On September 8, 2011, six higher education related institutions released a joint statement endorsing the Leahy-Smith America Invents Act as passed by the Senate. The six institutions are the Association of American Universities, the American Council on Education, the Association of American Medical Colleges, Association of Public and Land-Grant Universities, the Association of University Technology Managers Council on Governmental Relations. The statement is up at the American Council on Education website. Interesting quote:

We appreciate that the concerns of universities and medical colleges were addressed in ways that ensure our institutions’ ability to carry out their public missions. These institutions are the nation’s principal source of the basic research that expands the frontiers of knowledge. The patent system plays a pivotal role in helping them transfer the discoveries made in their laboratories to the commercial sector for development into products and processes that benefit society. The associations’ position on patent reform closely followed recommendations by academic and industry leaders convened by the National Academies in 2004.

Association of Corporate Counsel website has an article about corporate counsels’ dealings with universities in the context of intellectual property intensive joint ventures. Much of the article is about practicing due diligence to be sure that patent ownership, patent equitable ownership and/or duties to assign future applications are clear and consistent as between the corporation and the university. the article then touches on a sometimes-sticky issue:

Finally, corporate counsel should request a meeting with the significant contributors to the inventions. Counsel for the university or nonprofit may not want to grant this request because the university often takes the position that the inventors are not essential to the negotiation process; however, it is critical to assess the inventor’s understanding of the arrangement and whether the inventor will continue to cooperate. Unlike large corporations, most universities and nonprofits provide a royalty stream to inventors associated with the licensing fees or revenue earned on those inventions. Since many of the inventions licensed are very early stage, it will be critical for the eventual commercial success of the technology to maintain an on-going dialogue with the inventor, and most importantly, include a “right of first refusal” or similar mechanism to ensure that as the inventor continues research on the basic idea, any improvements will be owned by your client.

Of course, whether extensive dialogue between the corporation and professor(s) will help things go smoothly, or otherwise, will depend upon the personalities and sophistication of those involved in a given university/corporate jv, but it is easy to understand why the corporation would want such a line of communication open.

From: An August 3, 2011 Intel press release:

These centers represent the next $30 million installment of Intel’s recently announced 5-year, $100 million ISTC program to increase university research and accelerate innovation in a handful of key areas. As with previously announced ISTCs for visual computing and secure computing, the new centers encourage tighter collaboration between university thought leaders and Intel. To encourage further collaboration, the ISTCs use open IP models with results publically available through technical publications and open-source software releases. (emphasis added)

Question: Much open source software has restrictions attached to it. Is it prudent to put legal oversight on these sorts of computer centers to make sure third part “open source restrictions” are complied with? Maybe this depends upon whether these computer centers will ever generate commercial software, or whether they will always remain uncommercialized.

Case: WIAA. v. GANNETT CO., Docket Number 10-2627 (7th Cir. 8-24-2011) What happened: As the governing body for middle and high school athletic programs in Wisconsin, the Wisconsin Interscholastic Athletic Association (WIAA or Association) sponsors statewide post-season tournaments. In 2005, WIAA contracted with American-HiFi, a video production company, to stream its tournament events online. Under this contract, American-HiFi has an exclusive right to stream nearly all WIAA tournament games. Gannett argued that the First Amendment forbids WIAA, as a government agency, from granting exclusivity with respect to the right to stream video of its athletic contest performances. Decision: Governmental entities can grant exclusivity in performances. There is no First Amendment problem in WARF doing what it did. Interesting quote: Among other reasons for denying the First Amendment claim here, the Court noted the devastating impact that claim's like Gannett's claim here could have on the normal business of other governmental entities:

[T]he Wisconsin Alumni Research Foundation (WARF)patents innovations made by the scientific community at the University of Wisconsin at Madison. The University relies on a private party, WARF, to solicit and obtain third-party licensing fees. The revenue from these agreements is substantial: WARF currently pays an average of $45 million annually to the University and has returned $1.07 billion to the school since 1928. See generally Wisconsin Alumni Research Foundation, www.warf.org (last visited Aug. 19, 2011). Gannett’s claim here would cast a shadow over the commercial licenses that WARF sells, by implying that the First Amendment requires it to dedicate its inventions to the public. No case has ever come close to holding this.

At the Innovation website, Ben Ray Lujan cites a new study that shows the importance of tech transfer with respect to federally-funded technology. Moneyquote:

A major study of the current state of affairs of technology transfer across the federal government was recently released by the Institute for Defense Analyses Science and Technology Policy Institute . . . In the first such study in a decade, one of the major findings is that: “support from agency leadership and laboratory directors can have a marked effect on technology transfer and commercialization activities. For example, laboratory directors who support technology transfer may provide resources, flexibility and creative license to their ORTAs (Office of Research and Technology Applications]. Those ORTAs who are not supported by their laboratory leadership can be severely constrained.

