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Overview of Intellectual Property

NTELLECTUAL PROPERTY REFERS to the intangible items that typi-

cally produce or create products, processes, expressions, marks, or nonpub-

lic information. Derived from the U.S. Constitution, "intellectual property

law provides a personal property interest in work of the mind" (O'Connor,

1991, p. 598). Two prevailing justifications support intellectual property:

(1) a utilitarian bargain between the creator and society in which the former

is granted a limited monopoly in return for disclosure and circulation of the

intellectual work and (2) a Lockean justification in which property rights

inhere to deserving creators entitled to the fruits of their labor (Munzer, 1990;

Ostergard, 1998). This monograph addresses these two justifications from a

framework that contextualizes the discussion around the role of the economic,

political, and social forces that contribute to intellectual property policies and practices in the higher education community, and, more directly, this mono-

graph examines college and university intellectual property policies and prac-

tices that are largely shaped from existing legal parameters, technological

advancements, and competing interests.

Factoring these multiple considerations, intellectual property rights involve

trade-offs in public policy. Specifically, they are intended to achieve an appro-

priate balance between incentives to innovate and diffusion of new knowl-

edge, such that the economic costs of granting the right do not outweigh

the benefits of increased innovation (Wallerstein, Mogee, and Schoen, 1993). The

argument most commonly advanced for intellectual property rights is

that absent the laws, free-riders will consume the intellectual works without

fair contribution for the costs associated with the works. Consequently, the

Intellectual Property in the Information Age I

free-riders contribute to a market failure. Viewed another way, without intel-

lectual property rights, markets fail to function properly because society fails to provide sufficient incentives to induce socially optimal amounts of investment in public goods in the form of new scientific and technological knowledge

(David, 1993).

To explore these ideas, this monograph examines in great detail two kinds of intellectual property: copyrights and patents. Though we recognize the sig-

nificance of trademarks and trade secrets, we focus primarily on copyrights and patents in this monograph because they represent the most significant

issues in higher education in the information age. Emphasizing these forms

of intellectual property, this monograph frames the rights derived from legal parameters pertaining to intellectual property, technological advancements,

and competing interests from various actors involved. Naturally, we use many

legal concepts in this monograph, but we minimize legal jargon and attempt to make this information accessible to the lay, albeit educated, audience. But

two legal definitions are useful here. Infringement means the violation of a legally recognized right and generally is used to refer to violations of most

forms of intellectual property. Piracy is a form of infringement and typically refers to the unauthorized copying of copyrighted works (Wallerstein, Mogee,

and Schoen, 1993). Given these definitions, we recognize that the role of intel- lectual property policies and practices in higher education institutions includes

finding ways to balance multiple goals: to create incentives for innovation,

protect interests in inventions and discoveries, and legally comply with appro- priate uses of protected works (Munzer, 1990; Ostergard, 1998). Keeping these

goals in mind, we present a framework to examine intellectual property poli-

cies and practices in higher education institutions.

The Framework Economic, political, and social forces largely shape intellectual property

policies and practices at colleges and universities, much like other policies and

practices in higher education (see, e.g., Altbach, Berdahl, and Gumport, 2005;

Ficsor, 2006). Although each force by itself plays a role in shaping colleges' and

universities' policies and practices toward intellectual property, collectively these

forces represent the larger environmental conditions that affect the legal para- meters, technological advancements, and competing interests that shape the policies and practices surrounding treatment of these intangible creations and

discoveries in higher education. To elaborate further on the forces and prevail- ing factors that contribute to the intellectual property policies and practices at

colleges and universities, we now discuss each component of our framework.

Forces Intellectual property has become essential to higher education because of eco-

nomic, political, and social forces making knowledge and research serve as cen- tral commodities of the "information age." Because ideas and expressions

translate into commodities, the environmental pressure over the treatment of intellectual property at colleges and universities changed. Accordingly, we briefly

explain how the information age altered the treatment of intellectual property along with the corresponding policies and practices in higher education.

