Open

On using OpenEd: an opportunity

Update:  On June 8, 2015.  Some positive and encouraging news  from the University of Guelph. From the statement on their website they say, “it is evident that the various meanings of the term ‘OpenEd’ will be challenged to co-exist and therefore, the University of Guelph is taking steps to release the official mark in its entirety, although this will make the mark available for others to attempt to make it their official mark or to apply to register it as a traditional trade-mark.”

For the past 6 months my organization BCcampus has been in a dispute with the University of Guelph over our use of this:

BCcampus Open Education logo

Current BCcampus Open Education logo

Like many of you, we have always used the term OpenEd as a short form way of saying Open Education. It’s a term that is familiar to anyone working in the field of open education. In our community, many of us host forums and events using the term OpenEd. Around the world, people write blog posts, create websites, and host conferences using the term OpenEd. Our global community uses the term OpenEd interchangeably with Open Education to mean a series of educational practices and processes built on a foundation of collaboration and sharing.

BCcampus has been working with higher education institutions in British Columbia for over a decade on open education initiatives, so when it came time to redesign our main open education website (open.bccampus.ca), it was only natural that we would gravitate to the term that many people in BC and beyond associate with us: OpenEd. Our graphic designer, Barb Murphy, developed this logo in the fall of 2013 and, at the end of November, 2013, we launched our new website with our new OpenEd logo. We thought nothing of it and went along our merry way chugging along on the BC Open Textbook Project.

Little did we know that, on December 18, 2013, the University of Guelph trademarked OpenEd.

Last fall, we received an email from UGuelph asking us to stop using OpenEd. At first, we thought it was a joke. Someone trademarking OpenEd? Anyone involved in the open education community would realize how ridiculous that sounds. But after numerous emails, it became apparent that they were, indeed, serious about wanting us to stop using OpenEd.

We went back and forth with Guelph until it became apparent that they were not going to give up on their trademark claim, but for the cost of their legal paperwork to write up a permission contract ( $500), they would allow us to use the term in perpetuity to describe any open education activities in BC that we were associated with.

We considered the offer, and thought it a fair request from Guelph. They didn’t ask us for a licensing fee. The would give us the rights to use the mark for basically the cost of their lawyers writing up the contract. $500 is not a lot of money.

But then we thought about the rest of the open education community in Canada and how they will not be able to use the term unless they negotiate with Guelph as well. And we thought that, if we agreed to the terms, we would be legitimizing their claim to a term that runs against the very ethos of what we practice. We decided we couldn’t do it.

Then we thought perhaps we should fight and win the mark back? Wrestle the trademark from Guelph and then turn around and release the trademark with a CC0 license for the entire community to use (even Guelph). We thought we could prove our prior use, not only based on the fact that we started using the logo on our new website weeks before their claim was finalized in December of 2013, but going back even further to the 2009 OpenEd conference BCcampus sponsored at UBC in Vancouver where a wordmark very similar to what Guelph has trademarked was first used.

The 2009 Open Education Conference Logo. The conference was at UBC and sponsored by BCcampus

The 2009 Open Education Conference Logo. The conference was at UBC and sponsored by BCcampus

But after speaking with a lawyer, we discovered that the best we could do is win prior use rights for BCcampus, which would be good for BCcampus, but lousy for the entire open education community.

So in the end,  we have decided to change. We are currently working on dropping the term OpenEd from our logo and replacing it with the words Open Education.

This will not be cheap for us. The redesign is simple, but that BCcampus OpenEd mark is used in many places. Most notably, we now have to redo the covers for close to 90 textbooks in our open textbook collection as that OpenEd mark appears on the cover of every book.

Each cover on every open textbook in our collection needs to be changed

Each cover on every open textbook in our collection needs to be changed

And then once the cover is changed, we need to update 3 different websites where that cover might be used. Plus, we have created a ton of additional material that has the mark OpenEd on it that will now need to be scrapped.

