Backward University IP Polices Force Convoluted Sakai License

A couple of weeks back, I was somewhat disturbed to read a post by Unicon’s John Lewis on the forthcoming Version 2.0 of the Educational Commons License (ECL), which is used by both the Sakai and the Kuali projects. While pointing out some significant improvements over the previous version, John notes correctly that the proliferation of open source licenses has a cost in terms of confusion in the marketplace and wonders why Sakai and Kuali can’t just use the Apache license upon which ECL is based. (After all, he observes, Moodle uses plain vanilla GPL.) So John did a little digging, and the only difference he could find between ECL and the Apache license was a clause on patents. Specifically, ECL weakens Apache’s patent protection clause.

Seeing this, I contacted Chris Coppola, the Sakai board member who has been leading the charge on licensing issues. Chris was gracious enough to post more detail on the issue and help me get in contact with other folks who could help me make sure that I understand the legal implications correctly. Now, I happen to trust Chris’s judgment and motivation, and I am confident that the license would have come out the right way if he had final say. Unfortunately, he does not. Nor does anyone on the Sakai Foundation Board. As a result, ECL 2.0 is disturbingly flawed from the perspective of the edupatent crisis.

The plain vanilla Apache license provides pretty strong patent protection for the adoptees of software covered by it:

Subject to the terms and conditions of this License, each Contributor hereby grants to You a perpetual, worldwide, non-exclusive, no-charge, royalty-free, irrevocable (except as stated in this section) patent license to make, have made, use, offer to sell, sell, import, and otherwise transfer the Work, where such license applies only to those patent claims licensable by such Contributor that are necessarily infringed by their Contribution(s) alone or by combination of their Contribution(s) with the Work to which such Contribution(s) was submitted. If You institute patent litigation against any entity (including a cross-claim or counterclaim in a lawsuit) alleging that the Work or a Contribution incorporated within the Work constitutes direct or contributory patent infringement, then any patent licenses granted to You under this License for that Work shall terminate as of the date such litigation is filed.

This clause accomplishes a couple of things. First, it puts the onus for patent licensing issues on the contributor rather than the user. It says that the contributor is licensing any patents (s)he holds on the code contributions (s)he has made. Second, it enables the open source project to automatically build up a protective patent hedge by saying that if you sue the project (or any related parties) for patent infringement, then your license to any patents associated with project are revoked, i.e., you can now be sued by any holder of a relevant patent for infringing on those patents.

In contrast, here is the passage from the ECL:

Any patent license granted hereby with respect to contributions by an individual employed by an institution or organization is limited to patent claims where the individual that is the author of the Work is also the inventor of the patent claims licensed, and where the organization or institution has the right to grant such license under applicable grant and research funding agreements. No other express or implied licenses are granted.

This clause has nothing to do with protecting adoptees from patent infringement suits. To the contrary, it is entirely about protecting institutions (in this case, universities) from having their patents licensed to the open source project without their express permission. It is designed to protect patent holders.

Correction: Sakai Foundation Executive Director Michael Korcuska has pointed out to me that, in fact, the latter clause is an addition to the Apache clause, not a replacement for it. While I did have my post reviewed by several people familiar with the ECL before posting it, I should have looked more closely at the language myself. My bad. The ECL does weaken the Apache license, but not as badly as my original post had indicated.

Now, in and of itself, this change obviously doesn’t mean that the universities that make up the Sakai and Kuali communities are suddenly supportive of edupatents. But let’s put this in some context. As Jim Farmer recently pointed out in a guest post here on e-Literate, research universities in the United States have become frequent patent aggressors. They have successfully lobbied Congress to shield them from the provisions in forthcoming patent reform legislation that is designed to reduce abuses of the patent system. They are spending literally hundreds of millions of dollars every year asserting patents. In short, the research universities like the ones that make up Sakai and Kuali’s core constituency view the packaging and sale of their knowledge production as a central institutional strategy.

Whether or not you believe that patenting academic research is generally in tension with–if not antithetical to–the core mission of institutions of higher learning, there is an inescapable irony here that the universities that presumably approved the Sakai Foundation’s decision to file an ex parte challenge to Blackboard’s patent are simultaneously moving to protect their right to assert patents that they own against licensees of the open source educational software that they support. (By the way, I understand that these very same intellectual property policies are preventing some US research universities from participating in the IMS, which puts affirmative obligations on standards contributors to at least declare any relevant patents they hold in advance of their participation.) This is a slippery slope, at the bottom of which is the untenable position that it would be OK for an entity to stifle innovation in educational software through patent assertion as long as that entity is a university.

