I.P. Blawg

Braking Down The Yahoo! Lawsuit Against Facebook

Today Yahoo! filed a lawsuit against Facebook claiming patent infringement. At issue are ten patents, as follows: U.S. Patent No. 6,907,566; U.S. Patent No. 7,100,111; U.S. Patent No. 7,373,599; U.S. Patent No. 7,668,861; U.S. Patent No. 7,269,590; U.S. Patent No. 7,599,935; U.S. Patent No. 7,454,509; U.S. Patent No. 5,983,227; U.S. Patent No. 7,747,648; and U.S. Patent No. 7,406,501.

The whole complaint can be viewed at the end of this post, courtesy of All Things Digital’s post on the topic. I will just be going through the claims Yahoo! makes in connection to each patent, stating what part of Facebook is allegedly infringing on the given patent, and providing some text from the patent.

The underlying language of all the claims is as follows. “Yahoo! claims that Facebook has been infringing the patents by “making, selling, and/or offering to sell in the U.S., or importing into the U.S., products or processes that practice the inventions claimed.” 

Infringement of Yahoo!’s Advertising Patents (Counts 1-4)

Count 1: Infringement of the ‘566 Patent (6,907,566)

This claim specifically calls out Facebook Ads. 

The ‘566 patent is described as “a method and system for placement of graphical objects on a page to optimize the occurrence of an event associated with such objects.”

Count 2: Infringement of the ‘111 Patent (7,100,111)

This count also calls out Facebook Ads. The ‘111 patent is a divisional of the ‘566, which explains the similarity of the claims and patents themselves for anyone who just saw the similar pictures and language.

Count 3: Infringement of the ‘599 Patent (7,373,599)

More of the same as stated in the first two claims. It calls out Facebook Ads specifically and the ‘599 patent is a divisional of the ‘566.

Count 4: Infringement of the ‘861 Patent (7,668,861)

This count also calls out Facebook Ads but the patent is not a part of the ‘566 family this time.

The ‘861 patent states “a system and method are disclosed for classifying a user interaction on a network.” 

Infringement of Yahoo!’s Privacy Patents (Counts 5-6)

Count 5: Infringement of the ‘590 Patent (7,269,590)

Targeted here are the Facebook Privacy Controls.

The ‘590 patent states “a method, apparatus, and system are directed towards managing a view of a social network user’s personal information based, in part, on user-defined criteria.”

Count 6: Infringement of the ‘935 Patent (7,599,935)

Also targeted here are the Facebook Privacy Controls. 

The field of art of the patent states “the present invention relates to managing display of content, and more particularly to a method and system for enabling a user to preview content as it would be seen by another social network user.” 

Infringement of Yahoo!’s Customization Patents (Counts 7-8)

Count 7: Infringement of the ‘509 Patent (7,454,509)

The target is now Facebook’s News Feed. 

The 509’ patent provides for “a method for entertaining individuals according to a community having similar tastes. Information derived from user accounts form the basis of a community and collateral preferences allow other subscribing individuals to enjoy the benefit of wider-ranging tastes according to the preferences expressed by the other members of the community. Additionally, assuming that individuals sharing one preference in common may be likely to share others, the present method allows those who choose to listen to the “fan station” the ability to enjoy similar music or other data streams according to preferences expressed by the fan community as a whole.

Count 8: Infringement of the ‘227 Patent (5,983,227)

In addition to also targeting the Facebook News Feed, this claim mentions the Facebook Wall.

Under background of the invention, for the ‘227 patent, it states “the present invention relates to the field of customized information presentation. More specifically, one embodiment of the invention provides a custom page server which can quickly serve custom pages and is scalable to handle many users simultaneously.”

Infringement of Yahoo!’s Social Network Patent (Count 9)

Count 9: Infringement of the ‘648 Patent (7,747,648)

Targeted in this count are Facebook Pages and Facebook Groups.

The ‘648 patent states the following in the first paragraph in summary of the invention:

“Embodiments of the present invention provide systems and methods for information retrieval and communication using a world model. The world model is made up of interrelated entity models, where each entity model corresponds to an entity (or abstraction) in the real world, such as a person, place, business, other tangible thing, community, event, or thought. Each entity model provides a communication channel via which a user can contact a manager (a real-world person) responsible for that entity model. Entity models also advantageously provide feedback information, enabling users to easily share their experiences and opinions of the corresponding real-world entity.”

Infringement of Yahoo!’s Messaging Patent (Count 10)

Count 10: Infringement of the ‘501 Patent (7,406,501)

The obvious target here is Facebook Messages

The basic description of the patent is as follows: “Systems and methods allowing an instant messaging user to exchange messages with an e-mail user.”

My Quick Take:

Being a huge fan of music and all the innovation taking place in the industry, count 7 scares me the most, and should scare other music start-ups like Pandora, Spotify, and Turntable.fm, to name a few. The title of the patent at issue (‘509) is “Online Playback System With Community Bias” and deals with internet radio, and appears to have been geared toward something called LAUNCHcast. The claims seem to be written broad enough that Yahoo!’s lawyers feel confident they can apply this to the News Feed. If Yahoo! is going to challenge Facebook on this matter, and actually cares about protecting their invention more than just the money Facebook has to offer, then it seems highly probable that the formentioned companies may want to either prepare defenses for a possible suit, or look to band together with Facebook on challenging this particular patent.

