Much confusion and consternation has been caused by Amazon’s securing a patent for itself on a lighting arrangement that has been in widespread use by photographers for at least three decades. See: PetaPixel Link here- http://petapixel.com/?s=Amazon+Patent
The patent is in the opinion of every patent attorney we have consulted (both in this office and elsewhere), an extremely shaky one and unlikely to resist a legal challenge if of course, one is made. No reputable attorney would ever suggest that anyone break the law or appear to violate an IP right but if you have been employing this very common technique you might want to have a confidential consultation with an IP attorney. Far too many photographers and even some well intentioned reps and advisers have unnecessarily hit the panic button.
Unlike filing a copyright registration for photographs, patent applications are reviewed and heavily scrutinized by the folks in DC. Rejections are commonplace. We have not spoken to a single patent attorney (including the author of one of the definitive legal texts on the subject) who does not think that this patent is extremely vulnerable to a legal challenge on numerous legal grounds. Just one legal argument that could be made as part of a challenge would be that the applicant knew or should have known, that the process was in widespread use by many photographers (and others) for many decades pre-dating the application. If the process was mentioned or illustrated in publications or at workshops on occasions pre-dating the application, such would be relevant as would testimony from those of you who have employed the technique. Include in this pool of potential witness art directors who may have requested/approved and/or paid photographer to use the technique on assignments. There is a duty to disclose such knowledge to the patent office as part of the application process.
Amazon has been hiring photographers directly to shoot jobs on a virtual assembly line basis at minimal fees. It is likely that given its substantial resources, one of its attorneys “took a shot” at obtaining a patent for this process that has been in continuous and widespread use in the industry for – according to one of our clients – “since Nixon was President”. Its motivation appears to be in service of its relatively new role as a “client” who retains photographers at minimal cost to shoot work for it. The patent helps control that “shooting environment” in which the hired photographer(s) must work. How this one got by the patent office according to our patent experts, is a mystery but the attorney who made this filing should have received a fat bonus from Amazon.
There are various judicial and administrative courses that can be taken to challenge a patent grant. Based on the mail we have received and comments made to us at our recent talk at B&H, many of you may be able to invoke a “prior use defense” to patent infringement in the event a claim of patent infringement is made against you. Here is a streamlined version of how this defense can be used:
A photographer could defend a patent infringement suit brought by a holder of a patent by establishing that he/she used, in its business, in good faith, a process that it is “now” being claimed infringes on a registered patent. Such use should have commenced at least one year before the effective filing date of the claimed invention (or the date on which the claimed invention was disclosed to the public – whichever is earlier). Until recently a prior use defense, applied to business method patents only. The new prior use defense provision applies to any patent issued after September 16, 2011.
The defense applies to commercial uses (and certain other uses by nonprofits, universities and hospitals, so long as the public is the intended beneficiary of the use and any continuing use of the claimed invention is for noncommercial use, and in certain drug trials/testing).
In using this defense you must:
A. Prove your case by “clear and convincing evidence” – a higher legal standard than most “ordinary” civil cases; and
B. Show that the commercial use was in good faith, occurred at least a year before the asserted patent was filed or the patented invention was disclosed, and must be in connection with what we will call here, “legitimate business purposes”.
Businesses that want to employ this prior use defense need to act now to preserve the evidence that may need to be used to establish their prior use. Things you can do now with an eye toward the future include:
- Retain detailed records and documentation, including materials showing the conception, design, development, testing, and commercial use of the technology.
- Document all anything especially the internal procedures, instructions, e mails etc that might be used in the creation of images whether or not the images created are eventually licensed or sold – take photos of your in studio set ups;
- Retain tear sheets, pdfs, packages, posters, DVDs and other forms of ultimate publications or actual products which employ the images you created;
- Keep a list of names of each and every person, employee, client, assistant, stylist, model and so on who was present at the shoot at which you employed such technique.
At the end of the day your work product for which you are getting paid, documents your use of the set up. There are various judicial and administrative avenues which could be pursued to challenge the Amazon patent. Amazon is betting that no one person nor any entity will have the temerity or cash to challenge it. The best course of action and the likely costs to be incurred can only be determined with the assistance of competent patent counsel and not by the notions of non lawyer photographers.
Note that the Amazon patent requires adherence to numerous specifications. One would likely not infringe on this patent unless all or virtually all of the specs (set forth on page 7 of the patent) were actually used. Again, those of you who have employed this technique over the years might want to have a brief consultation with an attorney who can explain how the claims made by Amazon’s patent may or may not affect your business and practices on a going, forward basis. This is a job for a trained patent attorney, not a visual artist.
Bottom line folks – the sky is not falling.