RE: NIH mandate - institutional repositories

["Michael Carroll" <Carroll@law.villanova.edu>]

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

***

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]