Boing Boing » patent trolls

Loaded terms: How a Pittsburgh artist beat the most bogus trademark in drinking game history

Andrea James — Mon, 25 Feb 2013 23:00:36 +0000

Cheers to Ali Spagnola, who spent three years and $30,000 to invalidate a bogus trademark awarded on a popular—and decades-old—drinking game.

American intellectual property law is enough to drive one to drink.

Just ask Pittsburgh musician and artist Ali Spagnola, who emerged victorious earlier this year after what has to be one of the weirdest trademark battles in recent history. Spagnola spent three years and $30,000 of her own money to correct an error by the US Patent and Trademark Office (USPTO). It’s an example of a larger problem, where people who create and curate for kicks run afoul of those willing to abuse the trademark system to shut down our fun.

The dispute centered around Power Hour, a boozy 60-minute drinking game in which participants throw back a specified number of alcoholic beverages—usually 60 small shots of beer—at one-minute intervals. Setting aside the wisdom of this activity, Power Hour is a time-honored tradition in certain circles, often connected to 21st birthdays, beer pong fatigue, or Edward Fortyhands ennui. The name and concept of Power Hour was already around in the late 20^th century, when I may or may not have played.

Since those beer-soaked days of yesteryear, a generation of entrepreneurs has ushered the game into the digital age, creating a dizzying array of websites with domain names like PowerHourZone, PowerHourHQ, iPowerHour, even sound-alikes like PowerHower. Many of the sites have created or curated Power Hour mixes to play during the game, often user-submitted. The sites’ creators generally started them for fun, with little thought toward "monetization."

“[My site] combines three of my favorite things: web development, music, and alcohol,” Ryan Hogue at PowerHourZone told me. Most of the sites offered a substantial portion of the content at no cost, supported by ads or merchandise alone. They often link to each other, and were in contact before the drama started.

Ali Spagnola’s contribution to this mix is PowerHourAlbum. Spagnola started performing a live concert of the game at bars and events in her senior year in college. She later recorded a catchy little album of 60 different original one-minute songs, and listeners are invited to imbibe between each track. She even has a USB shotglass on a lanyard, which is probably helpful for some participants in the waning minutes of the game.

When she’s not onstage doing her high-energy show, Spagnola is self-deprecating, laid back, and artsy. She jokes she’s a “drinking composer with a music problem.” She's produced commercial art to pay the bills, but much of her creative output is simply for the love of it. In addition to PowerHourAlbum, she’s created a number of other whimsical projects over the years, including giving away a free commissioned painting every day. The wait list on that project is now backlogged for years.

Her chilled-out demeanor becomes energetic, however, when we move from chatting about drinking games and giving away free art to discussing the lawsuit.

"It's way too easy to sneak a trademark through."

She says everything was cool in the Power Hour creative community until Steve Roose, who founded the PowerHourGame website in 2007, became drunk with power. Roose and Spagnola's correspondence was friendly at first; he offered to produce and sell her album on his site. In 2009, though, Roose applied for a trademark for the term “Power Hour” in all digital media: CDs, DVDs, and software “featuring a timed drinking game where players take a shot of beer every minute for an hour.”

Pete Berg of PowerHourHQ says there were several key problems with the filing. First, the Power Hour trademark should never have been issued because the term was in use long before 2000, when Steve claimed in his application that he began using it in commerce.

“If [the USPTO] had done a single Google search for ‘power hour’ in 2009 when Roose filed the trademark application, they would have found thousands of references to the drinking game," Berg said. "We're talking 15 minutes of research––it's not hard to find references to 'power hour' dating back to the '90s.”

Second, Berg said, regular people aren’t cutting into their drinking time to check the USPTO site for recent trademark applications: “There is a period of time where anyone can contest a trademark application, but you have to be watching like a hawk to even know that anyone has applied for your mark."

"This information gets posted on an obscure corner of the USPTO's confusing website. They also don't make any effort to contact anyone who might also have an interest in the trademark. It's way too easy to sneak a trademark through.”

These two problems started a Kafka-esque cascade of legal wrangling that Spagnola had to deal with on her own dime, and on her own time. Once the USPTO granted the trademark to Roose, they reported that to rescind it would require Ali to secure an order from the Trademark Trial and Appeal Board (TTAB).

The worst part? Spagnola learned of the trademark filing early enough to file an opposition prior to its registration, “but there was some sort of clerical error, so he was given the trademark anyway, even though my documents were submitted in time and they even acknowledged that they got them."

"After he was issued that trademark, you’d think it would be simple to take it back because it was an accident," Spagnola said. "They said they had made this error, but there nothing they could do about it. So now I had to go though lots more dollars and lots more time.”

Once the trademark was granted in 2010, Roose became enforcement actions: out went nastygrams to other Power Hour site owners, informing them of his trademark registration and ordering them to cease and desist.

“We were just doing this for fun, and Steve tried to ruin it.”

However, Berg says, Roose didn’t Know When to Say When, to quote the long-running Budweiser ad campaign. He went beyond standard trademark enforcement to acting like “a total asshat.”

