Seth’s fabulous and penetrating new book called This is Marketing, will be released tomorrow, no doubt another best-seller, a must-read for any lawyer who cares to make change for the better.
In the meantime, many thanks to Fred McGrath for his interest and generosity in sitting down with me to capture a conversation about DuetsBlog, editing our discussion in 3 videos, here’s the first:
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.
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.”
– Jason Sprenger – President, Game Changer Communications
Imagine for a moment you’re back in the year 1963…the time of Mad Men, the beginning of Beatlemania, the year of the “I Have a Dream” speech. Who’s the most trusted man in America? You might be surprised that it wasn’t Martin Luther King Jr., or even the remarkably popular President John F. Kennedy. It was Walter Cronkite, the legendary CBS news anchor. And since Cronkite, who are the others deemed to be the most synonymous with trust among Americans? None other than Tom Brokaw and Jon Stewart.
A while later, in my final semester of college, I did a honors capstone project on levels of trust in various media over time. I tried to determine whether or not certain world events such as 9/11 could cause spikes in trust/favor among media, and whether those trends were unique to certain kinds of media. My research produced results suggesting a strong correlation between higher levels of trust and visual media – specifically television. It also indicated massive spikes of trust in broadcast media in times of national and global crisis – times when people were emotional and vulnerable, and needed reassurance and leadership.
These are just a couple of examples that suggest video has always had an incredible impact on individuals, and on our collective society. We place a high level of trust in the people who talk to us and tell us how it really is on screen. We celebrate the people who entertain and educate us through the movies, television and other visual arts and disciplines. We remember vividly the experiences we’ve had and shared through visual media. We treasure video memories of our families, because nothing quite takes you back in time like seeing and hearing scenes from the past.
Lately, through content marketing, organizations everywhere have begun to harness and leverage the power of video. Consider these statistics (source: Hubspot and www.insivia.com):
- When video is included in email, click-through rates increase 200-300%
- Simply having video on a landing page can increase conversion by 80%
- YouTube reports mobile video consumption increases 100% every year
- After watching a video, 64% of users are more likely to buy a product online
- Real estate listing using video receive 403% more inquiries than those without
- One minute of video has been estimated to be equivalent to 1.8 million words
- Enjoyment of video ads increases purchase intent by 97% and brand association by 139%
Clearly, video works. So what do we do about it? First, we find ways to integrate it into our operations at all levels. Everyone from rank and file employees to executives to outside stakeholders is using and responding to video, so why not use the medium to our advantage? Second, we get smart about the laws around ownership of video, the nuances of using and borrowing video and other items. Lack of knowledge and certainty in these areas will hold us back from using video in the ways we could. Third, we encourage open and frank discussions about visual communication in business and in society. We owe it to ourselves to make sure that we’re continuing to use this still-evolving medium in the most efficient, ethical way we can.
With the changes in technology, media channels, concepts like virtual and augmented reality, etc., video will surely grow and evolve in the years to come. It will only become a more central component of our lives, and our organizations. It’s up to us to embrace this trend, because those of us who figure it out and do it well are bound to come out ahead.
-Wes Anderson, Attorney
It has been a tumultuous year for copyright owners. The old cliche is “if you love something, set it free,” but it seems plenty of third parties are happy to take on that task when it comes to copyrighted content.
Now that mainstream smartphones allow anyone to capture high definition video, mobile apps in particular have been fertile ground for uploading and sharing infringing content. The Mayweather-Pacquiao fight in May may have smashed revenue records, but it also exposed novel methods for pirating digital content.
And even-newer apps are never far away. Earlier this month, filmmaker and popular YouTube video creator Casey Neistat released his new mobile app, “Beme” (pronounced “beam,” but also a play on “be me”). Pitched as “the simplest and most authentic way to share your experience on video,” the app takes a new approach to sharing in the same vein as Snapchat. It allows users to share video without touching a button – just by holding or blocking the iPhone’s proximity sensor near the earpiece. The app takes a four-second video and then immediately posts it on Beme’s network for followers (and strangers) to access. Once viewed, the videos disappear from a user’s timeline.
Beme may give pause to copyright owners given recent history. Consider the plight of Periscope, the live-streaming app owned by Twitter that launched in March 2015 to enormous fanfare. During the aforementioned Mayweather-Pacquiao fight, Periscope was the app du jour for watching unauthorized streams of the pay-per-view fight. It was as simple as streaming a TV screen to millions online. Periscope also became known as a popular platform for watching the latest Game of Thrones episode, much to the consternation of HBO. Twitter quickly found it did not have the adequate measures in place to police all those live streams on such a novel platform.
Is Beme the next Periscope? It’s clear that Periscope is a different breed of app – it allows a user to “stream” video live for an indefinite period of time, and videos remain accessible to the public for up to 24 hours after broadcast. Periscope also allows viewing across various mobile platforms.
As for Beme, it certainly isn’t built with the intent of sharing copyrighted content. As discussed in this video, Beme videos are limited to four seconds, and they play in relatively low quality compared to traditional HD video. The app is iPhone-only, with no Android app or web access as of yet. But there are some features that may facilitate, rather than hinder, piracy. Users can stitch an indefinite amount of four-second videos together to create a longer series of videos — and, unlike Periscope, Beme videos aren’t accessible via a public link, so infringing content could go undiscovered.