Copyright Principles in Action

A. Ownership of Copyright

There are valuable attributes to holding a copyright. The work can sometimes be commercially exploited through direct publication or by licensing a publisher in return for royalties. Financial recoveries can be had against infringers. Permission fees can be extracted from other users. In some cases (e.g. unpublished letters) the copyright holder can even suppress publication. Thus knowing who owns the copyright can be of considerable importance.

1. Who is an "author"?

Authors" of "creative works" are given certain exclusive rights under the United States Constitution, the Copyright Act, and certain multilateral treaties (e.g. the Berne Convention) to which the United States is a party. The word "author" extends to graphic and fine artists, composers, arrangers, sculptors, choreographers, photographers, architects, and software programmers as well as writers, playwrites, poets, and lyricists. Other possible participants such as editors, proofreaders, layout technicians, manuscript reviewers/critics/referees are not "authors", nor are persons who offered themes, inspiration, background, or factual information. These latter types of persons are excluded either because what they created was de minimus in the context of the total work, or because they did not themselves actually create any part of the actual work. The Internal Management Directives state that an author is "an individual responsible for primary subject matter guidance and development of educational and professional materials." This may allow some additional persons to share in net royalties from the exploitation of works whose copyrights are held by the University and the definition is consistent with academia’s sense of recognizing thesis formation, project direction/oversight, and supporting research. However, the IMD definition is broader than the concept of authorship under federal law and cannot establish eligibility to hold copyright for persons who did not actually create the expression.

Ideas are not protected under copyright law, but the expression of ideas, once "fixed" in a medium (computer memory, paper, magnetic tape, stone, canvas, etc) is protected. Two different persons could, in theory, author two very, very similar works, but there would be no infringement of either’s rights unless one copied the other, i.e. independent creation is not infringing. An author (or the copyright holder if different from the author) can "register" the work with the Registrar of Copyrights at the Library of Congress to enhance the enforcibility of rights, but the basic protection attaches as soon as the work is "fixed".

Traditionally, copyrights support what is sometimes referred to as the"heroic" or "romantic" concept of authorship, i.e. the ability to control and profit from the exploitation of the work provides the incentive to inspire creativity and originality. Purely factual or utterly descriptive works will rarely or never qualify for copyright protection.

2. Work for Hire

Employers of person whose job assignment is to create protectable works will own the copyrights to such works rather than their author-employees (unless the employer and employee have entered into an explicit, written contract to the contrary). Copyright Act of 1976 Secs. 101 and 201. Whether academic employees have a "job assignment" to write or paint or compose or design (despite the "publish or perish" pressures for promotion and tenure) is far less certain.

When a non-employee contractor is commissioned by the University to create a protectable work (e.g. write a computer program, compose a school fight song, cast a statue), the copyright will remain with the contractor even though ownership and physical possession of the contractor’s work-product will belong to the University. Id. Exceptions will apply if the work contracted for is a contribution to a collective work, is part of a motion picture or audio-visual work, or is a translation, compilation, instructional text, a test (or test answers), or an atlas. And, of course, the parties can – in their written contract – agree that the work shall be considered a work made "for hire" (i.e. as if the contractor had been an employee) and, under such an agreement, the contractor could assign all his/her rights in the copyright to the University either for an additional fee or as part of the original arrangement.

The U.S. Supreme Court has held that common-law agency principles will be used to decide close questions as to when an individual is an employee or a contractor. The agency-factors analysis approved by the Court include right to control work on the project. Of course, every person who contracts to have work done (i.e. every "client") has some measure of control (e.g. insisting that the blueprints be followed in a building project), but this factor really refers more to day-to-day control with a reasonably high level of feedback or supervision. It probably does not mean merely insisting on seeing prototype versions, periodic quality checks by the client, or "mid-course corrections" as the client identifies new requirements or recognizes new potential applications. Other important factors are how the author was paid, whether the author received fringe benefits and/or had taxes withheld, whether the author had relatively unique professional skills not typically available in the client’s workforce, whether the client had the right to assign other projects/tasks to the author (and a somewhat related factor about how long the relationship lasted), whose equipment was used and where the work took place, and whether the creation of the, say, software was the "regular business" of the client. Given the pervasive use of computers in almost every sizable operation today, this must be more directed to whether the client is in the business of selling or licensing software; a middle ground might be uses that are in between commercial distribution and mere administrative support, e.g. instruction at a university where computers may well become an integral part of delivering the educational service.

