Managing the Risk of Copyright Infringement Liability Georgia Harper Office of General Counsel University of Texas System

Overview

• Using Others' Works

  • Fair Use and Other Exemptions
  • Getting Permission
  • Licensing Comprehensive Access
    
    

• Managing Our Own Copyrights

  • How Ownership Works
    
    
    • Joint ownership
    • Work made for hire
    • Contracts
      
      
  • Copyright Management
    
    

• Risk Management Integrates Aspects of Use and Creation of Works

  • UT System Comprehensive Copyright Policy
  • Policy Resources

Managing the Risk of Copyright Infringement

Not so long ago, managing copyright infringement risk meant essentially having a fair use policy, and fair use policy usually translated to, "It is the Policy of University to follow the law." Perhaps that was sufficient before we all got online. Today we've got to do more. At least one, and if the TEACH Act passes, two, copyright statutes will require that we provide accurate information about copyright law to our students, faculty and staff in order to take advantage of important limits on our liability. If that were not enough, ignorance is not bliss: our liability is directly tied to the actions of our faculty and staff through Agency principles. Thus, we need a copyright policy that goes beyond mere reference to or recitation of the fair use statute or even reference to specific guidelines. Fair use must be more carefully explained if we really expect our faculty members, staff and students to respect its limits. More importantly, fair use is just the tip of the iceberg. Even if we all understand fair use perfectly, we still need to know about other important exemptions and what to do if a proposed use does not fit into one of them. We really can't tell our faculty members or even permit them to infer from our silence that they should not use a work unless it's a fair use. Sometimes they will need to get permission. Faced with that responsibility, they may well wonder why the University isn't licensing permissions efficiently or why the library does not have the works they need in electronic form or isn't making the availability of such materials widely known so they may link to them and avoid the need for permission.

These concerns, as wide-ranging as they are, cover only one aspect of risk management- the use of others' work. The complement to these concerns is the set of issues associated with ownership and use of the copyright works we create.

Thus, to be comprehensive, our approach to managing copyright infringement risk should address the use of others' copyrights and the creation, ownership and management of institutional copyrights.

Using Others' Works

Every educational use is not a fair use. It's not that simple. Some of the items we copy or post online may be fair use or otherwise authorized by law, but everything we want to do will not automatically be fair use just because we are a nonprofit educational institution. We must provide concrete information to help faculty members understand the real, rather than the imagined limits of fair use. We provide that information online, but people must first recognize that there is an issue. Raising awareness is, therefore, the first step.

Second, if faculty know they need to determine whether a use is fair, and in so doing they learn it's not fair, they need help to get permission. Many of your institutions rely on faculty members to determine whether a use is fair and get permission if it's not. Some may believe that having the faculty member sign something to the effect that the use is fair or permission has been obtained absolves the institution of liability. But, relying on individual faculty members to obtain needed permissions is inefficient and probably ineffective. Since the University is likely to share responsibility for faculty liability for infringement, it makes more sense to provide faculty with an efficient centralized resource.

Third, although our libraries have extensive electronic holdings, someone may need rights to use a work in a way that is not covered by the relevant license. We certainly need to provide enough support to those who negotiate access licenses to enable them to do a good job -- to negotiate access licenses that cover all anticipated educational uses.

So, to reduce the risks associated with the use of others' works, we should provide:

Fair use guidance. We need to insure that our routine activities comply with copyright law by providing faculty information about fair use and how to apply it in the various contexts we encounter on campus, when they need it, in a way that makes sense and is truly helpful. 1

Help to get permission. In addition to providing effective guidance about fair use, we must make it easier to get permission for those uses that go beyond fair use. 2 The laws of Agency indicate that in many cases we will have liability for faculty infringements involving the creation of online course materials, so it is in our interests to facilitate this process. 3 A centralized facility is better able to capitalize on the growing expertise of a discreet number of individuals who have learned how to obtain permission quickly and efficiently.

Comprehensive access licensing. We also must provide support for staff who negotiate license agreements for access to electronic works. If we acquire sufficient access upfront and widely distribute information about our online holdings to faculty, students and staff, or require that required and supplemental reading lists be cross-checked against our databases of electronic holdings and articles freely available online, we should not need additional permissions to use works to which we've already got access. 4

Managing our Copyrights

University faculty, students and staff create educational materials, scholarly works and administrative publications by the thousands every day. Our creations are getting more complex and more valuable. We simply must not fail to recognize their value or to preserve it for the University community's benefit. Risk management strategies developed within the context of a reexamination of our mission in the electronic environment can help insure that the value of these works is not lost to us.

A comprehensive risk management strategy also should address who owns works created on our campuses and who has rights to use and exploit them. There are two aspects to this: understanding copyright ownership and active copyright management.

Ownership. This is the starting point for understanding ownership: The copyright act places initial ownership of copyright works with their creators. 5 Other facts about the creation of a work can affect authorship and ownership, such as:

Whether more than one person or entity qualifies as an author;

Whether the work made for hire doctrine applies, making an employer the author of the creator's work; 6

Whether our policy affects ownership; or

Whether any signed contracts affect ownership.

