Hobbyist Photo-Sharing Site Defends Itself Against Company With A Patent On Online Voting

BytePhoto.com has been running online contests since 2003, but is now being sued by a company that obtained a patent on this sort of online voting.

BytePhoto.com has been running online contests since 2003, but is now being sued by a company that obtained a patent on this sort of online voting.

Patents are intended to protect the developers of specific concepts. That’s why you don’t see a patent for “thing that can treat diseases,” but for individual medicines and devices. Last summer, the Supreme Court confirmed you can’t simply patent a generic idea just because you apply it to a computer. But a small photo-sharing site is being sued for infringing on a patent that arguably covers a vast range of vote-for-your-favorite competitions.

For more than a decade, BytePhoto.com has allowed users to upload photos to be voted on by others.

Little did the site know that in 2012, a company called Garfum was granted a patent (#8,209,618) that describes:

“[A] method for sharing multi-media content among a plurality of users in a computer network comprises creating a plurality of user accounts, each of said user accounts corresponding to one of the plurality of users, and having a plurality of interactive features including a first feature that permits the user to upload the multi-media content to the computer network; forming a user network including one or more of the plurality of user accounts in communication with one or more other user accounts and to the uploaded multi-media content via the computer network; categorizing the uploaded multi-media content in accordance with the subject matter of the uploaded multi-media content; organizing the uploaded multi-media content in a competitive format; and establishing a hierarchy for the uploaded multi-media content within the competitive format as a function of a competitive measurement system.”

That’s the very long way of saying it’s a patent on the idea of uploading images to an online community that then votes on them in a competition format.

In Sept. 2014, Garfum — which runs a site that claims to be “the leader in linking both online video sharing and online video competition while at the same time connecting millions of people around the world” — filed multiple lawsuits in a New Jersey federal court, including one against BytePhoto.

The brief complaint [PDF] vaguely alleges that bytephoto “directly or through intermediaries made, had made, used, imported, provided, supplied, distributed, sold, and/or offered for sale products and/or systems and methods for sharing multi-media content among users in a global computer network that infringed one or more claims of” the Garfum patent, and that Garfum is entitled to damages plus interest.

Garfum alleges that continued infringement would cause “irreparable harm for which there is no adequate remedy at law.”

Rather than settle the case, BytePhoto has decided to fight back, first filing a counterclaim [PDF] asking the court to declare that BytePhoto didn’t infringe on the patent in question and that the patent itself is invalid and/or unenforceable.

With assistance from lawyers at the Electronic Frontier Foundation, BytePhoto filed a motion to dismiss [PDF], claiming that the patent merely describes the general notion of running a competition by popular vote, but in the context of an online environment.

“Patent law protects only concrete and tangible inventions. It does not protect abstract ideas, even when a patent’s claims are directed to the use of those ideas on a computer,” reads the motion. “Mere recitation of conventional computer processes is not enough to satisfy this requirement. Similarly, a patent must do more than state an abstract idea and apply it on the Internet.”

The motion cites last summer’s SCOTUS ruling in Alice Corp. v. CLS Bank International, in which the Supremes held that merely using a generic computer to implement an abstract idea doesn’t make that idea patent-eligible.

“The claims of the [Garfum] patent simply say to implement a competition by popular vote using a generic computer network,” reads the motion. “The claims therefore fail the Alice test and the Court should grant Defendant’s motion to dismiss.”

“Patents like this improperly interfere with the ability of people to use the Internet to do things they’ve been doing in the analog world for generations,” explains EFF Staff Attorney Vera Ranieri in a a statement. “Here, this patent is interfering with the age-old tradition of like-minded enthusiasts getting together to celebrate their hobbies.”

Ranieri argues that, “Demanding a payout for infringement on an obviously bad patent like this one isn’t just unfair. It acts as a chilling effect against those who would want to use the Internet to expand their community.”

We’ve reached out to Garfum for comment on this motion and on the validity of its patent and will update if we get a response.

We’ve also contacted Threadless.com, another site that was sued by Garfum in 2014, but whose case was quickly dismissed at the plaintiff’s request. We don’t know if that was because Threadless settled or because Garfum chose simply to not pursue the matter. Again, we will update if more information is forthcoming.