This FAQ contains additional Acacia information specific to the Adult Industry.

Rob Berman from Acacia has called the Adult Industry "low hanging fruit" and therefore one of the first targets.


**** Global Disclaimer ****

For those that didn't know it, you should consult your lawyer about the best course of action for your business.

None of the postings on any of these threads by me constitute a legal opinion because I am JD-challenged (meaning we don't have a legal degree and not an attorney). My posts express my opinions and could be based on facts, hearsay, gossip, observations, premonitions, hindsight, delusions, or insanity.

If people do exactly what I say in posts, then go jump off a bridge.... this will allow natural selection to remove the idiots.

For those still alive and still reading, this disclaimer has been provided for all posts on the Acacia subject. The disclaimer is effective retroactivey for all prior posts, all future posts, and any posts in a previous lifetimes.



Acacia publishes list of Adult companies that have licensed:




Some info concerning patent re-examination request like the one that is being done against the Eolas patent (Microsoft lost in court to Eolas for allowing IE to use hahahahahaed programs like Flash). The World Wide Web Consortium (W3C) has petitioned the USPTO and the USPTO has accepted the request.

Usually takes 3-6 months after filing to be addressed. Due to public outcry, the request took 1 week and the USPTO Director personally approved the re-exam request!

Information gathered from talking to several patent attorneys on re-exams:

The patent examiner will spend about 15 hours total on the re-exam..which is alot more time than is spent on the actual patent(!!!) before coming to a preliminary decision, before then talking to the patent holder.

A person or company pays the filing fee (about $1,300) and then needs to have a patent attorney craft explanations of prior art to invalidate the patent claims. The estimate cost is about $30k-$50K for the whole process in attorney time, not to mention money spent to find prior art.

A completed document is filed to the USPTO...and then the examiner reviews the information and discusses with the patent holder. The review is one-sided..only the patent holder is allowed to discuss the prior art points with the examiner.

The process could take 6-8 months (or longer) before a final decision is made.

If the prior art is solid and the patent holder cannot explain away the evidence, then the patent is revoked and invalidated.

It is better to argue in court with a judge, then to take your chances with submitting a document to the USPTO. Atleast with a judge, you can argue your points....with the re-exam, there is not discussion.

The downside is that the patent holder can continue to gain new licensees of their patent, until the final outcome has been determined.


Listing of Acacia Legal Activity
When clicking on this URL, choose California and press "select state", then in the 'company name' box, type Acacia and press search.


Reading all the threads is a good idea FIRST. Get informed yourself, your attorney won't know what all this patent stuff is about. If you are still confused, post your question here or feel free to email me: brandon at FightThePatent.com

*NOTE* Don't post anything that will potentially get you into trouble ie. your company name, URL, etc.... ask generic questions, like 'i have a friend who.......'

Secondly, talk to your attorney. Understand that he is NOT a patent attorney, and he should focus more on the ramifications of your decision for the following choices:

1) do nothing
2) settle
3) fight it

Don't let him steer you down the path that "well if it is a patent, it must be valid" or "if Hustler signed, it must be valid".

Hustler's representative Ken has posted many times that Hustler's decision to license is based on their business decisions and does not validate or prove the validity of the patent (thanks again Ken for coming out with those posts).

If you don't make that much money then based on your situation, your options are #1 and #2.

If you want to try and fight against the patent claims, make sure you have these following requirements:

- 10k-35k set aside Then contact: spike at homegrownvideo.com


Some quick links for your own research:

Acacia's home page, all lists the companies that have settled based on their Press Releases

Countries where Acacia has patents (international)

Link to their patent:

Acacia patent as filed with USPTO:

Acacia Licensing agreements for Webmasters and Content Producers

Info and articles about patent abuse cases being tracked (Acacia, USA Video, SightSound)

Internet Media Protective Association (adult industry association)


Here's a quick summary of who is doing what:

Defense Fund:

IMPA has pulled together the current defendants to share a common pool of money to pay for attorney expenses. The buy-in is a few thousand a month. Since there are 11 defendants, each one gets a chance at bat. The money put in goes towards dealing with your individual correspondance with Acacia and the Defense Team, as well as money to fund the first people's whack at bat. Should the first batter strike out, there is a second batter, and so on. I feel that the Defense Team has a solid case against the patent claims. People like me and all the great volunteer searches are still looking, there is always a need for that gold nugget in the pile of rubble.

