SENATE From the Chair
Questions and Answers About Copyright
In my column in the October 7 issue of Almanac I brought to your attention the matter of ownership of intellectual property. I attempted to provide you with a brief history of the matter here at Penn, and to present some of the issues and dilemmas on ownership of various forms of intellectual property which will form a good part of the debate during the course of this academic year. You will recall reading that in March of 1997 Provost Chodorow asked that deans of each of the twelve schools submit to him their considered judgment on matters pursuant to the development of an updated University policy on intellectual property. (Since the original date on which school reports were due at the Provost's Office was adjusted forward from April 1997 to November 1, 1997, and then further extended to December 1, 1997, reports are just now beginning to reach the Provost's Office.)
I have requested copies of the school reports from the Provost, and the subcommittee on intellectual property of the Senate Committee on the Faculty is charged with examining them. They expect to forward a recommended faculty response to the Senate Executive Committee (which I hope will be ready for publication in Almanac in April).
In the interim, constituency members of SEC at the November meeting informally reviewed miscellaneous faculty reactions to my column. The range of responses came from those who were well informed on the issues to those who became aware of the intellectual property matter for the first time. Since a goodly number of individuals were from the latter group it was a concern of the SEC that more specific information be communicated so as to promote a well informed faculty. Toward that end, they requested that I frame a number of questions and answers. Today, I focus questions on the matter of copyrights, an area less familiar to most than are patents and trademarks. Robert Gorman, Kenneth W. Gemmill Professor of Law, most graciously agreed to take the more difficult role of respondent, for which I thank him enormously--grateful for our "in-house" expert. (He is also chair of the Intellectual Property Committee of the AAUP.)
I trust my questions and Professor Gorman's answers which appear below will offer us a beginning common base from which to proceed with further inquiry, individually and collectively.
1. Q. What is intellectual property?
A. Intellectual property is the short-hand term that is used to denote legal rights in products of the mind. This embraces the fields of copyright, patent, trademark, trade secrets, unfair competition, and other legal labels. Each field is quite distinct in many important respects.
2. Q. What is copyright?
A. Copyright is the term for the bundle of rights given initially to the author of a work of literature, music, or art. Included are rights of reproduction; translation, abridgment and revision; the right of public distribution; and public performance and display.
3. Q. Is there a range of covered works?
A. Yes, and it is very wide. It embraces not only scholarly books but also private letters, computer programs, information and directories, motion pictures and other audiovisual works in a variety of tangible forms in which the work assumes shape, e.g. print, canvas, and even probably electronic impulses coursing through a computer.
4. Q. Do I need to register a copyright?
A. Contrary to popular belief, copyright protection comes into existence as soon as a work is fixed in such a tangible medium. Thus, while there are some benefits, there is no need to use a copyright notice or to register the work with the copyright office.
5. Q. Why has a casual interest in copyright changed into a strong interest taken by universities in the last decade or two?
A. This interest is a direct by-product of high technology, in particular the digital computer. While it has been 207 years since our first national Copyright Act was enacted by the first Congress, there exist fewer than a handful of reported court decisions on the question as it relates to the professor or the university. When, however, science faculty created computer programs that often had some significant economic value, university interest peaked since economic rewards might no longer be meager.
6. Q. Just how did the computer program change the operating assumptions?
A. In two respects. First, a more sizable proportion of them were potentially remunerative; and second, they looked very much like "inventions" which traditionally resulted in some form of shared ownership by the university and the faculty inventors.
7. Q. Is this what spurred the University interest in developing new intellectual property policies that might assimilate computer programs to patented inventions?
A. I believe so. Computer programs are eligible today--with respect to different elements--to both copyright and patent protection. Thus, in an assimilated policy, the University can more comfortably lay claim to a share of the economic reward.
8. Q. Clearly, multimedia work appears to hold unlimited potential. Yet, its creative fusing of the traditional media of text, sound, and still images and moving images needs financial support. Do not universities sometimes play this entrepreneurial role investing in development and marketing in order to become "bit hitters"?
A. This fairly recent technological development has frequently led to increased university participation in both technical production and resulting royalties. It has therefore emboldened the University even further in their claims of intellectual property ownership more generally. Thus, because of this pedagogical and remunerative potential of multimedia, many universities have engaged their faculties in deliberations that go to the root of copyright policy and ownership. Once this is the case for multimedia, it is almost inevitable that universities will apply their logic to other individual media.
9. Q. What is "work for hire"?
A. If a marketing director for an automobile manufacturer writes text and takes photographs and combines them in an advertising brochure, copyright is owned by the company. It is said that the brochure was prepared by an "employee" within the "scope of employment". Thus, the company can discard the brochure, can edit, revise or translate it, and can decide when and how to release it to the public.
