NIDRR Grantee Questions about Copyright

The following questions were posed by NIDDR Grantees about copyright and intellectual property Issues. Answers are provided by Georgia K. Harper from The University of Texas System, Office of General Counsel.

• Who owns the copyright to an article that has multiple authors and reports the findings of research carried out by several investigators?
  
  Under the Copyright Law § 201(a), authorship and ownership of a written work usually belongs to the person who creates it. He or she may include the ideas of others, even quotes from others, but those whose ideas or quotations are included do not become joint authors with the creator. In order to be joint authors, two or more people must each contribute copyrightable expression to the written work (that is, original expression fixed in a tangible medium), must intend their contributions to be merged into a unified whole and must intend to be joint authors. This last requirement, intent, means that it is very important to discuss authorship and ownership among contributors at the beginning of a collaboration so that those who contribute do so with realistic expectations (Copyright Law, § 101 definition of joint work; 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).
  
  The practice of attributing authorship on the basis of who may have participated in underlying research, or who may be a senior faculty member in a department, or who may have funded research, is common in many academic fields, but it is contrary to the Copyright Law's basis for attribution of authorship and ownership and would not stand up were it to be challenged through legal processes in a particular case.
  
  One other note about joint authorship: it requires all authors to assign the copyright in their article to a publisher or other third party; but, any author may license certain rights to a third party non-exclusively. With such a license, the licensee obtains, for example, a right to print the article, but all of the authors are still free to license the article to others as well.
  
  
  
• What if the investigators work for a variety of institutions of higher education, professional associations, or other organizations with different rules regarding the copyright of works developed by their employees?
  
  Determining who or what institution might be a joint author of an article created by individuals from different institutions can be very difficult. Although the creator of a work is normally its author and owner, the Copyright Law provides in § 201(b) that under certain circumstances, an employer of a creator may be the author and owner of a work. This is called work made for hire and it applies to works created by employees within the scope of their employment, and to commissioned works created with a signed contract that designates the works as works made for hire (Copyright Law § 101, definition of work made for hire). As a result, it is possible that the institutions, associations or other organizations own the copyrights in the articles created by their employees.
  
  Many such institutions have policies about ownership of research articles indicating that the institutions do not consider such articles to be works for hire. Others have no policies. If an institution or organization has no policy, a strictly legal analysis would suggest that such works are probably works for hire, but the tradition at the institution or organization may suggest otherwise.
  
  In the absence of a clear policy statement, if a contributor to an article is uncertain whether he or his institution is the author of his contribution and thus a joint author with others of the entire article, the institution's legal authority should be asked to make a determination.
  
  
  
• Does NIDRR funding affect the copyright ownership of research articles resulting from the federally-funded research?
  
  Federal funding has no effect on the ownership of research articles resulting from the funded research. The Copyright Law's authorship and ownership provisions apply, as described. (See sidebar: Works Produced Under Government Grants and Cooperative Agreements.)
  
  
  
• Can materials on Web sites developed by NIDRR grantees be protected from theft, modification, or reuse?
  
  As a practical matter, nothing can be protected from theft, modification and reuse, whether it is on the Web, available in a subscription database, or published in a bound volume. One may try to make it harder, but if someone is determined to steal a work, there is really nothing that can be done. Nevertheless, the hundreds of millions, perhaps billions, of works now published electronically, strongly suggest that this is a risk we must be willing to live with.
  
  
  
• If an article is posted on a Web site, is it no longer eligible for publication in journals that only publish new material? What about posting abstracts, lecture texts, or slides that may explain the ideas that will be in the paper, but that are not yet fully fleshed out as a paper?
  
  Writers should check with potential journal publishers to ascertain their policies about prior distribution on Web sites. At least one case has found posting on a Web site to be the equivalent of publication (Getaped.com, Inc. v. Cangemi, 188 F.Supp. 2^nd 398 (S.D.N.Y. 2002)), but the issue of what a journal considers "original" or "unpublished" is probably a matter of that journal's policy, rather than any actual legal determination of what constitutes publishing. On the other hand, publishing one's ideas should not be considered the equivalent of publishing a fully formed article on the subject. The copyright in the article is a different right from the copyright in the abstract, the slide show or lecture. Usually, publishers are concerned that their articles are original and not previously published, but I am not aware that they insist that the ideas not have been discussed publicly before. That would seem to be quite extreme.
  
  
  
• What happens to a Rehabilitation Engineering Research Center's invention if it is described in an article that is published before a patent application is filed on the invention?
  
  Such a publication starts the clock running in the United States. The owner of the invention has one year to file a patent on the invention. For the rest of the world, however, that invention is in the public domain. It cannot be protected in any other country and so it will not provide an opportunity for anyone who might consider investing in it to recover the investment. The inability to obtain "foreign rights" may also affect the interests of investors in the US. The product of their investment is subject to foreign competition it wouldn't otherwise have.
  
  
  
• In general, how is fair use determined, by whom, and is it a fair use to post someone else's article on your Web site without asking permission?
  