This would seem to be common sense, but it is nice to see it acknowledged.

At the Chronicle of Higher Education website, Paul Basken reports that new rules will be published in the Federal Register concerning corporate ties of researchers and required disclosures relating thereto. In a nutshell:

The final form of the changes falls short of some of the more aggressive regulations suggested by Dr. Collins and the NIH. In particular, the rules do not require universities to post online details of the specific financial conflicts involving their scientists. Instead, universities are required only to respond to individual requests for such information. And, despite the fact that the rule-making process was halted a year ago following revelations that a prominent psychiatrist had escaped NIH sanctions by moving to a new university, the final language does nothing new to specifically prevent such a maneuver. 

Today, most universities and colleges have their own YouTube channel where they host videos about the institution, faculty, and students.  These videos often let prospective students interact with the institution in ways not previously possible.  While the copyright status of university-created and –uploaded videos is usually obvious, recent events have shown that any YouTube channel can fall victim to false copyright infringement claims. On August 29, 2011, numerous videos from the official YouTube channels of musicians Justin Bieber, Lady Gaga, Rihanna, and others were removed by YouTube as the result of copyright infringement claims submitted by an entity called “iLCreative.” Like most online content hosts, YouTube has procedures in place that allow copyright holders to notify the host that another person has uploaded content that infringes their copyright.  Section 512 of the Digital Millennium Copyright Act, or DMCA, provides an exemption to online service providers from claims of copyright infringement if the provider puts notice and takedown procedures in place.  YouTube makes the procedure particularly easy with a Copyright Complaint Form that guides the copyright holder through the process. Unfortunately, while claimants must state under penalty of perjury that they are the actual owner of the rights in question and that the use complained of is not authorized, service providers are not arbiters of copyright claims and must respond in an automated fashion rather than analyzing the merits of each claim.  Once YouTube receives a claim, it then notifies the content provider who can provide “counter-notice” that the material does not infringe copyrights. Submitting false copyright infringement claims can have serious consequences.  Anyone submitting a claim must have a YouTube account, and false claims can result in termination of that account.  Further, section 512(f) of the DMCA subjects anyone who makes false copyright infringement claims to liability for damages, although identifying the individual and proving damages can be challenging. Shortly after they were taken down as a result of the false copyright claims, the music videos by Justin Bieber, Lady Gaga, and others were returned. The Take Home Message If your YouTube video or other online content is removed due to a copyright infringement claim, don’t panic.  Confirm that you own the copyrights or have authorization to use the content in question, and work with the service provider to return the content to the site.  In many cases the content will be returned in a matter of hours or days.

On July 29, 2011, a Federal Circuit panel decided Association For Molecular Pathology v. Myriad Genetics (Fed. Cir. 2011). This is an important case for patent law, as it relates to genetics. The short version is that: (i) isolated DNA is eligible for patent protection; (ii) claims directed to working with the isolated DNA, in non-specific ways, are not eligible for patent; and (iii) a claim directed to a specific method of using the isolated DNA for cancer screening is eligible for patent. It should be kept in mind that “eligible for patent” is not the same as “patentable,” and the isolated DNA and cancer screening method must still be sufficiently new and creative to sustain a valid. This decision is reported more fully in a Bond, Schoeneck & King Information Memo. One interesting aspect is that people who work for universities appear on both sides. This is a nice thing about patent law, generally, and it is something that carries over into the slice of patent law dominated by research universities – there is not really a “Patent Plaintiff’s Bar” and a “Patent Defendant’s Bar.” Patents are a double edged sword, and a research university could find itself on either side of a given patent, for or against. This really brings some balance, nuance and moderated synthesis to patent law that one doesn’t always find in other areas of the law. The Association For Molecular Pathology case is a good example of this, whether or not one agrees with where exactly the Federal Circuit has drawn the line on the patent-eligibility of DNA and its associated scientific and medical methods.

