This Is Not the Campus of Your Youth . . .

The Branding of the American Mind: How Universities Capture, Manage, and Monetize Intellectual Property and Why It Matters by Jacob H. Rooksby. Baltimore: Johns Hopkins University Press, 2016.

The Branding of the American Mind: How Universities Capture, Manage, and Monetize Intellectual Property and Why It Matters by Jacob H. Rooksby Hardcover

For many of us, college was a time of exploration and growth, both emotionally and intellectually. We were able to take classes in diverse subject areas, join student organizations for fun, or play in varsity sports as amateur athletes. While many of us would not be surprised that the campuses of our youth have changed, what would likely be surprising is how they have changed. These days, participating in class projects may earn you a letter from your institution’s technology transfer office or general counsel’s office claiming intellectual property rights in your project. This is what happened to one student who had created a new iPhone case that would take better “selfies”—his school, through an affiliated entity that had been created to handle intellectual property–related endeavors, claimed that the institution, not the student, owned the copyright in his new design. On the basis of these claims, the student had to forego his plans to establish a business to commercialize his design.

As an academic and, in particular, as a scholar in the intellectual property field, I was taken aback by the extent of the overclaiming and overenforcing of intellectual property rights described by Jacob Rooksby in his new monograph, The Branding of the American Mind. I had assumed that the intersection of intellectual property and higher education institutions lay primarily in the realm of patents, particularly for large research universities. In fact, one of the cases I teach in my international intellectual property class deals with Harvard University’s patent in the “OncoMouse,” a mouse that Harvard and University of California, San Francisco, scientists created in order to study cancer more easily. Although it is still true that patents are a central concern (many technology transfer offices were established with patents in mind), Rooksby’s book paints a broader, and scarier, picture of the claims of intellectual property made by universities and colleges.

Prior to reading Rooksby’s book, I was unaware of the licensing structure behind the OncoMouse. Harvard University had exclusively licensed the patents to DuPont, which had provided funding for the research. This exclusive, as opposed to nonexclusive, license meant that DuPont could set the terms of the licensing structure, which it did on fairly onerous terms. These terms negated the spirit underlying the development of the OncoMouse, which was to find a cure for cancer, because they restricted the number of institutions willing to use the OncoMouse in their research. Rooksby cites the OncoMouse story as a paradigmatic example of the tension between “private rights” (that is, intellectual property rights) and public goods in the patent space (as well as in other areas where intellectual property rights dominate). And this is the theme that runs throughout the book: How can universities and colleges, which are charged with missions to further the public good, claim private rights to the detriment of public goods or to the detriment of the public good?

Rooksby explores this tension in the major areas of intellectual property law—trademarks, patents, copyrights, trade secrets, and rights of publicity. For his chapter on trademarks, Rooksby lays out his argument about the proliferation of trademark registrations by colleges and universities, which is supported by his study of trademarks owned by American colleges and universities. His study concluded that, by the end of 2012, colleges and universities owned 10,265 of 13,042 trademark registrations. Rooksby points out that this number likely understates the extent of university or college ownership because he looked only at registrations, and entities may claim (and validly have) rights in unregistered trademarks. However, the sheer number of trademark registrations is astounding. So are the averages. Rooksby reported that, where an institution owned at least one federal trademark registration, the average number owned by an institution was ten (the numbers per institution range from one to several hundred).

Now, you may be thinking to yourself, “Well, that doesn’t seem to be too problematic. My alma mater is a top-ten college football team and needs to license its logo, so of course it’s going to claim trademark rights in that.” Rooksby does concede this point. But what his study makes clear, and what should be alarming, is that colleges and universities are paying thousands of dollars for registrations in purported trademarks that go well beyond the school name or logo. He provides a number of examples of slogans, domain-name marks, and program trademarks. As Rooksby points out, these types of trademarks are not central to the registrants’ identity. For example, no one ever saw “Fast-Track MBA” and thought, “Eastern University.” As Rooksby argues, “some of these registrations, and the exclusive rights they represent, risk altering the public-serving soul of nonprofit colleges and universities, conferring rights to trademarks that, by virtue of the mark itself and/or the registered goods or services, involve rights intimately connected with a traditional teaching, research, or service function of higher education.” While the extent to which these registrants seek to enforce their trademarks is unclear, Rooksby notes that trademarks have the potential to create problems and headaches for colleges and universities, because “a federal trademark registration can lead to a feeling of entitlement when enforcement opportunities present themselves.” This not only distracts institutions from their central educational mission, Rooksby argues, but also requires a not-insignificant expenditure on registration fees, renewal fees, and attorneys. In these days of budget crunches at colleges and universities, such vast sums of money could be better used in furthering student education.

Although later chapters delve into the specifics of each claimed intellectual property right (and provide very interesting and eye-opening anecdotes of overclaiming in those rights by colleges and universities), the message is consistent throughout. By overclaiming (and, at times, overenforcing) intellectual property rights, colleges and universities are creating conflicts with their faculty, students, and the society at large. Rooksby argues that, “instead of turning to intellectual property as a legal means of obtaining power, higher education would be better served by looking at it more cautiously—and more academically—as an illumination of what power can lead to.” He provides a number of concrete suggestions that colleges and universities could implement, if they were willing to do so. For example, institutions could decide tomorrow to stop the accretion of trademark registrations: “Every higher education institution needs to start by identifying which trademarks are truly crucial to its mission. . . . In other words, which trademarks protect the primary identity and essence of the institution?” Outside of these types of marks, Rooksby argues, the institution should not claim rights. Rooksby is a realist, though, and he acknowledges that changes will not occur overnight and will not be easy to implement.

One of the benefits of Rooksby’s book is that it is written with the nonspecialist in mind. In fact, he has made the book accessible to those who are in the driver’s seat at institutions of higher education— the administrators, trustees, and student affairs professionals. These individuals are often not lawyers, and Rooksby’s aim is to reach a wide audience. He makes a cogent case that, even though colleges and universities face numerous challenges, the creep of overclaiming intellectual property rights is important enough to be at the top (or near the top) of the list of current concerns. He asks that we, the readers, educate those in charge about the myriad of choices institutions have with respect to intellectual property. By doing so, Rooksby concludes, institutions can make choices that benefit the public good, not simply private rights.

Leah Chan Grinvald is a professor and associate dean of academic affairs at Suffolk University Law School. Her email address is [email protected].