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Re: NIH mandate - institutional repositories

Well, there is a copyright issue for prospective works and there are institutional policies, and these are not the same thing. It is not self-evident that institutions would necessarily "grant some kind of license to the faculty members in their own works" because under a work-for-hire, these are not "their own works" but the institution's.

As a policy, though, I think this would be institutional suicide. What faculty member would be willing to assign rights as works-for-hire if another institution didn't make the same stipulation? An IP agreement is not bondage; people can move around, and they do and will.

What I think gets lost in so many discussions of copyright, access to information, etc,. is that many of the issues are not copyright matters at all but practices that evolved in response to pressures from various constituencies and market forces. That doesn't make them good or bad; it just means that copyright needn't be dragged in to come up with practical solutions.

Joe Esposito

----- Original Message -----
From: "Michael Carroll" <Carroll@law.villanova.edu>
To: <espositoj@gmail.com>; <liblicense-l@lists.yale.edu>
Sent: Thursday, December 06, 2007 8:54 AM
Subject: Re: NIH mandate - institutional repositories

Joe,

You're right that whoever is the initial owner of copyright in faculty scholarship, that owner can agree to share the rights with the other party through an assignment or license. Many universities have adopted copyright policies that purport to recognize faculty members' "traditional rights" in their scholarship. If it turns out that faculty articles are works made for hire, then these copyright policies probably should be understood to grant some kind of license to the faculty members in their own works or possibly even be understood as contracting out of work for hire status (which is possible).

Best,

Michael W. Carroll
Professor of Law
Villanova University School of Law
Villanova, PA 19085

espositoj@gmail.com 12/4/2007 5:28:16 PM >>>
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