Texas wants you anyway

The University of Texas has a fine statement of ownership in its policy (Rule 90101, Section 2).

The Board of Regents automatically owns the intellectual property created by individuals subject to this Rule that is described in Sections 3, 5, and 6 below and in Rule 90102, Sections 2 and 3. Accordingly, all individuals subject to this Rule must assign and do hereby assign their rights in such intellectual property to the Board of Regents. Moreover, individuals subject to this Rule who create such intellectual property (creators) shall promptly execute and deliver all documents and other instruments as are reasonably necessary to reflect the Board of Regents’ ownership of such intellectual property. A creator of intellectual property owned by the Board of Regents has no independent right or authority to convey, assign, encumber, or license such intellectual property to any entity other than the Board of Regents.

Well, now, where shall we start?  We might point out the logical failure of asserting ownership of IP and then asserting that “creators” of the IP don’t have any right to it other than to convey it to the Regents.  If the Regents own “automatically”, then of course there’s nothing even for the creators to convey, assign, encumber, or license!  (And who comes up with these lists?  How about alienate, sell, offer, provide, release, loan, lease, and disclose?  And what happened to “including but not restricted to” at the beginning and “any thing else we can think of but have gotten tired of listing out” at the end?)

We may as well also get of the way putting a present assignment in a policy statement.  The policy sets out the authority for requiring assignment.  An assignment instrument signed by owner of title conveys title.   If one wants to do this, be up front about it and put the present assignment in a document that is signed by the future inventor or author at employment–where everyone can see it, and where it won’t do a lick of good to deal with Stanford v Roche class situations.

Let’s take a look at the sections cited by this initial declaration of ownership and come back to “automatically” later.  Section 3 lays out scope–

all types of intellectual property, including, but not limited to, any invention, discovery, creation, know-how, trade secret, technology, scientific or technological development, research data, works of authorship, and computer software regardless of whether subject to protection under patent, trademark, copyright, or other laws.

Ah, there’s our “including but not limited to”.   The true sign of someone who doesn’t know what they are doing, especially when it comes to “intellectual property”.   There are statutory forms of intellectual property–patent, copyright, and trademark.  There are things that are often grouped with intellectual property but are not, such as trade secret, and there is “quasi intellectual property” such as “performance rights” and perhaps even “domain name”.  What we have here, however, is a mish-mash of things associated with university work, all grouped under a new, policy-based definition of “intellectual property”.

That is, the policy aims to comprehend, apparently, “anything we can think of, and anything we can’t think of, whether owned by means of law or not owned by means of law.”  May as well simplify to “everything that can be owned or not owned” or “everything that can be owned, legally or illegally.”  Rather amazing.  One might suspect this is the work of a diligent but clueless drafter given the task of getting everything that might be valuable–so start with everything, claim it, and then carve out exceptions for worthless stuff.  Section 4 does this, excluding “scholarly or educational works, artworks, musical compositions, and literary works related to the author’s academic or professional field, regardless of the medium of expression.”  Well now, that means, combined with the above, that literary works *not* related to the author’s academic field are *claimed by the Regents*.  More so, they are *assigned to the Regents* (or so we are led to believe) “automatically.”

The list of carve-outs is deeply flawed, as it conflates works based on their purpose (e.g., educational) with works based on their form (musical compositions) or on a characteristic (scholarly attribute).   I can write a piece of software, and use it in the classroom.  Is it “educational”?  I can prepare a description of a discovery as a work of scholarship.  Is it therefore exempted?  But if I prepare the description as a technical report, it is not?

Worse, notice the drafting logic.  If one were doing the right thing, the meaningful thing, and asserting the particular things that the Regents did intend to own as a condition of employment, then one could offer a narrow list and leave it at that:  works expressly commissioned, works required to be owned by law or contract, and any graphic novels that portray as a character the President of the UT System, or any UT football coach.  At least we would know what we were dealing with.  However, if one starts by defining *everything as claimed* and then offer carve outs, these *have to be broad and clear* or it creates nonsense.

Section 5 claims software but allows the exceptions of Section 4 to control if there is content covered by Section 4.  Programming tip:  include a “help” screen.  That’s “educational”.   Who gets to decide if a work is “educational”?  In a normal adhesion contract, what is reasonable would be up to the non-drafting party.  Otherwise, it’s not really a contract at all.  Here, it would amount to a policy that says, “we claim everything, and anything we don’t claim, we reserve the right to claim, so don’t think that our statements about not claiming actually mean anything until we confirm what we mean.”

It is really quite the remarkable IP policy.  Written by folks who are willing to use threat of loss of employment or unethical behavior to make a claim to whatever they want.

Section 6 covers works for hire.  It takes back exceptions made in Sections 4 and 5.  Claim everything, release scholarly and artistic works, including software with scholarly and artistic works, except if created by someone hired to produce such work, or even if not hired if “part of an institutional project”.   Now we have got a conflation of work made for hire, which is a definition in the federal copyright law, and an assertion here about ownership.  If a work *is* a work made for hire, then under federal copyright law, the author is the employer or commissioning party.  The effort here, in policy, must be to define the scope of employment (since it is otherwise largely a matter faculty choice, academic freedom and all that) and for work that is not within employment (per agency for the purpose of authorship, not merely HR thinking) the policy has to set up a commissioning protocol that allows the university to obtain an agreement in writing establishing that the work will be “made for hire” and meets one of the defined categories of the law.