Sitting in the archives of many university libraries are old analog sound recordings stored on formats such as phonograph cylinders (the “Edison cylinder”) or vinyl records.  Due to a recent decision by the New York Court of Appeals, efforts by universities to digitize even the oldest of these recordings – dating back 100+ years – have been severely hampered due to copyright protections. The 1971 Sound Recording Amendments On February 15, 1972, federal copyright law protected sound recordings for the very first time via enactment of the Sound Recording Amendments to the 1909 Copyright Act.  However, the protection did not extend to recordings fixed prior to that date, leaving state law as the only protection for pre-1972 sound recordings.  Indeed, per the amendment federal copyright law does not preempt state common law or statues regarding pre-1972 sound recordings until February 15, 2067. New York Common Law Copyright Protection New York is one of several states that provides common law copyright protection for pre-1972 sound recordings (as well as several statutory bases for protection which are not discussed here).  In a 2005 decision, the New York Court of Appeals held that the Copyright Act does not preempt New York common law protection pre-1972 sound recordings, and that the common law protection extends to these works until the date of federal preemption in 2067.  Capitol Records, Inc. v. Naxos, 4 N.Y.3d 540 (2005).  In 2067, the oldest of these sound recordings will have enjoyed more than 180 years of copyright protection. The Copyright Office to the Rescue? In light of the strong common law protection for pre-1972 sound recordings, universities and other non-profits engaged in digitizing projects are hesitant to publish the digital files, potentially relegating these treasures to the depths of university libraries until 2067.  However, a solution could come from the Copyright Office itself.  The Office has recently held hearings on the issue of whether to federalize pre-1972 sound recordings, thereby preempting state common law much earlier than 2067.

At Inside Higher Ed, Paula M. Krebs writes:

The institution to which I was attached, the five-campus University of Massachusetts system, understands its role in its state and region in terms inherited from the Morrill Act of 1862, which established the land-grant colleges and their obligation to train state residents in new techniques of agriculture. The current manifestation of the Morrill Act would seem to be in the university’s commitment to commercial ventures, patents, and intellectual property, helping to start and support new businesses that grow out of research done on campus.

Teach a man to fish and you feed him for a lifetime.

ICANN, the Internet Corporation for Assigned Names and Numbers, is responsible for managing the hundreds of top-level domains (TLDs) on the Internet, including well-known TLDs such as .com, .gov, and .edu.  In early 2011, ICANN approved the new .xxx domain, intended to serve as a voluntary TLD for pornographic sites on the Internet. First proposed over ten years ago, the .xxx TLD has faced serious opposition from politicians and advocacy groups, as well as from trademark owners who are concerned about possible misuse of their trademark.  To address these concerns the Florida-based company that will oversee the domain, ICM Registry, has established a procedure for blocking domains related to legitimate trademarks. Domain Name Registration During an initial 52-day “Sunrise” period (September 7, 2011 through October 28, 2011), intellectual property holders with verifiable trademark rights can reserve domain names to ensure that those names are not registered as domain names by others. Each domain name registration will typically cost between $200 and $300.  Successfully blocked domain names will resolve to a standard information page indicating that the domain name is not available for registration. At the end of the Sunrise period others will be prevented from registering the reserved domain name, but only if no member of the “adult Sponsored Community” has applied for the domain name.  If a member of the “adult Sponsored Community” does apply for the domain name, that member will be given priority in the domain name and the trademark holder will be required to seek other methods of protecting its mark. During a later period of “General Availability” beginning on December 6, 2011, all remaining .xxx domain names will be allocated on a first come, first served basis. Domain Name Disputes Despite ICM Registry’s procedure, many trademark holders will not register a domain name, and most trademark holders will find it too expensive to register all confusingly similar variants of their mark.  Accordingly, there are several mechanisms by which trademark owners can protect their rights, including the Uniform Dispute Resolution Policy (UDRP) and ICM Registry’s newly-formed Rapid Evaluation Service (RES), which is incorporated directly into registrant’s agreement with ICM and was designed specifically for resolution of .xxx disputes.  RES is largely modeled after the UDRP process but is designed to lead to a resolution in 2-5 days and eliminate some of the of the uncertainty found in current UDRP case law. We will be happy to register your trademark during either the Sunrise Period or during the General Availability period.  Alternatively, you can apply to register your mark at one of these registrars. The Take Home Message Regardless of whether you decide to reserve your trademark’s domain name, observation of the new .xxx TLD should be part of your brand monitoring efforts.

Case:  CollegeSource, Inc. v. AcademyOne, Inc., 09-56528  (9th Cir., Aug. 8, 2011) What allegedly happened:  A Ninth Circuit panel decided that a plaintiff company that allegedly had its online collection of college catalogs copied by the defendant company could sue in its home state of California.  Plaintiff alleged that it spent $10 million dollars collecting the college catalogs and putting them online in the popular Adobe pdf format.  In this case, defendant company left plaintiff’s watermark type identification on the catalogs which defendant appropriated to its own use.  Comment:  While attribution is honorable, it kind of came back to bite the defendant in this case by suggesting that defendant knew, or should have known, that plaintiff was in California, thereby supporting California jurisdiction for the law suit.