Faculty IP and Academic Freedom, Part I

I am working out how to disrupt the now-pervasive use of management-speak to describe the obligations of university faculty with regard to intellectual property they produce–largely, almost entirely their personal intellectual property, by operation of federal copyright and patent law, prior to the university tech transfer office trying to get ahold of it through one clever scheme or another.

First, let’s lay out the conditions of faculty involvement with university administrations. Then we will look at how management-speak aims to undermine academic freedom. I will argue that undermining academic freedom also undermines the impacts that faculty research might have in the broader community, hurts the working relationship between faculty and tech transfer offices, and works against the success of the tech transfer office as an administrative function of the university. That is, academic freedom, far from being some idealist fancy, lies at the heart of any program to encourage innovation from university research. Finally, we will consider the reasoning–or lack thereof–behind the persistence of management-speak, despite the damage it does.

So, Part I.

Let’s be broad-brushed. We will come back to gather up the objections and dispose of them.

1. Faculty have academic freedom. 

This is a fundamental in university policies. There are variations on the theme, but a general theme is that the university administration does not dictate to the faculty what they study and teach, how they study and teach, or how they make their work public. Here is the University of Michigan policy statement on academic freedom (my emphasis):

Academic freedom is the liberty that faculty members must have if they are to practice their scholarly profession in accordance with the norms of that profession. Academic freedom is not a term or a condition of employment; rather, it is based in the institutional structure of this and other universities and is fundamental to their common mission of promoting inquiry and advancing the sum of human knowledge and understanding. Although some aspects of academic freedom are also protected by the First Amendment to the United States Constitution, academic freedom exists, independent of any external protection, as a basic prerequisite for universities to fulfill their mission to our society. Academic freedom is most commonly vindicated by individual faculty members, but remains first and foremost a professional prerequisite of faculty members as a group.

Four “freedoms” are then identified (with supplementary text I’ve left out for now):

  • freedom of research and publication
  • freedom of teaching
  • freedom of internal criticism
  • freedom of participation in public debate

It’s a typical statement. Here is another, from the University of Missouri statement on academic freedom, in its Collected Rules and Regulations (my emphasis, but for headers, which are bold in the original):

The Board of Curators of the University of Missouri believes that academic freedom and the economic security of its academic staff are indispensable to the success of the University of Missouri in fulfilling its obligations to its students and to society. The Board, therefore, hereby adopts and approves the following principles, the detailed application of which is implemented by the rules and regulations of the Board; and also adopts the following rules and regulations….

  1. General Principles of Academic Freedom — The Board hereby reaffirms the principles of academic freedom in teaching and research for teachers and academic investigators (herein referred to as faculty members). These principles are as follows:
    1. Institutions of higher education are established and maintained for the common good, which depends upon the free search for truth and its free expression.
    2. Academic freedom is essential to these purposes and applies to both teaching and research. Freedom in research is fundamental to the advancement of truth. Academic freedom in its teaching aspect is fundamental to the protection of the rights of the faculty member in teaching and of the student in learning. It carries with it duties correlative with rights. The following sections are indicative of these rights and duties.
      1. Faculty members are entitled to freedom in research and in the publication of the results (qualified insofar as necessary in the case of sponsored research), subject to the adequate performance of their other academic duties.
      2. Faculty members are entitled to freedom in the classroom in discussing their subjects, but have the responsibility not to depart significantly from their respective areas of competence or to divert substantial time to material extraneous to the course.
      3. College or university faculty members are citizens, members of an educational institution, and members of learned professions. When they speak or write as citizens, they are to be free from institutional censorship or discipline, but their special position in the community imposes special obligations. They should anticipate that the public may judge their profession and their institution by their utterances and actions.
        Hence, they should at all times be accurate, exercise appropriate restraint, show respect for the opinions of others, and make every effort to indicate that they do not speak for the institution.
  2. The Principle of Tenure — Tenure is the right to be free from dismissal without cause. Tenure is indispensable to the success of an institution of higher education in fulfilling its obligations to the common good.

Notice, here, that academic freedom is tied to tenure–faculty can be dismissed only for cause, and as the statement on academic freedom makes clear, such a cause cannot possibly be a faculty member’s refusal to give up academic freedom. That’s the very point of bringing the statement of academic freedom within a statement on academic tenure.