The Oregon Administrative Rules require that faculty disclose (to the Office of Technology Transfer (OTT)) the creation of intellectual property within the scope of their employment. If the disclosure reveals a copyrighted work, and the employee was tasked to prepare the work, the copyright resides in the University. If the faculty person(s) was(were) not explicitly tasked to create the work but nevertheless did so on working time, OTT may ask the author(s) to make an assignment to the State Board of whatever rights he/she/they may have. Faculty authors (collectively) receive a half-share of any royalties from commercial or revenue-generating publication of the work after the University’s production/marketing costs are recouped.

Since faculty (or other employees) might create works on their own time and with their own resources, an Internal Management Directive (IMD) guides what efforts are deemed to be within the scope of employment. The IMDs essentially categorize creative efforts as "institutionally-sponsored" or "institutionally assisted". The latter involves support "in the form of significant personnel time, facilities, or other resources." The former is an assigned task with "substantial or all of the personnel time, facilities, or other resources … provided by" the University. University-administered grant funding is included in the concept of "other resources". "An academic staff person’s general obligation to produce scholarly works does not constitute … a specific institution or Board assignment." "Educational and professional materials developed with institutional resources" will confer copyright on the State Board. Such materials are defined as materials to be "used or distributed primarily for the formal or informal instruction or education of professional or general students." In all other cases involving educational or professional materials in the form of books, musical or dramatic composition, architectural designs, and fine art, the copyrights to creative works belong to the author even if created "in conjunction with" employment. Lecture notes and "other materials prepared …in connection with a teaching assignment and with only incidental use of institutional facilities, funds, staff, and other resources, normally … shall not be construed as having been produced in the course of discharging the obligations of employment." Even where significant University resources have been used, authors may "grant copyright privileges" to scholarly or professional journals "when no compensation or royalty is involved." Under limited circumstances (usually when the Board is convinced the work has no net commercial value), the Board may grant a waiver of its rights allowing the author to publish the work without further obligation (other than indemnification if the work turns out to infringe someone else’s copyright) to the University. For the answer to a "frequently asked question" on this subject, click on Q.10.

To summarize, works developed with more than de minimus staff support, with significant use of University computers, copiers, fax machines, funding, data bases, etc, or with significant use of needed University facilities (e.g. laboratories or studios) will confer copyright on the University. The creation of any copyrightable work produced as the result of an employment assignment (either because the individual was hired to perform such work generically or because, in the course of employment, the individual was given an explicit assignment to create such a work) will confer copyright on the University. A professor’s lecture notes are deemed his or her own intellectual property. However, if more than incidental use of UO resources are involved in making such notes more widely available (e.g. posted on a class web-page) the intellectual property (copy)rights could become the University’s. Authors of scholarly journal articles which do not earn royalties (as they typically do not) may assign the copyright to journal publishers.

3. Contractual Assignment of Rights

Copyrights can be transferred (sold or given away) by a written assignment. As stated above, an outside contractor can agree to transfer any copyrights resulting from the contracted-for effort to the client. Similarly, non-employees (e.g. students who developed a creative work for a class) could assign the copyright to the University in return for the University’s efforts to commercialize the work and its agreement to share the net royalties with the author(s). So also, could a faculty member who created a work on his/her own time and without significant UO resources decide to let the University market the work via an assignment of the copyright and royalty-sharing agreement. If works are produced in the course of fulfilling grant or University contractual obligations, the grantor or the client may have secured the right to have the copyright assigned to it (or at least to receive a royalty-free license for its own use of the work).