  Fair use is determined on a case-by-case basis, using the "four-factor fair use test" articulated in § 107 of the Copyright Law. For more information about how this test works, see "Fair Use of Copyrighted Materials." http://www.utsystem.edu/ogc/intellectualproperty/copypol2.htm There are also guidelines for nonprofit educational uses described in this article.
  
  Posting an article to a Web site is unlikely to be a fair use, assuming the Web site is generally available to the public. Distribution to the public is one of the exclusive rights of the copyright owner, usually the journal publisher. A typical fair use of a journal article would involve limiting access to students in a class for one semester, rather than general distribution for an open-ended period of time.
  
  Other examples of typical fair uses include using a few images, charts, graphs or illustrations in a presentation to a limited audience, and posting a short quotation from an article, even on a publicly accessible Web site, in connection with a discussion about it.
  
  Giving credit is important in academe, but it is never a substitute for getting permission when a use exceeds the bounds of fair use. For more information on fair use, refer to the article indicated above. Also, see sidebar: What is Fair Use?
  
  
  
• How does one get permission to put materials on a Web site if it is not a fair use?
  
  Permission for nonprofit educational uses can be secured through the Copyright Clearance Center. http://www.copyright.com/ For other uses, one should contact the publisher directly. For more information, see "Getting Permission." http://www.utsystem.edu/ogc/intellectualproperty/permissn.htm
  
  
  
• If someone denies permission, can their materials be changed a certain amount to avoid infringement, and then posted without their permission?
  
  The act of changing someone's work "a little bit" or "a lot" is the process of creating a derivative work, a work that is based upon or includes another work (Copyright Law § 101, definition of derivative work). The right to create derivative works is among the exclusive rights of the copyright owner, so one would be infringing in the very act of trying to create a work that was different enough to avoid infringement (Copyright Law § 106). So, no, one may not change another's materials to avoid infringing them and then post the revised work without permission.
  
  
  
• Does one need permission to place links on a Web site to articles posted elsewhere on the Web?
  
  According to the Copyright Law § 106, authorizing links is not among the exclusive rights of the copyright owner. Anyone may link to a work that is posted on the Internet without the owner's permission. There are certain types of linking that can result in other kinds of violations of rights (unfair competition, trademark infringement), and linking to a page that one knows is not posted with the author's or owner's permission can result in contributory infringement. So, linking is not entirely without consequence, but one's only obligation upon being notified that a linked-to page is an infringing page is to remove the link.
  
  
  
• What is the benefit of registering an original work, now that copyright registration is no longer required?
  
  Registration carries certain benefits and is required if one wishes to pursue a copyright infringer using the court system. The benefits include being able to recover attorneys' fees and statutory damages from the infringer. Statutory damages are ranges of monetary relief a court can award a copyright owner without the owner's having to prove how much he suffered financially from the infringement (Copyright Law § 412, § 504(c)).
  
  
  
• How does one figure out the owner of a work and the term of copyright protection for works that are not registered?
  
  Chapter 3 of the Copyright Law (§§ 301 through 305) contains the provisions that detail the various terms of protection available to authors, depending on when and under what circumstances they publish their works. Laura Gasaway provides a very helpful chart online that explains these terms. http://www.unc.edu/~unclng/public-d.htm
  
  The Sonny Bono Copyright Term Extension Act made the most recent changes to copyright terms (see sidebar.)
  
  For works published before 1989 in the US, a copyright notice was required for protection. With a few narrow exceptions, any work published without the required notice became a part of the public domain. Anyone may use such works freely.
  
  Thus, for the most part, only works published after March 1, 1989, when notice was no longer required, present the problem of the indeterminate owner and term. The term is figured from the date of the death of the author, so one must identify the author to determine the term of copyright. The standard finding aids are all any of us have to make such a determination. I would advise checking with a library to learn how they determine authorship of works where such is not obvious from the face of the work.
  
  
  
• How does one enforce a copyright?
  
  Copyrights are enforced in a two-step process. The first step is usually sending a "cease and desist" letter in which the owner asserts his rights and demands that the infringer stop infringing. Here is a sample letter: http://www.utsystem.edu/ogc/intellectualproperty/contract/cease.htm
  
  If this does not bring an appropriate response, the next step is to file a lawsuit. This step requires the aid of an attorney and is quite costly. Most lawsuits involve very valuable properties for which the cost of the lawsuit is deemed reasonable relative to the value of the asset.
  
  

Author notes:

Georgia K. Harper is the manager of the Intellectual Property Section of the Office of General Counsel for The University of Texas System, where she specializes in copyright law. Her online publication, The Copyright Crash Course, http://www.utsystem.edu/ogc/intellectualproperty/cprtindx.htm provides guidance to University faculty, students and staff concerning a wide range of copyright issues and is freely accessible to all universities and colleges. From: http://www.utsystem.edu/ogc/intellectualproperty/gkhbio2.htm

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