In my mind, however, this is the right move. If BCcampus pays even a modest fee, then we accept that it is ok to copyright and trademark something that, I believe, should rightly belong to the community. Given my own personal values around openness and sharing of resources, it’s a bargain I did not want to make. And it doesn’t make sense to fight a battle that will win a victory for BCcampus, but not for the wider open education community. It would feel less than hollow.

So, we change.

The opportunity. If you are from Guelph and are reading this, there is another alternative. You have the trademark to the OpenEd mark. You control the IP. You can always choose to release the mark with a Creative Commons license and show the wider open education community that you understand the community and the open values that drive our work in education everyday. You can be a leader here by taking the simple act of licensing your mark with a CC license and releasing it to the community for everyone to use.

Update June2, 2015:  Trademarks and copyright are different ways to protect intellectual property, and the suggestion I made in the post is probably too simplistic a wish as CC licenses are meant to alleviate copyright, not trademark, restrictions (h/t to David Wiley for pointing me to this distinction).  However, it appears that the two can co-exist and you can openly license and protect trademarks at the same time, as this document from Creative Commons on trademarks & copyright suggests.

CC BY 4.0 On using OpenEd: an opportunity by Clint Lalonde is licensed under a Creative Commons Attribution 4.0 International License.

Comments

  1. For what its worth I’m an alumnus of the University of Guelph. 🙂
    But …

    In April 2015 I sent an e-mail to Chuck Cunningham, Assistant Vice-President (Communications & Public Affairs). 519 824-4120, ext. 53863. c.cunningham@exec.uoguelph.ca, saying the following:

    “It has come to my attention that the University of Guelph, my alumni, has trademarked “opened” and is threatening others who use it with legal repercussions. OpenEd is an commonly used abbreviation for open education everywhere around the world and is even more frequently used in association with the more recent phenomenon of Open Educational Resources, That UofG would stake claim to that phrase and then threaten others who use it is offensive and ridiculous. This kind of legal action and enclosure is common in the US but to see it here in Canada and from my own alumnus makes me ashamed of UofG. It is completely in opposition to anything even remotely related to “openness”.

    Disappointing to see the university pursuing these kinds of abhorrent strategies. This week I received my alumni fundraising invitation to donate but this kind of behaviour is nothing I will ever support.”

    Did not receive a reply of any kind.

    Paul Stacey

  2. Totally support the position you outline, Clint.

    Really appreciate the opening you have left UGuelph to recover its senses, in your closing paragraph, and truly join the open practice community – not fence it off.

  3. Moral, legal, creative … lots of rights to consider but this is in the domain of ostensibly “Open” education. It’s in the spirit of Open Education to take down walls, challenge proprietorial thinking, free up educational models. Planting a flag in “Open Ed” and claiming that brand is, to my mind, so contrary to Open thinking that it beggars understanding. Wait here while I rush out and trademark “University” or perhaps the word “Guelph.”

    C’mon, Guelph. Show some leadership on this. Stand tall. You’ve got nice graphics and those should belong to you. But to trademark the words “OpenEd”? Really?

    (Full disclosure: I have a dog in this fight. I work for TRU-Open Learning.)

    1. __John, although I could not find any comments from Guelph, it’s likely that people of each side of this issue have little or no interest in understanding each others position . . . but, it’s good to keep a respectful tone and an opened mind. And I imagined you’d find this relevant too – it’s About UBC Brand / Brand Communication and Design Principles _ http://brand.ubc.ca/about-the-brand/design-principles/
      It would be great if legal at CC reviewed the ‘opened’ case to prepare an update of this discussion paper – Creative Commons on trademarks & copyright _ learn.creativecommons.org/wp-content/uploads/2009/11/cc-licenses-and-trademarks.pdf __

      1. Oh I understand the position of OpenEd at U of Guelph. They need to take this action to protect their trademark…to protect their brand. Is there a middle ground here? Likely not as both sides have a valid perspective – one side supported by law, the other supported by the values of the community. But that doesn’t mean that OpenEd at U of Guelph isn’t immune to criticism of their position. The open education community has a big stake in this as the foundations of open education is built on fighting the legal restrictions placed upon the free flow of information brought on by restrictive IP laws. Trademarking the expression of a term that has been developed by the community for the community is going to strike the community as distasteful.

