LESSONS FROM THE WEB

Lessons | Talkback | Archive
—————————————————————————————
In this monthly column, law professors comment on the many academic opportunities and challenges presented by Web technology.

As with all JURIST columns, you're invited to Talkback. This month...
—————————————————————————————
Copyright, Academia, and the New Scholarship

Kim Dayton, University of Kansas School of Law

In February 1997, two former Ph.D. students at Stanford University became the youngest individuals in the history of the school to endow a professorial chair. Chih-Yuan "Jerry" Yang (28) and David Filo (30), who earned master's degrees in electrical engineering at Stanford in 1990, gave two million dollars to Stanford to establish the Yahoo! Founders Chair, to be awarded to "an individual at the forefront of information systems technology, including computer science, electrical engineering or related fields." The pair started Yahoo!--an index that is regarded by many as the premier guide to the contents of the World Wide Web--as a hobby, while working towards their doctorates in the Computer Systems Laboratory at Stanford. The company that grew out of that "hobby" reported revenues totaling $8.6 million for the fourth quarter ending Dec. 31, 1996. Both Yang and Filo left Stanford without finishing their degrees, and now serve, respectively, as Chief Yahoo! and Director; and as just plain Chief Yahoo>

The founding of Yahoo! by university students, and its growth from a simple guide to the nascent Web to a multi-million dollar public corporation, implicates an emerging controversy that has far-reaching implications for those who work and learn within the sacred halls of academia. Specifically, to what extent do academics and students own the intellectual property rights in digital works, Web sites, and similar publications that they have created using institutional resources, or which are considered to be topically related to the courses they teach or the research they do? The answer, it seems, is far from clear. Governing bodies that within and without universities, colleges, and K-12 educational institutions are scrambling to rewrite their policies regarding ownership of "intellectual property", including works that fall within the subject matter of copyright. As we write our law review articles and casebooks, develop our course-related Websites, or compile reading materials that we make available to students on-line or on-disk, we must be mindful that our claim to the copyright in these works might be regarded by some as tenuous at best.

To understand the complexity of this issue, one need understand few basics about U.S. copyright law. In 1976, federal copyright law--which was at the time a hodgepodge of oft-amended statutes and a highly evolved body of case-and common law, was rewritten and codified at 17 U.S.C. '' 101-1101 (effective Jan.1, 1978) . As a general matter, a copyright arises as to any work that otherwise falls within "the subject matter of copyright" the moment that the work is fixed in a tangible medium of expression. Usually, ownership of this copyright belongs to the person who created the work and embodied it in a tangible means of expression. Thus, a painter owns the copyright in her painting the minute her vision is captured on canvas--a single brush stroke will do. One need not provide "notice" to "create" a copyright, nor is "registration" required (although both notice and registration become important if infringement becomes an issue).

An important exception to the general rule of creator-as-owner is that one known as the "work-made-for-hire doctrine." Originally a common law rule, the work-for-hire doctrine was codified in section 201(b) of the '76 Act, and provides that,

"[i]n the case of a work made for hire, the employer or other person for whom the work was prepared is considered the author for purposes of this title, and, unless the parties have expressly agreed otherwise in a written instrument signed by them, owns all of the rights comprised in the copyright."

Thus, if one is an employee, the creative, artistic, and literary works one produces in the course and scope of one's employment belong, in a default situation, to one's employer rather than to oneself.

Employees who work for private sector organization, and many public sector employees such as federal and state government, are well versed in the work-for-hire doctrine. They understand that their work belongs to their employer, and, in the case of public-sector employees, that most of what they do falls into the public domain. Litigation under section 201(b) has, for the most part, involved questions of whether a particular work was "for hire" or rather the work of an "independent contractor"--the latter, not subject to the work-for-hire doctrine, retains the copyright (a property interest) in her work, though not to the tangible medium in which the creator's vision has been embodied (e.g, the statue or the painting).

All this sounds a bit problematic for those of us who are employed by an academic institution--whether it be a large state university, an small private college, or any elementary or secondary school. But few things are as simple as they might appear. In a context in which the creative works of academics is involved, another bit of pre-1978 common law becomes relevant. Historically--that is, prior to the effective date of the 1976 Act--the so-called "teachers' exemption" afforded teachers, academics, and scholars relief from the clutches of the work-for-hire doctrine in the copyright arena. Until very recently, most institutional policies pertaining to copyright ownership implicitly or explicitly acknowledged this exemption; my own university's policy is typical:

"[Scholarly works, including contributions to collective works, literary works, and all works of art are to be considered to be created "outside the scope of employment" of the authors for purposes of copyright ownership, unless their creation is in fulfillment of specific employment-or enrollment-related assignments or responsibilities, whether or not their creation involves the use of University facilities and resources. When these works do involve the use of University facilities and resources, the University shall be reimbursed, to the extent feasible, from financial returns received, for the recognizable costs incurred by the University."

