Perhaps the most intuitive statement in the whole of the U.S. Copyright Act is this: “Copyright in a work protected under this title vests initially in the author. . . ..” Of course authors are the owners of the copyright in their works.
In practice, however, control over copyrighted works is often more complicated. When it comes to open access scholarly publishing, the story is particularly complicated because the default allocation of rights is often modified by an complex series of employment agreements, institutional open access policies, grant terms, relationships (often not well defined) between co-authors, and of course the publishing agreement between the author and the publisher. Because open access publishing is so dependent on those terms, it’s important to have a clear understanding of who holds what rights and how they can exercise them.
Work for Hire and the “Teacher Exception”
First, it’s important to figure out who owns rights in a work when it’s first created. For most authors, the answer is pretty straightforward. If you’re an independent creator, you as the author generally own all the rights under copyright. If co-authors create a joint work (e.g., co-author an article), they both hold rights and can freely license that work to others, subject to an accounting to each other.
If, however, you work for a company and create a copyrighted work in the scope of your employment (e.g., I’m writing this blog post as part of my work for Authors Alliance) then at least in the United States, the “work for hire” doctrine applies and, the law says, “the employer or other person for whom the work was prepared is considered the author.” For people who aren’t clearly employees, or who are commissioned to make copyrighted works, whether their work is considered “work for hire” can sometimes be complicated, as illustrated in the seminal Supreme Court case CCNV v. Reid, addressing work for hire in the context of a commissioned sculpture.
For employees of colleges or universities who create scholarly works, the situation is a little more complicated because of a judicially developed exception to the work-for-hire doctrine known as the “teacher exception.” In a series of cases in the mid-20th Century, the courts articulated an exception to the general rule that creative works produced within the scope of one’s employment were owned by the employer for teachers or educators. Those cases each have their own peculiar facts, however, and most significantly, they predated the 1976 Copyright Act, which was a major overhaul of U.S. copyright law. Whether the “teacher exception” continues to survive as a judge-made doctrine is highly contested. Despite the massive number of copyrighted works authored by university faculty after the 1976 Act (well over a hundred million scholarly articles alone, not to mention books and other creative works), we have seen very few cases addressing this particular issue.
There are a number of law review articles and books on the subject. Among the best, I think, is Professor Elizabeth Townsend-Gard’s thorough and worthwhile article. She concludes, based on a review of past and modern case law, that the continued survival of the teacher exception is tenuous at best:
“The teacher exception was established under the 1909 act by case law, but because the 1976 act did not incorporate it, the “teacher exception” was subsumed by a work-for-hire doctrine that the Supreme Court’s definition of employment in CCNV v. Reid places teachers’ materials under the scope of employment. Thus the university-employers own their original creative works. No court has decided whether the “teacher exception” survived Reid, but the Seventh Circuit in Weinstein, decided two years before Reid, had already transferred the “teacher exception” from a case-based judge made law to one dictated by university policy.”
University Copyright and IP policies
Whatever the default initial allocation of copyright ownership, authors of all types must also understand how other agreements may modify control and exercise of copyright. These policies can be somewhat difficult to untangle because there actually may be layers of agreements or policies that cross reference each other and are buried deep within institutional policy handbooks.
For academic authors, this collection of agreements typically includes something like an employee handbook or academic policy manual, which will include policies that all university employees must agree to as a condition of employment. Typically, that will include a policy on copyright or intellectual property. Regardless of whether the teacher exception or work-for-hire applies, these agreements can override that default allocation of rights and transfer them, both from the creator to the university, or from university to the creator.
These policies differ significantly in the details, but most university IP policies choose to allocate all or substantially all rights under copyright to individual creators of scholarly works, notwithstanding the potential application of the work for hire doctrine. In other words, even though copyright in faculty scholarly works may initially be held by the university, through university policy those rights are mostly handed over to individual creators. The net effect is that most university IP policies treat faculty as the initial copyright holders even if the law isn’t clear that they actually are.
Some universities, like Duke University, say nothing about “work for hire” in their IP policies but merely “reaffirm its traditional commitment to the personal ownership of intellectual property rights in works of the intellect by their individual creators.” Others like Ohio State, are similar, stating that copyright in scholarly works “remains” with their creators, but then also provide that “the university hereby assigns any of its copyrights in such works, insofar as they exist, to their creators,” which can act as a sort of savings clause to address circumstances in which the there may be uncertainty about ownership by individual creators.
Others, like Yale, are a little clearer about their stance on work-for-hire. Yale explains that “The law provides . . . that works created by faculty members in the course of the their teaching and research, and works created by staff members in the course of their jobs, are the property of the University,” but then goes on to recognize that “[i]t is traditional at Yale and other universities, however, for books, articles and other scholarly writings by a faculty member to be deemed the property of the writer . . . . In recognition of that longstanding practice, the University disclaims ownership of works by faculty, staff, postdoctoral fellows and postdoctoral associates and students. . . .” Another example of a university taking a similar approach is the University of Michigan.