10. Q. Does "work for hire" apply to university faculty?
A. Some universities assert copyright ownership in faculty works that are authored with the use of university facilities or materials, such as books and computers. But such a claim has no tenable basis in law.
11. Q. What is the position of the courts on faculty scholarship or teaching materials as "works made for hire"?
A. There have been very few court decisions on this matter.
12. Q. The assumptions and practices of the academic community hold that faculty authors own copyright in their works. What is the position of the courts?
A. Almost all state clearly that these traditional practices control, and that none of the Congressional revisions in the Federal Copyright Act (most recent and comprehensively in 1976) were meant to abrogate those practices.
13. Q. Professor Gorman, do you hold a professional view on this question?
A. It is important to understand that the "work made for hire" situation involves a work that is meant to advance the interest of the employer and to be viewed as representing the views of the employer, and therefore to be accountable to the higher-ups in the corporate hierarchy. Therefore, to treat faculty writings as "works for hire" would affront in the most fundamental way the very basic tenets of academic freedom. Professors in their writing and teaching are understood to be espousing their own views. Professors are dedicated to the public interest in the spread of knowledge and understanding. University ownership of works that an individual is specifically directed to create, e.g. report of a dean or department head, or chair of a faculty committee, are exceptions to what must clearly be a rule of faculty ownership.
15. Q. If the University were to moderate its claim so as to be a "joint" copyright owner along with the faculty member, would that result in any significant limitations upon the rights of the faculty member?
A. Both University and faculty would have non-exclusive rights as co-owners. They might act cooperatively or competitively. For example, either one could rush into print first, decide when and where to publish, and award to all sorts of people permission to prepare translations, abridgments, new editions and the like.
A. Obviously. These examples demonstrate we are at the very heart of the concept of academic freedom.
17. Q. Do you believe the above observations concerning faculty ownership of intellectual property to be as pertinent in the age of the computer as in the age of the quill pen?
A. I believe that there must be thoughtful adaptation, but wholesale departures are not warranted. The adaptation should probably be in connection with certain new kinds of educational products developed principally by the university--but at university instigation and with exceptional university resources. For example, the Wharton School could recruit and pay separately for the services of its faculty members to develop a CD-ROM package to sell to corporations. They would also market and sell it and pay for auxiliary services. Faculty would be participating outside the scope of their designated employment.
18. Q. Can faculty assign a copyright to the University?
A. Authors are always able, by explicit contract, to convey their copyright. The University in the CD-ROM situation just described could also claim to own the copyright under a second branch of the "work for hire"--when a person has commissioned another to prepare a work, when the work falls within certain statutory categories (including audio-visual works and instructional texts), and when the parties enter into a signed agreement that stipulates that the work is one that is made for hire.
19. Q. Do we need to revisit the copyright doctrine?
A. Yes. But only to the extent that the new multimedia technologies, allied with new approaches to pedagogy, have afforded the University the opportunity to play an unaccustomed role in the copyright marketplace--as a producer, director, coordinator and publisher of the creative product. In these extraordinary circumstances, and in others in which contracts are made and rights expressly transferred (such as with corporate or government-sponsored research), the University has a legitimate claim to a piece of the copyright pie.
20. Q. Professor Gorman, apart from the situations described in the response to the question just above, do you believe there is a governing principle on copyrights?
A. The governing principle underlying copyright is that society will be enriched by the production of creative works, for which ownership and financial rights must be given to authors. In the academic world, this prin-ciple is reinforced by that of academic freedom, as explained above. Both of these principles point toward giving to faculty members the copyright in their scholarly works and in their works prepared for the classroom.
In closing, as we begin the process of updating University policy on intellectual policy it is important to bear in mind that the issues are complex and need serious deliberation. A number of issues must be considered from several of points of view. Tradition has held that ownership of intellectual property is an assumed condition at a University as is the right to academic freedom in carrying out the faculty post. Yet research and inquiry bring advances in developments and with it new wrinkles in addressing old categories. For example, with the development of new and different types of software, the traditional dichotomy between patents and copyrights began to break down heralding a new period of necessary sophisticated analysis. At present, we approach this new inquiry. As we do so, while admittedly we cannot envision the extent of the financial rewards new technologies can bring, it may be helpful to keep in mind findings from a 1980 study by Louis Girifalco, University Professor of Materials Science and Engineering, which disclosed that revenues from patents brought relatively little income. (Of course, as Professor Girifalco reminds us, there can be some "big hitters.")
Now we approach a period of inquiry. The Faculty Senate looks forward to a consultation process where our most knowledgeable faculty will join in the deliberations and in developing recommendations for the new policy.
Vivian Center Seltzer, Chair of the Faculty Senate
The following agenda is published in accordance
with the Faculty Senate Rules.
Agenda of Senate Executive Committee
1. Approval of the minutes of October 29, 1997