2. University IP policies are subordinate to academic freedom. 

A faculty handbook or similar policy document sets out the conditions of faculty appointments. A university’s intellectual property policy typically is not in the faculty handbook. Michigan’s IP policy is buried in Chapter III of the Regents’ Bylaws, under the general head of “Business Management, Finance, and Property,” in the last section, under the nebulous heading “Ownership of Patents, Copyrights, Computer Software, Property Rights, and Other.” The inclusion of “Other” is a nice touch. One then has to follow that out to a Standard Practice Guide, which attempts (badly) to implement the Regents’ Bylaw. One is reminded of the plans for a new by-pass. And the sad reality that things can be just as bad as all that in real life. Missouri’s IP policy is in the Collected Rules and Regulations as Chapter 100 under the heading “Business Management” and called “Patent and Copyright Law.”

Academic freedom is fundamental to the purpose of a university faculty. It trumps policies that disregard it. It is prior to any employment relationship. Academic freedom is not a condition of employment imposed by the university administration; it is fundamental to the idea of a university. You don’t have a faculty without academic freedom. Academic freedom is not an oversight, a failure to control, or some idealist dream. It’s real, it’s established, and it is material to any discussion of how faculty members are also “employed” by their universities.

As Ayn Rand puts it in “Doesn’t Life Require Compromise”:

There can be no compromise between a property owner and a burglar; offering the burglar a single teaspoon of one’s silverware would not be a compromise, but a total surrender–the recognition of his right to one’s property. What value or concession did the burglar offer in return? And once the principle of unilateral concessions is accepted as the base of a relationship by both parties, it is only a matter of time before the burglar would seize the rest.

There can be no compromise on academic freedom, or it just isn’t.

3. A university that forces faculty to file for patents violates academic freedom.

With academic freedom, faculty members cannot be forced to publish against their will. A patent is a publication. Publication is one half of the social contract framed by a patent–publish your invention in exchange for exclusive rights to the invention for a limited time. If a university forces a faculty member to publish (in the patent literature) so that the university can harvest the exclusive rights for itself, that violates academic freedom. Inventors apply for patents in their own names. Inventors must sign a declaration and oath that the patent application represents their personal work. If a university by policy or imposed contract or threat of dismissal forces the inventors to do file a patent application, that’s forced publication.

A university that claims ownership of inventions–whether or not patentable (but much, much worse if not patentable)–also violates academic freedom. Ownership of inventions (as distinct from ownership of a patent right) asserts that the university, not the individual, has the right to control the property–including disclosure and use, and including teaching others how to use the property. If a faculty inventor must sign ownership of an invention to the university, she cannot then teach anyone how to practice the invention outside the university without the permission of the university–both permission for her to do so, and for whoever is receiving the training to practice the invention.

Without such permission, the recipient–if they make or use the invention–is infringing the university’s rights. What is the point of teaching, if the recipient cannot use the instruction? I suppose one could teach to show how to design around the patent–and that might well mean “progress” and “economic development” of a sort, but that also runs entirely against the idea of technology transfer, which is that others use what has been developed at a university, rather than figure some way not to use it because the university claims ownership and intends to find a generous, sort of dumb or clever paying monopoly speculator rather than let just anyone work with the invention. If a university handles IP so that there’s no point in teaching freely and openly the underlying inventions and works of authorship, then the university has violated its own policy on academic freedom.

4. A university that claims to own inventions outside patent rights also violates academic freedom.

Companies handle such matters of ownership of IP in combination with trade secret and non-compete requirements as part of the employment agreement. University faculty agree to no such terms, and academic freedom requires that the university does not require such terms. All the worse, then, if a university claims to own “inventions” independent of a patent right, for it is then asserting trade secret and non-compete claims against its own faculty members. And violating their academic freedom. And its own policy. Such assertions of ownership surely are not binding and not enforceable (except through threats and legal attacks).

5. Faculty scope of employment is narrow, if it exists at all.

Faculty are appointed. They are paid a stipend or salary to support their presence at the university. The money comes with the appointment; it is not payment for time nor for work product nor for services directed by the university.

Faculty are not employees within the broad framework of university policy. Faculty Handbooks rarely use “employed,” which has special meaning. “Employee” is used for staff. A faculty is made up of members. The members profess. They are professors. Even adjunct lecturers profess. Faculty are not employees (a relatively recent term adopted from corporate practice). They do not serve a university master. They are not agents of the university. Often the university disclaims that faculty members have authority to enter into contracts for the university or otherwise represent its “official” position. The university has no power to direct their work, review and approve their work, decide what they may work on, who they work with, when they work, where they work, how they disclose their work, teach their work, or publish their work. All of this falls outside of “scope of employment.”