Contact: spike -at- homegrownvideo.com


IMPA is an association that is a watchdog for all kinds of issues that pertain to webmasters. Currently, IMPA is focused on patents, best practices (COPA, 2257), and the trademarking of the term "virtual sex".

IMPA has a membership fee (http://www.impai.org/join.html)..most would fit in at the $100/year. IMPA membership money goes towards hiring attornies and funding activities to spotlight and target issues that affect webmasters.

Fight The Patent Foundation ("FTPF"):

FTPF is proposed to be a non-profit (501c3) organization that focuses only on patents. It will operate like the ACLU, to provide companies faced with a patent abuse claim with defense attorneys, as well as expert witnesses and prior art. FTPF's charter is to use the 'pay it forward' concept to motiviate expert witnesses to come forward to provide testimony, critical to support the prior art finds. FTPF will also use a grassroots approach to finding prior art by opening up a system where people can submit prior art leads, and get rated on their finds to earn rewards.


Acacia is just the first company to be wield patents to the adult industry. There are many more companies with audio/video patents, as well as other patents that will affect this industry. Patent holders with Acacia-like business plans could come from WITHIN the industry.

This is the new business model that some feel is a great way to make money, without ever making a product, without delivering a service, and without developing a company.

The big players have settled....proving that there is no community? I would disagree...and I hope that the rest of the webmasters who haven't settled can band together to show community.

If you have money and want to fight, i suggest donating to the Defense Fund so you can get yourself legal protection.



The following is an excerpt from a YNOT article where Berman answered some questions (Berman didn't answer my email on some questions, so i gave them to YNOT...and here is one of them from Jay's interview/article: http://ynotnews.ynotmasters.com/issues/100203/page2.html)

When you mentioned “one time ftp transfer of content files”, is it infringement of your patent if the video files were compressed into a ZIP file for downloading, rather than just the AVI or MPG file? Is it infringement if a person transferred / downloaded a ZIP file that didn't have any audio or video files, and why?

Rob Berman: Our patents cover the transmission and receipt of digital content. Digital content is transmitted and received via the Internet by being encoded, compressed into a series of addressable data blocks, and stored. The content is then sent to a remote location, decompressed, and played on a computer or other receiving device. This is the process covered by our DMT patents.

Everything about our technology is outlined in the patents. In exchange for making this information publicly available, the United States Patent Office grants a monopoly to the patent owner for a period of 20 years from the filing date of the patent. That is why Acacia has the legal right to determine who gets licenses, and which companies do not.

Zipping a file is a way of further compressing a file. To determine whether the transmission and receipt of a zipped file is covered by our patents, it is necessary to look at the underlying file that is being zipped. If the file consists of audio/video content, the transmission and receipt of the file is probably covered by our patents. If the underlying file consists of still photographs, it is probably not covered.


Part 1 of YNOT's interview with Berman of Acacia 9part 2 is linked in the previous post):


Spike's rebuttal to the article:


Current list of defendants waiting for their day in court (list posted by Far-L)

Some of the companies fighting this, meaning actually engaged in a lawsuit disputing Acacia's claims include:

Video Secrets
Homegrown Video
Top Bucks
Audio Communications


Has Acacia only targeted the adult industry?

Acacia has been sending its "information packets" to mainstream as well..... in the 3Q conference call, the CEO or President said they were in "talks" with cable companies.. of course he also said there were no open litigations at the time and were in "talks" with the remaining companies that had disputed their claim.

Eastern Michigan University received a packet (i confirmed with their General Counselor) and Seton Hall U. (i confirmed it with their CTO) are examples of non-adult companies.

They have outlined a broad range of industries that they are targeting. The first signs of real resistance has been with the adult industry.

No mainstream companies are close to going to court than the 11 adult companies.


Originally posted by Nismo (on GFY)
I dont own any paysites, or do design, nor do I own a TGP. I just push other peoples/business' sites like ARS, silvercash, etc, yet I got an acacia letter. Should I be worried?

Sounds like you are an affiliate to sponsors....

Acacia's claims against you are that you are a "contributory infringer"..sending traffic to sponors that haven't licensed their patent and you are profiting from that arrangement.

Yes, it does sound absurd to me too.. but that's what they claim.

Ken released several statements about Hustler saying that because Hustler signed, any webmaster that was an affiliate would not have to get a license.

The problem is that most webmasters have more than 1 sponsor.. so it seems that Acacia would have to figure out what percentage of your income came from "infringing sponsors" and charge you accordingly. So if you ran Hustler banners, and other sponsor banners, you are not free from Acacia's claims, only free of the percentage of revenue you derived from Hustler.

