Here’s one for you, from the University of Southern California Intellectual Property Policy. See if you can figure out what’s
wrong untrue with this statement:
Both California and federal law provide that the University owns all intellectual property created or developed by an employee within the scope of his or her employment, including works developed under sponsored research or other agreements and works that make significant use of University funds or facilities.
At best, federal copyright law provides that when a work is made for hire, the author is the employer or commissioning party. A work made for hire is one made by an employee within the scope of his or her employment. What’s important to understand, however, is that the scope of employment has to do with more than the HR definition of “employee” and involves a consideration of agency and whether the employer exercises authorial control over the works in question. For universities, these issues come down to a question of *scope* of employment rather than merely the *fact* of employment. The reading that’s helpful is CCNV v. Reid and Lindsay v. RMS Titanic. For work for hire, the issue is whether the employer is the master and the employee is the servant. For authorship, the issue is who shapes the form of the work, not who prints or fixes it in a tangible form.
There’s a problem in all of this, and that is that when things get iffy, we end up with three options–courts, lawyers, and our purposes. That is, we can wait for a case, and see what a judge says. Or we can talk to attorneys, who for the most part ask, “who is the client?” and then proceed to develop a special argument based on what the client wants to accomplish, and if the client is iffy, then what the attorney thinks the client ought to want. Anything else is just idle speculation or good for snark status on a legal blog.
There is no abstract truth, here, something beyond these matters that everything converges to, if we just find the right wording, or the right attorney. The words form generally described thoughts, but then the thoughts may stay out of focus, or collide with circumstances, and we are off to attorneys, or to court as the forum to advance the discussion. But there are also our purposes. By “purposes” I mean what we choose to accomplish. If there’s a potential dispute, we can choose to resolve it without arguing the law. Or, within the law, we can choose among various courses of action. How we act depends on our purposes.
When it comes to dealing with ownership of inventions and works of authorship, a university can set itself to laying out where it has an interest and where it does not, and it can then establish the appropriate understandings with faculty, with staff, and with students to effect the desired outcomes. It does not have to say, “federal law provides that the university owns all intellectual property you make.” Of course the statement is almost but not entirely untrue. But it is still up to the university under the bits of federal law that do provide for the university to be the author of a work (work for hire) to work out where it will be that “master” and the employees will be mere “servants”. In scholarly work, it is breathtaking to think that the intent of the USC statement is to insist that the university acts as the controller of the expression made by its faculty, staff, and students. That’s the upshot of the claim that the USC policy statement makes.
If one works with the Lindsay v RMS Titanic ruling, one can see a clear basis for reasoning about copyright–the constitution provides that the author is granted copyright, and the author is the person (natural or corporate) that controls the shape of the expression that becomes the work. A faculty member can therefore be the author of a digital media work in which university staff, working for hire for the university, write the code and do the text markup–what matters is who is controlling the shape of the work, that is, who is the author, not who is the producer, creator, and the like (words that get used in university IP policies in an attempt to figure out this point, and only make things worse and worse). Further, let’s say one wants to claim joint authorship–that the university is a joint author with the faculty member. Well, here’s the definition of joint authorship in federal copyright law: “a work prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole.”
First, there has to be two or more authors. Second they have to intend to merge their contributions. Third, the result has to be a unitary whole. If one wants to get at this, one has to look to the intentions of those involved. Does the faculty author intend for the staff programmers and designers to merge their contributions with the faculty member’s? Are they co-authors or are they servants? This is a matter for intention, not policy, unless the policy intends to dictate what people can intend. This line of questions is similar to one that asks if a reviewer is an editor or co-author. The editor does not intend to be an author, and the author does not intend for the editor to be an author, so there’s no joint authorship.
For universities, especially ones like USC that “seek to balance academic tradition and law,” it’s important that folks–especially administrators–understand the law. Folks at USC writing policy to “educate members of the University community” don’t give any evidence of knowing the law, and apparently don’t recognize that intellectual property law does not dictate outcomes, but rather provides conventions and pathways, conditional on such things as intent and circumstances and mutual agreement. If a university wants to “preserve the academic tradition” of faculty ownership, intellectual property law provides ways to do that. Define the scope, state the intention, create the agreements.
In the USC policy, however, somehow federal and state law force ownership of all IP on the university. If this is so, with regard to copyright, it means that USC asserts that it, not its faculty, controls what gets expressed and published. Faculty are merely servants of their master’s will. If that’s the case there, fine, they’ve got a policy that tracks the circumstances. I’m not expecting, however, to find a lot of faculty members there that agree.