All of the patents, while extremely technical, also appear to have many elements in the claims that are just begging to be challenged on basis of obviousness, specifically the ‘501 patent, in my opinion. The filing of the application was in March of 2003, long predating this was an application called ICQ (which dates back to sometime around 1996) which allowed users to communicate in real time (instant messenger fashion) and with offline users (something an application like AOL IM would not let you do at the time). I forget if those offline messages went to e-mail or not, but it certainly raises a question of obviousness. Also, on this patent, Google seems to come into question as a possible defendant, as Google Chat users can send messages to offline users that show up in their e-mail, under a chat tab. 

The other thing to note is that it will be interesting to see how Facebook responds. I’m not sure what is in their portfolio of patents, but I venture to guess there is something there that Yahoo! could be claimed to be infringing. 

Lastly, it’s no secret Yahoo! has been fading as of late. The term “patent troll” is a thrown around by many bloggers and others reporting on companies that hoard patents for the sole purpose of suing. If these claims turn out to be without merit Yahoo! is in danger of gaining a lot of bad press and being compared to a patent troll with this lawsuit, which they certainly don’t need.

Are Record Labels Registering Copyrights To The Detriment Of Artists?

Peaking my interest this week was an article at TechDirt, titled “EMI Sneakily Trying To Pretend Many Of Its Artists Can’t Reclaim Their Copyrights”. It raised awareness to a blog post by Michael Robertson, the CEO of MP3Tunes, that is titled “Screwed FOREVER Artist List (Is Your Favorite Artist On It?)”. 

The basic summary of the problem addressed in these articles is as follows, as pulled from Michael’s post.

Beginning in 2013, rights of certain songs can revert to the original artist, meaning they’ll get all future royalties instead of the record label they originally signed with. The one big exception is if the song is a “work for hire” - commissioned by an organization and not the independent work of another party. (This is an overly simplified explanation but hopefully you get the point.) Sadly for artists, record labels have fraudulently declared many songs as “works for hire” allowing the labels to keep ownership. Artists in this category will be screwed forever.

This is because in the 1976 Copyright Act content creators have the right to terminate copyright assignments after 35 years. Mr. Robertson goes on to list all the artists whose sound recordings appear to have been registered as works for hire by EMI; while the TechDirt article analyzes the current state of music industry problems, history behind the Copyright Act and some specific language in it, most importantly of which is the definition of a work for hire found in 17 USC §101:

A “work made for hire” is—

(1) a work prepared by an employee within the scope of his or her employment; or

(2) a work specially ordered or commissioned for use as a contribution to a collective work, as a part of a motion picture or other audiovisual work, as a translation, as a supplementary work, as a compilation, as an instructional text, as a test, as answer material for a test, or as an atlas, if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire. For the purpose of the foregoing sentence, a “supplementary work” is a work prepared for publication as a secondary adjunct to a work by another author for the purpose of introducing, concluding, illustrating, explaining, revising, commenting upon, or assisting in the use of the other work, such as forewords, afterwords, pictorial illustrations, maps, charts, tables, editorial notes, musical arrangements, answer material for tests, bibliographies, appendixes, and indexes, and an “instructional text” is a literary, pictorial, or graphic work prepared for publication and with the purpose of use in systematic instructional activities.

Option (1) is not the route the industry is trying to take in this fight, instead it is based on the “compilation” language, as summarized by TechDirt.

The RIAA has been trying to claim that any albums are really a “compilation” so they qualify as a “collective work” under the law, which does create a work-for-hire situation. But there are other conditions that need to be met, and it’s unclear if those have been. Plus, the claim that an album is a “collective work” is a pretty weak one all around.

An album should not be classified as a “collective work” by the artist/band that is commissioned to deliver it. Most record deals are for a certain number of albums to be released on a particular label. The label is not interested in an album’s songs individually until it comes time to pick a single. Furthermore, when a band/artist goes into the studio pursuant to a deal, they know full well they are putting together a whole album, not just one individual song after the other. They want the songs to flow well and the album as a whole to sound good when played from front to back. Generally, a band’s/artist’s sound will evolve over time. When you hear a song for a particular artist, you can probably tell what era it was during (based on the albums they have released).

Furthermore, ignore any of the legal implications and look at this solely from a business perspective. The record label has had 35 years to build up a good relationship with the artist in regards to the albums they commissioned. One would think that if the record label is doing all they can for the artist and still generating some revenue after that much time, the artist may not even consider exercising this right they have. If the record label has proceeded to do nothing in those 35 years for the artist, why must they try and impede the ability of an artist to exercise this right to reacquire their copyright? Especially if there’s questions of royalties being paid out, which many major labels are facing accusations of lately. This is just one more thing for bands and artists to take into consideration when choosing who they do business with.