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In a move reminiscent of Britain declaring war on the German Empire in the aftermath of the Kaiser’s invasion of Belgium en route to France, the eighth most popular website in the United States, Pornhub (no link — to protect the innocent and to let web filters take a break) declared patent war on interactive video marketer-turned-voluminous patent case filer, Haulstars. Just as Belgium was a neutral country thrust into the midst of the real battle between European powers Germany and France, so too were Haulstars’ (in cases filed under its corporate name, Scorpcast LLC) initial targets seemingly neutral “content partners” of Pornhub, rather than Pornhub (MG Freesites Ltd., for those who prefer corporate monikers over brand names) itself. While the appeal of Haulstars’ assault on the relatively weaker — and perhaps most importantly considering that Haulstars is asserting a single patent, less likely to IPR — content partners is an obvious starting gambit for a patent enforcer, it has also drawn a strong reaction from Pornhub.
Like the British, Pornhub has thrown its own legal forces into the fray. At the tip of the spear — at least until what seems like the inevitable IPR gets filed — is a declaratory judgment lawsuit filed on July 28, 2020, against Haulstars in Delaware district court. A new front in the patent war between the parties has therefore been opened. In the case, Pornhub seeks a declaration that it doesn’t infringe Haulstars’ United States Patent No. 9,965,780 (“the ‘780 Patent”), which it notes is already the subject of 18 pending lawsuits (filed by Haulstars against Pornhub’s content partners) in the Eastern District in Texas. In support of its demand for declaratory judgment, Pornhub points to the fact that the Pornhub website is accused of infringement in each of the 18 Texas cases, since “ScorpCast specifically refers to the Pornhub website as the “Accused Instrumentalities” in its infringement allegations in each of the Copending Complaints.” As a result, Pornhub argues that declaratory judgment jurisdiction lies in Delaware, since it has a “reasonable apprehension and potential that ScorpCast could file a lawsuit against FreeSites for infringement of the ‘780 Patent.”
The ‘780 Patent itself is a key reference point for Haulstars’ own customer marketing. On its website, the company declares that it “offers patented interactive video technology that makes content experiential and shoppable.” As part of its assertion of the ‘780 Patent against Pornhub’s content partners, Haulstars alleges that the videos uploaded to Pornhub by those content partners, when combined with Pornhub’s interface, “enables a navigation event to occur at least in response to a user selecting images and/or text (together “Tags”), which are overlayed over the video, resulting in a navigation event opportunity.” Put differently, Haulstars’ infringement claims center on the “Tags” functionality offered by Pornhub’s video playback interface, where the content partner can “add Tags to the slider bar” which can contain text or images, and “allow the user to to jump to specific points in the video.” While Pornhub aficionados may be more familiar than most with that functionality, it seems clear that it is not limited to porn per se, but is technology relevant to video playback generally. At the same time, Haulstars apparent strategy of trying to take the path of least resistance with its assertion of the ‘780 Patent suggests that it considered Pornhub an easier initial target than YouTube, for example.
The filing of the declaratory judgment action by Pornhub puts the lie to any suggestion that it would be unwilling to defend its suppliers (i.e., content partners) or leave itself vulnerable to an infringement claim by Haulstars at a time and place not of its choosing. Not only did Pornhub protect its ability to IPR by filing only for a declaratory judgment of noninfringement as opposed to invalidity as well, it also included some substantive points that preview its noninfringement arguments as to the ‘780 Patent. For example, it points out that when the Pornhub user interacts with the video playback bar, the image shown to the user is from the video itself, not from a separate image as required by the claims. Similarly, Pornhub points out that any text shown to the user is not clickable — and thus can’t trigger a “corresponding navigation event” as required by the claims. At first blush, it seems like these arguments will at least trigger claim construction issues for resolution by the court, assuming one of the earlier-filed Texas cases doesn’t get to Markman first. But at the same time, I would not be surprised to see Pornhub file an IPR in short order, in support perhaps of trying to get all the District Court cases stayed while the validity of the ‘780 Patent is litigated in the PTAB.
Ultimately, this situation highlights the panoply of options available to a determined accused infringer, even what that party is initially attacked indirectly. Considering the porn industry’s robust relationship with IP issues — whether it be copyright in video content, trademark protection of brand names, or patenting activity around innovative adult toys — it is perhaps not a surprise to see Pornhub taking an active approach to defending its content partners, and by extension itself, from the attempts of an industry outsider to force it to pay royalties. At the same time, Haulstars has clearly committed to making the most out of the ‘780 Patent and will have no choice but to press its claims against multiple fronts in the absence of settlement. It may not be titillating to anyone but patent litigators, but the procedural maneuverings thus far suggest this is one patent battle worth a watch.
Please feel free to send comments or questions to me at gkroub@kskiplaw.com or via Twitter: @gkroub. Any topic suggestions or thoughts are most welcome.
Gaston Kroub lives in Brooklyn and is a founding partner of Kroub, Silbersher & Kolmykov PLLC, an intellectual property litigation boutique, and Markman Advisors LLC, a leading consultancy on patent issues for the investment community. Gaston’s practice focuses on intellectual property litigation and related counseling, with a strong focus on patent matters. You can reach him at gkroub@kskiplaw.com or follow him on Twitter: @gkroub.