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Re: NIH mandate - institutional repositories

Michael,

There is a matter of timing here as well, no?

Let's talk about prospective works by prospective faculty. In this scenario a university stipulates in a job offer letter that all intellectual property is owned by the institution. The university is thus free to enter into any agreement it so chooses, including assigning some limited rights back to the "writer" (not the "author," since technically the university is the "author" of a work-for-hire).

For retrospective work and for faculty that is already in place, the situation is much more complicated, as you suggest. If we conclude, however, that with regard to intellectual property, "the best is yet to come," the focus on legacy content is less important.

It would seem that universities have it in their power to change the entire intellectual property paradigm for prospective work, where the real value will reside. The curious thing is that no university (as far as I know) has chosen to do so. In contrast, employees of commercial organizations routinely sign agreements stipulating that their intellectual output is the property of the corporation.

Joe Esposito

----- Original Message -----
From: "Michael Carroll" <Carroll@law.villanova.edu>
To: <liblicense-l@lists.yale.edu>
Sent: Monday, December 03, 2007 7:02 PM
Subject: RE: NIH mandate - institutional repositories

Sandy,

I'm afraid you misunderstand U.S. copyright law. Universities do not have an option to unilaterally declare faculty scholarship as works made for hire, and it may be that faculty can do nothing about the copyright status of their works. There is legal uncertainty about which interpretation of the 1976 Copyright Act is correct, but it is either the case that universities are the authors of their faculties' scholarship for copyright purposes or the faculty members are. No options on either side.

The copyright consequence of a work being made for hire is that the employer is the author and copyright vests initially in the author. The problem is that the work made for hire doctrine was a judge-made doctrine under the 1909 Act that Congress codified in the 1976 copyright revision. Under the prior law, the courts had recognized a "teacher exception" to the work made for hire by which teachers were treated as the authors of their teaching materials and scholarship. However, the language and the legislative history of the 1976 Act make no mention of the teacher exception or any other exceptions. So the legal question is whether Congress meant to preserve the teacher exception impliedly or whether Congress changed the law by enacting a text that makes no exceptions. There are judicial opinions that go both ways.

Publishers should be worried about the consequences if a test case were brought to squarely resolve the issue. If faculty journal articles are works made for hire, then there's a real question about whether publishers have any ownership of copyright in their backlists. Under copyright law, to transfer exclusive rights, there must be a writing signed by the author. If the university is the author, publishers only get *exclusive* publication rights if a university official with authority to bind the university were to sign the journal publication agreements. Most faculty do not have signature authority to act on behalf of the university for purposes of transferring rights in property. (For example, I'm sure I could not sell my office furniture on eBay!) So, if faculty scholarship were declared to be works made for hire, then there's a very real risk that publishers would be deemed to have only *non-exclusive* publication rights.

Best,

Michael W. Carroll
Professor of Law
Villanova University School of Law
Research papers: http://law.bepress.com/michael_carroll
http://ssrn.com/author=330326
blog: http://www.carrollogos.org/

See also www.creativecommons.org

sgt3@psu.edu 11/30/2007 6:24:35 PM >>>
Why not go one step farther? Current copyright law certainly allows universities to declare that any writing done by their faculty "within the scope of their employment" (which would include all writing of textbooks, journal articles, and monographs, which are all relevant to their career advancement) should be considered as "work made for hire," which would place legal ownership of copyright with the university as employer and put the university in a position to do anything it wished with academic work, including giving it all away for free. Talk about a mandate: this would be a super mandate! Universities themselves would be in a position, as large entities, to bargain with major commercial publishers and to insist that contracts are written in a way satisfactory to universities' needs. There would be no need for NIH legislation for the Federal Research Public Access Act.

Of course, I don't think for a second that faculty will allow their universities to exercise this right under copyright law, because the tradition of allowing faculty to claim copyright in their writings has been of such long standing. But it is a peculiarity of our current situation that universities loudly complain about copyright law's having lost its "balance" between rightsholders' and users' needs, with the result that such patchwork solutions as addenda to author contracts are now recommended, when in fact that very law as it exists now gives universities the power to solve all of their problems by one stroke of the pen, so to speak, taking advantage of the definition of "work made for hire" in Section 101 to stipulate all faculty work in their capacity as faculty as falling under that definition.

Who are their own worst enemies? Universities, as usual!

Sandy Thatcher
Director, Penn State Press