Acacia Research Corp., the California-based
company that claims it owns a patent covering all streaming video and
audio technology, says it has reached an agreement with university
attorneys that opens the door for schools to begin paying royalties on
their distance-education programs and other applications where these
technologies are used on campus networks. The Oct. 12 announcement
represents a change in stance for the university community, which had
shown little interest in two previous licensing agreements proposed by
the company.
The accord is the first sign that the contentious two-year battle
between higher-education institutions, which argued that royalty
payments could bankrupt fledging distance-education programs, and
Acacia, which claims it has a right to profits reaped as a result of
its patented technology, is nearing an amicable resolution.
Schools that already have received letters from Acacia seeking
royalties for streaming audio and video across campus networks now must
decide whether to accept the company's latest offer, which is good
until Dec. 1, or wait to see if the company's patents hold up in court.
If the patents--which are currently under review in a Northern
California district court--are upheld, Acacia stands to make several
millions of dollars a year off schools and universities. If they are
ruled invalid, schools won't owe the company a dime.
So, why should schools even consider purchasing a license from
Acacia before the judge issues a ruling?
If the patents are upheld, Acacia then reserves the option to seek
higher payments, explained Karlton Butts, vice president of licensing
for Acacia's Technology Group.
By signing a license now, he said, schools can lock themselves in at
the reduced rate for the life of the patent--meaning that, no matter
what happens, Acacia will never be able to charge license-holders more
than what was originally agreed upon. If the judge rules against
Acacia, schools would simply stop making payments, Butts said. Acacia,
however, would not reimburse schools for any fees already paid.
Under the latest agreement, schools and universities would pay an
annual licensing fee to Acacia based on their full-time enrollment, or
FTE. For example, schools with enrollments of 1,000 to 5,000 students
would pay $1,500 a year. Schools with as many as 10,000 students would
pay $3,000 a year; for up to 15,000 students, the cost would be $4,000
annually; and for up to 20,000 students, the cost would be $5,000 a
year. Schools with more than 20,000 FTEs would pay $5,000, plus an
additional $1,000 for every 10,000 full-time students, according to the
contract. Schools with less than 1,000 full-time students would be
exempt.
According to official documents reviewed by eSchool News,
the annual fee would cover all streaming and downloading of video and
audio content on campus, whether for distance learning activities,
library services, or personal use. The only exception would be virtual
streaming of athletic events, which Acacia considers separate from
educational use and, thus, a separate revenue stream for the school.
Butts said Acacia has been working to come up with a more attractive
deal for schools. Realizing how difficult it is for universities to
monitor accurately the flow of video and audio clips streamed across
their networks, he said, the goal was to draft an agreement that both
sides could support.
"When we first approached the schools, there was a lot a
resistance," Butts said. "We worked with schools as best we could to
figure out a model that was both acceptable for them and acceptable for
us."
Butts says the new model is favorable for two reasons: (a) It
engages a flat rate based solely on full-time enrollment, which means
colleges and universities needn't worry about tracking the streaming
habits of individual users; and (b) the simpler measurement will enable
participating schools to calculate how much they owe up front, without
the hassle of audits and other time-intensive procedures.
"The revised license addresses many of the problems that schools had
with the terms of the earlier Acacia proposals," said Wesley Blakeslee,
associate general counsel of The Johns Hopkins University (JHU) in
Baltimore. A leader in the opposition to Acacia's earlier proposals,
Blakeslee worked with the company for "several months" to hash out the
compromise, which he called "suitable for the non-profit educational
community."
Though he complimented the company for its willingness to
restructure the deal, Blakeslee stopped short of endorsing it, saying,
"It is up to each school to make its own decision on whether it needs
or desires a license."
Steve Worona, director of policy and networking programs at
EDUCAUSE, an association of campus IT centers, said Acacia's new offer
of royalty-free licensing to campuses with enrollments under 1,000
"will be a very tough offer to turn down, especially for campuses with
no on-staff legal counsel."