Carve outs and open access policies
Every university copyright or IP policy that I’ve seen includes some carve outs from the general rule that copyright will, one way or another, end up being held by individual creators. Almost universally, universities IP policies provide that the university will retain rights sufficient to satisfy grant obligations. Some universities’ IP policies simply provide that, for example, ownership shall be determined by the terms of the grant (see, for example, the University of California system policy). In other cases, however, university IP policy accomplishes compliance with grants simply stating that all intellectual property of any kind (including copyright) created under a grant is owned by the university, full stop. This, therefore, gives the university sufficient authority to satisfy whatever grant obligations it may have. For example, the University of Texas system states that it will not assert ownership of copyright in scholarly works, but that provisio is subject to the limitation that “intellectual property resulting from research supported by a grant or contract with the government (federal and/or state) or an agency thereof is owned by the Board of Regents.” These kinds of broad ownership claw-backs raise some hard questions when it comes to publishing scholarly work. For example, when a UT author personally signs a publication agreement transferring copyright for an article that is the result of grant funding, do they actually hold the rights to make that transfer effective?
For open access, these grant clauses are important because they are the operative terms through which the university complies with funder open access requirements. Sometimes, these licensing clauses lie somewhat dormant, with funders holding but not necessarily exercising the full scope of their rights. For example, for every article or other copyrighted work produced under a federal grant, even prior to the recent OSTP open access announcement, the government already reserved for all works produced under federal grants a broad “royalty-free, nonexclusive and irrevocable right to reproduce, publish, or otherwise use the work for Federal purposes, and to authorize others to do so.”
Some universities also retain a broad, non-exclusive license for themselves to make certain uses of faculty-authored scholarly work, even while providing that the creator owns the copyright. For example, Georgia Tech’s policy provides that individual creators own rights in scholarly works, but Georgia Tech retains a “fully paid up, universe-wide, perpetual, non-exclusive, royalty-free license to use, re-use, distribute, reproduce, display, and make derivative works of all scholarly and creative works for the educational, research, and administrative purposes of [Georgia Tech].” Others such as the University of Maryland are less specific, providing simply that although the individual creator owns rights to their work, “the University reserves the right at all times to exercise copyright in Traditional Scholarly Works as authorized under United States Copyright Law.” Those kinds of broad licenses would seem to give the university discretion to make use of scholarly work, including, I think, for open access uses should the university decide that such uses are desirable.
Finally, a growing number of universities have policies, enacted at the behest of faculty, that specifically provide rights to make faculty scholarship openly available. The “Harvard model” is probably the most common, or at least the most well known. These types of policies allocate a license to the university, to exercise on behalf of the individual creator, with the specific intent of making the work available free of charge. Often these policies will include special limitations (e.g., the university cannot sell access to the article) or allow for faculty to opt-out (often by seeking a waiver).
Pre-existing licenses and publishing agreements
The maze of policies and agreements can matter a great deal for the legal mechanics of effectively publishing an article openly. Of course in the scenario where authors hold rights themselves, they can retain sufficient rights through their publishing contract so they can make their work openly available, typically either via “green open access” by posting their own article to an institutional repository, or by “gold open access” directly from the publisher (though these are sometimes accompanied by a hefty article processing fee). Tools like the SPARC open access addendum are wonderful negotiating tools to ensure authors retain sufficient rights to achieve OA.
That works sometimes, but often publishing contracts come with unacceptably restrictive strings attached. For individual authors publishing with journals and publishers that have great market power, they often have little ability to negotiate for OA terms that they would prefer.
In these situations, a pre-existing license can be a major advantage for an author. For example, for authors who are writing under the umbrella of a Harvard-style open access policy, the negotiating imbalance with journals is leveled, at least in part because the journal knows that the university has a pre-existing OA license and also knows that although those policies often permit waivers, it’s not as easy as just telling the author “no” to claw that license back. The same is true about other forms of university pre-existing licenses that could be used to make a work available openly, such as those general licenses I mention that are retained by Georgia Tech or Maryland. While these kinds of pre-existing licenses are seldom acknowledged in journal publishing agreements, sophisticated publishers with large legal teams are undoubtedly aware of them. Because of that, I think there are strong arguments that their publishing agreements with authors implicitly incorporate them (or, if not, good arguments that a publisher that does not recognize them is intentionally interfering with a pre-existing contractual relationship between author and their university). Funder mandates, made effective through university IP policies, take the scenario a step further and force the issue: either the journal acquiesces or it doesn’t publish the paper at all. There is often no waiver option. Of course there are other pathways that both funders and journals may be willing to accept – many funders are willing to support OA publishing fees, and many journals will happily accept OA license terms for a price.
Although the existing, somewhat messy, maze of institutional IP policies, publishing agreements, and OA policies can seem daunting, understanding their terms is important for authors who want to see their works made openly available. I’ll leave for another day to explore whether it’s a good thing that the rights situation is so complex. In many situations, rights thickets like these can be a real detriment to authors and access to their works. In this case the situation is at least nuanced such that authors are able to leverage pre-existing licenses to avoid negotiating away the bundle of rights they need to see their works made available openly.