Acacia Wins Judgment Against Yahoo

Stephen Yagielowicz
LOS ANGELES — Acacia Research Corporation has won a $6.6 million judgment against search giant Yahoo for infringing on a patent governing online advertising using background images.

The case, heard in the Eastern District of Texas by a federal jury, ruled that Yahoo's instant messenger program infringes on Acacia's patent.

The "background advertising system," United States Patent 6205432, is "An advertisement system and method […] for inserting into an end user communication message a background reference to an advertisement."

The patent covers graphics used for advertising, which even though they are not "clickable," are used as background images in emails, web pages and other online media.

"Although we are disappointed with the verdict, we firmly believe in the merits of our case, and we are considering our options going forward, including whether to appeal," stated a Yahoo spokesperson.

Acacia is no stranger to the online adult business community, having received licensing agreements for streaming media technology from several industry players and vehement opposition from others.

"My quick read of the patent is that the inventor has created the idea that when viewing an email or web page, that an advertisement is displayed in the background," explained Brandon "Fight the Patent" Shalton. "The advertisement isn't clickable since it's a background image, but exists there for marketing/branding purposes."

"The ability to insert background images in email and web pages is part of the HTML specifications," Shalton said. "The inventor/Acacia is claiming that if that image is an 'advertisement,' then it's covered under this patent that was filed in late 1998."

"It would be interesting to read the court transcripts to see how Yahoo! defended themselves with prior art, which did not satisfy the jury," Shalton added.

According to some observers, the case may pose implications for adult website operators and others using images that contain marketing messages — such as the popular "skins" that some companies use as advertisements on industry message boards.

"It would appear that anything deemed to be 'advertising' that shows up in the background would be covered by these patent claims," Shalton concluded.