For the half-year to 31 December 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Rebecca Gulbul, Lucas Michels and Marie-Andrée Weiss.

Regular round-ups of the previous week's blogposts are kindly compiled by Alberto Bellan.

Wednesday, 6 November 2013

Twitter: Patent Infringement and Genericide in 140 Characters


Merpel is more interested in Twitter's
mascot than the service itself...
As Twitter prepares to go public this week through an IPO, it faces two IP challenges: defense of a patent infringement claim and offensive protection of its trade marks from genericide. 

Early in October, Twitter filed initial regulatory filings with the Securities and Exchange Commission (SEC) outlining its plans to go pulic and disclosing certain risks to investors.  Among the stated risks was the concern that its trade marks could suffer genericide and become unenforceable.  Specifically, Twitter stated in its filing, "[t]here is a risk that the word 'tweet' could become so commonly used that it becomes synonymous with any short comment posted publicly on the Internet, and if this happens, we could lose protection of the trademark."  How great is this risk?  This Kat has yet to hear anyone refer to short messages posted anywhere other than Twitter as a Tweet.  [Have any readers heard such generic uses of the mark?]

However, if genericide is a realistic risk for Twitter, it would be well advised to implement promptly a strong trade mark maintenance and enforcement strategy, as well as a program for public education about its trade marks. Google comes to mind as a company that faced such a risk as its popularity skyrocketed. It launched media campaigns reminding consumers that they were "searching the web on Google" or "Googling, but only on the Google platform," and they were never, ever, "googling."  By taking swift and consistent action to protect its trade marks, it can avoid the fates of zipper, aspirin and escalator, which were all brand names before becoming generic terms. 

On Monday this week, the same day that Twitter announced an increase in its IPO price range, it also disclosed another IP risk.  IBM has threatened to sue Twitter for patent infringement in connection with three IBM patents.  Twitter has faced - indeed, is still facing - patent claims from other parties, but IBM is the biggest claimant with the deepest pockets.  Fortunately for Twitter, IBM is apparently willing to "negotiate a business resolution of the allegations."  Surely IBM believed that making its claims just days before Twitter's IPO would make Twitter more likely to settle quickly lest any investors get scared away. 

However, as it goes public and continues to grow in size, Twitter should avoid giving the impression that it is an easy target or that it believes the IP underlying its platform is weak.  Twitter seems to understand this danger, acknowledging, "we are presently involved in a number of intellectual property lawsuits, and as we face increasing competition and gain an increasingly high profile, we expect the number of patent and other intellectual property claims against us to grow."

With respect to the IBM claims, Twitter's SEC filing declares, "[b]ased upon our preliminary review of these patents, we believe we have meritorious defenses to IBM's allegations, although there can be no assurance that we will be successful in defending against these allegations or reaching a business resolution that is satisfactory to us."  Whether Twitter will negotiate a settlement or dare IBM to sue it remains to be seen.  In the meantime, this Kat (who is not a patent practitioner) wonders if any readers would care to share their thoughts on the validity or strength of IBM's claims. 

5 comments:

Pedro Malaquias said...

Not completelly sure, but I have the idea that The Economist has referred to posts on Sina Weibo as tweets.

Anonymous said...

A quick glance at claim 1 of the first IBM patent reveals it to be anticipated by the very web browsers they acknowledge as prior art in the opening paragraphs of the patent.

Claim 1: A method of providing links to remotely located information in a network of remotely connected computers, said method comprising: a) associating a shorthand link [a web-browser bookmark name] to each of a plurality of uniform resource locators (URLs) [website URLs] by i) requesting registration of a URL [telling the browser to create a new bookmark]; ii) selecting an unused key [accepting the default name for the bookmark generated by the browser]; and iii) pairing said selected key with said URL as a shorthand link [creating the bookmark]; b) logging associated shorthand links in a registry database [storing the bookmarks in a file readable by the web browser]; c) searching said registry database for a shorthand link associated with an URL responsive to selection of said shorthand link [looking down a list of the bookmarks, generated by the browser from the file, for a particular one]; and d) for each found said shorthand link, fetching said associated URL [the web browser opening the web page].

Perhaps they meant to say that the searching step was computer-implemented, or that the registry database was located on a server, but they don't, not in claim 1.

It all looks a bit thin to me.

Michael Risch said...

Damn trolls like IBM always trying to leverage someone else's success! Why don't they invest some money and build something?

Michael Risch said...

Anonymous commenter -

From the claim, it's pretty clear that the patent is not about bookmarking. It's about URL shortening, like bit.ly or t.co. Bookmarks store the original URL, not a shortened version based on an unused key.

Anonymous said...

A technologically-semi-literate relative of mine refers to posting a link on Facebook as retweeting it. If I were Twitter, I would worry not that "tweet" will become generic but that it already has.

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