Intellectual Property Problems

New book highlights intellectual property practices that the author says are dangerous for the public's interest in higher ed.

December 5, 2016
 
Johns Hopkins University Press
A new book argues universities flirt with dangerous intellectual property practices.

Look no further than apples for a study of intellectual property.

When the University of Minnesota several years ago was preparing to introduce a new variety of apple into the market, it decided against an open release that would have allowed the fruit to be widely grown -- which it had done with a previous blockbuster it developed, the Honeycrisp. Instead, the land-grant university opted to create a managed variety, choosing an exclusive licensee requiring anyone who wanted to sell the new apple on a large commercial scale to join a cooperative. Growers would have to pay royalties on the sale of the fruit. The university also owns a trademark for the new apple, called SweeTango. The tight control over the new apple's growth and distribution upset some small growers who felt the university was suddenly not filling its traditional role of widely distributing the products of its research. Many regarded the setup as a way for the university to maximize its own revenue.

The university, meanwhile, says introducing the apple as a managed variety helps with quality standards for the fruit consumers eat. Doing so also increased the chances of early and consistent royalty payments by giving a private entity -- in this case, the co-op -- an interest in marketing the new apple, bringing it to market quickly and making sure growers pay. A university spokesman also points out that it made allowances for in-state growers that want to grow and sell the apple independent of the national licensee. And he said the royalty payments the university collects provide more sustainable funding for its breeding programs.

The way the university handled the apple is one of many intellectual property cases studied by Jacob H. Rooksby in his new book, The Branding of the American Mind (Johns Hopkins University Press). Rooksby, associate dean of administration and an assistant law professor at Duquesne University, details the ways in which universities have used patents, trademarks, copyrights and trade secrets to become more protective of their intellectual property.

“Instead of embodying an open-knowledge commons, higher education risks becoming a propertied space where institutions predominantly view their identities through a commercial lens,” Rooksby writes.

Rooksby argues that institutions do not have to take such a hard stance on locking down intellectual property but that they have been seduced by market forces, the potential for revenue and the very fact that legal protections are available. He fears the ramifications of overreach, writing that the public at large suffers when institutions spend time and money locking down too many private rights.

The book is a first step in exposing the choices colleges and universities make about their intellectual property, according to Rooksby. He proposes legal and policy reforms designed to help colleges and universities change their ways.

Rooksby answered questions about his book by email. The following exchange has been lightly edited for clarity.

Q: A major argument you make is that higher education institutions harm public interests with far-reaching intellectual property claims and aggressive enforcement practices. Is anyone doing intellectual property the right way right now, in your opinion?

A: Certainly some institutions have their priorities straight in this arena. For example, Carnegie Mellon University does an admirable job, I think, of balancing a commitment to commercialization with concern for the public good. The bigger problem I see is with institutions more modest in size and scope of research that attempt to emulate the tactics and approaches championed by some of the worst offenders, which I discuss in the book.

Higher education is very status driven, and we see it in the intellectual property realm as well. For some, there seems to be a belief that they must be zealous in their embrace of intellectual property, because their competitors are. That sense of competition hurts the public when the competitor they hold in esteem doesn’t engage in practices that further the public’s interest in higher education.

Q: One of the most memorable phrases in this book is about the “noxious enforcement temptations” that come from the increasingly common belief that everything protectable by trademark must be claimed. Do you think it’s possible for institutions to continue claiming trademarks -- or other types of intellectual property, like copyrights or patents -- but enforce them in a way that is less problematic?

A: I do. The problem isn’t necessarily the rights themselves. There are certainly trademarks, copyrights and patents that institutions should be owning, and I describe these areas of activity in the book. But there are many more instances when the decision whether to act to protect a piece of intellectual property is much more discretionary, and in some instances, even inadvisable. Enforcement in those zones is particularly problematic, and my book provides a litany of examples.

But if an institution has a legitimate interest in, say, a trademark, enforcement itself is not problematic. For example, I thought the recent trademark enforcement activity by University of Houston Law Center against South Texas College of Law -- which had changed its name to Houston College of Law and adopted a color scheme for its marketing very similar to the one used by its crosstown rival -- was entirely appropriate. The way that the University of Houston publicly defended its actions in that lawsuit -- creating a webpage devoted to the filings in the case and explaining its action -- was also admirable.

Q: Princeton University recently settled a lawsuit in which residents claimed that the university should not be exempted from local property taxes in part because it earned millions from patent royalties. Do you see the potential for spreading property tax lawsuits or any other direct negative consequence to universities that don’t reform intellectual property practices?

