. However, the fact that Samsung isn’t paying homage doesn’t mean it’s ripping off. My take is that Samsung is merely using highly functional design elements that consumers want in their smart phones, regardless of whether those design elements come from Apple, Samsung, or any other source.

If you have been a long time reader of our blog, you may recall a post I did sometime back on the functionality doctrine in the context of round beach towels. Among other things, the functionality doctrine prevents protection through trademark law of features that give a producer a competitive advantage that is not related entirely to brand identification. Trademark (and trade dress) law are about protecting indicators of source. Simply stated, you typically can’t trademark a design where the purpose or effect of the design is for something other than indication of source.  

Apple makes what I believe is a serious gaffe in its complaint: it claims that the end result of its alleged protected trade dress is to create a product that is “more accessible, easier to use, and much less technically intimidating than previously available smart phones and PDAs.” That’s basically an admission of functionality.  Ignoring Apple’s admission, virtually every smart phone on the market is rectangular, dominated by a screen surface, and black with some sort of metallic trim. Does that mean everyone thinks their smart phone is an Apple? Of course not. People don’t want these features because they think it means they’re getting an Apple product.  They want these features because they’re aesthetically pleasing and make the product easier to use. That makes the features functional.