This was posted on Clint’s blog clintlalonde.net on June 1, 2015. The original URL is: http://clintlalonde.net/2015/06/01/on-using-opened-an-opportunity/
For the past 6 months my organization BCcampus has been in a dispute with the University of Guelph over our use of this:
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.
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.
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.