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.bep
ress.com/michael_carroll
http://ssrn.com/author=
330326
blog: http://www.carrollogos.or
g/

See also www.creativecommons.org

>>> sgt3psu.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]