Holocaust History Preserver Shoah Foundation's Patents Being Used To Sue Google, Facebook, Hulu, Netflix, Amazon
from the sad-legacy dept
The Shoah Foundation is the very famous organization put together initially by Stephen Spielberg in the 1990s to interview and record video histories of the Holocaust before those who lived through it -- either as survivors or witnesses -- died off. Most people recognize that this was a tremendously important historical project, that involved over 50,000 interviews. In 2005, the Shoah Foundation became a part of the University of Southern California. The organization has continued to do incredible work, but it appears that it's in the process of tarnishing its reputation in a massive way by allowing its patents to be used in a series of patent troll lawsuits (while trying to avoid being associated with the dirty work).The details are a little complex, and it took some work to track them all down, since it involves some shell companies and passing things around. As far as I can tell, no one else has yet reported on this story, but it's shameful to see the Shoah Foundation associated with patent trolling. During the 90's, however, the Shoah Foundation did apply for and get a series of patents (listed at the bottom of this story), mostly around the idea of cataloguing and managing a library of digital assets.
In 2010, USC and the Shoah Foundation offered to sell an "exclusive license" to the patents via Ocean Tomo -- the patent auction house that is a goldmine for patent trolls. Ocean Tomo pitched the patents as being useful for companies "designing, using or selling database management systems," but what they probably meant is that they would be useful for non-practicing trolls who wish to sue such companies. Later that year, the deal was done for $7 million, a portion of which went to Shoah -- who still retains ownership of the patents in question.
In discussing the decision to auction off a license, rather than sell the patents outright, USC's John Sweet told the press that the license had been sold to a practicing entity:
"it was a party that would actually use the patented technology, not a company that buys up patents in order to simply sue alleged infringers."He also told the press, "We don't want bottom fishers."
Guess what they got? Fast forward a year and a half or so, and it comes out that it's Altitude Capital Partners who holds the licenses on those patents (for what it's worth, USC insists that the patent license was actually purchased by an operating company, who later sold the rights to Altitude -- but no one seems willing to name this other company). If you don't know Altitude, think Intellectual Ventures before there was an Intellectual Ventures. It calls itself a private equity firm, but it mainly invests in patent lawsuits, which usually run through a series of shell companies. In this case, the license was given to Digital Innovations LLC (a subsidiary of Altitude) who put the patents in its own subsidiary called Preservation Technologies LLC.
And then Preservation LLC started suing. Late last year, Preservation used some of the 11 patents from USC Shoah to sue Google & YouTube, Netflix, Facebook, Sony, Dish and Amazon, Hulu, Dish again and Facebook again. Below I've embedded the specific complaint against Facebook (pdf). As with most patent lawsuits, the complaint itself isn't that enlightening beyond naming the parties and the patents.
But what's really troubling here is the idea that the Shoah Foundation -- an organization designed to do good and help preserve videos and history -- is now closely associated with patent trolling. Yes, there are a number of intermediaries in between the two, in order to provide some buffer, which I'm sure is supposed to "protect" Shoah from the blowback of patent trolling against a ton of internet companies that offer video online. But the complaints even call out the fact that the tech was developed by the Shoah Foundation. And Shoah still owns the patents in question. Shoah may never have meant for the patents to be abused in this manner, but it sold the license without any such restrictions and was happy to take the money, even knowing how the patents could (and likely would) be abused to attack innovative companies. The statement about them not wanting "bottom fishers" looks pretty ridiculous in light of what happened. If they didn't want bottom fishers, they should have made the license conditional on use. That they did not do so is their responsibility -- and thus USC Shoah should shoulder a significant portion of the blame for allowing the patents to now be used in such a fashion.
I asked USC and Shoah for a comment, and after handing me off to a variety of different people, I finally got this non-statement, which refused to answer nearly all of my questions:
USC owns a portfolio of patents for indexing and searching digital video libraries. USC licensed the portfolio exclusively to an operating company, while maintaining the right to use the patented inventions for research and education purposes. Subsequently, the operating company transferred the license to another entity. USC has learned that the current license holder has brought litigation relating to the patents. USC has no say or financial stake in the litigation.In other words, "we don't want to talk about this." They especially appeared to have no interest whatsoever in responding to the query of whether or not such actions fit with the mission of the Shoah Foundation.
