Look, It's a Thrush!

One of the biggest problems in dealing with university technology transfer is the propensity for people to reason from the names given to things, rather than what the things are. In biology, a truism is that one cannot reason from the species to the individual. A sus scrofa domesticus may be a pig, and pigs have four legs, but here’s a pig with only three legs. You can’t get to the individual from the general without losing a bunch. Richard Feynman, in “What Is Science,” a talk he gave to science teachers in 1966, made a similar point. Just because you know the name of a bird doesn’t mean you know anything about the bird–you just are aware of a convention of language:

Regarding this business about names and words, I would tell you another story. We used to go up to the Catskill Mountains for vacations. In New York, you go the Catskill Mountains for vacations. The poor husbands had to go to work during the week, but they would come rushing out for weekends and stay with their families. On the weekends, my father would take me for walks in the woods. He often took me for walks, and we learned all about nature, and so on, in the process. But the other children, friends of mine also wanted to go, and tried to get my father to take them. He didn’t want to, because he said I was more advanced. I’m not trying to tell you how to teach, because what my father was doing was with a class of just one student; if he had a class of more than one, he was incapable of doing it.

So we went alone for our walk in the woods. But mothers were very powerful in those day’s as they are now, and they convinced the other fathers that they had to take their own sons out for walks in the woods. So all fathers took all sons out for walks in the woods one Sunday afternoon. The next day, Monday, we were playing in the fields and this boy said to me, “See that bird standing on the stump there? What’s the name of it?”

I said, “I haven’t got the slightest idea.”

He said, “It’s a brown-throated thrush. Your father doesn’t teach you much about science.”

I smiled to myself, because my father had already taught me that [the name] doesn’t tell me anything about the bird. He taught me “See that bird? It’s a brown-throated thrush, but in Germany it’s called a halsenflugel, and in Chinese they call it a chung ling and even if you know all those names for it, you still know nothing about the bird–you only know something about people; what they call that bird. Now that thrush sings, and teaches its young to fly, and flies so many miles away during the summer across the country, and nobody knows how it finds its way,” and so forth. There is a difference between the name of the thing and what goes on.

(That’s my boldface of course in the last line.) If I call something a bird, and you think then that I mean that it flies, perhaps you are mistaken. Not all birds fly. Not all individuals in a species of bird that normally flies, flies. A bird could be injured, or very young, or ahem dead.

This is an important lesson for the physical sciences, but it is an even more challenging one for social situations. In science, we have this problem of objective observation. Go look at the thing, rather than reasoning from its name. Lions might represent courage, but assuming all lions therefore are courageous is an exercise in emblematic thinking, even if there’s good humor in twisting that expectation. Thinking emblematically, that is, reasoning from the name given to something to the properties that something must have, leads to badness in the sciences. It’s difficult to make nature conform to what we call it.

Something more miserable happens when we deal with social and legal matters. It is a common bit of wisdom in law that a document is what it does, not what it is called. Thus, if a bit of writing functions as a prospectus for the offer of equity in a company, then it is a prospectus, even if it is labeled “not a prospectus.” Similarly, putting “Exclusive License” at the top of a document doesn’t count for anything if the document actually makes an assignment of ownership. University licensing folks get tripped up by this all the time, granting “Exclusive Licenses” for software and other material subject to a copyright claim, but ignorant of copyright law, which expressly includes exclusive licenses as one form of transfer of ownership. University licensing folks swear up and down that they license and never assign IP. But they don’t know what they do.

(So, grant an exclusive license to a patent, in which substantially all rights are conveyed to the licensee, and that is in practice an assignment, as courts have confirmed–we had that happen at the University of Washington in one case. Do that for a subject invention licensed to a company and one has just breached the standard patent rights clause for nonprofits, which stipulates that you have to get federal agency approval for all assignments that are not to an organization that has as a primary function the management of inventions. The clever trick, apparently, is just to call a document a license, not an assignment, and auditors won’t think to look more closely.) The thing is, however, that it is not an assignment if one can persuade a judge to rule that it’s not an assignment.

