Public K-12 teachers creation of nontraditional educational works: to rely on the teacher exception or explore other options?

• Author: Mills, Katheryn

INTRODUCTION I. STATE OF THE LAW A. History of the Treatment of Intellectual Property Created by Teachers B. Commentators Take on the Existence of the Teacher Exception C. Interpretation of the Works Made for Hire Doctrine II. HOW SHOUD TEACHERS AND THEIR EMPLOYERS PROCEED A. Contracts and the Works Made for Hire Doctrine 1. Collective Bargaining 2. Individual Employee Negotiations B. Teacher's Scope of Employment CONCLUSION INTRODUCTION

Picture this. You have been in contact with a local community college regarding an idea you have for a new degree program. You have created the program materials using knowledge and skills you have acquired during your academic studies and adult life. The college becomes interested in implementing your degree program into its curriculum and offers to purchase the program materials from you. Enter the possible dilemma. You are a public school kindergarten through twelfth grade (K-12) teacher and your employer, the public school, (1) is determined it has copyright ownership over the degree program materials under the work made for hire doctrine of the copyright Act of 1976 (the 1976 Act). (2)

Should such situation come to litigation, the outcome would hinge on a court's interpretation of the work made for hire doctrine. It is generally known that traditional materials, such as lesson plans, created by teachers specifically for use in their classrooms fall within the scope of a teacher's employment (3) and, thus, are owned by the institutions that employ the teachers. However, less clear are nontraditional works, such as degree program materials created by teachers to sell to other institutions. In the realm of teacher-created works, some have argued that a "teacher exception" exists that prevents employers from asserting ownership over teacher-created works based on the works made for hire doctrine. Though scholars have weighed in on the exception's existence over the years, the courts have still not provided a clear answer. In either case, exception's strength is not reliable, and teachers should turn to other options if they wish to maintain ownership over their nontraditional educational works.

This comment will begin with a discussion of the treatment of the work made for hire doctrine as it relates to teacher-created works, beginning with the doctrine's creation in the 1909 Copyright Act, its modification by the Copyright Act of 1976, and its current treatment today. Weaved throughout this history of the doctrine is a discussion about the so-called "teacher exception." This comment also discusses the views of three scholars, Russ VerSteeg, Nathanial S. Strauss, and Ashley Packard, who have each commented on the existence of the teacher exception. Their articles were published over several years and their arguments strengthen the overarching theme of this article. That is, the teacher exception cannot be relied on, and, based on what seems to be a trend of ending or restricting collective bargaining of public employees, teachers must rely on other options to maintain copyright ownership of their works. The final section discusses some of those options.

1. STATE OF THE LAW

   The work made for hire doctrine has undergone several changes since its enactment. These changes have included not only explicit changes to the language of the doctrine in the Copyright Act, but also implicated the way courts have applied the doctrine. Despite these changes, questions still arise over who owns particular works created by employees. When such employees are teachers, the questions become even more complicated in light of the so- called "teacher exception." To answer some of these questions, a look into the history of the work made for hire doctrine is necessary.

   1. History of the Treatment of Intellectual Property Created by Teachers

      The work made for hire doctrine, which now asserts that an employer will assume copyright ownership over works created by an employee during the scope of his employment and over particular works that were specially commissioned, (4) found its birth in the Copyright Act of 1909 (the 1909 Act). (5) However, at that time, the 1909 Act only commented that "author" "shall include an employer in the case of works made for hire" and did not define employees or what qualified as work made for hire. (6) During this time, a principle eventually referred to as the "teacher exception" (7) developed, which carved out an exception to the general work made for hire principle for teacher-created works. It is believed the teacher exception arose out of the cases (8) of Sherrill v. Grieves (9) and Williams v. Weisser. (10) Williams, in particular, "became the established common law for all intents and purposes." (11) In these two cases, the courts found Sherrill, a military instructor, and Williams, a college professor, and not their employers, owned the copyright to the lectures they created because of the teacher exception. (12)

      Since Congress' passage of the 1976 Act, it remains under debate whether the teacher exception lives on, particularly with reference to K-12 teachers. The 1976 Act codified the works made for hire doctrine in 17 U. S. C. [section] 201(b), which states, "the employer or other person for whom the work was prepared is considered the author for purposes of this title, and, unless the parties have expressly agreed otherwise in a written instrument signed by them, owns all of the rights comprised in the copyright." (13) The codification of the doctrine did not mention the teacher exception (14) and many commentators are very skeptical of its continued existence.

      There is some case law supporting the existence of the exception. Hays v. Sony Corp. of America (15) is frequently cited as the prominent authority endorsing the continued existence of the "teacher exception." In Hays, two high school business course teachers created a manual to instruct students on how to use the school's word processors. (16) The school employer gave the manual to Sony and asked Sony to modify it to make it compatible with the Sony word processors the school had purchased from Sony. (17) Sony proceeded and created a manual almost identical to the original teacher-created manual. (18) The teachers, in turn, sued for copyright infringement. (19) While the Seventh Circuit ultimately affirmed the trial court's decision to dismiss the teacher's complaint for failure to state a claim, Judge Posner discussed at length the court's support of continuing the existence of the teacher exception. (20) He emphasized, "[t]he reasons for a presumption against finding academic writings to be a work made for hire are as forceful today as they ever were" (21) and that if the court was "forced to decide the issue, [it would] conclude that the exception had survived the enactment of the 1976 Act." (22)

   2. Commentators Take on the Existence of the Teacher Exception

      Despite the Hays precedent, commentators continue to debate whether the teacher exception continues to exist. This section discusses three scholarly articles, (23) spanning over a period of about twenty years, which vary in opinion about the exception's existence, and, as a result, strengthen the argument of this comment that teachers should not rely on the exception.

      Some commentators, such as Russ VerSteeg, find the continued existence of the teacher exception to be an "open question." (24) In his 1990 article, VerSteeg emphasizes that Judge Posner's dicta in Hays is a "valuable tool for a teacher claiming ownership under the 'teacher exception.'" (25) However, VerSteeg cautions "it would be unwise to interpret the Hays dicta to mean that the copyright in and to all educational materials created by teachers should belong to those teachers." (26) In the end, VerSteeg's main recommendation is to create a right of "teacher inception," whereby in a teacher's contract, a teacher and his employer would enter into a "license and accompanying grant," which equates to a "shop right" for teacher-created works. (27) VerSteeg suggests this agreement could be accomplished through a collective bargaining agreement. (28) Though reasonable, as will be discussed in Part III, with the decline of collective bargaining since VerSteeg's 1990 article and the unlikelihood that teachers have individual knowledge that such agreements are wise, VerSteeg's solution may need a second glance.

      Nathanial S. Strauss is one commentator (29) who suggests in part of his 2011 article that the exception may have survived the 1976 Act's enactment. (30) To support his suggestion, he cites to federal decisions that have, arguably, accepted the teacher exception. (31) One such decision is Shaul v. Cherry Valley-Springfield Central School District. (32) In Shaul, the Second Circuit held a school employer could assert ownership over materials including "tests, quizzes, and homework problems" created by a high school teacher who had since been suspended. (33) The Second Circuit did not accept the teacher's argument that he owned the materials under the "academic" exception, the alternative name for the teacher exception, (34) but as Strauss notes, "neither did the court reject it in its entirety." (35) Instead, Strauss emphasizes the Second Circuit articulated that teaching materials prepared by high school teachers differed from published articles written by university professors in that materials not explicitly prepared for publication did not fall within "academic tradition," a notion highly protected by court. (36) In doing so, Strauss argues, the Second Circuit did...