Regular readers of this blog will know that IP Draughts is sceptical about the value of some of the articles in academic law journals. Too many of them seem to be engaged in a private conversation between academics that has very little connection with the world that IP Draughts inhabits.
A recent article in Legal Studies, the journal of the Society of Legal Scholars (SLS), bucks this trend. Make the butterflies fly in formation? Management of copyright created by academics in UK universities, by Dr Andreas Rahmatian of the University of Glasgow (Legal Studies Vol 34 No 4, 2014, pp 709-735) makes some interesting points about the ownership of copyright in works created by an academic employee. Not only are the points interesting, but they have practical relevance to anyone who is involved in drafting, interpreting or advising on IP ownership issues within a university. It is to SLS’s credit that it provided funding for the work that led to the article being written.
Astute readers may already be asking themselves: who owns the copyright in an article written by an academic, on the subject of who owns the copyright in articles written by academics? Does Dr Rahmatian, or his employer, the University of Glasgow? What does his contract of employment say on this subject?
In IP Draughts’ experience, it is often a term of an academic’s contract of employment that the university’s financial regulations (or similar) form part of the contract of employment. Many universities have adopted an intellectual property (IP) policy, and in many cases the policy is made a part of those regulations. In such cases, the IP policy is considered to be binding on the academic as it forms part of their contract of employment.
So what does the University of Glasgow’s IP policy say about ownership of copyright in academic works? IP Draughts looked on the university’s website, and couldn’t immediately find an official-looking document that appeared to have the status of an employment term. Instead, he found an explanation on the website (legal status unclear) which reads as follows:
The University owns IP generated by University staff in the course of or incidental to their employment, including teaching or university materials. Ownership may, in part, be determined by the terms and conditions of any external funding.
The University waives its rights to ownership of any copyright in scholarly materials, except in relation to any work created by an employee of the University whose job description specifically includes the creation of printed or electronic materials.
This form of words reflects a set of broad principles that many universities seem to follow in their IP policies, and which Dr Rahmatian rightly criticises as flawed. As will be discussed below, these principles are woolly around the edges, but they seem to be commonly understood by universities as:
- The university owns IP created in the course of the employee’s employment. [This is the default position for UK copyright, but not for patents, and the position for patents can’t be overriden by contract terms, so the wording is defective. But today we are discussing copyright.]
- Pretty much everything the academic does is done in the course of their employment. [This is an extrapolation, but probably reflects the university’s position. As Dr Rahmatian’s article explains, it is doubtful whether this is true in the case of public lectures, and perhaps also in the case of other non-teaching materials.]
- This includes “scholarly materials”, but the university graciously “waives” its rights to these. Depending on who you ask, scholarly materials might include articles, books and public lectures, but not course materials. [The legal status of a statement that someone “waives” their ownership rights is unclear. Is this intended to mean (a) I own the IP but I won’t sue you, (b) I agree that you own the IP in the first place, or (c) I will assign the IP to you? The use of the word “waive” seems to be a fudge, to avoid tackling the ownership question head-on.]
- The terms of funding contracts may transfer ownership in the funder. [This assumes, of course, that (a) the funding contract assigns IP to the funder, and (b) that the funding contract is made with the original owner of the IP. If the contract is made with the university but the academic owns the IP personally, this won’t work.]
So, who owns the copyright in Dr Rahmatian’s article: him or the university? According to a footer on each page of the article, the answer is that neither of them do. Instead, the Society of Legal Scholars does. The article does not reveal whether SLS obtained an assignment of copyright from Dr Rahmatian, or from the University of Glasgow, or from both of them. Or, indeed, from neither.
Dr Rahmatian’s article reports on a study that he conducted, in which he attempted to interview the custodians (IP Draughts’ name) of IP policies at several UK universities, to find out what the policies were and how they were applied. While he was able to obtain copies of several policies, it proved to be more difficult to secure interviews, as the custodians were sometimes “diffident” about discussing the policies. The causes of this diffidence seemed to include (a) the custodian not wanting to show his ignorance by incorrectly describing the policy or its legal effect, (b) the policy had not been finalised or was not, in practice, followed, or (c) making comments about the policy could get the custodian into trouble, given its political sensitivity.
Dr Rahmatian did, however, manage to secure interviews with at least 8 universities.
Several themes emerge from the article that chime with IP Draughts’ experience, including:
- The issue of academic copyright is politically sensitive, and formulating a copyright policy sometimes involves negotiations with an academic trade union.
- The resulting wording is sometimes a messy compromise, and its drafting may not have involved a specialist IP lawyer.
- Many of the respective policies of UK universities have a similar look and feel. They sometimes use odd words like “the university claims ownership” or “the university asserts ownership”, which suggests an unresolved negotiating position rather than a clear ownership statement.
- Sometimes, it appears that the university considers that it owns all IP generated by the academic, without fully focussing on issues such as (a) what falls within the scope of the academic’s employment duties (the patent test, in summary) or (b) what is done in the course of employment (the copyright test).
- More generally, the university’s staff who administer the policy are not always clear on the detailed effect of the policy, or how it is affected by the underlying law on ownership of employee-generated IP.
Dr Rahmatian rightly refers to the case of Stevenson Jordan & Harrison v MacDonald & Evans (1952) 69 RPC 10, in which the court discussed the position of a university lecturer who delivers a public lecture. The following quotation, and in particular the word “inconceivable”, forms the basis of much of Dr Rahmatian’s premise in the article:
Lectures delivered, for example, by Professor Maitland to students have since become classical in the law. It is inconceivable that because Professor Maitland was in the service at the time of the University of Cambridge that anybody but himself, one would have thought, could have claimed the copyright in those lectures.
As Dr Rahmatian points out, this case has been cited in more recent cases such as the important patent case of Greater Glasgow Health Board’s Application  RPC 207 @ 223.
IP Draughts has a feeling that Dr Rahmatian hinges a great deal on this one case, and it make him want to play devil’s advocate, while recognising that it may be right to rely on the case. Counter-points that might be made include:
- The comments are obiter dicta.
- The case is over 60 years old, and assumptions about academic duties have moved on since then, as have the terms of their employment contracts.
- The example given is of an even older set of lectures, and given at Cambridge, which has a distinctive approach to the ownership of academic IP, even today.
- The example seems to have concerned a public lecture, as distinct from a lecture given as part of a course. How far one should extrapolate from that example to articles and books is not clear.
Other parts of Dr Rahmatian’s article are less convincing to this practitioner. Mindful no doubt of SLS’s plea that articles in Legal Studies should include “particular reference to doctrinal, conceptual, theoretical, comparative or socio-legal analyses”, the author discusses the impact of “managerialism” on university IP policies, which “provides the technocratic illusion of seemingly rational and unquestionable managerial rules that replace substance by procedure …this military-like uniformisation is a typical effect of modern human resource management …the assertion of copyright ownership by universities can serve as a first step in this development.”
Wow. In other words, a university’s copyright policy is part of a Orwellian nightmare where a university’s central administration acts as “big brother” and treats academics as units of production. IP Draughts expects that this characterisation will appeal to many academic readers.
Coming back to the legal content of the article, the take-away message for IP Draughts is the reminder that university administrators sometimes have misguided views on the extent to which the university automatically owns the intellectual output of its academic employees; to put it mildly, there are some areas where the legal position is not clear. Prudent universities will obtain formal assignments from their academic inventors and creators before seeking to commercialise that output.