(1)
There's an article in this week's Chronicle of Higher Education with the
latest on the court battles. There have been a variety of articles in
the Chronicle in the past year which you can get to if you go to the
http://chronicle.com.
But remember, the general rule for anything legal (agreements,
copyright, contracts, fair use, etc.) is that it depends entirely on
what your own institution's general counsel's office willing to support
and what they are willing to back you up on if you are ever taken to
court.
monika
Monika R. Dressler, Ph.D.
Director, Language Resource Center
University of Michigan
Ann Arbor, MI 48109-1275
tel.: 734.764.0424
http://www.umich.edu/~langres
Colleges Join Forces to Fight Company's Patent Claims on Use of Audio
and Video Online
By ANDREA L. FOSTER
More than 50 colleges have agreed to collaborate on a legal defense
against a company that claims to hold patents on the concept of
streaming audio and video recordings online -- and that is demanding
payments from colleges and companies that rely on streaming technology.
The company, Acacia Media Technologies, a subsidiary of the Acacia
Research Corporation, of Newport Beach, Calif., is renewing efforts to
enforce its patents even though it suffered a legal blow in federal
court last month. In the past two weeks, Acacia has sent out at least
100 letters to colleges asking them to pay the company a licensing fee,
usually $5,000 a year, for the right to store sound and video on servers
and then deliver it via the Web.
In the letters, Acacia asks colleges to sign a nine-page license
agreement and make payment by September 15 to cover all infringement
occurring up to that date. Otherwise, the letters say, the institutions
will face enforcement action and increased licensing fees, and the
waiver for past infringement will be withdrawn.
Sheldon E. Steinbach, vice president and general counsel at the American
Council on Education, said on Tuesday that colleges have been working on
a coordinated legal response for about a year, and that the number of
colleges wanting to join the effort is growing.
Acacia's demands "will be met by uniform opposition," said Mr.
Steinbach. "We have a bunch of predatory scum who are asserting a patent
right of a dubious nature."
Robert A. Berman, general counsel and a senior vice president at Acacia,
was not available for comment on Tuesday. In an article this week in a
Baltimore newspaper, The Sun, he was quoted as saying that the licensing
fees were modest and that colleges were failing to respect Acacia's
ownership of intellectual property.
Last year the company asked many colleges to pay licensing fees of 2
percent of their gross revenue from each course that includes video and
audio-streaming technology (The Chronicle, November 7, 2003). For some
large universities, that could mean paying millions of dollars a year,
according to Wesley D. Blakeslee, associate general counsel for the
Johns Hopkins University.
Mr. Blakeslee, who is formulating the defense strategy, informed college
lawyers last week that about 50 colleges were coordinating a response to
the company. And he invited more colleges to participate. He relayed the
information in a confidential e-mail message that a college technology
official accidentally made public on Tuesday.
Contacted by telephone, Mr. Blakeslee declined to discuss the content of
his message. "It should have been privileged correspondence," he said.
In a note to college officials last year, however, Mr. Blakeslee said
that if Acacia's patents were found to be valid they would be broad
enough to cover all computer-to-computer file transfers.
Acacia also has gone after online-pornography companies and other
corporations that use streaming video and audio technology. The
confrontation with the pornography companies resulted in litigation in
federal court, and a ruling in that case last month cast doubt on the
strength of Acacia's claims.
Judge James Ware, of the U.S. District Court in Santa Ana, Calif., said
Acacia's patent claims showed weaknesses, but he stopped short of
invalidating the patents. A final ruling on the case is pending (The
Chronicle, July 30).
Many of the colleges that have received infringement warnings from
Acacia are small institutions that do not have in-house lawyers and that
are frightened and angered by the company's demand for payment, said
Russell Poulin, associate director of the Western Cooperative for
Educational Telecommunications at the Western Interstate Commission for
Higher Education, or Wiche.
"Some of these colleges are having to go out and spend academic money to
find lawyers to look into this," said Mr. Poulin.
Acacia even has gone after community colleges, such as Walla Walla
Community College, in Washington state.
"This is antitrust, for heavens sake!" said Deborah Poarch, the contract
administrator for the Center for Information Services, which provides
information-technology support for Washington's two-year colleges. "How
can you put such a stranglehold on a single pipeline for information
like that?"
Still, some colleges and corporations have agreed to pay fees to Acacia.
They include Capella and 24/7 Universities, which are both for-profit
distance-learning institutions, and Chapman, Oral Roberts, and Park
Universities (The Chronicle, June 4). And eCollege, a company that sells
distance-learning software to institutions, has negotiated an agreement
with Acacia for eCollege clients.