Joint ownership is not automatic. Merely contributing copyrightable expression to a work to which others are contributors too is not enough to cause the copyright in the work to be jointly owned. It takes a shared intention on the part of all of the contributors of copyrightable expression to be joint authors to effect joint authorship and joint ownership of copyright. 7 Relying on individuals' subjective states of mind at some point in the past is not the best way to figure out, after the fact, who owns a collaborative work. Our copyright policy encourages each University to make its expectations explicit so that individuals are not surprised when the University, through its staff contributors, claims to be a joint author and owner of faculty-authored works.

Work made for hire is either work within the scope of employment or work created pursuant to a contractual relationship. In either case, the author of work for hire is the employer or person hiring the creator. There is some question about whether this doctrine applies to faculty-authored educational materials. Before passage of the 1976 Copyright Act codifying decades of case law that had grown up around the 1909 Act, there was a "teacher" exception. Many feel that the exception did not survive the 1976 codification, because Section 101's definition of a work made for hire makes no reference to it. Nonetheless, many Universities seem still to honor the tradition of permitting faculty members to own works that might otherwise reasonably be characterized as within the scope of their employment. Whereas some courts have determined that the exception no longer exists and one has suggested that it probably does or at least should, at least one court gave deference to an institutional policy; n the other hand, one court recently interpreted a policy as not applying to the work in question, thus making that work subject to the statute alone, and therefore work for hire.8 These cases' mixed holdings indicate that policy probably is the best way to resolve the ambiguity. For example, our policy clarifies what we consider work made for hire by specifying that certain works are outside the scope of employment; however, since the work made for hire statute requires a signed writing to show an agreement to permit an employee to own copyright in a work to which the statute would otherwise apply, it would be best if our University employment contracts were signed by both parties and included a reference to the University's policies.

Finally, our policy recommends the use of contracts to further clarify or vary ownership and control and to address many other issues that are important in the distance learning context, such as rights to revise, commercialize and create derivatives from a work.

Management of our copyrights. University copyrighted works are far too numerous and, increasingly, too complex, for a simple policy that allocates all rights to faculty members or the University solely. Rarely is an institution or a faculty member the sole stakeholder in educational materials created on campus today. These works need a more nuanced treatment. Even where one stakeholder may be the nominal owner, other stakeholders may need rights such as a non-exclusive license to use, to revise, and perhaps to commercialize the work and share in revenues from commercialization. Sometimes joint ownership is appropriate. In those cases, the owners thoughtfully should determine who is best able to manage the work. Our policy recognizes and focuses upon the parties' interests in a work, who wants or needs to do what with it, rather than just on who owns it, to better serve everyone's needs.

U.T. System Policy. University intellectual property policies five to ten years ago likely were written without much thought about ownership and management of copyright works. Neither the inventions that were the chief concern of such policies nor the scholarly works that may or may not have been recognized as exceptions to the general rule of University ownership warranted any special understanding of copyright law. Who owned lectures, overheads and other course materials was not an issue. For all practical purposes, intellectual property policies , including our policy, were really patent policies.

About eight years ago we realized that the U.T. System Intellectual Property Policy contained provisions that applied equally to copyrighted works and patented inventions, but were really only appropriate for the inventions. The first major adjustment came when we modified our policy to address special aspects of software, recognizing that if we treated it as though it would usually be patented, we caused the practice in our computer science departments of trading programs freely with research colleagues around the world to be a flagrant violation of our policy. 9 

But the next major revision came when we realized that our policy did not adequately address the issues of ownership and control of distance learning course materials. The policy contained an exception that permitted faculty members to own their scholarly works, and we had not generally asserted ownership of course materials, but it was not clear whether the exception actually applied to educational materials, especially digital materials. It also was not clear that the University had any interest in these works other than a potential right to assert ownership, depending on how one interpreted the policy. We decided to clarify this and other aspects of the policy and made significant revisions over several years.

Currently our policy describes who owns what in accordance with copyright law's ownership principles, clarifying that educational materials will not normally be considered works made for hire (not within the scope of employment). 10 Thus, at the outset, we allocate ownership of most educational course materials to their authors, the faculty members. On the other hand, the policy establishes a University interest in works it does not own but to which it contributes significant kinds or amounts of resources, and creates a contractual framework for memorializing agreements to create, use and exploit such works. 11 Such contracts often take the form of joint ownership agreements, depending on the facts surrounding the creation of the work. This combined policy and contractual framework allows us to accommodate the complex factual scenarios under which distance learning materials are created, assuring that the University's interests are protected. Still, we need to take note of what's being created, with what resources, and who's involved in projects. We need to establish "flag points" such as funding for course creation, use of expensive or special resources like media, design, technical expertise, where the issues can be raised upfront, so everyone knows what to expect. This is what I have referred to as "active management."