4. Joint Efforts

It is not uncommon that two or more individuals author a work. Beyond the obvious case of a co-authored book, more subtle variations of this situation include author-and-illustrator, report-writer-and-graphic-artist, team-written software and probably even composer-lyricist producing a song. Similarly, a multimedia work may well be a combination of creative works by several authors. While a single copyright can issue to the producer of the multimedia product, proper licenses or permissions must be obtained from the outside component authors to avoid infringement. Multimedia issues are covered in more detail later in this material.

Assuming there is true joint authorship, both (all) authors own the copyright. This does not necessarily mean that all their contributions were equal. Hopefully, the authors can agree among themselves as to their relative contributions (subject to the approval of the Vice Provost for Research) and these ratios can be incorporated in any net royalty sharing agreement. Failing agreement, the UO Office of Technology Transfer will investigate the matter and use its discretion, subject to the final review and approval of the Vice Provost, in allocating percentage shares. In the case of works created with the assistance of the New Media Center, a production agreement is usually in place at the start of the project although assertaining the relative contributions often will have to await its completion.

If the University did not own the copyright, each joint author could independently market the work. However, independent marketing efforts are usually ill-advised since they can become contentious and, obviously, once an exclusive license or an assignment of the copyright has been given, other marketing is foreclosed. In any case, each author is effectively a constructive trustee for the other author(s) and must account to the other(s) for a proportional share of any net royalties or profits or proceeds received from the independent action.

5. Royalty Decisions

The Oregon Administrative Rules provide for faculty-authors to share in net royalties up to 50% in situations where the State Board holds the copyright. Equitable considerations apply to how large a percentage, who will be included in the author group, and – if there are joint authors – the allocation of the authors’ share of net royalties among them. If any of the authors has a direct or indirect ownership interest in (or serves as an officer of) any entity receiving a license to exploit the copyrighted work, such persons will be excluded from sharing in the net royalties (this sometimes arises in patent licensing, but would be rarer in the copyright context). For further details, click on the UO’s Guidance for Determining Royalty Sharing Amongst Authors, Originators, and Developers.

6. Commercialization/Publishing

Typically book or article or musical composition manuscripts are turned over to a commercial publisher which either has the resources to print and distribute or can contract for those functions. In the publishing contract, the copyright holder typically assigns the copyright to the publisher or, in fewer cases, just licenses the publisher to publish in a specified manner or market (e.g. English-language, hard-back edition only). When the State Board holds the copyright, the UO Office of Technology Transfer (on behalf of the Board) will locate and negotiate with a publisher. After recoupment of any development/marketing costs, the University will share the royalties with the author(s).

Software, instructional videos, computer-assisted instructional programs, and multimedia works may follow the same pathway but are often published by the author’s institution. Such internal publishing will typically be overseen by the Office of Technology Transfer, but the actual marketing contacts may occur through the academic department or Center, UO Publications, or the Athletic Department Business Office. The University may have the resources and equipment to produce the copies itself or may contract with a third party to do the physical production. Similarly, the University may market directly (e.g. to disciplinary association members, to client lists, to grantors, or to research sponsors) or it may choose to market indirectly through third-party distributors.

7. Summary and Where to Go Next

It is important to know who is(are) the author(s) when copyright issues arise. An author has created an expression of ideas in a fixed medium. The author may or may not own the copyright to his/her work. If the work was a "work for hire" the employer (here the University on behalf of the State Board of Higher Education) will own the copyright, although the author can share in any net royalties under Oregon Administrative Rules. Employees who created educational or professional works using significant University resources will have to assign their copyrights to the University but, again, will be entitled to share in any net royalties. Joint authorship requires an understanding of how the authors’ share of the net royalties will be allocated.

If you have created a copyrighted work (beyond lecture notes, speeches, scholarly articles to be published without compensation, and class materials for use solely in your on-campus classes) you should make a written disclosure to the UO Office of Technology Transfer. OTT staff will assist you in making any necessary assignments, finalizing royalty-sharing agreements, determining commercial potential and publication strategies, identifying publishers/customers, and will negotiate any publishing/marketing agreements. If you have not yet created a copyrighted work, but are considering it, OTT can assist you in considering issues that may arise that are not treated in these materials.

 

... Continue to Part I B