Copyrightable works in the undergraduate student context: an examination of the issues.

• Author: Collins, Lisamarie A.

1. INTRODUCTION II. THE BAYH-DOLE ACT AND ITS INFLUENCE ON UNIVERSITY COPYRIGHT POLICY A. Introduction to the Bayh-Dole Act B. Changes to University Copyright Policies in Light of Bayh-Dole III. COPYRIGHT LAW A. Introduction to Copyrights B. Ownership of Copyrights C. The Work for Hire Doctrine D. Assignment of Copyright Ownership and Student Contracts IV. APPLICATION OF LAW AND POLICY TO SCENARIOS IN WHICH UNDERGRADUATES MAY DEVELOP COPYRIGHTABLE WORKS A. Student Employees B. Students working for Academic Credit C. Students as Students V. PROPOSAL FOR ACTION VI. CONCLUSION I. INTRODUCTION

   Imagine that you are an undergraduate student who, while enrolled at a university, created a copyrightable and potentially marketable work such as a software program. Your rights in your own work of original authorship will depend on a number of factors including how your relationship with the university is defined by the institution's intellectual property policies and by U.S. copyright law. Due to ambiguities and inconsistencies in many university intellectual property policies your rights may not be apparent. (1) Moreover, given the current academic commercialization Zeitgeist, emerging particularly after the Bayh-Dole University and Small Business Patent Procedures Act of 1980 (2) (the "Bayh-Dole Act"), in which many universities have established policies requiring students to assign most, if not all, of their patentable and creative works to the university, (3) you may wonder whether your university has established a broad policy encompassing your copyrightable work, or whether your university may establish such policies in the future. What might this mean in terms of your perceived ownership rights to your creative product and what might you do to preclude your university from acquiring rights to your creative work? If your university has a policy, and chances are that it does, have you been notified of the policy? (4) Could the spirit of entrepreneurship regarding patentable works lead universities to consider folding all copyrightable student work product into its intellectual property mix?

   Although the general presumption is that students retain copyrights in their own "student works," (5) even when created within the university setting, there are certain circumstances under which a university may acquire such rights. (6) While others have correctly asserted that ownership issues surrounding copyrights in the university setting are not as significant as those related to patents, (7) these rights are nevertheless significant to the student creator who may un-understandably lose ownership of a personal creation to the university to which the student, somewhat paradoxically, pays tuition. Moreover, ownership rights in traditional scholarly writings, which typically fall under the umbrella of copyrightable subject matter, carry with them the notion that such rights are fundamental to the author/creator. While the ultimate solution to overcoming the confusion surrounding ownership rights to student work product would be for each university to provide clear and comprehensive intellectual property policies to students and faculty, this comment will ultimately suggest that the very purpose of copyright law--to stimulate and incentivize creativity in order to foster the development of more creative works--would be frustrated by universities seeking to acquire copyrights to most if not all copyrightable undergraduate student work product.

   To this end, Part II of this comment will begin with a discussion of how the spirit of academic entrepreneurship emerging after the Bayh-Dole Act has shaped university intellectual property policies regarding student work product. Part III will provide a brief introduction to copyright law and the most notable aspects of copyright law, namely the work for hire doctrine as it pertains to students in the university setting. Part IV will provide a summary and discussion of the main issues regarding copyrightable works for undergraduate students including an application of the work for hire doctrine and a description of how contractual university policies may alter copyright law. Finally, Part V will suggest that, with the exception of student employees, universities should not seek to acquire all copyrightable student work product as this would likely stifle student innovation and creativity.

2. THE BAYH-DOLE ACT AND ITS INFLUENCE ON UNIVERSITY COPYRIGHT POLICY

   1. Introduction to the Bayh-Dole Act

      Since its enactment nearly thirty years ago, the Bayh-Dole Act frequently has been both credited with and criticized for transforming universities from relatively isolated "ivory towers" into commercial entities rapidly churning out patents and granting licenses for new technology invented in the university laboratory. (8) Prior to the passage of the Bayh-Dole Act, all inventions that were invented through federally funded research were assigned to the federal government. (9) Bayh-Dole created a patent policy that allowed universities to retain title to patents developed as a result of federally funded research and created a national emphasis on the development of the university-industry relationship. (10) This led many research universities, formerly inactive in patent and licensing activity, to develop technology transfer offices and engage in patenting and licensing of faculty, staff, and student inventions. (11) As a result, universities revised and established intellectual property policies requiring their faculty and staff to sign intellectual property assignment agreements, (12) and the courts have held that such policies are valid and enforceable as part of an employment contract with the university. (13)

   2. Changes to University Copyright Policies in Light of Bayh-Dole

      Although the general presumption under the "teacher exception" has been that university faculty members retain copyright ownership in their academic writings (14) and traditional scholarly works, (15) universities have recently begun revising their policies to capitalize on the potential for licensing revenues generated by faculty-developed copyrightable works such as software and digital distance learning materials. (16) Realizing that the patent assignment agreements occasioned by the Bayh-Dole Act could also be inferred to include not only patentable but also copyrightable student innovation, universities then tapped into this commercial potential by revising their intellectual property policies to include students using university facilities or resources. (17) The "use" of university resources is often vaguely defined by university policies, and this comment will discuss the case law related to its interpretation in Parts III and IV.

      Just as the Bayh-Dole Act has been criticized for shifting the focus of universities away from the traditional pursuit and dissemination of knowledge toward patentable and licensable ideas, (18) the spirit of academic commercialization of copyrightable innovation has an inherent danger of shifting control and selection of traditional scholarly works from the individual creator(s) (including faculty and students) to university control and selection for acquisition of ownership rights (i.e, a change in philosophy from traditional academic freedom to mission research as in industry). This danger is not difficult to realize once one considers several of the notable and profitable innovations made by individuals while undergraduate students. To illustrate, Bill Gates made significant progress toward developing what would become Microsoft while tinkering with computers as a pre-law student at Harvard; (19) Fred Smith originated the idea for FedEx in a term paper while an undergraduate; (20) Larry Page and Sergey Brin, while Stanford computer science students, began a graduate research project that led to the development of Google; (21) Shawn Fanning, while a student at Northeastern University, created the peer-to-peer software application, Napster; (22) and Mark Zuckerberg created Facebook while an undergraduate student at Harvard. (23)

3. COPYRIGHT LAW

   1. Introduction to Copyrights

      The Constitution provides that "The Congress shall have Power ... To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries." (24) Congress has defined a copyright as "the right of an author to control the reproduction of his intellectual creation;" (25) and the United States Supreme Court has explained that the primary purpose of copyright is "to motivate the creative activity of authors and inventors by the provision of special reward, and to allow the public access to their genius after the limited period of exclusive control has expired." (26) Thus, copyright protection exists

      to incentivize further creativity and to promote general welfare through the enjoyment of creative works.

      The Copyright Act of 1976 provides that the scope of copyrightable subject matter extends to "original works of authorship" that are "fixed in any tangible medium of expression," (27) and case law requires that the work evidence a modicum of creativity. (28) Copyright protection does not extend to procedures, processes, systems, methods of operation, concepts, or principles; and although copyright protects the expression of ideas, it does not protect ideas themselves. (29) Categories of works that can be copyrighted include: (1) literary works; (2) musical works; (3) dramas; (4) pantomimes and choreographies; (5) photos, graphics, and sculptures; (6) motion pictures and other audiovisual works; (7) sound recordings; and (8) architectural works. (30)

      In the university setting, undergraduate students may create a wide range of copyrightable works while performing course work or course projects. Students may also write papers, create poems or art, establish blogs or websites, develop computer programs, write music or...