February 2, 2007

Blackboard patent pledge greeted with mixed reactions

Author: Bruce Byfield

Blackboard, one of the major providers of educational content management systems, has pledged not to assert its patents against open source elearning projects and companies. The pledge also covers so-called "home-grown" learning systems -- ones developed in-house by educational institutions. However, the pledge includes open source solutions only so long as they are not bundled with proprietary software, which has received mixed reactions, with many open source projects acknowledging the spirit of the gesture while expressing skepticism about the results.

The pledge comes after a year of controversy over Blackboard's patent for basic elearning technologies. As reported earlier on NewsForge, one request by the Software Freedom Law Center (SFLC) for re-examination of the patent has been granted and another by Desire2Learn, a proprietary company, is expected to proceed within a matter of days.

According to Mathew Small, senior vice president and general counsel and corporate secretary for Blackboard, the pledge is the result of ongoing consultation with the Sakai Foundation and EDUCAUSE, two of the major non-profit elearning institutions -- and, in Sakai's case, one of the SFLC's clients in the re-examination request.

In preparing the pledge, Blackboard consulted similar pledges in other markets, including IBM's patent pledge that released 500 patents to the open source community. "You'll see that some of the wording in the beginning is very similar to IBM's, says Small, talking about Blackboard's pledge. "It follows the same format but recognizes the differences between Blackboard and IBM and the differences in the types of patents covered. Plus, there's some ambiguity that the open source community asked us about regarding IBM's language, so we tried to address all the potential questions."

Small speaks with obvious pride of the pledge. "This patent covers core technology within our product, so for us to do this is really unprecedented," Small says. Referring to the discussions with Sakai and EDUCAUSE, he adds, "I think we have really improved the relationships between our organizations." However, some reactions from the open source community are more restrained.

The nature of the pledge

Blackboard's pledge concerns US patent number 6,988,138, the one currently being re-examined, and six pending patents. The pending patents cover a variety of functions for elearning systems, including "Internet Based Support System and Methods" with "Multi-Language Capability," "Modular Text-Editing," and "Security Attributes in Modular, Extensible Components."

The pledge covers Blackboard's American patents, and the patents' equivalents worldwide, and any successor companies to Blackboard, and provides protection for open source software elearning systems in general. In the FAQ included as part of the pledge, Sakai, Moodle, ATutor, Bodington, Elgg, LON-CAPA, Claroline, Connexions, Dokeos, LearnLoop, Interact, Segue, Whiteboard are specifically named as receiving protection, as well as any school, museum or library using these systems. The protection is automatic, and does not require users to apply for coverage.

However, protection is extended only so long as open source or home-grown solutions are not bundled with proprietary software. The FAQ defines "bundled" as being included with proprietary for sale, licensed under the same agreement or included on the same CD or in the same repository. In addition, open source software is not protected if it is required for proprietary software too operate.

The pledge describes itself as "irrevocable." However, it adds that "Blackboard reserves the right to terminate this patent pledge and commitment only with regard to any party who files a lawsuit asserting patents or other intellectual property rights against Blackboard or its parent or subsidiaries." According to the FAQ, this statement does not apply to re-examination requests.

Mixed reactions

The pledge was announced by a news release and an open letter addressed to the "Blackboard Community." Both included supportive quotes from academics. "This is a bold move and one which I can only applaud," John Hemingway, chief information officer at Sheffield Hallam University is quoted as saying.

Similarly, Gordon Suddaby of the Australasian Council on Open, Distance and e-Learning, is quoted as saying, "We wish to acknowledge the company's actions and express our appreciation to Blackboard in committing to continue to foster creativity and collaboration within the e-Learning community. Such a response can only benefit the teachers and practitioners, the learners, Blackboard, and indeed the wider e-Learning community."

"I've read positive emails that have sent to me in the edu-blogosphere, as well as more formal ones from organizations," Small says. "Overwhelmingly, [the reaction] has been positive."

However, many public reactions have been less enthusiastic. Although Blackboard's open letter quotes a supportive passage in a statement issued by the Sakai Foundation, the full text of the statement is more cautious, despite Sakai's involvement in the process that produced the pledge.

