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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.
I don't think we disagree. I simply said that universities can argue the side of the law that favors the interpretation of faculty publications as works made for hire. There is nothing in the language of the 1976 Act that prevents a court from making this interpretation.

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.
Yes, I'm well aware of the "teacher exception" argument, and it has been that tradition so far that has governed the actual practice of universities. It is true that courts often defer to "industry practice" in deciding cases, too. My point was more theoretical than practical.

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.
Here we may disagree. I think if this interpretation of faculty work as work made for hire were to prevail in any given case, a court would be very unlikely to make it hold retroactively, disturbing many thousands of contractual relationships. Not being a legal expert, however, I don't know what latitude courts have in this regard. It is just this major disruption of established practices, though, that incline me to think this interpretation will never, in fact, prevail.

Michael W. Carroll
Professor of Law
Villanova University School of Law

Sandy Thatcher
Penn State University Press


>>> 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

***

Aaron Edlin wrote:


My own thinking, and the philosophy of bepress, is that the
university is filled with many interests and constituencies.
The puzzle is getting them to work well together. Faculty seek to
promote themselves individually, and seek control and identity;
universities seek to promote themselves and grow; librarians seek
to create useful order from chaos. These goals can, but need not,
conflict.

[SNIP]


--
Sanford G. Thatcher
Director, Penn State Press
USB 1, Suite C
820 N. University Drive
University Park, PA 16802-1003
phone: (814) 867-2220
fax: (814) 863-1408
http://www.psupress.org