Moreover, Berg claims, Roose took content from his site after he ignored his letter: user contributions hosted on PowerHourHQ ended up behind a paywall on Roose's homepage.

“Steve was using an oversight by the trademark office to not only try to line his pockets, but also to ruin the Power Hour party for everyone else," Berg said. " ... We were just doing this for fun, and Steve tried to ruin it.”

iPowerHour was so rattled by the behavior they changed their domain to the ultra-generic iDrinkingGame just to avoid legal hassle. Spagnola’s music was taken down from Amazon and Rhapsody, and Roose threatened to get it removed from iTunes and other platforms.

After talking to a lawyer, who warned of the high costs of fighting a successful trademark registration, Spagnola was ready to walk away. But Berg decided to do something unusual: ask the vast and sprawling Reddit community for help.

His post on the link-sharing site was meant to “unleash the internet hate machine,” and it worked.

“It motivated Spagnola to really fight this case. It helped her raise some money for legal fees, enough to make a small dent in the bill. It also convinced her that there are enough people out there interested in her story and her Power Hour album that it was worth pursuing,” Berg said.

Adds Spagnola: “I tried to keep it light-hearted because the internet doesn’t like people complaining, but the whole time it was really quite frustrating. The hardest part was when Steve kept prolonging things. He had the power to keep draining my money.”

Roose would not respond to her legal papers, Spagnola said, forcing her to spend more money and time to compel him to respond. She decided that since she was putting so much time and energy into saving Power Hour, she should try to recoup her investment by doing a professionally produced album and be ready to rock when the decision came down.

After three years and thirty grand out of pocket, Ali finally got a welcome call from her lawyer on New Year’s Eve, 2012. In trademark law, marks fall along a continuum from “distinctive"–and thus enforceable–to “generic"–uneforceable. The TTAB found that Power Hour fell in the middle, but closer to generic than distinctive. Based on the mountain of evidence Ali supplied, the TTAB determined that Steve’s Power Hour mark “is descriptive and lacks acquired distinctiveness.”

In other words, Spagnola won big.

Roose took down his site right after the ruling, but he still hoped to make one last buck, according to Berg: “Steve sent an anonymous email to Ali and myself a few days after losing the trademark, trying to sell his company and domain name.” The PowerHourGame site’s current design looks like one of those domain name reseller templates on a parked domain. It links to an eBay auction ending on February 25. Bids as of the last day of bidding? Zero.

Roose did not respond to a request for an interview.

Meanwhile, Spagnola and Berg are back to creating. I caught up with Berg during filming on a show in rural Michigan; he said that he and Spagnola became friends during their experiences. As for Spagnola? She’s got an IndieGoGo campaign going to support Ali’s Power Hour Freedom Victory Tour, where fans and drinkers can register their support for Spagnola before it closes at the end of February.

When informed about this story, Spagnola created the delightful song and video “ With a Beer in Your Hand,” in collaboration with filmmakers John and Elaine Wooliscroft and production designer Ben Saks.

Let’s raise a glass to Ali, to the creative spirit, and to her victory.

Illustration: Rob Beschizza. Photo: Shutterstock

Looking for podcasters who've been shaken down by patent trolls

Cory Doctorow — Tue, 05 Feb 2013 23:36:25 +0000

The Electronic Frontier Foundation is looking for podcasters who've received legal threats from Personal Audio, a patent troll that claims a bullshit patent on "disseminating a series of episodes represented by media files via the Internet."

How Newegg handed a patent troll its own ass on a plate

Cory Doctorow — Mon, 28 Jan 2013 14:06:59 +0000

Ars Technica's got an amazing piece on the Newegg fight against a patent troll called Soverain Software, who had been extorting a 1% royalty on all transactions from ecommerce companies with a bogus shopping cart patent. Newegg refuses to settle in cases like this, even when it would be cheaper to settle than to fight. They beat the hell out of Soverain, killed their patent, and freed not just themselves, but all the firms that faced potential extortion from them -- and all of us, who will pay higher prices to keep these ticks nicely, comfortably bloated with their parasitic gains.

For Newegg's chief legal officer Lee Cheng, it's a huge validation of the strategy the company decided to pursue back in 2007: not to settle with patent trolls. Ever.
"We basically took a look at this situation and said, this is bullshit," said Cheng in an interview with Ars. "We saw that if we paid off this patent holder, we'd have to pay off every patent holder this same amount. This is the first case we took all the way to trial. And now, nobody has to pay Soverain jack squat for these patents."
...Newegg is unique in its willingness to take on patent troll cases and fight them through trial. The company won't hire law firms that take on patent troll cases, and its top lawyer, Lee Cheng, is vocal about his view that others should take the same approach. Cheng talked with Ars about Newegg's strategy, why they do it, and how it's going for them.

How Newegg crushed the “shopping cart” patent and saved online retail [Ars Technica/Joe Mullin]

(via Waxy)

Myhrvold patents 3D printing DRM

Cory Doctorow — Fri, 12 Oct 2012 15:10:49 +0000

Nathan Myhrvold's Intellectual Ventures has received a patent for a DRM system for 3D printers, to stop people from printing out trademarked and patent objects. Like other DRM systems, this won't work (it will either have to be so broad in its parameters for recognizing prohibited items that it will balk at printing innumerable harmless objects, or it will be trivial to defeat by disguising the objects beyond the system's ability to recognize them).