Same goes with all other sponsors that settled.

The by-product of this licensing/settling is that as an affiliate who might be faced with an eminent lawsuit by Acacia, may feel they should only use sponsor programs that signed...therefore "convincing" other sponsors to settle, otherwise, they start to lose affiliates.

Patents have a way of reducing competition by selectively CHOOSING WHO YOU WANT TO OFFER A LICENSE.

So Acacia could pick and choose who they wanted to ALLOW to license their patent... conspiracy theorists start thinking about this one.


AVN article: Acacia Reaching To Affiliate Sites


Originally posted by juicylinks (on GFY)

Based on that ruling would ACACIA lose any rights from sending out naymore packets and suing anyone else?

A very interesting question, which also brings up a related question, "If you have a licensing agreement with Acacia and the patent is found invalid, does the contract become invalid when the patent is invalidated?"

If the patent is found to be invalidated, then yes, no more packets can go out... BUT, if they are stuck in court for months and years, they could STILL be sending out packets...

A patent dispute case could take many months, up to years... so while the court cases are going on, Acacia could still be "convincing" webmasters to license.

You also DON'T get your money back if the patent is found invalid.

Berman was almost bragging at this fact on the D$ interview when someone asked about V-Chip case being lost, and he said something to the affect that they already collected $27M in licenses, and didn't consider that to be a loss (if anyone has a transcript or an archived file, it would be great to have).

What would be nice is if the judge puts a hold/freeze on any more lawsuits that Acacia can file until the outcome of the current 11 defendants. If that were to happen, then everyone could breathe a sigh of relief and everyone can be focused on supporting the 11 defendants.

I am not sure if the judge can do that, i am not a lawyer, and i have never seen any instance of this on any TV show.

If the judge allows more suits to be filed while the cases are going on, then this would be bad news for webmasters who have to decide to settle for a license, while cases are pending.

As far as the question i posed, i haven't followed up with the v-chip case after the verdict with Sony...about the companies that did license the V-chip patent, and their responses, etc.


Known Acacia IP's used to visit websites

Acaciares.com (corporate HQ) -

HMB.com (attorney firm that is handling the patent litigation for Acacia



Originally posted by hiddenuser (on GFY)

...... sign the contract pay 1st year then drop videos and tell arcaia to shove their patent as I no longer use video or audio, would that be ok?

I have had so many say that to me.... the costs to fight are high and uncertain, whereas the couple hours of attorney time to review the license and pay the license is fixed.

It's a tough business decision you have to make, especially if you feel the patent is invalid, and have almost no choice but to either pay, or wait for the court summons.

This is exactly what webmasters in mainstream are facing with PanIP. One of the defendants put together a website at http://www.YouMayBeNext.com

Patent abuse runs rampant to all business, regardless of industry, and Acacia is not the only one. So many also think to just deal with Acacia, then stick their head in the sand.... This is just the beginning of patent licenses and additional "taxes" on your business.

You might want to check out http://www.FightThePatent.co.nz

The New Zealand/Australian cousin to www.FightThePatent.com

We are not related, but they are tracking patent abuse from DET about doing e-commerce with consumers who are outside the country.. you may be able to find some patent attorneys involved with this issue that might be able to help you in evaluating your decision.


"Attention Patent Holders" by Brandon Shalton

If you have a patent and are thinking about coming into the adult industry to "convince" people to license your patent, I have some observations and comments for you (for those that are satire-challenged, this is a satire):

1) It won't matter what your patent actually means, what will scare webmasters it what you WANT your patent to mean. Just point out how you SAY they are infringing, show them a patent application and a license fee, and they will most likely believe you.

You don't have to be right. Take advantage of Patent and Civil Law where they are guilty until proven innocent.... and as you know, only a court will be able to make that decision.

2) There is no community. Don't worry about the big players looking out for the smaller players.. just get sweetheart deals with them so you can parade their name around town. You can make so much more money by getting a mass number of webmasters to pay you a smaller amount, then to get a few big players to pay you a large amount.

3) Don't try to go after large mainstream companies or universities, you will only get yourself in to a huge court battle with people who have deeper pockets. Pick on the targets that make enough money to pay for a nice car and a nice house and who spend their time on GFY posting how great they are.

