Mar 21 | 2015

Who Owns the Academic Work? Copyright Considerations in the University Context

In the university world, academic works carry substantial value. It comes as no surprise then that ownership of these works is a hotly debated issue between university administrators and faculty members. The debate boils down to the desire to own the bundle of rights that is tied to copyrighted works, which includes the exclusive right to distribute copies of the work, to publicly display or perform the work, and to make reproductions of the work. While copyright ownership typically resides with the person who created the work, determining ownership in the university context involves a more complex analysis of multiple factors.

Under the Copyright Act’s “work-made-for-hire” doctrine, a work is the property of an employer (i.e., the university) under two circumstances: (1) when the work is specially ordered or commissioned for use, including contributions to collective works, if the parties agree in writing that the work will be considered a work-made-for-hire; or (2) when the work is prepared by an employee within the scope of his or her employment. Since Copyright law does not define “scope of employment,” we apply general common law of agency principles, which deem an employee’s conduct to fall within the scope of employment when: “(a) it is of a kind that he or she is employed to perform; (b) it occurs substantially within the authorized time and space limits; and (c) it is actuated, at least in part, by a purpose to serve the master.”

Applying this principle to certain facts, lets say Professor Smith is a professor employed by Abe University. A large publisher commissions the professor to write an article on the basics of copyright law that will be published in a quarterly journal unaffiliated with Abe University. Professor Smith and the publisher sign a written agreement memorializing their understanding. Who owns the article – Professor Smith or the publisher? Because it is specially commissioned by the publisher for use as a contribution to the journal (i.e., a collective work), and both parties entered into a written agreement designating it as a work-made-for-hire, the article would be considered a work-made-for-hire and the property of the publisher. However, if Professor Smith and the publisher only had an oral agreement, the article would fail to meet the requirements of a work-made-for-hire, and ownership of the article would stay with Professor Smith.

Or, consider this scenario: Professor Smith is an economics professor employed by Abe University.  On weekends, he escapes to his cabin in New Hampshire to write a scholarly article on presidential re-election fundraising that he hopes to publish in a political science journal that is not affiliated with the university. He uses his personal laptop, subscription to a political science library database, and other supplies that he purchases with his own money. Who owns the scholarly article – Professor Smith or Abe University?  Because Professor Smith is an employee the university, we must analyze whether his writing of the article falls within the scope of his employment. Since he wrote the article on a topic that he was not hired to teach (i.e., political science), outside of the authorized time and space limits of his teaching job, and he relied only on his personal resources, Professor Smith would own the copyright in the article.

Copyright ownership also arises at conferences when professors are invited to speak and submit materials for conference attendees. By way of example, Professor Smith is asked to speak at a conference hosted by a top national educational association while he is still employed as a professor at Abe University. He prepares an article to accompany his presentation regarding a model lesson plan for a beginning economics class. He writes the article on his university computer in-between classes, and he relies heavily on the university’s library resources. Professor Smith and the association holding the conference do not enter into a written agreement. His presentation sparks a lively discussion and garners significant interest during the conference, and the association wants to post the professor’s presentation on its website. Who owns the article – Professor Smith, Abe University, or the association?

First, we analyze whether the association specially commissioned the article from the professor. While the association did commission the article, it failed to enter into a written agreement designating the professor’s article as a work-made-for-hire, and therefore, the association does not own the article, nor does it have permission to distribute the article to conference attendees or post it on its website.  Note, however, that if the professor gave express permission to the association, allowing the association to make use of the article through handouts and on its website, then the association would not be violating the professor’s copyright in the article.  As to whether the copyright in the article lies with Abe University, we look to whether Professor Smith was acting within the scope of his employment when he wrote the article. The answer here is a bit more complicated, because although Professor Smith is an economics professor for the university, and the article he submitted for the association was on economics, the article was commissioned by the association and was not necessarily part of his job description.  In this situation, one might look to the employment agreement signed by the professor when he started his job with the university.  If the employment agreement expressly states that the university would own all works created by its professors using university resources and time, despite the fact that the ultimate beneficiary of a work might be an outside party, then under the facts presented here, the university would own the copyright in the article.  If the employment agreement makes no express statement to that effect, then there might be some argument that this article does not fall within the scope of the professor’s employment.  Although, the more likely outcome here is that the article was written within the scope of the professor’s employment since he relied heavily on the university’s resources and created the article during school hours and time.  Therefore, here, the university likely holds the copyright under these facts.

Given the complexities in copyright law and the many varying facts that might arise in any particular situation, the best way for universities to preempt disputes over ownership of academic works is to create and incorporate intellectual property policies into employment agreements or in employee handbooks. The policies should clearly define and delineate the intellectual property rights of its employees, and they should also clearly define the types of academic works that are deemed works-made-for-hire, as well as the rights to ownership of works that fall outside of the scope of academic works, such as scholarly works and electronic courses.

By, Connie Boutsikaris, Esq.

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