A: I do think there is a real risk here for institutions. The more “commercial” they become in the eyes of the public, the more we are likely to see challenges like the one Princeton faced. There is no getting around the fact that intellectual property protection and enforcement are prime examples of the commercialization of higher education. While these activities are at times consistent with public mandates and the public’s interest in higher education, the point of my book is to illustrate through vivid examples the potential for overreach and abuse that exists in this arena. If institutions aren’t viewing their intellectual property activity as bearing on the public good, they risk prompting public outcry that their activities look more corporate than nonprofit, and that their tax treatment ought to be adjusted accordingly.

Q: Colleges and universities already face criticism for high tuition, and many are scrambling to find sources of revenue. Do you have any concern that intellectual property reforms could harm their streams of funding?

A: Some institutions and commentators have raised this issue -- that is, that revenue pressures justify their activities. Some members of institutional governing boards even approach all issues of intellectual property through this lens. The reality is that intellectual property presents an unreliable vehicle for revenue generation in higher education. Institutions will always be concerned about how they fund the pursuit of their missions, but intellectual property protection and enforcement takes a lot of money in its own right, and the payoffs are not always there.

For example, study upon study has shown that investment in patents does not correlate with commercialization success. And yet many believe that, “at least at this institution,” it will. Similarly, not every trademark registration that an institution amasses will present a licensing opportunity. Certainly there is a market for athletics-related names and insignia, but brand protection and expansion typically costs an institution more than those efforts will ever generate in licensing revenue.

Q: Several proposals you make would have the effect of shifting control over licensing research and copyright of scholarly works away from institutions and to faculty members. But can we be assured that faculty members would be any more responsible than you see institutions as being?

A: In a word, no. As faculty become more entrepreneurial, their goals for how intellectual property gets used may closely align with the goals or practices of their institutions. But faculty as a body are certainly more flexible in their interest and ability to relinquish rights or refashion them when they no longer serve a purpose or are no longer needed to achieve the purpose that led to obtaining them. Institutions, on the other hand, act through offices and departments and bureaucracies, where things like patents and trademarks and copyrights are counted, and kept, and “protected.”

No one wants to be the administrator who lets the next Gatorade walk out the door because they don’t recognize the value of what they have. [Researchers at the University of Florida developed Gatorade, and as of last year the university had received $281 million in royalties on the sports drink since 1974.] So, institutional inertia and risk aversion mean that intellectual property rights have a way of accreting and then lingering in higher education well past their sell-by dates. These rights can last so long that they serve as logjams to others who may be able to put them to better uses. At the very least, I’d like to see institutions more frequently relinquishing rights back into the public domain, or not claiming them in the first instance, should they find that they have no need for them. To be fair, those actions happen at some institutions, but the practice is not nearly widespread enough. Faculty would be more likely to take such actions, particularly if they’re having to shoulder the protection and enforcement costs themselves.

Q: You also call for the creation of a new position in provost offices to handle intellectual property issues. But you point out that current technology transfer offices fall victim to having large staffs that justify their existence by bearing down on intellectual property -- collecting, for instance, a high number of trademarks. Why wouldn’t the same problems arise in the new positions you propose?

A: What I’m calling for is a reorchestration of our understanding of intellectual property rights in higher education. We need to move from viewing intellectual property as purely a legal or business matter, outside the realm of interest or aptitude for most faculty, to instead an area of activity that has real ramifications on the academic enterprise. Provost offices are ground zero for the policy issues that most directly touch on why the public subsidizes higher education and why parents and students go into debt to further their child’s or their own career. Intellectual property bears directly on teaching and research, and yet academic decision makers are often left out of the conversation about how and when to protect intellectual property and then what to do with it.

Provost offices are the natural location to “bring IP in” to the academic conversation on campuses, as opposed to allowing intellectual property to be the sole province of legal and business decision making. People inhabiting the role or assuming the duties I propose in the book are more likely to be intellectual property neutrals than they are to be unflinching intellectual property advocates. That’s because I think that most academics -- certainly ones who hold faculty status before pursuing administrative positions -- are more accustomed to playing a mediating role vis-à-vis the public good and their own institution than are nonacademic administrators whose career stability and advancement are inherently tied to business and the outcome of business decisions they make.

The point is, the reach of intellectual property goes behind just business, touching on matters of institutional policy and academic direction, so the decision making that drives intellectual property activity at colleges and universities ought to be adjusted accordingly. We need people who understand the policy ramifications of intellectual property and whose job it is to ask the question “How does this proposed intellectual property activity further the public’s interest in higher education?” If there is no good answer, that should be answer enough for how the institution should act.

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