Let’s look at intellectual property ownership in the context of faculty work. For scholarship, we can identify six forms of ownership: ownership of inventions (patent), original works of authorship (copyright), marks used in commerce (trademark), information (trade secret), tangible stuff (chattels), and “other stuff” (pseudo ownership). If a university is going to “own” intellectual property, there has to be a theory of ownership. Otherwise, it’s not ownership, but something else. Control maybe, or a shakedown, or an abuse of position.
Copyrights. Consider copyright. The federal copyright law defines a “work made for hire” as one prepared by an employee within the scope of the employee’s employment. I have heard some law professors claim this definition means any scholarly article written by a faculty member is technically a work for hire. That’s simply not true. The test is whether the employer has control over the work–there is a multi-point test for agency. Being an “employee” is one of those points, but for faculty, it is clear that the “employer” has nothing to do with their scholarship–does not assign it, review it, approve it, expect it, require it to be done at the university, control disclosure or publication or use. None of that. Not work for hire.
The second part of the definition of work made for hire fails too–where is the written agreement signed by the author that a particular work, though otherwise not within the scope of employment, will be a work made for hire? Not there. Not merely a minor technical point, any more than a signature on a check is just a minor thing, easily ignored. Then we are down to an assignment of copyright made as a condition of employment, but somehow not within the scope of employment. Think about it: if the work were within the scope of employment, it would be a work made for hire by meeting the definition of federal law. If it is not within the scope of employment, then the university is saying, essentially, that “as a condition of being employed to do things that we, the university, direct you to do, we also get ownership of everything else that you do that we want to own, or we fire you.” Abuse of power. Shakedown. Racket.
Patents. Now consider patent. The Supreme Court made clear in Stanford v Roche that mere employment was not sufficient to establish ownership of inventions with the employer. There has to be an agreement that supports the employer’s claim. Here’s a nice discussion of the situation, from Eric Freibrun. Freibrun parses situations into ones with no valid written agreement and ones with a written agreement. If there’s no agreement, one has to look to common law principles:
1. If an employee is not hired specifically for the purpose of inventing anything, then whatever he or she may invent during the course of employment will be owned by the employee. No implicit agreement to assign any patent to the employer arises. This general rule applies even if the invention is related to the employer’s business.
2. When an employee is hired to invent, but the employer has no more in mind than a desired result and does not give the employee instructions as to the means the employee must use to accomplish the particular result, then any resulting invention, even if related to the employer’s business, will again be owned by the employee.
3. If an employee is hired to create a specific invention and the employer can demonstrate that the means to bringing the idea into practical form were clearly spelled out for the employee, the employer will be deemed the owner of the invention where the invention is within the scope of the inventor’s employment and relates to the employer’s business.
If the employee is not hired to invent, and there’s no patent agreement, the invention is owned by the inventor, under common law, under federal patent law. The employer may have a “shop right” to use the invention, but that’s not ownership. Now take this to the university situation: if there’s no patent agreement that requires assignment to the university, then there is no foundation for compelling a faculty inventor to assign. Thus, university administrators bent on creating an environment in which faculty must assign have to come up with a valid patent agreement. They have turned to patent policies, for the most part, in an attempt to make that demand stick. To do so, they have had to make their patent policies become contractual, part of an employment contract (in the case of employees) and part of some sort of adhesion contract (in the case of visitors, collaborators, and other non-employees).
Now, let’s say that somehow when a faculty member is hired, she does enter into a patent agreement with the university. That agreement has to be stable. The university cannot unilaterally change the terms of the agreement–even if the university changes its policy statement or requirements. The agreement is enforceable both ways, as a meeting of minds, not against public policy, with offer, acceptance, and consideration. The Shaw court made this crystal clear, if it wasn’t already. Thus, if a patent policy really is a contract, then faculty are subject to the patent policy in effect when they were hired, unless they agree otherwise. If the university claims that it can change the policy unilaterally (whether by changing the wording or changing what they claim the wording means), then the policy is not a contract, and that means it is not binding. It is not legally enforceable. If it is enforceable, it is by means of threats. Abuse of office.
Furthermore, if the university patent policy says something to the effect that the university owns “everything”–then it is against public policy. It is not equitable that an employer own everything. That’s nonsense. So refine the policy claim to “everything that the university has an interest in owning.” That’s still nonsense. What things are those? Whatever the university later claims? Essentially, that is a demand for an agreement to agree–also against public policy and not enforceable. Unless, of course, one has free use of legal counsel and employees don’t have $100K on hand to resist.
Trademarks. Trademark is even more straightforward. Most universities don’t have a trademark ownership policy, though some throw trademark into their patent policies when they expand the definition of “invention” or they expand the policy from inventions to “intellectual property” and then abstract inventors and authors to “creators” or “originators” or some such idiosyncratic definition. Problem is, a trademark is established by use (or, in the case of federal marks, intent to use). If a university policy claims that faculty must assign trademarks they have created to the university (and “hereby do assign” such marks) that’s a naked assignment. A mark has to be assigned with its goodwill; lacking the goodwill, the mark may be invalidated. Thus, university patent policies that “throw in” trademark as an assignable asset may well be destroying these marks. Of course, if the university doesn’t really mean assignment when it uses “hereby assign” in its policy then what exactly does the university mean by any of its policy language?
