(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institutions will face enforcement action and increased licensing fees, and the waiver for past infringement will be withdrawn.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]