What's odd about all of this is why Shoah retained "ownership" here -- and if it did so in any real way. The deal that USC/Shoah did with Ocean Tomo was hailed as groundbreaking, in that they auctioned off a license, rather than selling the patents outright. USC/Shoah claims it kept ownership of the patents because it needed it to continue operating. But that makes no sense. Similar to the transfers of copyrights in cases like Righthaven, "ownership" of a patent is tied to the specific rights: the right to exclude and the right to sue. It appears that Shoah gave up both of those in their entirety, so retaining the "patent" is meaningless. They could have done the identical deal, in which they sold the patent, but included a license-back to Shoah for the life of the patent. I asked USC if among the rights it retained with "ownership" was included the ability to revoke the license and stop such lawsuits. At the time of posting, USC has not responded. Thus, either it does have that right and chooses not to use it -- in which case it has even greater culpability for these lawsuits -- or it really didn't retain any "ownership" of the patents in question at all. In which case the whole "we just licensed" it thing was nothing more than a PR stunt to allow for such patent trolling.
If USC/Shoah wants to proudly retain ownership of these patents, then they also need to take responsibility for how the patents are being (ab)used to shake down companies. They can try to talk a good game about being hands off and having no financial stake in the litigation effort, but that's because they already collected the cash. If the patents are being used for trolling, and USC/Shoah still owns them, then USC/Shoah has to bear the responsibility for how they're being used. That it seeks to distance itself from the lawsuits filed over patents that it still claims to own is an incredibly weak response and shows just how shameful an action this was.
The real shame in all of this, though, is that the legacy of Shoah is now tarnished by patent trolling. You would hope that the organization would think better than to have its good name sullied with such anti-innovation practices. Trying to shakedown companies like Google, Netflix, Amazon and Facebook for building their own digital library platforms... just seems wrong, and against the sharing spirit of the Shoah Foundation. An organization like that should be celebrating platforms that make it easier to preserve video and oral histories, rather than suing them. If Shoah really said that the patents wouldn't be used to sue others, then it should have made that explicit in the license. As things stand, Shoah owns patents that are being used for trolling. If it's not a troll itself, due to the licensing shell game, it clearly knew what it was getting into and enabled such nefarious trolling. It's too bad, as I've donated to Shoah in the past, but there's no way I'd donate again to an organization that has been involved in patent trolling.
USC Shoah should issue an apology in the strongest terms possible for what happened -- and this should be a reminder to everyone that even if patents are granted with the best of intentions, down the road, things may change. Shoah let greed get ahead of its mission and now its reputation will be forever tarnished for allowing such anti-innovation practices to happen with its own patents.
The patents in question:
- 6,199,060: "Method and apparatus management of multimedia assets"
- 6,581,071: "Surveying system and method"
- 5,813,014: "Method and apparatus for management of multimedia assets"
- 6,092,080: "Digital library system"
- 6,212,527: "Method and apparatus for cataloguing multimedia data"
- 6,574,638: "Method and apparatus for cataloguing multimedia data using surveying data"
- 6,549,911: "Method and apparatus for cataloguing multimedia data"
- 6,353,831: "Digital library system"
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Filed Under: digital library, holocaust, patent troll, patents, preservation, shoah foundation, video
Companies: altitude capital partners, amazon, digital innovation llc, dish, facebook, google, hulu, netflix, preservation technologies, shoah foundation, usc
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Sounds like another Righthaven
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Re: Sounds like another Righthaven
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Re: Re: Sounds like another Righthaven
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Re: Re: Re: Sounds like another Righthaven
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Re: Re: Re: Sounds like another Righthaven
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Re: Sounds like another Righthaven
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What else?
The way the trolls are going, I wouldn't doubt it.
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No financial stake other than the $7 million you were already paid?
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In situations involving exclusive licenses, an exclusive licensee is generally able to file and litigate a lawsuit within the scope of the license. The full transfer of title is not a prerequisite.
Neither the Foundation nor USC have any reason to mislead anyone concerning this matter. If the payment received two years ago was for a fully paid-up license, which seems likely, then the statement by USC is accurate, i.e., it holds no stake in the litigation or its outcome.
Seems to me you are just looking for another excuse to slam patent litigation using the Foundation and USC as a proxy. They have done nothing wrong, and, after all, if anyone should be blamed for something wrong it is the wrongdoer and no one else.
And, for whatever it may be worth, I am certainly not an advocate of using patents as the functional equivalents of negotiable instruments. Nevertheless, but for the patents both the Foundation and USC would have received no financial benefit from the work done by the Foundation that resulted in the issuance of the patents. It invented things, it patented them, it received financial recompense for that effort, and it used the monies received to further the its laudable work. Why you think this is wrong escapes me.
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Re:
Other than the $15,000(may vary per situation but not a small number) yearly commitment(licensing fee?) that they charge universities and institutions for streaming the videos.