4) Don't charge alot of money or do any percentages of GROSS revenue.. That's just a bad idea.. make the fee structure simple like if you make less than $300K/year, the fee for the license is like $1000. Over $300K, charge $2000.

$1000 is cheaper than 3-5 hours of attorney time and a low enough threshold that they will just pay you the money to be done with it.

Think about it.. 10,000 websites giving you $1,000/year = $10M/year all for doing nothing but sending out information/infringement packets. You already know how to do spam, just print it this time and mail it. I bet you will see higher then 1:500 conversions.

5) Don't worry about people like me who are trying to bring awareness to patent abuse. While I am trying to help defend people's right to do business, free of any bad patent (a bad patent is one where the idea or invention was in use before the patent), I am being criticized and bashed for my efforts.

Don't worry about my Fight the Patent Foundation idea, just look at the pledge counter below.. i am open enough to display the total, and as you can tell, I am far off from reaching the total. The big players could contribute to the Foundation, since I am not focused on just one patent abuse case, but most likely they will just continue with their business and deal with people like you on a case-by-case basis.

Anyone who tries to get webmasters to contribute to a fund to band together gets seen as some kind of "scam artist" or a fraud. Even organizations that have been setup by fellow webmasters like IMPA have trouble getting webmasters to donate/become members.

By making a sweetheart deal with some big players, you could actually get people who admire those companies to actually bash anyone who tries to fight against your patent. Some of these people will have good credibility with the webmasters that others will automatically think that they must be right, so they too should take up the bashing. It's a brilliant strategy to help silence and defeat any effort that tries to go against you.

6) Don't worry about the 11 defendants that are standing up to Acacia... they will get burnt out financially from the expenses of their defense. They will also be jaded by the lack of industry support and will most likely not be standing up to fight against the next attack. Think about it.. paying like $15K-$50K each for defense, could pay your $1,000 license easily, for 15-50 years!

7) Go after everyone up the chain from web designers, web hosts, webmasters, content producers, domain registrars, etc. Target everyone.... you never know what will stick til you throw it on the wall. Even send out letters to webmasters who are in no way infringing on your INTERPRETED patent... they may just pay you anyways.

8) Don't bother thinking that I might want to join your company (had one company already ask). While I am very technically skilled with some business savvy, I would rather give up all my technological innovations, turn my computer off, disconnect from the internet, and go do some woodworking, rather than see patent abuse stifle innovation and financially drain companies.

9) The webmasters won't read this whole post, it's way too long for them.. anything longer than a 1 sentence jab is too much for them, so don't worry about me posting this in a public forum, they won't be reading it.

10) Use Affiliate progams as easy ways of getting mailing addresses of people to target. Maybe offer some stock to these companies. I know you think that's harsh, why bite the hand that feeds you? If you can get them sweetheart deal, maybe give them some stock, and keep it all confidential, then it's all good.

Sure, it may suck that the people who helped make them successful get hit with the license. They know it takes money to make money, so this low-cost patent license is just another cost of doing business. If they can't afford the $1,000/year, then they just aren't doing something right. Afterall, the sponsor worked so hard to build up their business, they know what it takes.


You have picked a great target in selecting the Adult Industry.. Berman from Acacia said it best, they are "low hanging fruit".

Just follow along with the Acacia news, study their methods and you will have a blueprint for your own plans.

The only problem that I think you may have, is that other people already have similar ideas of targeting webmasters for patents.

If too many patent licenses come out at the same time, you could end up really pissing people off, and then they would join together (when that happens, i'll be long gone after my fingers have gone stiff from all the emails and posts trying to get support, from my voice going scratchy in all the phone calls in helping to bring awareness, and by the bruises I take for being bashed in defending people's rights).

Better that you join forces with the other patent players (just don't make it public because that could be an antitust issue) and schedule/time your efforts. Maybe like 1 per quarter.. spread out the schedule so you put things in rotation and then you won't hurt your individual efforts in leeching money from these hard working webmasters. Just when their wound starts to heal from the previous patent attack, you hit them with another.


This is a satirical post. If you did not laugh at the end, then you would have realized that "truth is said in jest".

Everyone of these points you can see is going on right now (minus some stuff I made up for this fictional story).

If you want to take a stand against patent abuse, join me in my solution and my fight at http://www.FightThePatent.com/go

If you don't like my solution, come up with a better one. I will join it if you can come up with a better way.

Just wait a little longer... the fictional story above will be come a real one.