This policy developed against an existing backdrop: Most U.T. System component institutions already had a tradition of faculty ownership of educational materials in the analog context. It would have been very difficult to change the basic allocation of rights for digital works even though a University's interests in digital works are quite different from its interests in analog works such as textbooks. The policy is a compromise: it respects our tradition of faculty ownership, but it also acknowledges that today's educational courseware materials are rarely solo efforts. The resources that must go into the preparation of digital learning materials for online courses far exceed the resources that earlier went into a journal article or even a textbook. Thus, the University's interest in continuing to use such a work, recover its contribution and even share in royalties from commercial exploitation are all clearly set forth now. The contractual framework also accommodates joint ownership where both the University, through its employees who are not faculty members, and one or more faculty members contribute copyrightable expression to and intend to be joint owners of the resulting courseware. 12

Finally, the policy covers administrative works, that is, institutionally directed works such as syllabi, reports and administrative paperwork of every kind and permits the U.T. System or a component institution to commission a work and own it as a work made for hire. We encourage at a minimum the use of a written acknowledgement when a commission involves faculty members who would otherwise own their works under our policy, to avoid later confusion or dispute about which ownership paradigm applied. 13

Footnotes:

1. Fair Use of Copyrighted Works. (http://www.utsystem.edu/ogc/intellectualproperty/copypol2.htm)

2. Getting Permission. (http://www.utsystem.edu/ogc/intellectualproperty/permissn.htm)

3. University Liability for Faculty Infringements.   (http://www.utsystem.edu/ogc/intellectualproperty/unilia.htm)

4. Licensing Resources. (http://www.utsystem.edu/ogc/intellectualproperty/licrsrcs.htm)

5. 17 U.S.C. 201(a). (http://www.law.cornell.edu/uscode/17/201.html)

6. 17 U.S.C. 101; 201(b). (http://www.law.cornell.edu/uscode/17/101.html and http://www.law.cornell.edu/uscode/17/201.html)

7. 17 U.S.C. 101 (http://www.law.cornell.edu/uscode/17/101.html); Childress v. Taylor, 945 F.2d 500 (2d Cir. 1991); Erickson v. Trinity Theatre Inc., 13 F.3d 1061 (7^th Cir 1994); Thomson v. Larson, 147 F.3d 195 (2d Cir (N.Y.)1998).  

8. 17 U.S.C. 101 (http://www.law.cornell.edu/uscode/17/101.html); The University of Colorado Foundation, Inc. v. American Cyanamid, 880 F.Supp. 1387 (D.Colo. 1995) (finding a journal article to be work made for hire); Vanderhurst v. Colorado Mountain College District, 16 F.Supp. 2d 1297 (D.Colo.1998) (finding a Veterinary Technology Outline to be work made for hire); Hays v. Sony Corporation of America, 847 F.2d 412 (7th Cir. 1988) (in dicta, "we might, if forced to decide the issue, conclude that the exception had survived..." at 416); Weinstein v. University of Illinois, 811 F.2d 1091 (7th Cir 1987) (interpreting University policy "which is part of each professor's contract" to provide for faculty ownership of scholarly articles); Manning v. Board of Trustees of Community College District No. 505 (Parkland College), 109 F.Supp.2d 976 (C.D. Ill. 2000) (holding that the work of a staff photographer belongs to the college and statements in policies and even in collective-bargaining agreements are insufficient under the statute to shift ownership back to the employee).

9. Administrative Policy Regarding Disclosure, Distribution and Licensing of Software.   (http://www.utsystem.edu/ogc/intellectualproperty/SWADMPOL.HTM)

10. University of Texas System Intellectual Property Policy in Plain English (UT IP Policy).  (http://www.utsystem.edu/ogc/intellectualproperty/ippol.htm)

11. Copyright Management.   (http://www.utsystem.edu/ogc/intellectualproperty/copymgt.htm)

12. Courseware Contracts. (http://www.utsystem.edu/ogc/intellectualproperty/course.htm)

13. UT IP Policy. (http://www.utsystem.edu/ogc/intellectualproperty/ippol.htm)

14. The University of Texas System Comprehensive Copyright Policy.   (http://www.utsystem.edu/ogc/intellectualproperty/cprtpol.htm)

15. UT IP Policy. (http://www.utsystem.edu/ogc/intellectualproperty/ippol.htm)

16. Policy Development Resources: Ownership of New Works at the University: Unbundling of Rights and the Pursuit of Higher Learning (CETUS) (http://www.cetus.org/ownership.pdf); Developing a Distance Education Policy for 21st Century Learning (ACE) (http://www.acenet.edu/washington/distance_ed/2000/03march/distance_ed.html; Intellectual Property Policy and New Media Technologies: A Framework for Policy Development at AAU Institutions (AAU) (http://www.tulane.edu/~aau/IPNewMediaReport.html); Ownership of Electronic Course Materials in Higher Education (Dan L. Burk, Cause/Effect, Volume 20, Number 3, Fall 1997, pp. 13-18)   (http://www.cause.org/information-resources/ir-library/html/cem9734.html); Who Owns the Rights to Instructional Materials? Rethinking Intellectual Property at the University (CIC) (http://www.cic.uiuc.edu/resources/ip/copyrtconf99.html).

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