The policy gets around all this, it appears, by Section 8, which makes it against policy for anyone to use university facilities or resources to “create, develop, or commercialize intellectual property outside the course and scope of employment”.   Here we have two forms of employment at work–IP employment and HR employment–and the policy conveniently conflates them!  IP employment is about the agency exercised by an employer that results in a work being made for hire.  When the employer exercises supervision, directs a work, provides the facilities and resources for the work, and the like, then a work is a work for hire.  HR employment means paying a salary in exchange for duties.  The problem for faculty is that the duties are teaching and being a faculty member, and scholarship is not something assigned by the employer.  But here, we have a policy that says scholarship is not owned by the university, but the university also does not allow the use of its facilities and resources for this scholarship!  It’s bizarre.  There’s no logic to it, no public policy, no explanation.  Who writes this stuff?

Section 9 adds ownership claims for “research data or results”.  Essentially the policy claims all scholarship that can be classed as research, but for articles about it.   Faculty are given a “nonexclusive license” to use the data, but only for “nonprofit, educational, research and scholarly purposes within the scope of the employee’s employment.”  There is no indication in the policy exactly *how* “data or results” are owned.  If it’s copyright, then there’s another policy on that.  If it’s not copyright, then what is the ownership theory?  Trade secret?  Are the Regents here saying that faculty have no right to disclose research results until these have been reviewed by the university?  If so, then Texas has to comply with US export control laws, and get licenses for everything done in research, because none of its work is then within the definition of “fundamental research” per EAR 734.8(a) because the university asserts a proprietary position and demands non-disclosure prior to its formal review.  In the University of California, it is a cornerstone of university practice not to allow research on campus to stray from this definition.  Apparently folks at Texas drafting IP policy don’t give a damn about it.  Perhaps it’s time for a little export control audit of the University of Texas by BIS.

We have two more sections to go, these in Rule 90102.  Section 2 comes at ownership a different way:

Intellectual Property Owned by U. T. System. Intellectual property either developed within the course and scope of employment of the individual or resulting from activities performed on U. T. System time, or with support of State funds, or from using facilities or resources owned by the U. T. System or any U. T. System institution (other than incidental use) is owned by the Board of Regents.

The gesture is still the same–anything in *this list* is also owned by the Regents: employment, resulting from activities (note:  not necessarily within the scope of employment, or during employment), on UT time, with UT funds, facilities, or resources. But here, we find the vestiges of the old system of voluntary assignment.  Instead of the outright claims of Rule 90101, Rule 90102 introduces protocols for “Determination of U.T. System’s Interest”.   For that, the university demands non-disclosure–meaning, essentially, trade secret claims–for any “intellectual property” (so the lists in 90101 and 90102) prior to disclosure to the System.  It’s not possible, but there it is, it’s required.  And if it’s not enforced, then can it ever be selectively enforced?  Is that rule of law, or by threat of loss of employment or accusation of a crime?   It would appear that the latter approach, using threats, is actually at the bottom of these policies.  The law/contract part is woefully lacking.

Paragraph 2.2 sets up a protocol by which the University will not “assert ownership interest”.   If the University decides not to “assert ownership rights” it will offer “the released intellectual property to the creator”.  If the recipient were capitalized, I’d think perhaps there was some deal with the deity.   As it is, this is a confused noise by folks who have got the vocabulary down, but don’t know what it refers to.  First, the Texas policy purports to *take* ownership.  It is “automatic”.  The “ownership interest” that Texas asserts is that it owns, not that it may request ownership after a review of the circumstances in relationship to its “interests” (such as in profiting from research results or preventing others from profiting without paying).  Throughout the policy, as we have seen, are assertions of ownership–not requirements to assign, but that the Regents own–automatically, outright, by assertion.  The policy goes so far as to embed a present assignment right there in the policy, as if the policy not only states the employer’s position, but also has the power of attorney to act for employees (and even non-employees) to assign their personal property to the university.

Thus, when Texas writes that it chooses “not to assert ownership rights” it does not mean “does not require assignment of ownership” but rather “will not try to make money by excluding others who do not pay” or something like that.   In short, the Texas policy reads:  we own everything, but if you notify us of anything we already own, we will tell you within 20 “business days” whether we intend to keep owning it.   Thus, “release” is not the appropriate verb.  “Assignment” would be the thing.  One releases an interest when there is a contractual obligation to assign, and the assignee chooses not to enforce that obligation. It is as if there are two policies.  One, the ruins of a review + request approach, with limited but clear claims, and a second one, an all-demanding corporate machine that takes all ownership possible, and lets go of only what is worthless to it.

Section 3 of Rule 90102 concerns intellectual property (again, a broad definition of anything under the sun) in sponsored research.  Again, a repeated assertion that the IP is owned by the Regents.  Since IP is owned under policy by employment, use of facilities and resources, and within an “institutional project”, one wonders what additional ownership might be gained for sponsored research?  Is it for work outside the scope of employment?  not by employees?  not using University funds or facilities or resources?  It is not at all clear.