But many public colleges are working with the attorneys general of their
states to mount a defense against Acacia's demands. That's the case in
Maryland and Washington.
"We're in a fact-gathering and research stage," said W. Howard Fischer,
senior assistant attorney general for Washington. Colleges in the state
that received notices from Acacia include the University of Washington,
Washington State University, two regional universities, and two
community colleges, he said.
Other colleges are taking a wait-and-see approach to the letters from
Acacia, observing that the company's litigation with pornography
companies has yet to be resolved. Although a judge may rule the patents
invalid, colleges that sign a license agreement with Acacia now could
still be liable for fees later, said Sharmila Basu Conger, a fellow at
Wiche's educational-telecommunications cooperative.
Jason Schultz, a lawyer with the Electronic Frontier Foundation, has
been advising colleges that have contacted him about the matter not to
sign Acacia's licensing agreement. "I don't think Acacia actually owns
the technology," he said. Mr. Schultz said eight colleges have contacted
the foundation, which promotes civil liberties online (The Chronicle,
July 16).
"The lawsuit is progressing fairly quickly," said Mr. Schultz. "In the
next couple of months there'll be some serious court dates to determine
whether parts of the patents are invalid, and whether they're limited in
a way that doesn't really cover what most of these universities are
doing."
He suspects that the company has set a September 15 deadline for
colleges in a last-ditch effort to get money from institutions before
possibly losing the lawsuit.
Still, Mr. Schultz acknowledges that paying a licensing fee now may be
less expensive for colleges than spending money to contest Acacia's
patent claims in court. "The right thing to do is fight the patents," he
said. "But the practical thing to do may be to pay."
------------------------------------------------------------------------
--------
Background articles from The Chronicle:
Acacia Loses a Round in Court Battle to Enforce Audio- and
Video-Streaming Patents (7/30/2004)
Advocacy Group Challenges Patents on Internet Technology (7/16/2004)
For-Profit College's Deal With Company That Claims Patent May Set a
Precedent (6/4/2004)
Colleges That Transmit Sound and Video Online Reluctantly Discuss
Strategy for Answering Patent Claim (2/6/2004)
A Patent Claim That May Cost Millions (11/7/2003)
Company Tells Colleges That Its Patents Cover Video and Audio for Online
Courses (10/17/2003)
------------------------------------------------------------------------
--------
Copyright (c) 2004 by The Chronicle of Higher Education
(2)
Acacia Media claims to have a patent on all forms of streaming digital media and
is attempting to extort money from users:
http://www.fightthepatent.com/v2/Acacia.html
Some large media outfits, Disney for example, have decided to pay up rather than
go to court. Why create anything when you can get a bunch of lawyers and sue
your way to wealth!
Cheers.
Eric Sherrill <[log in to unmask]>
(3)
We have also received a letter from Acacia requesting a
licensing fee of $5,000 per year in order to continue
streaming video and audio.
Acacia has already licensed some 150 organizations,
including Disney. However, I don't believe there are many
universities and colleges on the list. There is some
question
as to the validity
of their patents. Currently there is a court case (online
porn industry vs. Acacia) which will probably settle the
issue.
It is my understanding that a group of universities and
colleges have banded together to fight this patent(s). The
contact person is Wes Blakeslee of Johns Hopkins
([log in to unmask]). Also, an organization named
Electronic Frontier Foundation (www.eff.org)is fighting this
patent.
If Acacia prevails, any university or college in the US
that utilizes streaming media technology will need to
license the technology with a fee paid to Acacia.
Jeff La Favre
Coordinator of Language Learning Center
John Carroll University
[log in to unmask]
(4)
I may have supplied an incorrect email address for Wes
Blakeslee at John Hopkins University. He is Associate
General Counsel and I understand that he can be contacted by
your institution's counsel if they would like more
information about Acacia and their demand for licensing fees
for streaming media. The correct email address may be
[log in to unmask]
In addition, many institutions are discussing this issue on
the Educause listserv
http://listserv.educause.edu/archives/edupage.html
Jeffrey La Favre
Coordinator of Language Learning Center
John Carroll University
University Heights, OH 44118
216 3974729
[log in to unmask]
(5)
Here's an article concerning Acacia:
http://chronicle.com/free/2004/05/2004052704n.htm
Jeff
(6)
another ridiculous patent that should have never been granted... see info here:
http://www.fightthepatent.com/v2/Acacia.html
http://www.cnn.com/2004/TECH/biztech/07/16/busting.patents.ap/
John DuQuette <[log in to unmask]
(6)
I read about this in the Chronicle of Higher Education at the end of
July. I have heard no more details. I get the sense that they are not
doing too well in the courts, but it seems to me that many schools
will pay the fees rather than risk going to court.