Honestly patents sold by publicly funded universities and then being used to sue people of the very same state(google is a person right?) seems to bite the hand that feeds.
And our awesome patent system continues to impress. I'm with Cuban and hope Yahoo wins a big settlement from facebook.
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Re:
Seems to me Mike has just found another perfectly valid reason to slam patent litigation using the Foundation and USC as obvious examples of bad behaviour.
"They have done nothing wrong, and, after all, if anyone should be blamed for something wrong it is the wrongdoer and no one else."
If you make high and mighty claims about how you intend to 'sell' your patents only to "a party that would actually use the patented technology, not a company that buys up patents in order to simply sue alleged infringers" and who won't be "bottom fishers", and then you jump into bed with bottom fishers that don't actually use the patented technology, and do buy up patents in order to simply sue alleged infringers, is that not wrong?
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3....2....
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You should not make money on Holocaust !
http://www.bigmeathammer.com/aushwitz.htm
The Kratz Family lost around 70% - 80% of the bloodline during the years of World War Two.My father and I both agreed that the stories he has told and that others have told should be free knowledge.He is disgusted to learn of people who would make money on his tragedy and the tragedies of millions of others.
When I had to purchase some photographs to use in my documentary and I paid around $1500 to the Washington DC Holocaust Museum my family was outraged.They had all given freely in donations to help build this museum and here they were charging me outrageous money for the use of maybe a dozen photos.
My family does not agree on the making of money from events like the Holocaust.I do not support the actions of Shoah nor would my family.
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Bad Patents
Kind of odd when two software developers can fully independently come up with the same solution if faced with the same problem. The one who does it first then suing the second, third and so on is then totally misplaced.
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Patent Troll! Patent Troll! Patent Troll!
The article just seems a bit overdone to me on the patent troll thing, as that seems, to me, to miss the real lesson to be learned here.
Does the foundation have the responsibility to acknowledge responsibility for selling off their patents without guarantees that they wouldn't be used in the way that they themselves said they were avoiding? I certainly believe they do. Clearly at least an "our bad" is in order depending on the details, which I also would hope would be forthcoming. Maybe even an explanation of how they mucked it up, if they did so, or an admission that they just didn't really care, or whatever.
But this is a separate issue from the whole 'patent troll' concept.
Let me put this out there: the reason that so-called 'patent trolls' are considered by many to be double plus ungood has little or nothing to do with the fact that the companies are non-practicing. And I think that's what gets lost in the language there. But, if you accept patent law at all, you have no real ground for rejecting non-practicing entities: in fact, an open market with non-practicing entities that simply buy (or license I suppose in this case) patents increases the value of valid patents through increased demand.
For that matter, what of the (mythical?) 'little guy' that comes up with some sort of industrial patent that they would never be able to implement due to costs, etc.? Are they only allowed to profit from that patent by selling it to someone who can implement it? I mean, if the little guy kept the patent and then sued a company that implemented it without licensing, would the 'little guy' now be considered a patent troll? [Hmm, "No *true* patent troll actually created the patent..."]
See, I think what is, generally, meant by "patent troll" has little to do with whether the entity is practicing or non practicing, and I think that by focusing so much on whether a horrible horrible patent troll (or someone who enabled the existence of such a troll) is doing some horrible horrible patent trolling ["trip trop, trip trop, who is that using my process for a piece of software?"] we're not saying what really needs to be said.
And what do I think needs to be said?
First, these patents seem to me to *clearly* be obvious to those skilled in the art. Patents are not supposed to be granted for obvious inventions. Seriously, take ten decent development teams, give them the basic requirements, ask for additional ideas too, and I counterfactually bet that with a week of brainstorming, ten of the teams would come up with most of what is contained in those patents, and that at least one would have them all.
Second, using bad law to do something that in other contexts could be called "extortion" is still wrong, regardless of whether it's legal. And in this case it's against companies that seem to me to currently be the ones that truly "promote the Progress of Science and useful Arts". And they did it simply using ideas that they likely were able to develop independently with little effort.
People who use the law in this manner, are, quite frankly, a**holes. And those that knowingly enable them to do so? Also a**holes. Someone: "But they're within their rights, so they're not doing anything wrong." So what? When someone was within their legal rights to get someone sent to debtors prison, did that make them less of an a**hole? No. And as far as I'm concerned, anyone who defends the people using these tactics: also a**holes.
