Intellectual Property Issues In College?

An Anonymous Coward with PhD prospects asks: "Next week several people from our computer science department will be meeting with the intellectual property lawyers who represent my university. The intent of the meeting is to get their opinions on various topics like: work for hire, UCITA, taking grad theses and selling them, and so on, and to grill them on the same. Many of us feel that we should have the right to GPL any code we produce, but the university makes lots of money off of licensing. They argue that code written by a school employee (and this usually includes grad students) is a work for hire and that the school should retain ownership and control. What do /. people think and can you all come up with other questions that I should ask?"

Comments

Works for hire: Title 17 Section 101

[coats]

THE LAW defines work for hire, in the Copyright Act (US CODE Title 17), Section 101; see http://www4.law.cornell. edu /uscode/unframed/17/101.html:

A ''work made for hire'' is -

(1) a work prepared by an employee within the scope of his or her employment; or

(2) a work specially ordered or commissioned for use as a contribution to a collective work, as a part of a motion picture or other audiovisual work, as a sound recording, as a translation, as a supplementary work, as a compilation, as an instructional text, as a test, as answer material for a test, or as an atlas, if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire. For the purpose of the foregoing sentence, a ''supplementary work'' is a work prepared for publication as a secondary adjunct to a work by another author for the purpose of introducing, concluding, illustrating, explaining, revising, commenting upon, or assisting in the use of the other work, such as forewords, afterwords, pictorial illustrations, maps, charts, tables, editorial notes, musical arrangements, answer material for tests, bibliographies, appendixes, and indexes, and an ''instructional text'' is a literary, pictorial, or graphic work prepared for publication and with the purpose of use in systematic instructional activities.

IANAL, but

Is that homework, is that other code, "prepared by an employee within the scope of his or her employment"?? (Homework certainly is not, or so Federal precedent says.) Is it "specially ordered or commissioned...in a written instrument signed by them that the work shall be considered a work made for hire"? (Is there a specific agreement signed by both sides for each specific work?)

Note that patent law does not have this kind of definition with regard to "work for hire."

No, IBM has stretched things in this regard beyond what the law allows. So have the universities of "gherehmee" and "feydakin".

I think it would be an interesting exercise pour encourager les autres for a student to aggressively pursue copyright infringement action against such a university, to the full extent of the example provided by the BSA and by Scientology: ex parte orders and all that (show up with a Federal marshall and an 18-wheeler, confiscate every computer in the place for your own infringement-examination at your leisure in the place of your choosing...)

fwiw, I note that Carnegie Mellon's CS department has started doing the "right thing" for class projects, etc., which as it notes are properly considered works of joint authorship, both the students and the university being the authors.

A couple of issues here...

[sheldon]

First, Universities and a number of other government entities are being asked to become self-sufficient. Basically if they provide a service which is of use, then perhaps they can recoup much of their costs through service fees, licensing, whatever.

Personally as a tax payer I think it makes sense. It lowers my taxes and/or it provides an opportunity to delve into things that the money might not have otherwise been available for. (Assuming the U has $1mil, versus $1mil + $500k from fees)

There is a disagreement with this from an academic standpoint in that it does tend to push research towards directions which are marketable to commercial entities. Although the Universities still review research to decide if it is ethical, or a direction that should be gone. As one example, when I worked at the University I recall our Agronomy dept board rejecting a proposal from a seed company to research genetically altered corn which was resistant to certain herbicides. They went outside and did it anyway, and now have felt the wrath of the EU :)

Another issue... If you reject the notion that Universities should charge for their research, etc. because they are tax payer funded entities and thus their work belongs to the public.

If you take this stance, then really the only legitimate license is... no license, i.e. Public Domain.

The work belongs to the public, which means the public can do with it whatever they want.

By talking about the GPL you are taking a middle ground, saying that the public doesn't own the work, but the University also shouldn't be trying to recoup tax dollars by charging fees.

Work For Hire Straightforward yet fact-dependent

[werdna]

They argue that code written by a school employee (and this usually includes grad students) is a work for hire and that the school should retain ownership and control.

The question of ownership can be a no-brainer in typical employee fact patterns. In others, it can be tremendously difficult to determine, and highly fact-specific. The law is derived from the definition of work made for hire in 17 U.S.C. s. 101 and applicable related statutes.

The general rule is easy: If you write a program AS an employee, and writing the program is within the scope of your employment, then the work is a work made for hire, period. In such a case, the copyright immediately vests in the employer, and you have no rights whatsoever (under US law, anyway), unless you have independently contracted for them.

The big questions, of course, are whether you are an employee, in fact, as that term is understood in the Copyright context, and whether your programming was within the scope of your employment, in fact, as that term is understood in the Copyright context. This is where the rubber meets the road.

If not an employee, or the work was out-of-scope of employment, then the work is not a work made for hire unless: (1) the work falls within one of the enumerated classes of works set forth in the statute definition; and (2) the work was commissioned pursuant to a SIGNED writing saying it was a work-made for hire. If both of these two rules are satisfied, same result as above -- employer owned it from the outset, and you never had any rights.

