Copyright 1997 Dan L. Burk. All rights reserved. This article appeared in CAUSE/EFFECT Volume 20, Number 3, Fall 1997, pp. 13-18. Permission to copy or republish requires written permission from the author. For further information, contact Dan Burk at 201-642-8829 or firstname.lastname@example.org.
by Dan L. Burk
The introduction of sophisticated information technology to higher education is now forcing faculty and administrators to reexamine the traditional allocations of ownership interests in course materials. This article has been prepared to alert educators and administrators in higher educational institutions to the issues surrounding ownership of electronic course materials. In particular, this article focuses on the allocation of copyright ownership in electronic course materials between faculty and their sponsoring institutions. The article reviews relevant copyright basics, the work-made-for-hire doctrine, and options for contractual allocations of copyrights. The discussion includes a series of criteria that should be considered in formulating an institution's intellectual property policy.
The author of a copyrighted work is granted several exclusive rights: the right to make reproductions of the work, to distribute the work, to create derivative works, to publicly display or perform the work, and to authorize any of these acts. Thus, the "copyright" involves more than the right to make copies. For digitized materials, unlike print materials, all the exclusive rights may come into play at once -- thus, materials that are presented via the Internet may, in the process of presentation, be simultaneously reproduced, distributed, publicly performed, and publicly displayed.
Faculty course designers and the sponsoring institution may invest heavily in the time and equipment necessary to create digitized electronic course materials. The materials may be extremely valuable, in that other educators and institutions may wish to adopt them once they have been created. Yet, because they are digitized, these materials may be easily acquired without authorization. Because it is so easy to acquire these materials, the legal barriers that deter such acquisition -- that is, copyright in the materials -- become extremely important to deter misappropriation and to make certain the creators of the materials receive compensation for their use.
The valuable nature of electronic course materials leads to a second important function for copyright: allocating ownership and control of the materials. Because the institution may invest heavily in such course materials and in the infrastructure to present them, it may wish to control their use and dissemination in order to be certain it receives a return on the investment. Faculty who create the materials may desire control of the materials in order to preserve their academic integrity, to fund further research, or to supplement tight salaries. These goals may or may not be fully compatible, and the potential for ownership disputes may become particularly acute when faculty leave an institution, expecting to take materials with them to their next position. Consequently, clear allocation of copyright ownership and control is critical to avoid conflicts.
The test as to whether a work is made for hire is based on principles of agency law. In general, if the creator of the work meets the criteria expected for a regular employee, the work will be considered made for hire. Factors that point to the creator being a regular employee may include income tax withholding by the employer, withholding for benefits or benefits paid by the employer, a working schedule set by the employer, the employer providing materials and equipment used to prepare the work, a long-term duration of the relationship between the employer and the worker, and the right of the employer to assign projects to the worker.
If the creator of the work has considerable discretion over his or her own schedule, has a short-term relationship with the employer, pays for his own benefits and income tax, and supplies some or all of the equipment used in the project, then the creator may be an independent contractor. Independent contractors are considered the authors of the works they create unless the work is a special commission expressly designated as a work made for hire. Specially commissioned works may include the subject matter of technologically enriched courses -- audiovisual works, instructional texts, tests, and answer material for tests.
However, several older court opinions hold that university educators are not employees for purposes of the works-made-for-hire doctrine. These opinions point to the general practice in academia of allowing educators to retain the rights in scholarship and other materials they produce. These opinions and subsequent commentary also suggest that principles of academic freedom dictate this result: academic freedom of thought and expression might be unduly curtailed if colleges and universities could control academic output in the manner that large corporations control the output of their employees.
The majority of these cases were decided under the 1909 Copyright Act, which has since been superseded by a complete revision of the copyright statutes in 1976. Thus, there is some question as to whether the "academic exception" to the work-made-for-hire doctrine survived the revision of the law. One or two recent appellate decisions have suggested that the exception is still viable. (It may be significant that the authors of these opinions are former university professors appointed to the federal bench.) However, this is entirely judge-made law, with no explicit foundation in the statute.