Such policies effectively serve as a contractual "release" of any property interests an educational institution might have in a faculty member's novel, law review article, or musical composition.

Whether such policies are necessary to protect the interests of academics, however, depends on whether the codification of the work-for-hire doctrine implicitly abolished the teachers' exemption. Therein lies the rub. Only a handful of federal cases have touched upon the question; none has had occasion to decide it on the merits. In Hays v. Sony Corp. of America, the court discussed, in dicta, whether the teachers' exemption had survived the 1976 Act. Writing for a unanimous panel, Judge Richard Posner--whose scholarly productivity while a law faculty member at the University of Chicago was legendary--suggested after enumerating the reasons that underlay the exemption that "we might, if forced to decide the issue, conclude that the [teachers'] exception survived the enactment of the 1976 Act". Whether other courts, including the SupremeCourt, would agree with Judge Posner is anyone's guess.

During the two decades since the possible abolition of the teachers' exemption, academic institutions have, in essence, failed to assert any claim they might have to the scholarly and creative output of their employees. Why, then, are "Ad Hoc Committees on Intellectual Property", Boards of Regents, and specially-created "Joint Committees" re-evaluating and in some cases rewriting institutional copyright policies? It seems clear to me that it is because of the enormous commercial potential of "the new scholarship." It is the rare casebook, textbook, or set of faculty lecture notes that has substantial revenue-producing implications; the cost to an educational institution of enforcing its putative copyright interests in this traditional kind of faculty output would likely not be worth the benefits. Not so with a website or an on-line course. The former can generate income for its owner in a variety of ways; perhaps the most obvious is by the sale of advertising on the site. The value of an on-line course lies in the potential that it might be sold or leased to another institution. In a nutshell, technologically-aware academics are suddenly in a position to generate significant income from their scholarship, and their employers want a piece of the pie.

It is impossible in this short essay to elaborate on the legal and policy sub-issues that the work-for-hire/teachers' exemption dichotomy generates; nor can I propose here a comprehensive solution. Suffice it to say that educators need to be aware of these issues: forewarned is forearmed. Treating educators as "employees" in the traditional sense for purposes of claiming ownership to their creative works has the potential to erode traditional concepts of academic freedom, impair a teacher's ability to move from one institution to another, and drive our nation's most productive and creative academics out of teaching altogether. Horror stories abound in which academic departments have deleted or altered the contents of faculty members' course websites, laid claim to the proceeds of digital course materials, or accused faculty members of institutional disloyalty when the assert their personal ownership of the copyright in a scholarly website. Some teachers and professors, aware of these increasingly frequent episodes, are locating their Web-based course materials, topical websites, and similar materials on private servers, and registering their own domain names in an effort to protect the integrity of their creations.

Ultimately, I can safely predict, resolution of the ownership issue will be resolved in the courts or through legislation that, we can hope, will carefully balance the policy, public relations, and fairness concerns imbedded in the historically unchallenged teachers' exemption. Until then, it is imperative that we who engage in the new scholarship pay attention, for the wolf is at the door.

Selected References

  • History of Yahoo
  • Yahoo! Founders Endow New Stanford Chair
  • Yahoo Officers and Directors
  • U.S. Code, Title 17: Copyrights
  • University of Kansas Faculty Handbook (1986)
  • University of California Office of Technology Transfer, Copyrighted Works Created at the University of California (1992)
  • Niva Elkin, Public/Private and Copyright Reform in Cyberspace, Journal of Computer-Mediated Communication: Volume 2, Number 2: Part 2 of a Special Issue (September 1996)
  • Clark Shores, Assistant Attorney General for the State of Washington, Ownership of Faculty Works and University Copyright Policy (1996) (and works cited therein).

    • © 1998 by Kim Dayton. All rights reserved.
    —————————————————————————————
     The views expressed in this column are solely those of its author, and do not reflect those of JURIST, its Advisory Board, its staff or its host institutions.
     ———————————————————————
    Talkback

    Engaged? Enraged? JURIST would like to hear your reactions to this column and the issues it raises...

    Your comments:

    Your Name:
    Organization:
    E-Mail Address:
    State/Country:

    If you would like your comments to remain anonymous, check here: 

    ———————————————————————
    Archive

    Previous columns in this series: