THE ROLE OF CIRCUMSTANCES AND AGREEMENTS IN DETERMINING OWNERSHIP OF COPYRIGHT AND

OTHER INTELLECTUAL PROPERTY IN FACULTY CREATED WORKS.

Faculty Created Work

Copyright ownership is determined by federal law

Copyright is a form of protection provided by the laws of the United States (title 17, U. S. Code) to the authors of “original works of authorship,” including literary, dramatic, musical, artistic, and certain other intellectual works.

Copyright protection attaches automatically when the work is created in fixed form.

The copyright in the work immediately becomes the property of the author who created the work.

Copyright can be transferred

Although the creators of works generally are also the owners of the copyright in those works, circumstances surrounding the creation of work by faculty members can sometimes make it difficult to determine copyright ownership. This is because:

Works created by faculty members may be “works made for hire”;

Works created by faculty members may involve the “substantial use” of school district resources; or

Works created by faculty members may be created as the result of a specific agreements between school districts and faculty members.

“Works made for hire”

In the case of true “works made for hire,” school districts, and not the faculty members who actually created the work, are considered to be the “authors” of the work and thus, the copyright owners.

“Works made for hire” generally include works prepared by employees “within the scope of their employment.”

Works created by faculty members in higher ed settings often are not considered “works made for hire,” (e.g. the MN State Colleges & Universities allow faculty members to claim copyright ownership in their scholarly works, encoded works, and sabbatical works.)

Transfer of rights via agreement

Agreements between school districts and faculty members may be used to clarify ownership of copyright and other intellectual property rights. In some instances, these agreements actually transfer rights. These agreements include:

Sponsorship agreementsCollaborations/partnershipsEquity distributionsSpecial commissionsPost-creation assignments of copyright

Sponsorship agreements

Sponsorship agreements are written agreements between the sponsor and a school district. These agreements may include multiple parties, including the faculty members who participate in the creation of the work.

Collaborations/partnerships

Collaboration agreements are used when school districts participate in projects with other persons or organizations outside the school district to meet identified student, citizen, community and industry needs.

Agreements regarding the ownership of copyright and other intellectual property in the created works, including work created by participating faculty members, are incorporated into these collaborations/partnerships.

Equity distributions

Equity distributions result when school districts execute agreements with individuals, corporations, or other entities outside the school district for economic gain using intellectual property owned by the school district.

The proceeds of the equity distribution are shared among the creators of the work, which may include participating faculty, in accordance with the specific terms of the equity distribution agreements.

Special commissions

When school districts specially commission work from faculty members, and such works are identified by the school district as specially commissioned works at the time the works are commissioned, the copyright and other intellectual property rights in the work belong to the school district.

Agreements between the school district and participating faculty members for specially commissioned works must be in writing.

Post-creation assignments of copyright

Faculty members may agree to assign some or all of their intellectual property rights to a school district. In doing so, faculty members may preserve any rights available to them as creators of the assigned works.

Similarly, a school district may assign some or all of its rights in a work to any person or entity, including to the faculty members who helped create the works. In doing so, a school district may preserve rights (such as a royalty-free, irrevocable license to use and copy the work, or a right to share in proceeds from the commercialization of the assigned work) available to it.

Assignment agreements between faculty member and the school district must be in writing.

Contract considerations

Before entering into agreements relating to the ownership of faculty created work, faculty are advised to consider the following:

Who does the faculty member think should own the copyright and other intellectual property in the work?

Who does the faculty member think should control how the work is used?

What rights will the faculty member have as a result of the agreement? What rights will the school district have?

Who will assume legal liability for the work?

BY CONSIDERING AT THE ONSET WHO WILL OWN THE WORK AND HOW THE WORK WILL BE USED, FACULTY MEMBERS CAN ENHANCE THEIR ABILITY TO USE THEIR CREATIVE WORKS AS

THEY INTEND IN THE FUTURE.

Conclusion