IP in EM

Research Questions

Define the main legal tools of protection (privatization) available for the field (patents, copyright, trademark, trade secrets, contracts, public domain) (remember the exercise done in genomics and proteomics).

(note to R.A. - try to create a matrix that cross references the previous two questions - let's try several ways to visualize how the narratives either hit barriers based on protection or can be synergistic via open licensing approaches - an example is the table in the Case Analysis Framework)

Introduction

Copyright represents the most significant intellectual property tool involved in this field due to the textual nature of its outputs. Patents are also involved when factoring in the educational software segment; however, educational software represents a significant amount of copyrightable material as well. The use of strategies focused on copyright is one of the fundamental points on which ideological differences can be identified between private companies, the set of universities and independent organizations interested in OER, and the advocatory associations that represent each. Similar to the issues facing the newspaper industry, and by analogy the film and music industries, the protection afforded by copyright has become uncertain as EM goes digital and the ability to monetize digital distribution still presents a challenge and potential barrier to innovation.

Copyright

Related Litigation

• Basic Books, Inc. v. Kinko's Graphics Corp., 758 F Supp. 1522 (S.D.N.Y. 1991)

  A New York Federal District Court ruled that Kinko's Graphic Corporation infringed copyrights when it photocopied materials (including chapters of books and articles from periodicals) for sale to students as coursepacks for their university classes. The copyrighted works infringed included hardback and paperback editions of in-print and out-of-print trade and professional works as well as textbooks. The 12 copied excerpts in the case ranged from 14 to 110 pages and from 5% to 24% of the works. In addition to ruling against further photocopying by Kinko's without permission of the copyright owners, the Court awarded the plaintiffs damages, court costs, and attorney's fees resulting in almost $2 million. The Court's decision in this case did not prohibit the reproduction and sale of anthologies but rather the reproduction and sale of anthologies made without obtaining proper copyright permission or meeting the criteria of the Classroom Guidelines or the statutory 'fair use' provision in Section 107 of the Copyright Act." (http://www.nacs.org/public/copyright/AppendixB.asp)

• Princeton University Press v. Michigan Document Services, Inc. , 99 F.3d 1381 (6th Cir. 1996)

  "In this case, Princeton University Press and two other publishers filed suit against Michigan Document Services, Inc., and James M. Smith for making coursepacks, without permission, that included excerpts of the plaintiffs' copyrighted works. The copied materials ranged from 17 to 95 pages and from 5% to 30% of the original works. Ultimately a majority of the judges on the U.S. Court of Appeals for the Sixth Circuit upheld a lower court ruling that the use of the copyright materials for an educational purpose does not itself constitute fair use and held MDS and Smith to be infringers. After the U.S. Supreme Court declined to review the decision, MDS and Smith settled the case, the settlement providing that MDS may not use more than one page of copyrighted material belonging to one of the plaintiffs or any member publisher of the Association of American Publishers to create coursepacks without obtaining copyright permission." (http://www.nacs.org/public/copyright/AppendixB.asp)

Patents

Blackboard 2006 e-learning Patent Dispute

In 2006, the U.S. Patent and Trademark Office granted Blackboard a "wide-ranging patent" for the e-learning functionality that "allows a single user to log on once and access multiple courses". In November 2006, the Software Freedom Law Center filed a request for re-examination of the patent on behalf of open-source software providers Sakai, Moodle and ATutor, claiming that "the patent gave Blackboard a monopoly on most educational course management software" (Mickey and Meaney 2008, 153). In January 2007, the Patent office overturned its support for Blackboard's patent application and reopened the application approval review. The Patent office later "essentially invalidated the assertions Blackboard made to secure its patent" in a pre-decision announcement in March 2008 (ibid.).

Although Blackboard insists the patent will survive re-examination, the company issued a February 2007 pledge to 'never assert' its patent rights "against home-grown or open-source course management systems", specifically mentioning: Sakai, Moodle and ATutor, Elgg and Bodington (Mickey and Meaney 2008, 153).

In mid-2008, Blackboard decided "to team up with Syracuse University to develop software that would allow institutions to connect their Blackboard systems to the Sakai open-source course management system". Syracuse will develop what the so-called 'Blackboard-Sakai Connector'. "The open-source community was concerned, despite Blackboard assurances, that it would be the next target after a court case against competitor Desire2Learn is completed" (Mickey and Meaney 2008, 154). Blackboard sued Desire2Learn for patent infringement in 2006; in defense, Desire2Learn petitioned for re-examination of the patent. "The jury upheld Blackboard’s patent, but judgment against Desire2Learn is on hold pending final resolution of the patent issues" (ibid.).

A U.S. federal appeals court ruled on July 27, 2009 in favor of Desire2Learn's appeal and ruled that Blackboard must return the $3.3 million in damages required by the previous ruling. Blackboard says it will continue with further patent infringement litigation against Desire2Learn on 3 other patents, which Desire2Learn maintains are overly broad and should not have been approved by the US Patent Office in the first place. (Young 2009)

Public Domain

see Alternative Business Models in EM#Public Domain

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