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31 May 2019Americas

University of California settles licensing dispute with professor

The University of California has settled a dispute over the use of a diagnostic tool in graduate research projects.

MMAS Research, owned by Donald Morisky, a professor of public health at the University of California, sued the university in November 2018 over the use of the Morisky Medication Adherence Scale (MMAS), a tool for determining a patient’s adherence to their prescribed medication.

According to court documents filed on Tuesday, 28 May, the parties have agreed to drop the litigation, with the court ordering the dismissal of the case with prejudice the following day.

In the lawsuit, Morisky said that he had developed the MMAS in 2002. Administered in the form of a questionnaire, the purpose of the MMAS is to assist in diagnosis and optimising treatment plans, the complaint said.

Morisky registered two versions of the questionnaire text with the US Copyright Office in 2016 and 2018, respectively.

He also applied to register ‘MMAS’ as a trademark in January 2018 in classes 9, 16 and 42. According to the complaint, the mark has been used in commerce since 2006.

MMAS Research entered into a licensing agreement in 2011 with a PhD student at the University of California for the use of the MMAS and the accompanying copyright and trademarks.

The company agreed a similar licensing deal with another researcher at the university in 2015.

Both deals were agreed for either one year or, if shorter, the duration of each research study. But, according to Morisky, both researchers’ use of the MMAS and his copyright and trademarks exceeded the agreed duration of the licensing deals.

The published studies resulting from these research projects contained “multiple infringements” of Morisky’s IP and were authored by “agents and/or employees of the University of California,” the complaint said.

In April, the university moved to have Morisky’s suit dismissed, arguing that it enjoyed sovereign immunity under the 11th Amendment to the US Constitution. According to the university’s motion, the US Constitution “provides [the university] with immunity from copyright, trademark, and pendent state claims brought in federal court”.

The court has now denied the motion for dismissal as moot as the parties have settled the dispute.

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