And, finally, I think that it needs to be said that we already know there are a**holes that are willing to do things like this, yet the true problem isn't that there are a**holes out there, it's that the screwed up patent law system itself encourages a**holes to act like total a**holes, at least as it currently stands. I mean, c'mon, there are always going to be a**holes. But if we've got a legal construct that is increasingly and massively allowing a**holes to be... well, so a**holish, shouldn't that tell you there's a systemic problem far larger than any one a**hole?
I think that, especially in this case, by solely focusing the negative energy on the patent troll enabler, you have completely missed an opportunity to hit at the root of the issue: patent law sucks. (Yes, I realize you hit at the root many times elsewhere, I just mean that articles like this tend to polarize people against what are fairly small potatoes, in the scheme of things, through what amounts to a demonization. Us vs. Them. But, I mean, c'mon, current patent law encourages entities to obtain, sell, and use bad patents, by pretty much any workable definition of "bad patent".
How about some additional perspective, like:
"Current patent law can't be patched, because it's in many ways a political system that gathers power unto itself like any other bureaucracy, so, really, we should even expect what would otherwise be a foundation we could support to go bad, the system provides too many pitfalls allowing what would have otherwise been a squeaky-clean organization to be corrupted?"
I know I'm not saying anything new here, but software patents tend to be so much bulls**t anyway, and despite one possibly good but ambiguous ruling that possibly could have limited the scope of patents, it ultimately failed, and the momentum is always going to be towards expanding patents to and past the point that the public good is even involved, much less the entire reason for it.
And, given the obvious inability of judges to remedy the situation, the only possible solution would be for the legislation to be re-worked entirely. But that would also be doomed to failure, because (as we saw with SOPA/PIPA among many other things) most politicians are a**holes as well and the legislation will almost certainly be designed to simply help those who have greased the right palms.
So, like I say, yes, I agree with the main thrust of your article: the foundation did something it said it wouldn't do, and it ought at the very least take responsibility for that. But I have seen increasing vitriol directed at patent trolls (not saying it's just here), and I just wish it seemed that when I read about the awful trolls, I saw something more proportional as to what truly makes the trolls into trolls, and as to the root cause of the situation, and what could even possibly be done about it.
[let the flaming begin ;)]
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Re: Patent Troll! Patent Troll! Patent Troll!
I accept patent law (in some form) because its purpose is to promote the useful arts and sciences by allow inventors a temporary monopoly to make products based on their inventions. I also concede that due to the nature of modern industry, it makes sense to allow patents to be licensed or transferred to others who can make products based on the invention.
Patents should not have "value" in and of themselves. Patents are a means to an end, the end being the existence of new innovative technology and useful innovative products and disclosure of the technology into the public domain. When patents are considered to have "value" beyond what they enable for society as a whole, when they are commodities to be traded, or a de facto measure of the productivity of a company (as opposed to providing useful and profitable goods or services), then we have a serious problem.
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Re: Re: Patent Troll! Patent Troll! Patent Troll!
But, let's posit that we have a patent system that's one you would accept; what would ever stop that system from degenerating into the one we have now? I can't see anything other than possibly "all of a sudden everyone in the position to profit from the patent system politically or economically becomes a saint and does everything in their power to ensure that they never take advantage of the power that exists due to the system in a bad way..."
What is it that prevents those with self-interest in doing so (read: big business and the politicians they're in bed with) from subverting the well-intended acceptable system? Instead of truly encouraging innovation, restricting it to a look at more recent times, it has stifled innovation. Without patents, wouldn't big corporations have even more incentive to innovate, since they can no longer rest on their laurels, relying on a patents as a big stick to whack their would-be competitors with? What sort of changes could be made to ensure that patents were so cut-and-dry that no one could file suit with the knowledge that in many cases those sued will simply settle rather than deal with the uncertainty?
It's not that you're saying something I haven't heard, or that I don't agree that things *could be* far better than they are. But, that they *aren't* seems good evidence against them, and until there are some very convincing answers to the many questions that arise such as those, and as to how such a system can be devised, implemented, and then maintained indefinitely without being corrupted at some point by those who will do whatever is in their power to derail or alter the system so that they can benefit from the imbalances created by an system stacked in their favor.
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more dissembling
Call it what you will...patent hoarder, patent troll, non-practicing entity, shell company, etc. It all means one thing: “we’re using your invention and we’re not going to pay or stop”. This is just dissembling by large infringers and their paid puppets to kill any inventor support system. It is purely about legalizing theft. The fact is, many of the large multinationals who defame inventors in this way themselves make no products in the US or create any American jobs and it is their continued blatant theft which makes it impossible for the true creators to do so.