So let’s take this line of reasoning with us into an examination of the use of “employee” in dealing with faculty. We might point out that “employee” has a relatively short history, coming into broad use only after about 1880 (earliest use, about 1850). Most university patent policy documents (and policies, generally) avoid the use of “employee” in referring to faculty. Faculty are members, appointees, staff–anything but “employees.” The University of Oregon is one exception, referring to each faculty and others as an “employe,” using the French form of the word and creating all sorts of cognitive fuss about spelling, along with raising the question whether policy uses the special spelling to set out a special meaning of the word, as defined by policy, rather than the word with its common meaning.

The common meaning of “employee” is straightforward: one who is “employed.” To be employed means “to work for someone, for pay.” That’s the language part of it, but much depends on how the language is used. One might then be perfectly at home saying that a faculty member is employed by the university. For tax purposes, one might list one’s occupation as “professor” and give the university as the name of the “employer.” But an employer can hire employees, workers, contractors, and even faculty. Not all folks who get paid are employees. Consider the case of state legislators. They receive payment from the state for their service as legislators. They are paid. Yet we call their payment a “stipend” and we do not think that legislators “work for the state” even though they are paid and they perform duties for the state and if they didn’t perform those duties, they could be subject to recall or discipline within the legislature.

So what makes one an employee? There’s a great deal packed into “to work for someone.” We can get into master-servant relationships, into employer’s exposure to liability under respondeat superior, to agency. The point here is that to call someone an employee leads to two separate pathways. In one pathway, the name corresponds to the agreed-upon relationship. That is, the employee has agreed to work for a master, to do what the master assigns, to be loyal to the master, not to do things that would compete with the master’s interests. In the other pathway, the name corresponds to a desire that someone–say, the master–wants in the relationship, even though that desire is not mutual. In this second pathway, the master may use threat or law or training to try to achieve the desired relationship.

These two pathways come into conflict in talk about the scope of employment or the course of employment (related but different concepts in the specialized areas of their use). One might agree that she is an employee, but disagree on what the scope of that employment entails. If she is hired to wash glassware for a lab but goes home and writes a piece of software to help her keep track of the glassware, does the university “employer” get to expand its statement of the scope of employment to include her software? One would think not.

When an employee produces something desirable, there’s an instinct among university administrators, at least, to think that the way to get it is to make the scope of employment broad enough to claim it. They can’t rightly do this at the point of hiring, given that HR controls the job description. So they bury it in an IP policy statement, where they define “employ” to include “not-employ” (volunteers, visitors) and expand the scope of claim to include whatever is created with university resources (including, often, information, without regard for whether that information is owned by the university–how? as a trade secret?–or merely happens to be at the university). Still, expanding the scope of claims in IP doesn’t change the meaning of “employee” or justify the application of “employee” to faculty.

If we reason from the assertion that a faculty member is “an employee of the university,” we might expect then that the faculty member works for the university, and that means that university administrators have the right to assign work, to direct work, to approve work, and to expect to own work that the faculty member does. Reason from the name to the general properties that go with that name. Here’s an article that does just that. Start with the premise that university faculty are employed, and you are off to master-servant relationships and an expectation of ownership.

The duties of college and university faculty members pose an interesting legal question: Does a faculty member’s academic freedom supersede his fiduciary duty to his institution? While academic freedom is often invoked as if it provided a faculty member with carte blanche immunity, in reality, its protections are very limited.

As described in Part I of this series, faculty members are clearly agents of their institutions. This is because, by accepting employment, a faculty member agrees to act on behalf of his institution in conducting its business. This causes the faculty member to be a fiduciary to his institution, that is, a person having a duty created by his employment to act primarily for the benefit of his institution in all matters connected with his employment.

Furthermore, as discussed in Part III of this series, the fact that faculty members are highly skilled and function within a framework of “academic freedom” does not make them independent contractors. While it is true that college and university faculties are entitled to a certain amount of freedom in their research and teaching activities, faculty members are nevertheless in the traditional role of master and servant as employees of their institution. If the content of their teaching or the direction of their research strays too far from the administratively-recognized area of their competence, there is little or no justification remaining for traditional claims for academic freedom.

“Academic freedom” exists due to the beneficence of universities.

Things get played with fast and it takes a careful eye not to be snookered. Constructing agent status for faculty is one thing. Asserting that faculty have a fiduciary duty to the university is another. And moving from “accepting employment, a faculty member agrees to act on behalf of his institution in conducting its business” to “faculty members are nevertheless in the traditional role of master and servant as employees of their institution.” So much is loaded. Faculty members accept appointments. Those appointments may be included in a general category called “employment,” but one cannot then reason from the general category to arrive at “the traditional role of master and servant.” The authors conclude:”college and university faculties are sufficiently under the direction and control of the employing institution to be classified as servants.”