Trade secrets. A trade secret is generally any information with independent economic value that is not generally known to the public and subject to reasonable efforts to prevent public disclosure. The means by which a trade secret is created is promises not to disclose the information. There is no statute that establishes trade secrets (though there are statutes that provide remedies for the theft of trade secrets). How does a university come to own a trade secret in what a faculty member knows, or writes down, or assembles? To own that information as a trade secret, the university will have to assert control over the information, and control over the facility in which the information is housed, and that means requiring all who know the information to keep it secret. In essence to have a non-disclosure agreement with each person, under which they promise not to disclose the information. If a university is serious when it includes trade secrets in its definition of intellectual property and then proceeds to claim ownership of information created by faculty, it is claiming to control the right to teach, the right to publish, the right to disclose, the right to have visitors to one’s lab or office. How does such a claim come about, buried in an intellectual property policy? Where is the reasonable care that must accompany the protection of the information? Generally, there is none.
Typically control of research information is a concern for compliance. Let’s say the university signs a research agreement with a company that gives the company a right to review any discovery before it is published. That happens, and if the review period is short, it makes sense, given that the company is funding the research and has an interest in what’s going on. The university then might feel the need to enforce this requirement on the faculty and other personnel involved in the research. But the university does not need to own the information to do this. Further, the university has no need to enforce the requirement. It could construct its contract so that each participant in the research agrees to the company’s conditions. Then, each individual is responsible to the company for first disclosure of discoveries, and the university’s obligation is to encourage such compliance, not be directly responsible itself. Or, the university could refuse such research requirements, and insist that research is open, and that whatever interest the company has is addressed by regular reporting and an interest in patent rights, not in forcing secrecy on faculty.
Secrecy also comes up where a university operates a lab with defense classification protocols, such as an “applied physics laboratory.” Again, this is a matter of compliance not ownership, and is addressed at the point someone enters the lab, not upon employment or association with the university generally.
Or, perhaps the university is not serious here about trade secret, or doesn’t have a clue what it means by trade secret, or maybe just conflates trade secret with any information that it does not want to release, or be forced by public disclosure law (in the case of state universities) to release. But one does not have to *own* information (that is, protect it by trade secret protocols) in order to resist its release under public disclosure laws. Without trade secret, it is difficult to say that anyone “owns” information. One may own the media on which information is recorded, one may possess the information (as, in one’s mind), but one does not own the information. The ownership claim made by universities in information is generally empty, other than, of course, as a threat against employment for disclosure. So much for academic freedom. Abuse of office.
Chattels. What about chattels? Chattels are increasingly included in university policy definitions of intellectual property. These are often called “tangible research property.” The conflation with intellectual property arises in part from confusing a patent or copyright with an underlying expression, so that the manuscript is confused with the copyright, or a prototype with a patent. This is foolish enough. But it gets worse. There’s also the matter of the definition of “confidential information” in trade secret practice–there, the definition of confidential information can run the gamut of possibilities, including designs, inventions, and all sorts of tangible items whose very existence and workings are the subject of secrecy. Once a university throws “trade secrets” in the definition of “intellectual property,” folks find it easy to include whatever might be in the list of stuff that might carry information subject to trade secret claims. That’s pretty much anything.
The problem with all of this, other than the hopelessly bad treatment of intellectual property, is that if the tangible thing is personal property, how is it that the university has any right to claim that faculty must assign that property over to the university, simply because the university claims a right to file a patent application on an invention? The same is true for manuscripts. If there is no requirement that a faculty member use university-supplied notepads to write a narrative or scholarly paper, and a faculty member uses her own paper, how does that paper become automatically the university’s simply because it claims a copyright in the work expressed on that paper? The fact is, without requiring the use of university facilities, supplies, and equipment, a university has no basis to claim arbitrary assignment of ownership of tangible materials that are personally owned. The university might have a right of access, or a right to make a copy, but not a right to take. For public universities, again, it’s a matter of eminent domain–taking personal property for public purposes–and that requires due process and just compensation, not merely an assertion in a policy that the university owns everything that evidences an intellectual property right (patent, copyright, trademark) that the university claims (however badly).
Other Stuff. In a company, one controls stuff with a combination of agreements–employment, patent, non-disclosure, non-compete. Each of these is directed toward the company’s business, its anticipated business, what it owns, and what it directs employees to do or not to do. Companies don’t use policies for these matters; they use agreements. They do not deal in assertions; they get signatures. In this way, a company can own and control inventions and works of authorship, can control information that is created, can control the workplace, and can control the worker. These are all things that make perfect sense in a company (though not necessarily healthy for innovation–but sometimes essential for innovation, too). In a university, these sorts of control are awful. They run against the great, distinctive strengths of a university–the independence of the faculty to choose their areas of study, the freedom to teach and publish as they please, to choose their collaborators, and to operate their laboratories according to their choices.
