Colleges Fight Acacia’s Patent Claims to Online Audio and Video Use

August 25, 2004

A group of institutions have joined legal forces to defend against Acacia Media Technologies’ claims to the patents on streaming audio and video over the Internet. Acacia recently sent letters to more than 100 colleges and universities demanding payment of license fees by September 15 for the use of the technology. Before entering into agreements with Acacia, institutions should learn more about their options and the higher education joint defense collaboration.

Acacia holds five U.S. patents which it asserts cover on-demand transfer of digital audio and video files from one computer to another. The letters Acacia has sent to colleges and universities over the past eighteen months state that the company owns the patents to "the use of streaming and/or downloadable ditial audio and/or video" and accordingly,"such use requires a license from Acacia." The infringement letter includes an "online learning license agreement" and demands the institution sign up and plege 2% of its distance education gross revenue as a license fee, with a minimum annual license fee of $5,000. The license agreement includes waiver for (alleged) past infringement. In its most recent letters, Acacia warns that its licensing terms, including the waiver of past infringement, will only be available to institutions until September 15, 2004. Following that date, Acacia states that waivers for past infringement will not be available and licensing fees will be raised.

Acacia does hold patents related to storage systems for digitized information and for transmission of infomration to users in multiple locations. However, it is unclear which specific activities or software packages that Acacia considers infringing.

Several institutions who have received notices from Acacia have joined in a common defense network being represented by their individual counsel. To receive information about participating in the joint defense agreement, send an e-mail message to Wes Blakeslee (wdb@jhu.edu) of Johns Hopkins University.

The NACUBO contact is Mary M. Bachinger, mary.bachinger@nacubo.org, 202.861.2581.