By Nancy Wolff Esq., PACA Counsel
On December 10, 2013, the patent troll Uniloc filed ten new patent infringement actions against image licensing companies based on United States patent 7, 099, 849 entitled INTEGRATED MEDIA MANAGEMENT AND RIGHTS DISTRIBUTION APPARATUS. The invention is described in a broad and ambiguous manner, which has enabled Uniloc to sue many companies that offer digital license in copyrighted content. The patent summary describes the “invention” as an integrated rights management and licensing system for storing, researching, buying, and selling intellectual property rights.” It was written with the film industry in mind, where one film will have multiple rights owners. As further described in the summary, the invention utilizes a rights owner application, a central repository, and a licensing application to integrate the management, researching and licensing of intellectual property. The patent contemplates that a request to license will be sent back to rights owner to determine if the rights can be granted and then negotiated.
PACA would like to assist in helping the companies that have been sued and their respective attorneys defeat this patent if possible.
One way to defeat a patent is to show that the process used by the image licensing industry is not infringing because it is not the same “invention” or process. While I am not a patent attorney, it appears from my read that the process of online licensing of images is not conducted in the same manner as outlined in the patent . But that is for a patent expert to review.
The other way to defeat a patent is to show that it is not novel an the process or invention is obvious because it only builds on what already was being done in the market. In patent speak this is called “prior art”.
This is where industry knowledge may be very effective. PACA would like to assist the industry in looking for companies that may have had databases where one could search for rights owner information and potentially license copyrighted work that existed prior to the filing of the invention and ideally one year before the invention was filed. The patent was granted in 2006 but the initial provisional patent was filed December 28, 2000. Ideally, if anyone has information about databases that search for rights owners for licensing purposes that existed prior to December 28, 1999 it would be very helpful in defeating this patent.
The more the industry can share information, the less expensive the patent will be to fight for all the individual parties. If anyone has any information or knows of databases that might be considered prior art for purposes of defeating a patent please contact Nancy Wolff email@example.com as PACA Counsel. We will make sure that his information is passed along to attorney’s representing the various parties.
Previously, the industry, thanks to Corbis and Getty Images cooperating in defending a patent claim, was able to defeat a similarly over broad patent, known as the Freeny patent. Hopefully our cooperation will be a sign to patent trolls that the industry will fight them and may discourage others.