Otherwise, you are the author and owner, and you own the copyright. HOWEVER, even if the copyright initially vests in you, you can, or might already have, assigned those rights away. This depends how your agreements with the University are drafted, and may depend upon specific policies.

Accordingly, the other side of this is that if you want to hire someone and get good rights to their code, you should have a writing reciting: (1) you own it; (2) its a work made for hire, and therefore vests with you; (3) anything that does not automatically vest with you, for whatever reason, will be assigned to you; and (4) employee will sign anything necessary to perfect your rights to ownership. There are stronger and weaker versions of this that may be appropriate, depending upon the circumstances.

Again, this isn't legal advice, which requires the application of general rules to specific facts, any one of which can absolutely reverse the result dictated by law. If you have any doubts, you should bring the question to a lawyer you have retained to analyze those facts for you.

Oxymoron...

[brianvan]

Doing work in college? Does that actually happen?

I know someone in my college who paid off his loans because he got in on the VA Linux IPO - all because he co-wrote some GPL'ed utility program that got in the major distros... And I know he did it on his spare time, in college, and the university was NOT demanding any profits. That's how most college-based contributions arise... not from schoolwork, but from spare time. So while the issue is valid, it's mostly irrelevant.

Generally, if you have a good idea, do yourself a favor... don't submit it as a project to someone else (either for work or for school)... that's like trying to make a donation to a sperm clinic and instead they wind up keeping your balls...

Here's a question:

[mwalker]

Here's a question or two for them:

1)What happens if I release my thesis into the public domain under the GPL before I hand it in to my professor?

2)What if I am not paid to write my thesis? (If I am paid to write my thesis, may I charge on an hourly basis?

3)If my thesis is considered the University's work for hire, what will be the penalties imposed on me for speaking about my thesis in public? Is there a grace period during which I can legally speak about my thesis?

4)After I hand in my thesis, is it legal for me to think about my thesis, or must I stop thinking about it until I have legally purchased a copy?

Re:Here's a question:

[q000921]

All of that is covered by your legal contract with your university. That may be a contract by which you buy educational services, or it may be an employment contract, or both. It may be a written piece of paper you sign at some point, or it may be just by convention and "university rules" (the latter would be easier to challenge). The university may also present you with choices halfway through: "well, it's your third year now, and here is our new intellectual property policy; sign it or leave".

How you got paid, or even if you got paid, doesn't intrinsically matter. Your contract might well have you pay for your education yourself and still assign all rights to your intellectual property to the university.

There are, indeed, situations where you cannot talk about your thesis research in public (e.g., if your thesis research was done as part of a collaborative project with industry). You'd probably know about that before hand.

If you release your thesis into the public domain, or do anything else with it that wasn't allowed for in your contract, what happens depends. The university certainly has no obligation to accept anything as a dissertation, so they could just refuse it. But (perhaps more importantly), you might be legally liable for breach of contract and damages. For example, if your thesis research is on the clinical effectiveness of some new drug and you release it to the press ahead of time, this may cost lots of people lots of money.

Having said all that, I don't approve of many of these things. But the only way to deal with them is to be informed, address them ahead of time, and make your choices accordingly. Either you attend the famous XYZ U. and buckle under to their intellectual property policies, either you take the lucrative biomedical research job that gives you a good thesis but requires you to keep your mouth shut, or you decide to go elsewhere. It's your choice; find out ahead of time and don't be naive about it.

But who do you work for...

[SquadBoy]

Putting aside for the moment the question about if this is a work for hire or not. (I don't think it is) The question is who paid to have it written. In the case of most state schools and just normal projects the answer is going to be the tax payers and this would of course include you. Think about it you pay taxes part of those taxes pay your salary. In this case since the public paid for the code to be written it should be able to be used by anyone who wants to at will. The only way to guarntee then that I can use the work that I have paid for the CS staff at the Univeristy of Utah to write is for them to GPL it. To the extent that your school also gets federal money I hav paid (at least in part) for you to write code and I should be able to get and use the code I have paid for. :) In that case you must GPL it this is the only way to make sure I can use this code. I think this points out how silly it is for people to make money off of projects that are funded with taxpayer money. Baffle em with BS and maybe they will se the light.

This doesn't happen in the art departments!

[hurst]

Do the Universities take & control & sell art professor's art?
If they did, they could kiss the faculty good-bye.
Maybe coders should consider their toils art and take a hike when threatened in this manner.

No contract?

[truthsearch]

No contract, no university ownership. I'm no lawyer, but many companies (like the one I work for), require employees to sign documents stating that anything they develop during work hours are automatically owned by the company. IBM even used to make employees sign a document that stated anything ever written while working for them was theirs, including your own personal time spent at home. I would imagine that if you didn't sign anything which states your code is only for the university, it's not. Maybe the corporations just make people sign a document for safety's sake, but maybe it's because without a contract the ownership rights of the company or university would lose in court. Any ideas?