You can see the pattern of attack. Find properties for a person that allow a classification. Then reason from the classification to what other properties that the person must have. If they resist the implications of the classification, then seek to enforce it on them: “This requirement of loyalty and obedience to the institution is the price each faculty member pays for accepting his paycheck each month.”

Faculty are anything but in a master-servant relationship with a university, and certainly not in a master-servant relationship with university administrators. There certainly is an oversight role, a governance role (managing competing claims on resources, say), but not a “traditional master-servant” role. While the relationship between faculty and their universities may be well described as “traditional,” it is simply not master-servant. Not in practice. Not in theory. Not in principle.  But that doesn’t keep the authors of the paper I have cited from popping off then to explain how academic freedom is “an elitist fiction,” horribly narrow, pertaining only to “a right of free speech.” One would think the authors are staunch defenders of Taylorism, that management controls workers and scientific management makes for efficient, cost-effective workers. In such a mindscape, academic freedom amounts to allowing the workers to talk while they work, even perchance to complain, so long as they keep doing their jobs.

Here’s how this mind-swindle works. Faculty are appointed, but within that appointment are two roles. One role involves assigned tasks. Meet these classes at these times. Serve on this committee. These involve work done for the university, assigned and reviewed. A second role does not involve assigned tasks. This role involves professional development, scholarship, public service, research. For this work, a faculty member may request to be released from assigned tasks. That might involve taking a leave of absence, or it may involve “buying out” one’s teaching with grant money so the university can hire someone else to teach for a quarter or two. One gets released from a set of assigned tasks to do a set of chosen tasks. So one can claim that because faculty accept assigned tasks, they are employees, and as employees they are in a traditional master-servant relationship, and as servants they have sworn loyalty to their master and owe their master the benefit of what they do; hence, the university owns and should rightfully own everything they do. In the words of the article:

that is why the law establishes the relationship between the faculty member and his institution as a fiduciary one: to insure that in all instances the obligation is that the faculty member choose the interests of his institution over his own interests or the interests of any other.

The law does not establish the relationship between a university and a faculty member, period. The conditions of appointment do–that is, the private bargain between the faculty member and the university establish the relationship. But you can see where their line of reasoning leads–if faculty are servants and special servants at that, owing a fiduciary duty to the university, then even expecting to own one’s own inventions amounts to “choosing his own interests” over those of his university, because, so the assumption must be, the university wants to own and profit from those very inventions. Or, since a university does not have a brain and cannot think or want anything, it is administrators at the university want the invention to try to make money for the programs they manage. If the administrators did not want any inventions, I wouldn’t be writing this article and you wouldn’t be reading it.

It is possible to construct a house of cards, even one stable enough to bamboozle a judge, or the public, or even some faculty members. “Gosh, we are employees, so that must mean the university really does have a right to everything we do.” “We are agents of the university, so therefore we must have a fiduciary duty to the university, and this duty extends even to our private property, such as inventions. If we think to use our cars for private purposes and not for the benefit of the university, that must be wrong. If we think to use our inventions for private purposes and not for the benefit of the university, that must be wrong, too.” It’s only true if by agreement everyone involved agrees it is true, and then it is. Or, it’s true when someone gets a judge to say it is true, and then it is legally true–meaning that it appears easier to get another judge to say it is true again.

Now even if one argued that faculty are employees for everything they do, the assigned part and the chosen part (which is secretly also an assigned part because it has to be chosen to advance the university’s interests and never to advance one’s personal interests), one still has not got an argument that the university has a right to the faculty member’s–the employee’s–inventions. The US Supreme Court in Stanford v Roche was clear about that. Employment alone is not sufficient. That’s as much to say, one cannot reason from employment and reach a claim that the employer has a right to own inventions. So it doesn’t matter what one puts in the middle. “You are employed, so you a servant to do the master’s bidding. You are an agent of your master, so you have a fiduciary duty to your master. As a fiduciary, you owe your master loyalty, including not competing with your master’s interests. Therefore, you owe your master all your work, including patent rights.” The Supreme Court reaffirmed that this line of reasoning totally sucks. Well, they didn’t put it that way but came darned close.

