Since the 2005 downturn in the U.S. housing market, many have watched and been alarmed by the loss of value in their real property, but what about the value of  intellectual property (IP)? In higher education, both individual faculty members and their respective institutions possess unique intellectual property rights. In some cases, individual faculty IP rights may hold and retain as much value as their real property. In the case of the academy, it has long been clear that IP rights are as crucial to its long term well being as the brick and mortar of the institution’s campus buildings. The advent of entire Technology Transfer departments and the numerous attorneys and specialists employed therein give ample evidence of the critical importance of a wide array of IP rights for both individuals and institutions.

Faculty members having spent years developing their academic research, inventions, published and to be published works, lecture notes, and other materials must on occasion, protect their intellectual property from unauthorized, uncompensated use and/or infringement by others. But how does one protect his/her IP without the enormous, draining costs of litigation?

Historically, faculty and administrators have been reluctant to stray from the passive strategy of simply avoiding disputes within the University or perhaps using the limited services of an internal policy committee or ombudsperson. Such reluctance is understandable when you consider not just the legal costs but how funding sources might view awarding additional grants to institutions and/or principal investigators haggling in a public courtroom over “ownership” rights.

Aside from their student bodies, U.S. universities are a combination of two organizational subcultures; one bureaucratic and the other collegial. Managing conflict within and between these two subcultures can be a daunting task. A skilled mediator will recognize and address both cultures if need be as he/she works to help the parties find solutions to their dispute.

And what of disputes involving entities outside of the academy? The use of Creative Commons licensing for attribution while allowing authors to prohibit uncompensated commercial use has gone a long way toward alleviating some of the basic copyright issues presented to me by several University of California, Berkeley faculty members when asked to develop courses for online distribution. Faculty expressed concern that what had been available to 30 or fewer students in the classroom would suddenly be available to millions worldwide via the Internet. What would become of their intellectual property rights? Would they receive attribution? How would they be compensated? What control would faculty have over derivatives from their original works? Although the expanded use and variety of Creative Commons licensing has helped, legitimate disputes continue to arise and can easily escalate to multi-million dollar issues when not only copyrights but patents are involved.

While it is difficult to accurately measure litigation costs, we do know that the transaction costs of litigating patent cases through to a final court decision can be enormous. One traditional measure for estimating such costs involves measuring the “time to termination.” A 2006 study of 3,700 patent cases by the University of Illinois College of Law found that “the average number of days to termination for cases with a final court ruling was 680 for 1995, 855 for 1997 and 780 for 2000.” Another measure used in this same study was the number of legal documents filed. “The average number of documents for cases terminated with a final court ruling was 174 for 1995, 183 for 1997, and 214 for 2000; for settlements, it was fifty-five, fifty-six and forty-nine. Thus, over three times as many documents were filed in the average case terminating in a ruling than in the average case that settled.”[1]

Considered together, “time to termination” and the number of documents filed give a strong indication of the number of billable attorney hours involved these cases. While few actual dollar amounts were associated with the study data, it is not difficult to extrapolate that the dollar costs associated with this number of days and the production of hundreds of legal documents can be prohibitive to all but the very deepest pockets.

By focusing on the problem and not the people, mediation breaks the counterproductive cycle of attack, defend, and counter attack. By going beneath the parties’ positions to their deeper interests, mediation can bring lasting resolution because the parties themselves fashion the solution and have ownership of it.

Ten reasons to consider mediation:

  • Mediation is confidential and eliminates adverse publicity. Though there are a few exceptions, nothing said or noted during mediation can be used against that party later in court. By contrast, litigation creates a public record.
  • Mediation is much less expensive then litigation. Protracted litigation involves tremendous costs in risk, stress, attorney, and discovery fees. Legal or other representation is optional (not required) in mediation if the parties so desire.
  • Mediation is less time consuming then litigation. Many mediated disputes reach agreement in one or two meetings.
  • Mediation is low risk and does not preclude a person’s “day in court” if s/he desires to pursue litigation after mediation. In mediation, parties retain total control over their agreement. And unlike binding arbitration, the parties do not lose any rights that may be provided under contract law or other law. There is no determination of liability in the process. Mediation avoids the uncertainty of a court-determined outcome and the unpleasant consequences of a judgment being issued against one of the parties while preserving the right to pursue the case through the courts if necessary.
  • Mediation is informal. Other than a few “ground rules” designed to help everyone be heard, the parties and mediator can be as informal as they choose. Litigation polarizes the parties and cross examination is focused on pointing out weaknesses rather than initiating dialogue.
  • When ongoing relationships are important, as for example, in the case of a dispute among principal investigators or between licensees and licensors who wish to continue a business relationship, mediation provides an opportunity to resolve a dispute in a non-adversarial way so that important relationships are preserved and future communications improved.
  • Mediation can be fast. Because timing is in the control of the parties, parties can reach and implement an agreement at any time.
  • Mediation can be slow. Sometimes people need time to think things over and digest ideas. As long as the parties are moving forward, mediations can be scheduled over several sessions, thus enabling all parties to sort out options, consult with whomever they would like, and consider solutions.
  • Mediation is flexible and can be used before, during, or after a case has been filed in court. The mediation process encourages parties to address root causes of conflict and to address those causes through every means conceivable. The parties may also consider options or strategies that would not be available to a court. Mediation enables parties to consider issues beyond money.
  • Mediation is Successful! Over 86% of mediated cases settle! An independent national survey showed 96% of all respondents and 91% of all charging parties who used mediation would use it again.

A 2008 study involving 2,054 cases as reported in the Journal of Empirical Legal Studies found that when cases were adjudicated, plaintiffs committed decision error, receiving an award less than or equal to the last offer made by the defendant, in 61.2 percent of cases. Defendants committed decision error in 24.3 percent of cases.[2]

At the very least, institutions should consider adding a mediation provision to their copyright policies and licensing agreements in addition to or in lieu of binding arbitration.

 

Author Charles A. Hill is a retired University of California administrator and the principal mediator of Charles A. Hill & Associates in Nashville, TN

 

 

[1] Kesan, Jay P. and Gwendolyn G. Ball, “How Are Patent Cases Resolved? An Empirical Examination of the Adjudication and Settlement of Patent Disputes.” Washington University Law Review. University of Illinois, 2006

[2] Kiser, Randall L., Maring A. Asher, and Blakeley B. McShane, “Let’s Not Make a Deal: An Empirical Study of Decision Making in Unsuccessful Settlement     Negotiations.” Journal of Empirical Legal Studies. Sept. 2008: Vol. 5, Issue 3. 551-591. Print.