Blackboard Makes a Pledge

After months of criticism that its patent policies had the potential to squelch important education projects, Blackboard on Thursday announced a "patent pledge" under which it vowed not to assert its patent rights to sue open source projects or home-grown software used by colleges and universities.

The pledge followed weeks of intense negotiations between Blackboard, Educause and Sakai. Educause is an umbrella group for technology leaders in higher education and Sakai is a leading open source consortium -- both groups have criticized Blackboard's handling of the patent issue. Blackboard officials said that they believed their pledge contained more than enough protection to assure the skeptics. "The pledge covers anything anyone is realistically worried about in the e-learning community," said Matthew Small, Blackboard’s general counsel. "Any school can look at this pledge and sleep easy at night."

Some of those who have been criticizing Blackboard said that the company had indeed moved in their direction, and that the pledge offered much more legal protection than the company had previously offered. But if Blackboard wants its critics to sleep easy at night, it may need to ship out a lot of Ambien, because many said that they believed the company's pledge left them as anxious than ever. And many continued to express a distrust for the company.

John Norman, chairman of the Sakai board and director of the Centre for Applied Research in Education Technologies at the University of Cambridge, said that pledges not to enforce patent rights depend for their success "on people trusting the action of the person making the pledge." Blackboard officials "did manage to convince me that they were serious about this," he said, but they also felt that "they had to keep their legal options open" on some issues that remain of concern to Sakai.

He said that the response he was hearing from Sakai users after the announcement Thursday morning was "surprise that we'd been positive at all" about the Blackboard pledge. Since it's too early to see how Blackboard will follow the pledge, Norman said that his members' reaction "comes back to the trust issue."

And there were some signs Thursday that Blackboard's announcement may have added to its credibility problems. The announcement included a sole quote from a joint statement of the boards of Sakai and Educause, praising Blackboard's action. The quote was indeed drawn from the joint statement, but it was the most positive part of a decidedly mixed review that the two organizations gave to Blackboard's action. The full statement also included criticisms of Blackboard's legal strategy, questioned the validity of the patents at the center of the dispute, and drew attention to loopholes in the Blackboard pledge.

In fact, Blackboard's quotation was so selective that some of the company's critics were blogging about their disappointment with Educause and Sakai for endorsing the pledge -- only to be correcting their blog entries later when, after reading the full Educause/Sakai statement, they could call Blackboard "misleading" once again.

And the frustration with the announcement reinforced for many their concerns about the company. "I think you can drive trucks through the loopholes and since they reserve the right to litigate if they think you are in violation of the pledge, there is a segment of the community that is chilled. Some people will be satisfied with this, others will not and the litigation will continue on its merits. It's still a bad patent, IMHO," wrote John P. Mayer on the blog CALIopolis.

The patents at the center of the dispute were awarded to Blackboard a year ago, and their breadth is a key part of the dispute. Critics say that the patents are so broad that they would appear to cover just about any online learning technology, and could be used to squelch innovation at a time that Blackboard -- following its absorption of WebCT -- is already a dominant player in the course management business.

Blackboard has insisted that it is not out to hurt open source, that the fears about its patent claims are exaggerated, and that higher education benefits from the company’s ability to invest in new products -- something it says it couldn’t do without protecting its intellectual property. The concerns about Blackboard's patent strategy increased when it sued Desire2Learn, which competes with it in the course management market. As the dispute has escalated, Sakai and others have asked the U.S. Patent Office to reconsider Blackboard's patents, which it agreed to do, but patent reviews and patent litigation are notoriously long in duration.

Blackboard's Small portrayed Thursday's announcement as a legal codification of what the company has been saying all along. "From day one, Blackboard has made public statements that it is not focusing its patent-enforcement efforts on schools or open source, and today we are putting it in writing, so that there is no fear, or uncertainty, or doubt regarding our intentions, so that open source groups and schools will take advantage of the pledge, and know that there is no concern."

Asked if the pledge responded to a backlash that the company has received, Small rejected the term "backlash" and said that the company was just doing what any company would do in terms of its customers. "This is not in response to a backlash," he said. "The community had lots of questions and some concern about multiple, unrealistic, hypothetical enforcement scenarios, and we listened to the community, and worked in collaboration with Educause and Sakai to put together a pledge that would give finality to these concerns in a legally binding way, global way."

Several observers of the fight, asking not to be identified, said that there is no question but that there has been a backlash, especially since Educause went on record questioning some of Blackboard's actions. When Blackboard first was facing criticism from open source advocates, the company and its supporters portrayed its critics as naive idealists, hostile to any corporate role in higher education.