(A couple of years ago, when I was “hired” at the University of Washington’s Bothell campus to teach for a quarter, I received an email offer and sent an email reply. This repeated for the seven quarters I taught there. Never did an offer mention the university’s policies, or any other matter besides, once, the pay per course).

Faculty may be called “employees” for administrative purposes, but the name given to the thing does not dictate the properties of the thing. A document may be a prospectus even if it is labeled “not a prospectus.” An instrument may be a patent assignment even if it is labeled “exclusive license.” It is what the thing does that matters, not what someone calls it. And faculty do not employ–they profess, they are members, they are appointed to positions. They serve in those positions, but they do not serve the university administration, however much administrators may talk as if they do. They don’t.

6. Faculty scope of employment is also narrow for intellectual property reasons. 

For copyright, scope of employment follows common law of agency. A work made for hire is a work prepared by an employee within the scope of his or her employment. Look at the work. What circumstances of agency (there are more than ten set out in CCNV v Reid) lead to a finding that the university is the master of the work, and the faculty member has merely prepared the work as an agent for that master? For most faculty work, other than work clearly directed and defined by the university and for the university’s administrative benefit, there is no such agency. The university does not even know that the work exists and has no power over its creation.

A faculty member’s scope of employment does not include everything done within the faculty member’s area professional training, nor anything that the faculty member might do during any given day. The university is by design a slack employer. The university’s payment is not for the faculty member’s time or for the faculty member’s work effort, or for the faculty member’s work product. Rather the payment is a stipend so that the faculty member may pursue his or her profession without a pressing concern about income. Consider faculty pay a form of conflict of interest management. If faculty are paid, then they do not have to grub for enough pay to stay at the university (unless, of course, they are adjunct faculty, in which case they are not paid enough to leave off worrying about income).

Nearly all the written or other authorial work prepared by faculty members is not made within the scope of employment, is not work made for hire, is not work for which the university has contracted to require assignment–and if so, such requirement would violate academic freedom, making the university (rather than the faculty author) the owner and controller of what could be publicly displayed or distributed in copies or modified.

For patents, scope of employment is not sufficient to secure for the employer ownership of inventions. If an individual has not been employed to invent, and thus expressly entered into an agreement regarding inventions, then the employer has no legal right to the invention. Supply of resources does not matter. Use of resources does not matter. Use of the employer’s “time” does not matter. An employer may enjoy a “shop right”–a non-exclusive right to use the invention. But an employer has no claim to own such inventions.

The claim to own arises not by employment but by an agreement regarding patentable inventions (other than in Ohio and Florida, which have laws that stipulate ownership of inventions at public universities–but even there the scope depends on scope of employment). A university policy on patentable inventions may state the desire of the university to own certain inventions, but that does not give the university outright a legal right to those inventions. Such a policy statement authorizes university officials to take actions to acquire title to such inventions, subject to the rest of the university’s policy framework, which may–and often does–place restrictions on such actions. Including big restrictions, such as academic freedom–which is a restriction on administrative powers.

7. A university policy that reads “as a condition of employment you hereby assign future inventions to the university” does not operate as an assignment.

Such a statement is legal-sounding administrative fantasy. It creates the appearance of an assignment. It may even create the expectation of an assignment. But the inventor has not signed the document. And the instrument lacks a specific scope–for what inventions has the faculty member been employed to create? What inventions are within the legitimate right of the employer to demand? In some states, that right is expressly limited by state labor law. If a faculty member has academic freedom, and is for most work not employed, not an servant of the university administration, the scope of the assignment is narrow, is the empty set. The condition of “employment” is not the same as the condition of “appointment.” The university may be, in some sense, an “employer,” but that does not make every faculty member, by operation of a clever suffix, an “employee.”

The condition of appointment cannot be buried in a policy statement that claims everything when in the same policy set is a statement that the university cannot claim everything and as a matter of policy does not desire to claim most anything that a faculty member does. At the very least, there is no meeting of the minds–between parts of policy, let alone between the university as represented by policy and any given member of the faculty. Even when a university modifies its patent policy to create a confused jumble of conflicting claims–and this is now the standard practice–the statement of academic freedom gets precedence. Few faculty members would submit to an appointment in which the university owned all their work as a condition of appointment. They would know they were not faculty.