The burden of Section 3, however, is in establishing that extramural contracts, when approved by the University, take precedence over the ownership requirements of policy.  This is a good thing, for it allows the Bayh-Dole standard patent rights clause to operate, and to supersede University ownership claims.  Of course, doing so depends on the University complying with the standard patent rights clause, requiring the (f)(2) agreement, and the like.

We’ve now moved through the Texas policy sufficiently to get at just what is wrong with the policy.  Clearly, the only thing that is “automatic” about intellectual property vesting is work made for hire, where the author is the employer or commissioning party.  Perhaps that is why the policy cannot bring itself to use “inventor” for one who makes inventions or “author” for one who makes original works of authorship.  Instead we have “creators”–“individuals subject to this Rule who create such intellectual property.”  The drafters no doubt needed a term that conflated patent and copyright interests, as well as anything else that they could think of that might count as “intellectual property.”

Another typical problem is that the use of “author” gets folks into trouble if they don’t know what they are doing with work for hire issues.  The university can’t give work for hire work back to the “authors” of the work if the “author” is the university.  So who does it give the work back to?  The “creators” of course!  But who exactly are the “creators” of a work made for hire?  Are they the ones that “did” the work–wrote the words, the computer code, shaped the noses and ears?  Or is the ones that had the design and kept the ones “doing the work” doing it to spec, to get it right, as agents of the employer?

That is, if a work is a work for hire, then agents of the employer direct and approve the work.  Those, rather than the folks grinding out code, would appear to be the “creators.”   But we will never know, because “creator” is defined as one who “creates intellectual property.”  And “intellectual property” here means pretty much anything the policy wants to call intellectual property.  It’s a mess royal, a fustercluck.  Oh sure, along with Errors and Expectations, we might think of this as inarticulate prose by incompetent but sincere and expressive writers and we can still just “know” what they meant. Perhaps faculty are still expected to have the duty of “cheerful acquiescence,” which was in the Board of Regents Rules and Regulations until 2004 (see Part I, Chapter III, Section 8.3): “The Regents and all administrative officers are entitled to the cheerful acquiescence of all staffs in carrying out the policies duly adopted.” Except this isn’t that sort of thing.  It’s policy claiming the authority of contract (or law, or threat of disemployment) and an instrument purporting to implement the assignment of rights from individuals to the Board of Regents.  It is not sufficient to claim that everyone will just “know” what is “meant.” Why write a policy in that case? Why not just say–“we take what we want, before we ever want it.” It certainly is not going to do it to claim that the policy is just there as a placeholder, and some official for the university will decide just what things mean later, when it’s required.  That’s not a policy, and it’s not a contract.  It’s capriciousness.  It is, frankly, a kind of administrative bullshit.  This is an elite university’s IP policy, let all gone to bunk.  It may have fancy words and all the trappings of officialdom, but it’s a rotten core architecture of public policy, wrapped around sloppy execution.

Universities not wanting to give up these sorts of policies are like drunks who won’t admit they have a problem.  They need to go into rehab.  Stanford v Roche gives them a decent excuse to do it.  At least if they are going to claim IP, they could do it right, use the terms of art, acknowledge they don’t have the standing to assert trade secrets in scholarship, recognize that scholarship is outside the scope of employment for IP purposes, and that owning research results and “creations” and “know-how” makes no sense, as it means that the University can direct and control faculty with regard to their disclosures and publications.  For the University of Texas, this means that it is public policy for the state to control scholarship.  No matter if that control is merely to try to exploit ownership positions to extract payments from industry or investors.  It’s still state control of scholarship.  It’s exactly the opposite of what universities stand for.   That the high public purpose appears to be money-grubbing by threats makes it all rather contemptible.

Finally, we can return to the fundamental policy claim of ownership and ask on what authority does policy base its assertion that faculty, staff, and students–even students not employed by the university–“must” assign ownership of their personal property–IP–and apparently much of their non-IP–to the University?  What if there is no authority for the assertion?   If it is only reasoning from “automatically”, then it’s merely a clever linguistic ploy.  Since we used “automatically” then it must needs that to make this true, folks “must” assign.  One would think that one would have here a policy reason that connected up public purpose with employment and use of facilities.  One might propose, if one was disposed to state control, to make a case that the university, its resources, and its work was undertaken in the public interest and therefore all work in which an ownership interest might be claimed should be dedicated to the university as the proper steward to make decisions in the public interest on behalf of all the members of the university community.  Something like that.   Sounds good if one is reasoning from authority and order and an institutional jealousy of the value, in the university’s hands, of what folks might discover or imagine or make.

But the Texas policy does not do this.  It merely asserts that because it has asserted, then folks “must” conform, and that means assign after already assigning, after the automatic transfer of ownership.  It doesn’t matter why.   Texas wants all your IP anyway.

 

 

 

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1 Response to Texas wants you anyway

  1. Pingback: From provider to predator: University of Texas patent policy, Part 1 | Research Enterprise

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