Prior to eBay v Mercexchange, small entities had a viable chance at commercializing their inventions. If the defendant was found guilty, an injunction was most always issued. Then the inventor small entity could enjoy the exclusive use of his invention in commercializing it. Unfortunately, injunctions are often no longer available to small entity inventors because of the Supreme Court decision so we have no fair chance to compete with much larger entities who are now free to use our inventions. Essentially, large infringers now have your gun and all the bullets. Worse yet, inability to commercialize means those same small entities will not be hiring new employees to roll out their products and services. And now some of those same parties who killed injunctions for small entities and thus blocked their chance at commercializing now complain that small entity inventors are not commercializing. They created the problem and now they want to blame small entities for it. What dissembling! If you don’t like this state of affairs (your unemployment is running out), tell your Congress member. Then maybe we can get some sense back in the patent system with injunctions fully enforceable on all infringers by all inventors, large and small.
Those wishing to help fight big business giveaways should contact us as below and join the fight as we are building a network of inventors and other stakeholders to lobby Congress to restore property rights for all patent owners -large and small.
For the truth about trolls, please see http://truereform.piausa.org/default.html#pt.
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Re: more dissembling
This is the kind of ridiculous bullshit that some people claim to believe.
And I wonder if "staff" (Ronald J. Riley's sockpuppet) has a license for copying and pasting that word salad every time "Patent" is mentioned in the article.
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Re: more dissembling
I was considering asking you to find a web designer, but I'm not sure I would want to subject any of them to you.
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Only you are tarnishing Shoah's legacy
Why is this so difficult to understand? Perhaps Mike would be happier if every patent license included a specific restriction on further licensing, but is that realistic?
No one else is reporting on this story because it is a NON-STORY. There is no reason to tarnish the foundation's legacy, but Mike, I hope you are happy because now YOU did.
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The tarnishing is on his other foot the one not in his mouth
He is demonstrably just the kind of industry puppet that Shoah has documented built the public relations and brick and mortar infrastructure of Dritte Reich.
If you have bought into the troll argument for Shoah or anyone, you have bought into a falsehood. The world of litigation, invention and manufacturing is far too complex for such simplistic descriptions.
Non-manufacturing entities are the primary source of most core inventions and always have been. Of course that's inconvenient for Masnick to recognize. So he wants to paint as evil a group of people he and a few other "trollaphobes" consider "bad". They are different from the wealthy who support him. They are different from his neighbors. Since neither he nor any of his staff have ever invented anything, he hasn't the slightest idea what actual inventors and really think and feel.
I'm sorry to say that Masnick is closer to the upper middle class European and German that welcomed and bought into the transformation of the word Juden into a hate word with his Troll mongering then he would ever care to admit.
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Re: The tarnishing is on his other foot the one not in his mouth
You try to make a link between validity and the idea that "non practicing" entities have historically been the source of most patents -- a point I'm semi-inclined to agree with -- until we run into the problem of the company filing the lawsuits here has the classic foot print of nonpracticing entity, hidden by shell company, hidden by another entity, hidden by another shell company and so on. The classic patent troll.
Take into account that USC had pledged not to lease/sell/license the patents to such an operation. And by extension Shoah.
The criticism is a bad business decision and then trying to wriggle out of it with the usual legal PR smoke screen.
Secondary arguments and tangents about how Facebook steals privacy, something it's users most often freely consent to, allegations about Google doing the same don't change that.
For me I want to know more about what's going on here.
Mike's also been a financial supporter of Shoah so if he's disappointed by this he has every right and obligation to write about it as he has without being accused of antisemitism.
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Re: Only you are tarnishing Shoah's legacy
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Databases are now illegal?
GCStar(Open source collection manager) is illegal?
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Trolling for Shoah
A real Mitzvah!
So we have been hearing about how Facebook steals our privacy, along with Google and others. They take our information and make billions on the internet you know the world wide web we American taxpayers paid for and which they run their commercial mega- businesses on royalty free- FOR NOW.
To help Shoah the people who bought Shoah's patents (and surely Google or Facebook could have done so) seek some financial return. Very fair whatever name they are called even troll. As jews being called names is quite common, as Shoah is all too much a witness.
Let us hope their kindness is rewarded 100 times over!
Well you know how it goes GOOGLE, and FACEBOOK ask not for whom the bell trolls, it trolls for thee!
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Re: Trolling for Shoah
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Re: Re: Trolling for Shoah
If it was a different subject, say SOPA/PIPA I'd say Vic Kley is trolling for the so-called "content" industry.
Oh well, maybe the sharks today are hungry
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I'll let my wife decide what to say, if anything.
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