As to other federal law, I’m at a loss. Patent law does not provide for ownership to be with the employer–at least not in the US. Maybe USC operates under UK patent law. We’ve worked through copyright law briefly and argued that the conditions under which work for hire takes place are managed by intention, scope, and circumstances–does the university control the expression? Is it within the scope of employment? Then there’s reason to find work for hire and authorship is with the university. Otherwise, no. Perhaps USC means Bayh-Dole when it refers to federal law. Here’s a passage later in the USC policy that suggests this is what is intended:
Contracts or grants sponsored by the federal government require that the University retain title to inventions conceived or reduced to practice in the performance of a sponsored project, subject to a royalty-free, non-exclusive license granted to the government. The same requirement frequently applies to copyrightable material developed in the performance of a sponsored project.
I know, this is getting old. There is nothing in Bayh-Dole that requires anyone to retain title to inventions. This doesn’t even rise to the trendy but struck down misreading of a vesting statute. It’s just not true. It shows not even a competent awareness of the most popular forms of misinterpreting Bayh-Dole. More galling is the assertion that works of authorship follow this “same requirement”. Bayh-Dole doesn’t pertain to copyright, so it’s not that. OMB Circular A-110 and the FARs don’t require anyone to “retain ownership” of copyrights, though I could imagine a DOD or NASA contract to stipulate in certain circumstances that a university assert copyright and assign that copyright to the government (say, under FAR 52.227-17(c)(1)(ii)), but that’s about it. Again, this is just plainly untrue stuff, put forward with confidence in the form of an IP policy. If we’re talking work for hire here, then it’s hard to see how that’s characterized as the “same requirement” as an obligation to retain title under some weird distortion of Bayh-Dole. With work for hire, you either have it or not–there is no retaining of title involved.
With regard to California law, inventions are handled in Labor law 2870-2872. There, the effort is to place restrictions on what an employer can demand by way of ownership of employees. The law certainly doesn’t vest inventions with the employer. There is no state copyright law. As for trademarks, they are acquired through use and registration. Creating a mark means using it, not designing it. Then there’s stuff thrown in which IP, like trade secrets. In California, that’s Civil Code 3426. For a trade secret to exist, it must have independent economic value, not be generally known to the public, and subject to reasonable efforts to keep it secret. Explain how a university is going to do that for “all” the work employees do at the university. If anyone can disclose, can show visitors, can publish, then it’s hard for the university to claim it is the owner of trade secrets. It may be there are some, but it’s certainly going to be a small portion of what is produced owned by the university under trade secret law.
I don’t know of an IP statute that provides for ownership of inventions or works of authorship or data based on use of facilities. Sure, if one buys supplies with university money, those supplies–chattels–are the university’s. But that’s a far cry from “all intellectual property”.
It appears to me that USC wants to own all employee work, and use that as a base for whatever it chooses to do in its policy: “Unless otherwise stated in this Policy, the University is owner, under federal and California law, of all intellectual property created by members of the University community….” If this means, whatever intellectual property the university comes to own, it’s governed by intellectual property laws that apply to it, then fine. That’s obvious. But the policy appears to be setting out to say that these laws vest ownership in the university, and but for a bit of copyright law, it just isn’t so. One way or another, the USC policy statement is more than wrong–it’s untrue, and untrue as botch, or as bullshit (technical meaning–having no regard for the truth), or as deception–any of these ways, it’s not the kind of thing to show up in a policy statement on intellectual property in the university.
I’m of the mind that the drafters of USC policy did not intend to deceive. That leaves bs and botch. I lean toward botch, but either way, it points to a huge lack of understanding about intellectual property, a clear desire for grabbing everything, and a disregard (despite the gestures) for the university environment. It’s 30 years after Bayh-Dole boosted university tech transfer to the forefront. I’m left to conclude that the general standard of practice in university tech transfer offices, if these elite university IP policies are any indication, is dismal, petty, hand-waving, incompetent. All the worse that it is presented as confident, sincere, and legalistic. These are not tiny bits of typography gone off. These are power grabs affecting tens of thousands of some our our best scholars, their supporting staff, and hundreds of thousands of students.
One summer I spent at a marine biology research station, one evening we were playing volleyball on a dirt court, a net strung between two douglas fir trees. While we were setting and spiking, a man with a water tank on his back walked across the lawn to us. “Hey,” he shouted, “There’s a forest fire up the hill.” Another serve. “Hey!” We stop playing. “It’s on your marine station property, don’t you think you better get up there and help us?!” The volleyball drops, and we head for the gloves, boots, and shovels, working into the dark to douse hot spots. Now I feel like I’m that man with the water tank. It’s your property, folks. Are you going to help put out this fire?