8. Sponsored research is a faculty choice, not an administrative assignment.

Extramural research agreements function in this same way. The research is not imposed by the university administration on the faculty member. The faculty member requests release from duties to participate in extramural research. “Extramural”–outside the walls, beyond the bounds of the university’s reach, not a matter of employment. The research activity lies outside the duties for which a faculty member might be assigned or obligated. The faculty principal investigator chooses a potential sponsor and writes a proposal, which is submitted to the sponsor by the university. The university may refuse to forward the proposal to the sponsor (for some reasons, not others) and may insert its own conditions to bind the sponsor in the research contract (such as the right of the investigator to publish results), but it is the faculty principal investigator who then decides whether to accept the award. If there are terms in any research contract that run against university policy, it is the faculty member’s choice to accept those terms, once the university has. The university does not impose any such terms on the faculty investigator–the faculty investigator chooses them voluntarily. Any other faculty members who join such a funded project also do so voluntarily. They accept the conditions; they are not assigned to the project nor compelled to participate.

For federal funding, the standard patent rights clause dealing with employees’ obligations does more: it requires the university to make designated employees parties to the funding agreement. As it were, faculty (and others) become, by delegation of the university, the equivalent of small business contractors in their standing with the federal government (See 37 CFR 401.9). The federal regulations that implement Bayh-Dole make this expressly clear. The effect of federal funding agreements, then, is to force universities to confirm that employees are not mere employees with regard to their rights in patentable inventions within the scope of federal interest. They have new standing by the action of the university when they participate in federally funded projects.

It is worth noting that in the Bayh-Dole regime, universities have limited ability to negotiate patent terms in federal funding agreements because Bayh-Dole limits what federal agencies can negotiate. Universities must largely accept what is on offer (except if they wish to contest a determination of “exceptional circumstances”). Even here, no faculty member is forced to accept the funding or the terms–to participate in extramural research is a choice, not directed work.

9. Faculty may agree to give up control over their work.

Academic freedom also permits faculty members to give up their invention rights and copyrights:

  • A university may request control, and a faculty member may agree to the request.
  • A faculty member may desire to give up control, and a university may agree to take control.
  • Any other agent might also request control or be requested to control a faculty-created invention or work of authorship. A publisher might gain an exclusive license to publish, or an invention management agent might obtain the right to license patents to industry.
  • An external sponsor of research could make delivery of rights a condition of funding.
  • And the university itself could make delivery of rights a condition of providing special funding or access to resources for a defined project and negotiates an arrangement with the faculty members involved.

Any of these approaches is consistent with academic freedom, which is the freedom of an individual, without threat and not under duress and not subject to manipulation or deception, to allow others to own or control rights in the works that the individual has made.

10. A university obtains IP rights from faculty by voluntary, mutual agreement, not as a condition of appointment, not because of financial support, and not as a demand to resolve an imagined ethics violation for the normal use of facilities and resources already committed for the use of faculty, so that a faculty member may profess.

A stipend accompanies a faculty appointment. The faculty member provides a narrow set of services to the institution–meeting assigned courses, submitting grades, serving on institutional committees, managing administrative affairs of a department. The rest of the time, the faculty member professes–teaches, conducts research, develops professionally, advises students, helps the public, edits journals, peer reviews publications and grant proposals, organizes conferences, gives talks, consults. Professing is a consequence of employment, but it is not in the scope of employment, and for these activities, a faculty member is not the university’s employee, and does not “employ.” The university is a sponsor or patron or host, not a master, and certainly not a corporate master operated by administrative managers holding the power of assigning tasks and approving work.

A university may expressly contract for certain duties–even at the time of appointment–and these duties then are a matter of employment. But these are not the duties of being a professor. They are duties that are service to the university administration adjunct to professing. A university may seek to contract at any time for such administrative duties, and a faculty member may opt to accept such an offer or decline. The terms of the arrangement then control the disposition of rights.

Let’s review. For university faculty members:

  • Academic freedom is intrinsic to the faculty relationship to the university.
  • Faculty scope of employment as “employees” is narrow or non-existent.
  • Intellectual property scope of employment is also narrow.
  • Patent policy statements that claim to be assignments aren’t.
  • IP policy claiming faculty IP conflicts with loses to policy on academic freedom.
  • Faculty may voluntarily give up their intellectual property rights, but not as a condition of employment or use of resources.

This is the starting point for a counter-attack on university policies that claim to own all faculty work. Those policies fail. If it weren’t for university administrators having access to nearly unlimited funds to hire lawyers to impose their assertions, there would be no debate to speak of. But what’s really odd is that university administrators not only don’t care how illogical, contradictory, abusive, or failing their IP ownership policies are–they also appear to actually want these policies. The idea is, “no matter how badly, how defectively, how rotten our policy statements might be–and no matter how incompetent our legal representatives may be–university ownership of faculty work is a really, really, really good thing.” But is it? And why? We will consider this in Part II.

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