Developing an Institutional Intellectual Property Policy

 

Two Legal Reasons Why CUA Needs an Intellectual Property Policy

 

Universities have traditionally not claimed ownership of works by faculty members that are protected by copyright.  At the same time, it has been tradition for the universities to claim ownership (or joint ownership) of inventions subject to patent. In recent years, uses of technology on campus have begun to blur what were previously clear lines. Technology has resulted in an increasing diversity of faculty works eligible for copyright, and in the past five years, a number of institutions have implemented policies regarding ownership of copyrightable materials.  If a university does not have an intellectual property policy, then determination of ownership will be subject to federal copyright law, which is very unclear on the topic of who owns faculty works.

 

Under federal law, the author is generally the owner of the copyright to a creative work. A long-standing exception to this rule is the “work for hire” doctrine. The current statutory codification of the work for hire doctrine occurred in 1976.[1] 17 U.S.C. § 101 provides that "in the case of a work made for hire, the employer or other person for whom the work was prepared is considered the author”.  In order to qualify as a work made for hire, the work must meet one of the following statutory exceptions:

 

·        A work prepared by an employee within the scope of his or her employment or

 

·        A work specially ordered or commissioned for use as a contribution to a collective work, as part of a motion picture or other audiovisual work, as a translation, as a supplementary work, as a compilation, as an instructional text, as a test, an answer for material for a test, or as an atlas, if the parties enter into a written agreement that the work shall be considered a work made for hire.

 

In the first instance the copyright belongs to the employer. There is legal support for the view that this would include faculty authorship. In the second instance the copyright, pursuant to the written agreement, belongs to the party commissioning or ordering the work. Without the written agreement the work belongs to the author. The two different ways for a work to acquire “work for hire” status are mutually exclusive, one for employees and one for independent contractors.

 

When the subject is employer ownership of faculty works, application of the work for hire doctrine is unclear.  Under judicial interpretations of the 1909 Copyright Act, as well as state common law, the prevailing view was a professor owns the copyright to his or her scholarly work. This would be an exception to the work for hire rule. See Williams v. Weiser, 78 Cal. Rptr. 542 (App. 1969) for a summary of reasons for this view under state common law.

 

What is unclear is whether this exception survived after adoption of the 1976 Copyright Act. This lack of clarity in the law was addressed by Judge Posner in the case of Hays v. Sony Corporation of America. [2]

 

Nevertheless it is widely believed that the 1976 Act abolished the teacher exception, see Dreyfuss, supra, at 598-600; Simon, supra, at 502-09; Weinstein v. University of Illinois, 811 F.2d 1091, 1093-94 (7th Cir. 1987)--though, if so, probably inadvertently, for there is no discussion of the issue in the legislative history, and no political or other reasons come to mind as to why Congress might have wanted to abolish the exception. To a literalist of statutory interpretation, the conclusion that the Act abolished the exception may seem inescapable. The argument would be that academic writing, being within the scope of academic employment, is work made for hire, per se; so, in the absence of an express written and signed waiver of the academic employer's rights, the copyright in such writing must belong to the employer. But considering the havoc that such a conclusion would wreak in the settled practices of academic institutions, the lack of fit between the policy of the work-for-hire doctrine and the conditions of academic production, and the absence of any indication that Congress meant to abolish the teacher exception, we might, if forced to decide the issue, conclude that the exception had survived the enactment of the 1976 Act. A possible textual handle may be found in the words of section 201(b), quoted earlier, which appear to require not only that the work be a work for hire but that it have been prepared for the employer--which the Hays-MacDonald manual may or may not have been.

 

The authors of a recent law review article [3] also concluded that the law is ambiguous when dealing with universities as employers, and complicated by the enactment of the Digital Millennium Copyright Act[4] which categorizes educational institutions as “service providers” and teachers, professors, and students, as “users.”

 

Classifying a work as a work for hire affects the duration of the copyright. Currently the term of copyright is life or the author plus 70 years. The term of a work made for hire  is 95 years from the year of first publication, or 120 years from the year of creation, whichever is first. 

 

In addition, classification of a work as a work made for hire eliminates the ability of the author to terminate a grant of copyright. Title 17 U.S.C. § 203(a)(1)-(3) provides that, for a grant of copyright made on or after January 1, 1978, the author may, within a five-year window that opens 35 years after the date of the execution of the grant, terminate the grant of a transfer or license of the copyright. This window of opportunity does not apply to works made for hire.

 

Due to the ambiguity in the law as to ownership of intellectual property at the university, and to the growth in the creation of non-traditional intellectual property, a legal newsletter for independent higher education[5]  has the following advice for university administrators:

 

“The relatively scant authority and conflicting results make clear that a comprehensive intellectual property policy is crucial to avoid conflicts and litigation regarding ownership of copyrightable faculty materials.”

 

In sum, the concomitant ambiguity of application of the “work for hire” doctrine to academic work product and the technology revolution require a clear statement of who will own the new types of intellectual property created at The Catholic University of America.

 

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