Like other DRMs, it will require designing 3D printers so that they keep secrets from their owners, opening up the possibility that this facility will be exploited by bad guys to do bad things to the printers' owners (Charlie Stross envisions compromised 3D printers outputting rooms full of printed penises overnight in his book Rule 34).

But at least it's patented by a notorious patent troll, which means that other jackasses who try to implement this stupid idea will find themselves tied up in absurd, wasteful lawsuits. It's mutually assured dipshits.

From Tech Review's Antonio Regalado:

“You load a file into your printer, then your printer checks to make sure it has the rights to make the object, to make it out of what material, how many times, and so on,” says Michael Weinberg, a staff lawyer at the non-profit Public Knowledge, who reviewed the patent at the request of Technology Review. “It’s a very broad patent.”
The patent isn’t limited to 3-D printing, also known as additive manufacturing. It also covers using digital files in extrusion, ejection, stamping, die casting, printing, painting, and tattooing and with materials that include “skin, textiles, edible substances, paper, and silicon printing.”

Nathan Myhrvold's Cunning Plan to Prevent 3-D Printer Piracy

Patent troll targets Minecraft

Rob Beschizza — Sat, 21 Jul 2012 16:13:12 +0000

Famous patent troll Uniloc is suing the creators of popular indie title Minecraft (PDF), which it claims infringes a patent it holds on copy protection software.

But it might need to improve its own game, as the filing misspells its target as "Mindcraft", and developer Markus "Notch" Persson has already vowed not to give in.

"Step 1: Wake up. Step 2: Check email. Step 3: See we're being sued for patent infringement. Step 4: Smile," Notch wrote at Twitter. "Unfortunately for them, they're suing us over a software patent. If needed, I will throw piles of money at making sure they don't get a cent."

Filed in 2001 and awarded in 2005, Uniloc's patent describes a system for "preventing unauthorized access to electronic data" which involves communication between a portable device and a license registration authority. Uniloc claims that this patent gives it rights to software that verifies licensing on the Android operating system.

Writes Uniloc: "Mojang is directly infringing one or more claims of the ’067 patent in this judicial district ... by or through making, using, offering for sale, selling and/or importing Android based applications for use on cellular phones and/or tablet devices that require communication with a server to perform a license check to prevent the unauthorized use of said application, including, but not limited to, Mindcraft."

Notch, however, said that Minecraft does not perform license checks in the manner described by the patent--then took a jab at the whole idea of patented software, for good measure: "Software patents are plain evil. Innovation within software is basically free, and it's growing incredibly rapid. Patents only slow it down."

Based in Luxembourg, Uniloc now markets itself as an intellectual property "incubation lab" specializing in computer security. It filed the lawsuit against Sweden's Mojang in Tyler, Texas, a venue famous for favoring plaintiffs in patent infringement cases. Uniloc's past targets include Microsoft, but it recently turned its attention to smaller beer, such as stock photography sites.

Demanding royalties, damages and interest, Uniloc claims to have extracted settlements from about a third of the companies it targets.

PLAINTIFFS’ ORIGINAL COMPLAINT FOR PATENT INFRINGEMENT [Notch.net]

Fark's Drew Curtis on beating patent trolls

Rob Beschizza — Wed, 18 Apr 2012 01:21:24 +0000

"Make the process as annoying, as painful and as difficult as possible for them." [TED via Waxy]

Patent troll takes aim at taxpayers

Rob Beschizza — Thu, 15 Mar 2012 17:50:03 +0000

Martin Jones patents obvious ideas. A holding company, ArrivalStar, is shaking down cash-strapped cities nationwide over one for public transport scheduling—and they're paying up, to avoid costly litigation. The EFF has launched a campaign to invalidate the patent, and you can help.

Patent troll that claimed ownership over the Web loses its case

Cory Doctorow — Fri, 10 Feb 2012 22:43:28 +0000

Eolas, a notorious patent troll who partnered with the University of California in a shakedown scheme that claimed royalties for all "interactive web sites" that featured rotating images, streaming video, and other practices that had been widely established before their patent was filed, has lost a key lawsuit. A jury in Tyler, Texas (the sleepy town where the shell-companies used by patent trolls have their nominal offices) found that the Eolas patent was invalid, after hearing testimony from Web inventor Tim Berners-Lee and other luminaries of the open web.

If the jury had upheld the patents, there would have been a potentially brutal damages phase in which Google, YouTube, Yahoo, Amazon, Adobe, JC Penney, CDW Corp. and Staples would have been sued for infringement and been asked for more than $600 million in damages, with the majority of that coming from Google and Yahoo.
The Eolas patents were denounced for years before this week’s landmark trial, but managed to survive repeated re-exams at the United States Patent and Trade Office.
However, Thursday’s verdict is likely a setback Eolas can’t overcome. It may well be appealed, but that will be a long process, and in the meantime Eolas won’t be able to go after new targets.

Texas Jury Strikes Down Patent Troll’s Claim to Own the Interactive Web