Therefore, there is a legitimate question as to the status of materials created by educators in institutions of higher learning -- the materials may or may not be works made for hire. Some institutions have asserted ownership over the copyrightable works of their faculty, citing the agency principles of works made for hire. Other institutions have allowed faculty to continue to assert ownership over their copyrightable works. Some institutions have attempted to allocate authorship via contract. However, it is critical to remember that the assertions of institutions or of faculty are immaterial to the actual authorship of the works. Authorship is dictated by the copyright statute -- private parties are not able to change the allocation created by Congress, even if that allocation is unclear.
The exception to this rule is in the case of specially commissioned works created by independent contractors, as discussed above. The independent-contractor doctrine may be especially important when new courses are being created. At many institutions, creation of new materials for online presentation will involve special compensation to the faculty member creating the course, either as a cash payment, as release time, or some combination of the two. The creation of such materials is thus a project beyond the scope of the faculty member's usual duties, assumed voluntarily in return for remuneration. Faculty who create online courses under these terms might be designated independent contractors for purposes of creating the new course, thus sidestepping the broader question of the academic exception to works made for hire. Ownership of newly created course materials might therefore be allocated as the parties desire, either to the independent contractor, or to the institution as specially commissioned works.
Additionally, although private parties cannot usually alter a determination of authorship, they may secure their ownership expectations under uncertainty by providing for contingent allocations. For example, if a particular university wishes to make certain that ownership is allocated to the faculty creator of a work, the faculty employment contract might provide that in the event a work is deemed work made for hire, the institution assigns its rights in the work to the faculty member, whereas in the event the work is deemed the work of an independent contractor, ownership rights will remain with the faculty author.
Subsequent enforcement of the copyright is an important consideration in determining how authorship and ownership of the work is allocated. Individual faculty members may not have the resources to police infringement of the works they have created, whereas the institution may have sufficient resources. At the same time, the enforcement interests of the faculty member and the sponsoring institution may not be perfectly aligned. Depending upon the circumstances, it may be desirable to ensure that the institution, the faculty member, or both, have standing to sue for infringement of the work. The standing of a party to sue can be modulated by the use of exclusive licensing or royalty agreements. Exclusive licenses confer standing to sue upon the licensee, whereas non-exclusive licenses do not. A royalty agreement may also confer standing to sue.
These models differ primarily in the risk allocation of the parties: in the first model, the institution takes primary responsibility for managing the intellectual property, whereas in the second, the faculty member takes primary responsibility.
Within these two general models, legal instruments can be tailored to meet almost any set of objectives the faculty and institution decide upon. The sidebar at left lists several sets of possible options that might be considered in meeting particular institutional objectives. However, the objectives of the institution must first be determined, which may be a formidable undertaking. The objectives should be dictated by academic and business concerns, rather than by legal concerns. The particular concerns central to copyright ownership decisions will vary between institutions; what has been decided at other institutions may not necessarily be the best policy for your school. In some instances, the particular concerns that will influence policy at a given institution may not be immediately apparent, and may even seem counterintuitive before having been fully considered.
For example, when considering copyright ownership allocation, the interest of faculty in free and unfettered academic inquiry, mentioned above, will be a compelling consideration in formulating the policy. However, in the emerging digital world, faculty may also have a surprisingly strong interest in allocating ownership to their sponsoring institution. This is due to the changing nature of publication. Under a traditional publishing model, the author of a creative work needed to seek out a sponsor with deep enough pockets to edit, typeset, publish, distribute, and market the work. Not coincidentally, such publishers also had the resources to manage licensing of the work, as well as to police infringement.
This model is now changing drastically in an age of desktop publishing, electronic distribution, and self-publishing via the Internet. Digitization, by eliminating the need for printing on physical media, has reduced the need for a deep-pockets publisher. However, authors who choose to self-publish will generally lack the resources to license, police, and enforce copyrights. In academia, one candidate to fill the licensing and policing role formerly occupied by publishing houses is the institution itself -- the institution may potentially have the deep pockets that the individual faculty member lacks.