While the open source/corporate divide is far less of a dichotomy than some would admit (there is plenty of collaboration, including collaboration between open source projects and Blackboard), these observers said that Educause's criticism was something Blackboard couldn't ignore or try to work around. Educause's leaders are the key IT players on campuses all over the United States, and they deal with big tech companies all the time.

Norman, of Sakai, said that his group and Educause worked well together in pushing Blackboard, and that the company was "more concerned about Educause."

In the end, Norman, as well as Brian L. Hawkins, the president of Educause, said that they wanted to let their joint statement speak for itself and not detail the remaining disagreements with Blackboard beyond that.

That statement reiterated the groups' view that the Patent Office "erred" in granting Blackboard its patents. As to the pledge, the statement noted that "Blackboard has also reserved rights to assert its patents against other providers of such systems that are 'bundled' with proprietary code," adding that the groups "remain concerned that this bundling language introduces legal and technical complexity and uncertainty which will be inhibitive in this arena of development." Similarly, the statement noted that the groups had tried -- and failed -- to get Blackboard to include in its pledge a stipulation that it would not sue a college or university using a competing product for patent violations.

"The Sakai Foundation and Educause find it difficult to give the wholehearted endorsement we had hoped might be possible," the statement said.

The "bundling" issue is one on which both Blackboard and its critics have strong views. Many colleges combine proprietary software they license from companies with open source software developed by Sakai or similar groups or by individual groups of professors. The scenario that worries colleges is one in which an institution is combining open source with Desire2Learn services (or those of some other company). To the extent Blackboard asserts Desire2Learn is violating Blackboard patents, it is not pledging to accept joint projects that use such disputed software. The company has said repeatedly that it realizes that it would be terrible for its image to sue a college in such a circumstance, and that it can't imagine doing so, but it also won't give up that right.

Small said that this position was important to protect Blackboard's rights not against colleges or educators, but against its corporate competitors. If Blackboard made its pledge as broad as some are suggesting, Small said, a competing company could just declare its products to be open source and there would be no way Blackboard could protect its intellectual property. Small also noted that Blackboard, in its FAQ on the pledge, outlined numerous situations in which the pledge would apply, citing the major open source projects by name, and that those are the real situations colleges find themselves in.

The problem with that approach, Blackboard skeptics say, is that much of the development of educational software involves joint projects involving colleges and companies, open source projects that shift over time, and partnerships that evolve. Fear of cooperating with anything that touches something that Blackboard might assert a patent right over is much more limiting than Blackboard acknowledges, these critics say.

John Baker, the president and CE0 of Desire2Learn, said, "Blackboard's saying that this is a change of heart, but it looks like they are trying to dictate how the educational world is working with educational vendors. They are saying that no one can collaborate with vendors with certain business models. Who is Blackboard to dictate which models should be used?" Desire2Learn has never applied for any patents and "we would never try to never put colleges into a position where we are dictating how technology should be built."

It's obviously not shocking that Desire2Learn, locked in a patent war with Blackboard, would find little relief in Thursday's announcement. But some of the skepticism comes from institutions with Blackboard on their home pages.

Lev Gonick, vice president and chief information officer at Case Western Reserve University, wrote on his blog Thursday that Blackboard's pledge wouldn't mean much over the long term because of the way technology is changing. "In a narrow sense, the threat of a frivolous lawsuit to keep lawyers employed has been avoided regarding the stand alone platform issue," he wrote.

But he predicted that "over the next five years we are likely to see significant tension associated with this pledge" because "the history of community-based and open source initiatives is anything but a binary choice between open and proprietary systems. As so-called open source initiatives evolve over time they will continue to have proprietary pieces in their DNA and perhaps more importantly, there is a near 100 percent certainty that none of today's open source course management systems will survive in the marketplace as autonomous offerings."

He continued: "Whether in reaction to Blackboard's position in the market (a defensive posture) or in attempt to preempt, there is a a significant likelihood that today's open source solutions will evolve, over the mid-term, first as 'open source' course management platform strategic partners with proprietary enterprise integrated software solution providers and within a version release or two become tightly integrated into the proprietary software code. How Blackboard and the higher education community respond to that probable scenario is not a matter of if but rather when....

"Blackboard should take one more look in the mirror and realize that it is not its patents that will protect its near monopoly share of commercial course management software (full disclosure Case Western Reserve University is an enterprise customer of Blackboard) but rather its ability to demonstrate a true commitment to innovation and responsiveness to the higher education marketplace. Today's Blackboard announcement is a short term 'fix' on an unfortunate journey that starts with the anti-intellectual position of seeking a 'patent' on a 21st century version of a 'whiteboard and a marker' in the 20th century or dare we say a 19th version of a 'blackboard and chalk.' "