To be fair, the universities’ situation is complex because many of them have revenue-sharing agreements with faculty. The worry is that a Sakai contributor from an institution could contribute code that infringes on the patent of a faculty member of that institution who is not a Sakai participant and has not agreed to contribute the patent. Under the plain vanilla Apache license, a license to the patent of the non-participating faculty member could be construed as having been granted by the university, which shares ownership. (In all likelihood, the universities did not anticipate that they might want to give patents away for free when they created the revenue-sharing agreements with faculty. Now they’re stuck, even if they want to change the current state of affairs.) This argument and it’s counter-argument are well articulated in an exchange between Chris and the Apache Foundation’s Brian Behlendorf on the OSI listserv. (If you have strong feelings about the issue–and particularly if you are going to blog about it–I strongly recommend that you read the thread.)

I understand this argument for the more permissive patent clause in the ECL. But I am not persuaded by it. In addition to illuminating the Faustian nature of the contract between university researchers and research universities, it shows a balance of priorities that I don’t agree with. I think that Behlendorf fundamentally has the better of the exchange when he writes,

It really does come down to a value judgement on the part of this community, as to whether an acceptable balance is struck between incentives for contributors and legal reassurance for users. Open Source has long been about constraining the flexibility of contributors and licensors in the interests of recipients, and I think because of this, the implicit economic value realized by recipients has been huge.

The argument I have made against edupatents all along has been that, given the undernourished market for educational software, patent assertion does more net economic harm than good, to the detriment of the core educational mission. Universities should err on the side of prioritizing the advance of quality education over the financial gain of individual researchers and then work to mitigate the risks to those researchers, rather than the other way around. It only takes one bad actor to assert a patent that will freeze the market and damage the entire educational community in the process. However good the intentions of the current Sakai and Kuali institutional participants may be, in an era where the University of Washington is seeking an injunction against computer manufacturers based on the work of an undergraduate, it is not unrealistic to fear that a university could assert an edupatent at some point.

I emphasize that the source of the problem lies not with the Sakai or Kuali Foundation boards but with the intellectual property policies of the participating universities–policies which are embedded deeply in the fabric of many R1 institutions. For example, Gary Schwartz, one of the guiding lights behind the RPI-led Bedework open source calendar, recently wrote about his own project:

The contributor’s agreement is interesting with respect to the renewed interest in higher ed in exploiting their intellectual property commercially, and in protecting their IP. Specifics aside, it has become increasingly difficult at some universities to sign contributor’s agreements in the wake of this very protective approach to IP. We would likely have more difficulty today signing the same contributor’s agreement we signed four years ago.

Like any open source project, Bedework, Sakai, and Kuali are driven by their constituents, and while the project leadership can sometimes exert influence, they usually can’t exert control. At the same time, the ongoing licensing conversations around these projects present an opportunity–and therefore a moral obligation–for the Sakai and Kuali communities to challenge their home institutions to rethink their policies. In Chris’s post about the licensing issue he writes,

It turns out that the patent license granted in the Apache license conflicts with the institutional policies of many of our contributors, and changing those policies is going to take some time….I should note that the contributors from institutions whos[e] policies conflict have been active in establishing these practices and even lobbying for institutional policy change.

This is exactly the posture that I would like to see coming out of these open source communities. The IP policies of these universities need to change. It is my hope that the Sakai community will attack the edupatent problems that they face at home with the same determination and depth of feeling that they have brought to the challenges coming from the private sector.

It is tempting to paint the recent turmoil over edupatents as the result of a single bad actor. But the truth is more complex than that. Current intellectual property law in the United States deforms market incentives in ways that are certainly bad for the educational software market and may well be bad for academia in general. The broader academic community needs to look at the problem comprehensively and figure out how to respond to it as individuals, institutions, and a community as a whole. The response needs to be pragmatically viable, but it needs to be ethically viable as well.

Update: In light of the correction noted above, the position of the universities that they need to make sure that they are the ones, rather than individual contributors, to grant licenses to individual patents, seems somewhat more reasonable. Nevertheless, the larger point of this post remains intact. Given the undeniable and significant increase in acquisition and assertion of patents by universities, and given the amount of damage that the assertion of a single edupatent could do in the marketplace, any good license should err on the side of protecting adoptee rather than the patent owner. More importantly, academic-based open source communities need to pro-actively engage universities in broad and public conversations about developing, sensible, internally consistent, and ethical IP policies for academia. The Sakai and Kuali communities have actually been innovators in this regard, and I hope my original post makes clear that my intention is to encourage their continued efforts on this difficult but important issue.

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About Michael Feldstein

Michael Feldstein is co-Publisher of e-Literate, co-Producer of e-Literate TV, and Partner in MindWires Consulting. For more information, see his profile page.
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