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,
MC
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
>>> 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" <Carrolllaw.villanova.edu>
To: <liblicense-llists.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
>
>>>> 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
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