University administrators, however, not only attempt such controls, but conflate control with ownership and claim to “own” things that simply have no theory of ownership, such as “expertise.” Some policies insist that the university owns unpatentable inventions. What exactly is an invention that is not patentable? What is the theory of ownership? a non-patent? What does it mean when a university asserts ownership of “know how” or “expertise”? Aside from issues of slavery, it can only mean control of faculty behaviors: who they can talk to, who they can teach or assist. It is a strange situation in which a university hires faculty by means of appointment letters, leading them to believe they have academic freedom and the privileges that attend to faculty standing, only to find out that an awkward, foolish, incompetent set of definitions and assertions buried in an intellectual property policy is somehow both a “condition of employment” and takes away all that freedom whenever university administrators want. How could that possibly be? How is it possibly part of any agreement faculty have signed on to when accepting a position? How is it anything other than a brazen attack mounted on faculty whenever an administrator feels like controlling something? One might say such a policy amounts to little more than an assertion of dominance over faculty by administrators, whenever they feel like it, and especially if they feel like they could make some money by doing so. Again, abuse of power.
There is another angle on this “other stuff” that universities claim to own–the stuff that has no ownership theory but the university asserts ownership anyway. Universities generally don’t have non-compete clauses for faculty. These are starting to appear with regard to teaching for-credit courses for other universities, or applying for grants through means other than one’s own sponsored projects office. But when it comes to assisting others, or moving to another job, no university requires that a chemist not take a chemistry job with a “competing” university nearby. However, when a university policy claims compulsory ownership of “everything” for the purpose of making money, then that act of policy turns the university’s conflict of interest rules into a non-compete requirement–an unethical requirement, one that puts the university into an institutional conflict of interest.
If the university asserts arbitrary ownership of whatever it desires, then anyone resisting that assertion is competing with the university–either trying to make money privately and denying the university “its share” (whatever that may be, if anything), or refusing to try to make money, and again denying the university the chance to try to make money. The logic is worthy of Catch-22. The conclusion one comes to, having swallowed the unethical premise, is that the university must own everything: the stuff that faculty would assign anyway (to expedite their wishes), the stuff that faculty would withhold to try to develop on their own (to prevent their greed from cheating the university) and the stuff that faculty would release without developing on their own (to prevent their indifference from cheating the university and the public). What’s left?
To claim to own everything, even that which is not ownable, is to implement a non-compete requirement: don’t try to do anything better than the tech transfer office, don’t try to make decisions about what is valuable in competition with the tech transfer office, don’t try to innovate in any manner that does not go through the tech transfer office. I can understand that in some dark university administrative minds, a non-compete like this is a good thing, and a clever joke on faculty. Sadly, faculty don’t seem capable of getting the joke, or seeing past the cleverness. They worry, rather, about being accused of conflict of interest or scientific misconduct, which could easily destroy their reputation and career, if not ruin them financially fighting the accusations. Those are reasonable worries. They arise because administrators abuse their positions, institute intellectual property policies that are sloppy, deceitful, and ignorant of intellectual property, and know that they have unlimited access to legal counsel to stick to anyone who resists.
Across this survey of ownership, there isn’t anything much that a university is any good at owning that faculty produce, unless they agree expressly to produce it for the university. This is the huge, glaring problem for technology transfer folks that want to move from an offer of service into a demand that faculty use their services. That move is one of desperation, or arrogance. Try to think of something good to call it–I can’t. The tricksy use of Bayh-Dole to force changes in university policy to “comply” with the law was incompetence or deceit or both. What has been produced, as a ubiquitous system represented as the best thing in the world is university policies filled with sloppy definitions and over-reaching assertions of ownership, combined with a wholesale lack of implementation details if not utter disrespect for intellectual property law and practice, and topped with a froth of aspirational unsupportable statements about public benefit, economic development, and innovation. The only thing that holds these policies in place is that universities have nearly unlimited budgets for attorneys, and their faculty do not. It is a shakedown created by incompetent or deceitful practices, perpetuated by good-hearted folks who just want to help and especially to have jobs, and defended by a coterie of folks who think they have done the country a favor by duping faculty out of control of their scholarship.
There are ways to clean this mess up. No IP policy is better than a sloppy, incompetent one. The federal defaults for patent and copyright actually work extremely well for faculty. The same is true for common law principles with regard to inventions. Look to the circumstances, examine the facts, respect the equities of those involved. Not difficult, not complex, not expensive. Compliance issues then move from employment or some arbitrary general assertion “just in case” to the specifics of projects that have special conditions. A university can do more to manage compliance by moving special condition cases out of the institution–referring the work to a private lab in which a faculty member participates–rather than trying to run up the dollar amount of awards by somehow accepting money with compliance strings attached that force the whole institution to go into lockdown so another $100,000 can be added to the university’s annual research total.