An institution's interests may also be changing in the present environment. Colleges and universities may have an interest in gaining copyright ownership in order to control the dissemination of educational materials to rival institutions, to ensure continued access to materials used in key courses, and to gain licensing fees from materials that prove popular or valuable. However, an institution may have equally strong countervailing disincentives against gaining ownership. The full benefits of copyright cannot be achieved without registration of the work, and tracking such registrations may be costly and time-consuming. Vigorous licensing of such works may be equally costly. Some institutions, especially smaller colleges without an established technology transfer office or previous expertise in copyright development, may not have the resources to devote to the type of intellectual property management program that would attend acquisition of a large copyright portfolio.
Different institutions may have different needs. As institutions attempt to determine their own proper balance of ownership allocation, they should not approach the exercise with prejudices about the desirability of copyright ownership. Ownership and control of a copyright portfolio may entail significant management responsibilities. For example, as part of its commitment to tenured or tenure-track faculty, a college or university may be willing to manage the licensing of copyrighted works by those faculty. However, the institution may lack the resources to manage the works of adjunct or contract faculty, preferring to allocate ownership -- and responsibility -- for those works to their creators.
Different faculty may have different needs. Faculty may have a variety of ownership allocation preferences, depending upon individual needs, institutional history, seniority, and career development. In some situations, faculty may prefer to simply be guaranteed a royalty from use of their creations, without having to be responsible for monitoring, policing, and enforcing copyrights. In other situations, where the institution lacks monitoring resources, or where faculty interests may be overlooked or lost in the shuffle of institutional administration, faculty may prefer to retain personal ownership of and responsibility for copyrightable works.
Different situations demand different legal instruments. The exclusive rights comprising a copyright are infinitely divisible, and institutions should avoid the "all or nothing" trap: the supposition that all aspects of the copyright must be allocated to either the creator or the institution. The needs and interests of all parties may be better met by dividing the copyright. Some faculty may simply wish to be certain that they can continue to use their creations in teaching, and will be satisfied with a non-exclusive license to the material. Others may be willing to part with copyrights in exchange for a contingent royalty. Conversely, a non-exclusive license or royalty granted to the college or university may equally satisfy the institution's needs.
Note: This document is for educational purposes only, and should not be construed as legal advice. No representational relationship is created by the presentation of this educational material. Individual faculty members and a college or university are advised to consult competent legal counsel before entering into any legal arrangement designed to allocate ownership or other rights in copyrightable works.
Option Set 1The first option set assumes that faculty members are considered authors of the works produced in conjunction with the employment at the institution.
Option 1.1 -- Faculty authorship with assignment of ownership to the institution
Under this option, the faculty member surrenders management and control of the work to the institution, perhaps as part of the employment agreement, or perhaps in return for some special remuneration. The institution would have standing to sue for infringement of the work. If the assignment specifies that the faculty member is entitled to some royalty, he or she will also retain standing to sue for infringement.
Option 1.2 -- Faculty authorship with a non-exclusive license to the institution
Under this option, the faculty member retains control of the work, while the institution gains the right to continue using it when the course is taught by others. However, the institution, as a licensee, would not have standing to sue for infringement.
Option Set 2The second option set assumes that faculty are considered employees of the institution under the "work-made-for-hire" doctrine, and that the institution is therefore the author of works produced by the faculty.
Option 2.1 -- Institutional authorship with a non-exclusive license to the faculty member
Under this option, the faculty creator of a work could be given the right to use the work in subsequent classes taught elsewhere, but the institution would retain control of the work. The faculty member would not have standing to sue for infringement.
Option 2.2 -- Institutional authorship with an assignment of rights to the faculty member
Under this option, the faculty member could control and manage licensing of the work. If the assignment specified that the institution was entitled to a royalty for subsequent use, the institution would retain the right to sue for infringement.
Option Set 3The third option set assumes that faculty creating new course materials are considered independent contractors for purposes of the project.
Option 3.1 -- Institutional authorship with an assignment of rights or license to the faculty member
Under this option, the course materials would be designated a specially commissioned work, and the institution would be expressly designated the author. The faculty creator could be given exclusive rights, non-exclusive rights, or a royalty as in Option Set 2.
Option 3.2 -- Faculty authorship with an assignment of rights or license to the institution
Under this option, the agreement to create the course materials would indicate that the faculty member is considered an independent contractor, and authorship could then vest in the faculty member. An assignment of rights or a license to use the materials could be given to the institution as in Option Set 1.
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