In the United States, an employer has no natural right to the inventions of an employee under common law unless the employer has expressly contracted for such inventions. Pose a problem, hire for its solution, expect to own that solution. But not, appoint talented people to teach and do research and then claim to own anything they might invent, even if they never agreed to any such thing, because, well, some administrators want to own whatever they do and even may have got patent policy changed to formalize their claim.

The dispute in Stanford v Roche was in part about whether Bayh-Dole changed common law principles and vested ownership of federally supported, university-hosted work with the university because the university was the host of the research. The Supreme Court said Bayh-Dole did no such thing. Not a technical flaw in the law. What Congress intended. Bayh-Dole did not even stipulate that a university must create obligations with its employees that they assign inventions to the university. The law, actually, is silent on the matter. (Sean O’Connor–one of the best commentators on the subject who wrote an influential amicus brief in Stanford v Roche (full disclosure–I was involved in work for another of the those briefs)–thinks it happened this way as a result of a “misunderstanding” of a report prepared over thirty years earlier. I don’t think “misunderstanding” accounts for the situation, and will discuss that in a future article.)

Bayh-Dole leaves it up to the standard patent rights clauses to deal with obligations, and there, the obligation–the limit, as it were, of the statute–is that universities require certain of their employees (the ones other than clerical and non-technical employees) to make a written agreement to protect the federal government’s interest. Not to protect the university’s interest. Not to protect the government’s interest by first protecting the university’s interest. In fact, just the opposite–the flow down requirement displaces any private university claim in favor of a prior claim in favor of the government. If Congress had wanted to vest subject invention ownership with universities, they had the chance to do so, and didn’t. It doesn’t matter then if Congress required the vesting outright or required by law for universities to require inventors to assign to them. It doesn’t matter if any such assignment is based on an agreement to assign or a present assignment of future interests. And certainly the law does not authorize an expanded scope of assignment to include non-inventions “just to be safe.” None of this. As the Supreme Court pointed out, the matter is one of common law.

Even if one wanted to argue that universities had by policy stuffed a patent agreement into the employment agreement and thus inventors had to assign inventions (or, as it is now nearly everywhere, have already assigned), there is a sound argument that the standard patent rights clause requirement for delegating a written agreement to the inventors to protect the federal government’s interest in inventions takes precedence over any other claim the university might make. A university can’t both delegate the right for inventors to assign or license inventions to the government and claim that inventors never have any such right because the university has required them to assign their inventions to the university. The federal obligation supersedes the state-enforceable obligation. Federal contracts trump state contracts. So what do universities do? They refuse to comply with the obligation to delegate the right to assign or license inventions! All the worry about complying with Bayh-Dole, and universities–every last one of them, as far as I can tell–ignore the fundamental bit of contract requirement that connects inventions with either the government or whomever inventors might choose to assign their rights to.

Clever schemes often take time to unravel. It would be much easier simply to assert that it is good public policy and entirely consistent with practice that university faculty, especially at public universities, are not the servants of the university with regard to their scholarship unless they expressly, and for some good reason, including additional consideration, choose in some particular instance to agree to be servants. Faculty do not get hired to take direction from administrators or submit their work for administrative approval or to worry what administrators might think is good for administrators. A university exists to support its faculty in what they do. Faculty are not hens in cages that lay inventive eggs to be taken to market. Academic freedom does not make them “cage free” hens, with the ownership of the eggs unchanged. Academic freedom means that faculty are not farmed, they are not domesticated, they work at a university, they work for the idea of a university, they support each other (and compete, and fuss, and all that), but they don’t, except in a very limited sense, work for university administrators.

If faculty owe their university a duty of “loyalty,” that duty is not expressed by giving up their personal property (such as inventions) on the claim that doing so is a natural right of a master’s power over a servant. The “loyalty” a faculty member has (I will assert, check with faculty to see if I’m accurate here) to her university is to be a good teacher and a good scholar. Whether that involves research, inventing, commercializing, entrepreneurping, or whatever comes later, by choice not by administrative assignment. Even the idea of “loyalty” here is reciprocal. The duty of loyalty that university administrators owe to faculty in furthering the university’s mission means not treating the university as if it were a profit-seeking corporation, and not trying to turn faculty into employees just so a tech transfer office can overfill its portfolio and thus beg a greater share of resources away from the activities of faculty teaching, research, and public service.

