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" <Carrolllaw.villanova.edu>
To: <espositojgmail.com>; <liblicense-llists.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
>
>>>> espositojgmail.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