  4. I understand the reasoning and _legally_ they may have the stronger case. But morally? Not at all, and I’m certain you would have the entire rest of the community’s backing in this regard. Which is why you should continue to use the term “Open Ed” and simply ignore their letter. I know your leadership won’t support this, but it’s the right thing to do. It is important to stand up to legal bullies, which is all this is.

  5. Wow, what a crazy story. It’s interesting comparing this to American laws which come with their own bag of hurt but at least allow for the nullification of a trademark based on prior art. I’m honestly surprised to hear that BCcampus isn’t eligible to win the trademark for the term based on prior use. Seems incredibly shortsighted to allow the first to register a mark to hold all the power.

    1. From what I understand from our lawyer, we could fight to use the mark based on prior use. But it gets murky.

      We started going down that road, but then ended up with lawyers in dispute as to when the trademark actually took effect. Ours says the date it appeared in the public registry, which is December 13, 2013. Theirs says no, the actual date is February 26, 2013 when they made the application. 2 trademarks lawyers, 2 different opinions as to when the trademark actually begins. It seems to me that this fact (when a trademark begins) would have been established long ago in trademark law, but apparently not.

      So then we thought of going back to 2009 as that is very clearly prior use. But whether it is prior use by BCcampus is murky as BCcampus was a sponsor of the 2009 Open Ed conference, but not the main organizer. That was UBC, not BCcampus (and UBC may have a stronger prior use case than BCcampus in this specific instance). It was murky enough that we did not want to get into a potentially expensive legal fight for the mark. So….name change.

      1. __Hi Clint, you likely have noticed that the original trademark OpenED has been a substantially changed in it’s use on the website, Open Learning and Educational Support – University of Guelph _ http://opened.uoguelph.ca/ _ I believe that, generally, in order to maintain registration, the mark must be used as registered, without alteration, including description of colour.
        Perhaps this design change is important to your position.
        [Source: _ http://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/h_wr02360.html _ ]

  6. __I support your feelings and understand what you mean by ‘the very ethos of what we practice”, Clint. It’s an unsurprising choice not to sign a permission contract for rights to use the term in perpetuity to describe any BCcampus open education activities in BC.
    Likely the open community will have questions too, how why who . . . the answers aren’t complicated, but simply Best Practices in Communications and Design.
    It will help to understand the perspective of The University of Guelph who publishes a Graphic Standards Guide to provide information regarding the appropriate use of the University’s name, logotypes, crests and images. The University of Guelph protects its visual identity through registration under the Canada Trademarks Act. No person may use any trademark identical to, or confusingly similar with, the trademarks and official marks identified in this document without written approval from the University of Guelph. To submit a request, contact the Director of Communications and Public Affairs. _ http://www.uoguelph.ca/web/graphicstandards/ _
    Welcome to the University of Guelph and Open Learning and Educational Support website _ http://opened.uoguelph.ca/ _

      1. __Clint mentioned “We went back and forth with Guelph until it became apparent that they were not going to give up on their trademark claim, but for the cost of their legal paperwork to write up a permission contract ( $500), they would allow us to use the term in perpetuity to describe any open education activities in BC that we were associated with.

        “We considered the offer, and thought it a fair request from Guelph. They didn’t ask us for a licensing fee. The would give us the rights to use the mark for basically the cost of their lawyers writing up the contract. $500 is not a lot of money.”

        It makes sense to thankfully accept a permission contract, simply to have the opportunity to continue to use “OpenEd” designs created by UBC > BCcampus, And it makes sense to adopt Best Design Practices.

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