Barbara Need
UChicago--LangLabs
(7)
Here's the latest from the Chronicle:
* MORE THAN 50 COLLEGES have agreed to collaborate on a legal
defense against a company that claims to hold patents on the
concept of streaming audio and video recordings online -- and
that is demanding payments from colleges and companies that
rely on streaming technology.
--> SEE http://chronicle.com/daily/2004/08/2004081101n.htm
Barbara Need
Manager (SS4)
(8)
Hello all,
We got one of those famous letters here. We're still discussing our
options and continuing to monitor which way the wind is blowing.
Here are a couple of online resources and a blurb from EduCause's EduPage:
http://www.streamingmedia.com/patent/
http://chronicle.com/weekly/v50/i11/11a03501.htm (requires subscription)
Date: 8/9/2004 6:34 PM
From: Educause Educause <[log in to unmask]>
TOP STORIES FOR MONDAY, AUGUST 09, 2004
ACACIA GOES AFTER HIGHER ED ON STREAMING VIDEO
Acacia Media Technologies, which claims a patent on technology for
streaming video, has begun a second round of efforts to persuade
colleges and universities to pay licensing fees for the technology.
Acacia has previously sought such fees--under the threat of future
legal action--from adult Web sites and from mainstream companies
including The Walt Disney Co. In letters sent to an undisclosed number
of colleges and universities, the company claims that the schools' use
of streaming technologies violates Acacia patents. The letters extend a
limited-time offer to accept payment to license the patents; after the
deadline, however, the schools could face litigation. Acacia's Bob
Berman defended the company's actions, saying it is only fair that
Acacia be compensated for its property. Others were critical of Acacia
and characterized the patent claims as extortion. Officials from the
American Council on Education and the Electronic Frontier Foundation
have advised schools not to pay the fees requested.
San Jose Mercury News, 9 August 2004
http://www.siliconvalley.com/mld/siliconvalley/news/editorial/9355403.htm
--mike
Michael Nieckoski
Director, Educational Technology Department
World Learning/School for International Training
Brattleboro, Vermont USA
"Computers are useless, they can only give you answers."
--Pablo Picasso
(9)
Hi, Scott:
This reprinted from the Chronicle of Higher Education (I'm just linkin'
here ...):
http://homepages.law.asu.edu/~dkarjala/cyberlaw/CarlsonStreamingPatentCH
E11-7-03.htm
As far as I can tell, Acacia is claiming that any form of audio or video
media transmission over the Internet is covered under one of its 5 US
and 17 international patents, and thus, any organization or business
using this technology is required to pay 2% royalties from revenues
generated in this manner. The patents are conceptual not technical in
nature, and thus cover broadly "compression", "encoding" and
"transmission". Apparently, there's been a recent court case in which
Acacia's claims did not fare particularly well, but I don't have details
-- there's a very recent article in the Chronicle on this, but I've not
seen the issue yet.
Acacia's patents expire in 2011, but in the meantime at least a couple
of institutions -- Capella University and eCollege -- have negotiated
agreements with Acacia. Some Internet businesses, including Playboy
Enterprises and other "online adult entertainment" companies, have
already signed agreements with Acacia, that approach being cheaper than
litigating. Not a good precedent, whatever you think of the content in
question.
A number of universities have received such letters, and I can only
surmise that university counsels are considering their responses.
Hope this is useful,
a.
Andrew F. Ross, Director
Language Resource Center
Brown University
Box 1935
Providence, RI 02912-1935
Office:(401) 863-7010
Cell:(401) 641-0329
(10)
Scott,
There's been a lot of coverage of this issue in the Chronicle of Higher
Education. If you go to their main site at www.chronicle.com and do a
search on Acacia, you'll see a number of articles, including one from a
couple of weeks ago about a recent court decision and reaction from
various institutions.
Best,
Samantha
Samantha Earp <[log in to unmask]
(11)
Susan Breeyear
Assistant Director, IT
Instructional Technology Center
St. Michael's College
Box C, One Winooski Park
Colchester, VT 05439
802 654-2821
We received one of those letters last year. Our lawyers basically told us
to ignore it, since we had only one streaming file on our entire website!
I'll be interested to hear what experience the rest of you have had with
this company.
Regards,
Sue
(12)
Today's Chronicle online has an article that neatly summarizes the dispute.
http://chronicle.com/prm/daily/2004/08/2004081101n.htm
Sharon Scinicariello <[log in to unmask]>
(13)
There is an article in the today's Chronicle of Higher Ed.
http://chronicle.com/prm/daily/2004/08/2004081101n.htm
Interesting....
Jorg
waltje <[log in to unmask]
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