Signed by John Norman, the chair of the Sakai Foundation Board, the statement does describe the patent pledge "as a step in a more positive direction" and praises "the willingness of Blackboard to continue with frank and direct dialogue."

However, the Sakai Foundation's statement goes on to state, "We remain concerned that this bundling language introduces legal and technical complexity and uncertainty which will be inhibitive in this arena of development. [We] find it difficult to give the wholehearted endorsement we had hoped might be possible. Some of Sakai's commercial partners and valued members will not be covered under this pledge."

Greg Gay, project manager and originator of the ATutor project, expresses the same mixed feelings, but with even greater reservations. "While there is some merit to Blackboard's pledge," he says, "it still falls short." According to Gay, the pledge does not cover developers who create extensions of open source systems or Internet service providers who offer both proprietary and open source software for customers. He also alleges that the pledge would prevent open source developers who also create proprietary software from bundling their own work together.

Although Blackboard specifies that the pledge includes open source projects in general, Gay also expresses concerns about the listing of specific projects, suggesting that "Allowing Blackboard to specify which open source systems can be legally used would essentially give them a level of control over public domain and open source learning systems software."

Even more importantly, Gay point outs that the pledge's bundling restrictions are contrary to the GNU General Public License (GPL). Section 4 of the GPL prohibits any sub-licensing that restricts its terms, while Section 6 specifically states, "You may not impose any further restrictions on the recipients' exercise of the rights granted herein." In other words, compliance with both the GPL and Blackboard's definition of bundling looks to be impossible.

Martin Dougiamas, the founder of Moodle, voiced a similar critique. While thanking Blackboard "for formalizing their intents" and saying that he was "very pleased that most institutions using open source will feel able to relax," Dougiamas went on to express his own thoughts about how the pledge would interact with the GPL. "I remain concerned that a number of bundling and integration scenarios which are permitted under our GPL license are still potentially subject to legal action from Blackboard, which introduces legal and technical complexity for many in our community."

The most negative reaction came from the SFLC. Richard Fontana, a counsel at the SFLC, condemned the pledge has having "little legal meaning or substance." He suggests that "Blackboard could have acted responsibly by making a clear and unqualified commitment not to assert its patents against open source software. Instead, Blackboard has produced a convoluted document." In particular, Fontana dismissed the description of bundling given in the FAQ for the pledge as "an ill-defined concept that could potentially cover most circumstances in which open source e-learning software is used."

Pledge, patents, and relationships

According to Small, Blackboard has "always done a lot in the open source world," but its efforts have been overshadowed by controversies surrounding its acquisition of rival WebCT and its patent claim.

"I hope that the community sees this for what it is," Small says, "A genuine gesture from Blackboard to the open source and home-grown world. I hope that people see the big picture here and understand that we've listened to them and that we are responding. We believe we are doing what is best for the community and best for Blackboard, and we look forward to improving our efforts to interoperability and openness."

Obviously, Blackboard hopes to improve its tarnished image. Yet, judging from the responses, any improvement is limited. Even if the pledge did not raise other complications and concerns, the patent claims continue to be a main determinant of how Blackboard is viewed in both the open source and elearning communities -- and, as both Blackboard and its critics acknowledge, the pledge will not affect the patent re-examination.

"We maintain that Blackboard's patent is invalid and that Blackboard has no right to obtain it," Fontana says, and all of those contacted by NewsForge echoed his comment, even though the patent is only indirectly related to the pledge they were discussing.

In fact, although Small characterizes the response from Sakai as the inevitable result of the foundation's directors needing to respond to a variety of factions, such disappointment in the results of collaborating with Blackboard may add to a disinclination to interact with the company in the future.

Still, the pledge may go some ways towards relieving the immediate concerns about Blackboard's defense of its patent. Moreover, should Blackboard's patent claim be eventually upheld, either as is or in a narrower form, the pledge should continue to provide some protection for open source elearning projects -- if only they can work out the ambiguities and complexities it has created.

Bruce Byfield is a computer journalist who writes regularly for NewsForge, Linux.com, and IT Manager's Journal.

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