Listen to the archived 3Q conference call at :http://biz.yahoo.com/cc/9/35459.html (gee, wonder if Yahoo has a license)

Interesting points i remember from the call:

1) A shareholder asked if there were any open litigations and the exec answered NO. Which means they misrepresented the facts..there are 11 defendants just waiting for the court to schedule a date. ( Anyone know any Securities Attorney? )

2) That Acacia has updated their business model to include having companies loan them their patents and allow them to go around and "convince" people to license the patent, then they share the bounty with the company. (Acacia PURCHASED the 'DMT' patent. )

3) Only $1M set aside in their warchest for patent litigation. (Where did the $27M in licenses for V-Chip go?)

4) Acacia would be expanding licensing activities into Europe and Asia in Q4

5) That's all i can remember.. i have seen places on the web where you can pay for transcripts of conference calls...


Originally posted by Marina (on GFY)
I have a question...........

Wouldn't it just be cheaper to hire a hitman?

Not these days, with the high insurance premiums for hitman's health and medicial coverage, cost of living adjustments, 401K plan, plus the additional fees that the Hitman Union requires for covering trauma or therapy for the hitman, along with the re-habitilization and education programs, it gets to be very expenese... and the government just doesn't recognize these groups of people for government subsidies or welfare programs.


Contact info for Acacia From a YNOT interview with Berman:

"We are reasonable business people and are not the villains that some have made us out to be on the chat boards. If anybody has questions or special circumstances that apply to them, they are welcome to call (949-480-8300) or email us at rberman@Acaciares.com."


As I have been reading in another thread, calling them names, having them hangup on you, or you hanging up on them, doesn't get you the answers.


Xbiz interviews Berman about Affiliate/Sponsor licensing issue:


"In most cases, if the sponsor licenses from Acacia, the affiliate will be covered," Berman told XBiz

(my comments)

The problem is that webmasters carry more than one sponsor... so that puts them in the same place of infringing.

You would exclude the revenue received from the sponsor that was covered, and then total the GROSS revenue on the ones that were unlicensed to determine your licensing fee.

Plus, if you have any audio/video files served off your own server, than that's another count of infringement.

It's still absurd


It has been said in many, many posts that early settlers or other licensees had received sweetheart deals.

One company that settled said they didn't get a sweetheart deal and that they don't believe there was ever a sweetheart deal with anyone.

If there were sweetheart deals, it would be a no-no for Acacia since that would violate some antitrust laws.

These come to mind:

Sherman Anti-trust Act (1890)
Section 1 outlaws contracts and conspiracies in restraint of trade

Clayton Act (1914)
Section 2, amended by Robinson-Patman Act (1936), bans price discrimination that substantially lessens competition

Section 3 prohibits certain practices that might keep other firms from entering an industry or competing with an existing firm

Section 7, amended by the Celler-Kefauver Act (1950), outlaws mergers that substantially lessen competition

Federal Trade Commission Act (1914)

Section 5, amended by the Wheeler-Lea Act (1938), prohibits unfair methods of competition and unfair or deceptive acts

If you are a sponsor and you feel that other sponsors got sweetheart deals, you are able to make a complaint at:



Snapshot of Acacia's financial status:


Originally posted by Badabing (on GFY)
1) If I have a free website without a/v content that links to a sponsor who provides a/v content, must I get an affiliate license with Acacia if that sponsor has a license with Acacia?

2) Must I get an affiliate license with Acacia if the sponsor I link to does not have a license with Acacia?

3) What if my sponsor doesn't have a license? I'm not clear what their expectations are in that case.

1) No, Berman has made it clearer in recent news releases that if a sponsor has a license, then the affiliates don't have to. The problem is that a webmaster usually runs more than 1 affiliate program, so they will end up having to either get a license, or drop all sponsors who haven't settled

2) Yes.. if the sponsor hasn't settled, then that makes you a 'contributory infringer' so therefore you would need a license.

3) If they don't have a license then you could be liable.

This is all absurd and ridiculous..and unfortunately, the court systems move slow to give the 11 defendants their day in court.


Originally posted by NightLizard (on GFY)
just a quick question, since acacia has no canadian patent, can they still come after canadian webmasters, is it under nafta?

I have some Canadian webmasters looking into this since I have yet to find a definitive answer.

Try calling them at http://patents1.ic.gc.ca/intro-e.html

I am guessing that US patents apply to canada, but Canadian patents might need to be filed in the US.

Let me know what you find.






copyright 2003, FightThePatent.com