Of course, in all of this we come down to the issue of what it is we, collectively, want. The words mean what they will. It is a form of metonymy that maps a part to a whole based on similarity of properties and then reasons from the whole to entirely other properties that never were part of the part. One could do the initial mapping another way and end up with reasoning down a very different path.

For instance, university faculty have attributes of legislators–legislators of knowledge, identifying “laws” of nature and of societal behaviors as it were–and as legislators, they work only in the service of the public, for which the state awards them a stipend in recognition of their service, so they do not have to grub for money except in the summers. As legislators of knowledge, faculty must be free from any claims on that knowledge until they choose their direction. Some of those directions remain as activities of the university. Others will be activities in the commercial sphere. Others may be political or purely personal in nature. No matter. That faculty choose is the cornerstone of a university. Academic freedom is not merely a right of free speech; it is also a right to be free of compulsory publication (as a compelled assignment to a patentable invention entails), a right to be free of institutional controls on the activities of people who are taught by faculty (teaching is frustrated if the university threatens infringement against anyone who acts on what they have been taught–they become aware, but cannot use without paying, and typically without being the only one chosen to pay).

We could go on, but perhaps you get the idea. The sleight of thought is dangerous that picks a property, maps it into a classification, and then demands that any individual conform to other properties in the classification, regardless of whether the classifying has been done properly or whether the properties of the classification apply to the thing so classified. In science, this is just plain scary, as the implication is that people can be forced to accept the deductive demands. We will make you say you believe that In social matters, such as whether faculty are compelled, or should be compelled to give up their private property (inventions) simply to feed a university profit-seeking machine, this is scary-scary. It’s roots go to power over individuals in a setting in which the empowerment of the individual is the thing we are invested in.

It’s not that we should make decisions based on claims to degrees of scariness–but in the conduct of our affairs, rational claims do not always control. That, perhaps, is why universities have adopted the dual monopoly model of IP management, against the evidence, against rational argument, against analysis of public policy. They buy into a theory, as it were, and expend their resources to try to prove the theory–and their choice of the theory–“right.” They enlist attorneys and pundits to their cause, and others gladly join it, to be seen as helpers or to gain the benefit of contracts or get hired to positions to help make the theory a success. And we get a “movement”–the great success of university technology transfer is evidenced in how many licensing offices there are now, how many members of AUTM, and how much money is being made. None of this tracks the vitality of research, the occurrences of innovation, or the benefit to our society (or anyone’s society). None of it accounts for the effect it has on faculty, on the relationship faculty have, and should have, with their universities.

Since this is a discussion about what is and what should never be, we don’t end up with a great truth from which with proper reasoning we all reach the same conclusion about how to live. We live in a contested present, with different expectations making claims on us and our resources. For my part, I don’t want faculty to be servants to administrators in their scholarship, or administrators to be masters of faculty, owning all that may be created. I don’t want judges reasoning only from wording of laws and trying to be consistent with past cases to tell us how faculty and universities interact. Judges can sort out promises that have been made, but the issue is prior to that: what promises should we be making–what promises should faculty be required to make to their universities? and what promises should universities, representing our interest in knowledge and better lives, be making to faculty? That’s not something for judges, not something for legislatures to make into law, but rather for judges, legislators, and others to prevent law from intruding on.

In the battle between freedom and compulsion, I prefer freedom with all of its complications and fuss. The idea of a faculty and its members is based in freedom. Academic freedom is not an afterthought. It is the start, part of an innovation bill of rights that has allowed universities to be both conservative (teaching what is known and what has been argued) and progressive (teaching what is new, what is challenging, what obsolesces), goofball and insightful, smart and fustian. These aren’t properties of a university as a corporate entity, but of a free faculty, feeling the responsibility and opportunity of not being the servants of an institution but having access to institutional scale resources to pursue their own work.

Thus, faculty are employees, but only for a bit of their university work, and not for their scholarly work and not for their inventive work, except as individual to individual, they agree to give up some freedom in exchange for some other benefit. No patent policy can change that, except as individuals enter into an agreement to change it. Faculty, too, might be free as a group to give up their freedom–but the broader public also may object that they should not give up their freedom, and that university administrators should not try to force or cajole or fool faculty into giving up their freedom, their personal property, their opportunity, and their responsibility.







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