"On the other hand," Worona added, "the new offer does nothing to
address the fundamental validity of the Acacia patent claims and
whether those claims will ultimately be upheld. Many of the campuses
who were motivated to resist or challenge the Acacia claims under the
previous licensing terms will undoubtedly continue to resist or
challenge."
He noted, "A year or so ago, someone described Acacia in the press
as 'a bunch of predatory scum who are asserting a patent right of a
dubious nature,' and I doubt that the new licensing terms will change
such viewpoints."
Worona concluded: "It's also important to note the increasing
recognition in both the public and private sector that so-called
'patent trolls'--whether or not Acacia is one--are a problem that needs
to be addressed either legislatively or otherwise. Someone following
these developments might feel even less motivated than previously to
sign the Acacia license."
Acacia's Butts refused to say how many schools so far have responded
to the accord. He also declined to say how many schools and
universities Acacia already has entered into licensing contracts with.
But if the lackluster response Acacia received from schools
following its first two licensing agreements is any indication of how
schools will respond this time around, the outlook isn't good.
Last year, eSchool News reported that a handful of
universities and eLearning service providers, including Capella
Education Company, Chapman University, Oral Roberts University, Park
University, and the online 24/7 University, had inked agreements with
the company (see "Acacia
revises royalty demands"). But more than 40 universities and
several digital-rights groups banded together to fight Acacia's patent
claims.
Once a relatively obscure technology research firm, Acacia began
making waves in 2003 when hundreds of colleges and
universities--including JHU, the University of Virginia, the University
of Wyoming, and a number of schools in the Oregon State University
system--received letters from the company demanding royalties for every
video streamed across the internet.
In August 2004, the company sent a second wave of letters to all
4,000 colleges and universities demanding that they pay royalty fees or
risk getting sued (see "Acacia
to schools: Pay now or we sue").
The letters came on the heels of a federal district court ruling
that challenged the strength of several of Acacia's patents. But that
ruling, issued as part of an ongoing legal dispute between Acacia and a
consortium of internet pornography providers, did little to dampen
Acacia's pursuit of royalty payments from schools.
In an interview with
"The whole thing was really sort of blown out or proportion by
people who don't really understand what the law is all about," he
contended.
At press time, Acacia still awaited a ruling on several royalty
disputes with other media outlets, including various
adult-entertainment, cable, and satellite providers. The cases, which
originally were spread out in several courts across the country, were
recently consolidated under one judge in the Northern California
district court system, said Butts, who could not say when a ruling on
the joint cases is expected.
Originally, Acacia had wanted schools to pay $5,000 and up to a
2-percent royalty for every audio and video clip streamed by students
and professors. But Acacia scaled back those plans in 2004, reducing
the minimum fee to $1,000 and giving schools a choice of two payment
options.
Even this revised agreement met with steep opposition from several
schools. Critics called the company's patents "bogus" and recommended
that schools let the situation play out in court before opening up
their checkbooks to the little-known company from Newport Beach, Calif.
Before approaching schools, Acacia first took its claims to
providers of streaming media in the business world, reaching more than
a dozen such settlements with online entertainment companies--from
small-time purveyors of digital pornography to the giant Walt Disney
Co.
But none of the previous disputes garnered nearly as much attention
as Acacia's bid for royalty payments from schools.
"We are pleased that we have reached an accord with attorneys from
the university community," said Acacia Chairman and CEO Paul Ryan. "We
look forward to eligible schools signing on by the deadline."
By last count, more than 304 companies, media providers, and other
institutions had signed licensing agreements with Acacia.
While the new agreement is likely to entice more schools to sign on,
Butts said, Acacia doesn't expect it will be enough to win over the
most adamant holdouts.
"Not all schools are going to like it, not all schools are going to
sign up for it," he said. "It's really up to schools to make that
decision."
