You write: “Rather than reading these separately and, if possible, consistently, the Vice Chancellor ruled that the terms of one ‘trumps any contrary language’ in the other.”

It didn’t strike me as a case of “rather than.” The VC reached his “trumps any contrary language” conclusion precisely because he read the provisions consistently, in accordance with their plain meaning.

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You write: “Also, instead of defining the agreed terms using the common and accepted meanings, the VC applied definitions unique to patent law.”

The relevant agreement definitions were fundamentally grounded on the patent-law concepts of “conception” and “reduction to practice.” It’s not clear that any relevant meanings for those terms even exist outside of patent law, let alone are “common and accepted.” I suspect most lawyers with IP backgrounds would have clucked disapprovingly if the VC had not done exactly what he did, namely look to Federal Circuit precedent.

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You write: ‘An alternative construction would recognize that “any discovery” is much broader than “invention”, and broadened still by the term “whether or not patentable.” A “discovery” implies no usage confined to any legal regime.’

It seems to me that you’re not giving enough weight to the rest of the relevant sentence in the contract. The part that added “conception” and “reduced to practice” to the definition of “Invention” doesn’t seem to be a slip of the pen or poor craftsmanship. On the contrary, it strikes me as the eminently-sensible adherence to an agreed business compromise, one that for decades has been pretty much an industry standard.

Both the corporation and the university, naturally enough, would prefer to own everything. Obviously they can’t both get their wish. Drawing the ownership line using the “conceived” and “reduced to practice” is a longstanding compromise between academia and industry, one that can be measured more or less readily.

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You write: ‘The crucial misstroke was a later-made amendment incorporating by reference the IP “policies” of Johns Hopkins, along with what the court called the “primacy” provision.’

Now there we can agree: The corporation’s contract reviewer seems to have nodded off — or perhaps that was simply the business decision the corporation made?

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Thanks for pointing out this case - it was an interesting opinion. (Thanks also to Jeff Gordon at LicensingHandbook.com for the link to your post.)

Peter Quinn

Actually you would have a third recourse - to publish, with full knowledge that your photos might be used without your consent. Many people have and still do dedicate material to the public domain. Thus, your “fundamental principle,” which is “that the source for this code would not be available for public viewing if the author could not rely on downstream users abiding by limitations on the permission to copy,” is fundamentally flawed

I post photos to flickr using a Creative Commons license which prohibits both modifications and commercial use. Persons wishing to publish a modification or use the image commercially will need a different license which can only be obtained by negotiation with me. If the courts were to hold that this license is not binding, I’d have two recourses — all rights reserved or not publish at all.

I don’t disagree with your guidance, rather I am less charitable than His Honor. I believe it was a calculated “presumption” made after analyzing all other options in an attempt to exclude a witness.

Paraphrasing Judge Whyte - “nice try”.