New Whitepaper: A Thorny Question In Copyright

We’re very happy to announce the release of the third white paper in our Legal Pathways to Open Access series! The paper is available on the project page, which also includes links to the first two papers in the series as well as a collection of primary materials supporting the research we’ve conducted so far. The fourth paper is in process, and we hope to have it soon!

As those of you who are current on federal public access policies (maybe because you read our white papers!) know, the public access requirement works because as a condition of each grant, the grantee must give the federal government a nonexclusive license to use the work for its purposes, including for publication in the given agency’s designated public access repository.  Since the grantee is the institution, the institution must have the rights to give the government their license.

With this white paper, we set out to answer a simple question: do institutions have those rights? The answer is, “maybe.” As sometimes happens in law, when you look closely at the question it turns out the ordinarily simple question—“who is the author?”—is not simple after all.

We hate to say it, but the answer is . . . “it depends.”

Normally, of course, only the author can license their work. Despite this, the reason institutions might have those rights is because of the Copyright Act’s “work made for hire” doctrine. Under this principle, if an employee creates a copyrightable work within the scope of her employment, the employer is the author of the work. If the institution is the author, it can license the work.

It might seem obvious that academics are employees of their institutions and that writing scholarly work is within the scope of their employment. We’d guess that most (if not all) academics view themselves as employees, and they certainly have to write and publish if they want to keep their jobs. But it turns out this is one instance among many where the common understandings of concepts or terms do not necessarily match the legal ones. 

If you work at a college or university in the United States and you write a scholarly article, who do you think is the author of that work? There’s a good chance that, unless you’re a copyright nerd, your answer is, “well I am, of course!” In our anecdotal experience, this is a widely held assumption among academics. It makes a certain sense, too. Institutions don’t submit works to journals and sign publishing contracts; individuals do. Very few academics likely believe they are agreeing to a contract on behalf of their institution.

But perhaps you are one of those academics that pays attention to your institution’s intellectual property policies (maybe you’re on a faculty senate and wish you didn’t know them quite so well). If so, you may know that many of those policies assign ownership of works to the individuals, while reserving sufficient rights to comply with funder requirements or deposit in an institutional repository. Those policies, if effective, would allow individuals to then negotiate publication rights. But those policies also make an assumption—they assume that the institution is the “author” under the work made for hire doctrine. After all, if the institutions weren’t authors, they would not have rights to “reserve” in the first place. Those rights would have to be given to them by the authors.

The definition of “work made for hire” seems straight forward enough. In every  day life, we might not think much about whether we are an “employee” or not—it’s usually pretty obvious. We may not have a fireproof definition we can recite, but we know it when we see it. With due respect to Justice Potter (who was discussing obscenity), though, that is not normally a viable test in law. So courts have developed tests for determining when, for copyright purposes at least, someone is an employee for purposes of copyright, and when work is within the scope of that employment.

Do academics meet that test when they write scholarly works? Prior to the present Copyright Act, it was widely assumed they did not. Under that Act, a few court cases introduced the principle that academics works were authored by the individuals, despite the fact that the works normally might be considered made for hire in any other situation.

Then came the 1976 Copyright Act, which introduced a new definition of “work made for hire,” and it was followed by the Supreme Court’s decision in Community for Creative Nonviolence v. Reid (1989).  In the more than three decades since Reid, numerous academics have written about the so-called “Teacher Exception,” and whether it survived the decision. Only one District Court (that we found) has ruled decisively on the question, finding that the exception died with the Reid ruling, but a couple of other appellate courts have hinted that the Teacher Exception at least should still be in force. In any case, there is just enough case law suggesting it might have survived to muddy the water.

Is academic scholarship within the scope of academic employment? Is there a teacher exception? The questions are fascinating, and there are many very strongly held opinions (just check out footnote 12 in the paper!). But even though there is not—and may never be—a resolution to the question, institutions still need a way to ensure their ability to comply with grant requirements.  If, for some reason, the institutions are not the authors of the works produced by the grants, it is possible they (the institutions) would not by default have sufficient rights to convey the license to the government as the grants require. But the public access requirement clearly assumes the government can obtain its license—and institutions can comply—and in any case that must happen if the public access policies are to work.

We make a few recommendations on how to accomplish this in the paper, but the TL;DR is . . . get it in writing. If researchers at colleges and universities give their institutions conveyable nonexclusive rights in advance, then when the institution executes the grant agreement it unquestionably will have sufficient rights to make good on their promises to the government.  It’s a fairly simple solution to a surprisingly complicated problem.

We hope you enjoy the paper!  The next—and final—paper in the series will be looking at copyrightability in various versions of scholarly works, from drafts and conference presentations to accepted manuscripts and versions of record. Our staff attorney, Yuanxiao Xu, is writing that one, and it promises to be a page turner!  Stay tuned!