Economic Forces. Current economic trends make consideration of intellec-

tual property imperative to the broader understanding of the forces that shape

the treatment of creations and discoveries derived in and from institutions of higher education. The increasing importance of intellectual property is largely

attributable to the shift that moved the United States and other nation-states from an industrial society to an "information society." "Information society"

refers to economies in which control over knowledge has replaced control over matter as the ultimate source of economic power (May, 2000; see also

Benjamin, 2003).

Intellectual property is essential to economies based on information or knowledge (Hettinger, 1989). In the information age, ideas and expressions

become commodities, and universities must contend with the legal parameters, the various competing interests associated with the intellectual commodities, and the technological advancements that rapidly alter the policies and practices

surrounding treatment of these intangible creations and discoveries. Today the economic health of nations and corporations is determined

largely by their ability to develop, commercialize, and exploit scientific and

technological innovations; intellectual property rights are the legal means by

Intellectual Property in the Information Age 3

which one can protect one's investment in innovation (Wallerstein, Mogee,

and Schoen, 1993). As organizations use knowledge as the catalyst to increase

the values of their products and services, they seek to capture such knowledge

for their exclusive control. Knowledge, once feeding the productive processes

and services of these corporations, now is itself deemed property. Once knowl-

edge is deemed property, intellectual property laws become central to the econ-

omy (May, 2000). In other words, intellectual property is the legal form of the

information age (Boyle, 1997).

Not surprisingly, the complexities of dealing with intellectual property in the

information age have become more pressing in higher education. Indeed, in

2004 legal experts identified intellectual property as one of the most pressing

issues facing higher education ("Pressing Legal Issues," 2004). Simply put, with

the shift from an industrial to an information economy, higher education now

operates under a different context, one in which colleges and universities regu-

larly contend with numerous legal questions about the nature and scope of intel-

lectual property (see, for example, Crews, 1993; Dutton, 2002; Katz, 1998).

Political Forces. At the same time, laws and policies reward innovation. These

political structures form the national priorities that stimulate innovation and

define intellectual property rights (Mowery, Nelson, Sampat, and Ziedonis,

2001; Nelson, 2001). In fact, the United States maintains a national system

of innovation that places colleges and universities at the forefront as partici-

pants that harvest discoveries and creations, even with (or perhaps because of)

federal research dollars. For instance, in 1980 the federal government uni-

formly permitted colleges and universities to seek and own patents for prod-

ucts or processes invented with federal research dollars. This shift in policy

redirected intellectual property policies and practices in higher education, and

that movement persists today.

Pursuant to the political agenda of the national system of innovation, this

information economy has and continues to transform the role of universities;

the most decisive change has been technology transfer from the university to

industry (Miyoshi, 2000). "Technology transfer" is a term that represents the

activities universities engage in to move their research to the market. Slaughter

and Leslie (1997) argue that postindustrial, transnational capitalism uses

higher education no longer for the primary purpose of training workers, as

technology makes industrial workers less necessary, and that the political-

economic environment has emphasized more research and development activ- ities. Consequently, intellectual property has become extremely important to

universities because the intellectual property of universities plays a crucial role

in political-economic exchanges, and potential revenues generated from intel-

lectual property allow universities to rely less on government support.1 Uni- versities have thus become active players in the intellectual property scene,

seemingly transforming themselves from knowledge producers for the public

good into intellectual property producers for themselves and for-profit firms (Baez, 2005). These events represent the political forces.

Furthermore, given the economic forces making intellectual property imper-

ative to economic wealth, universities become implicated in controversies specif- ically addressed to the United States as a nation-state. For example, international

protection of intellectual property rights is premised on a U.S. notion of prop-

erty ownership and legal entitlements. The protection of intellectual property, as Aoki (1998) pointed out, is replicated on a global scale when U.S. law is taken

as a model, and to the extent international agreements provide rights to infor-

mation, they undermine traditional territorial and political notions of sovereignty.

As these international policies grow in international scale, they, by their presence,

impact the intellectual property policies and practices of U.S.-based colleges and

universities, particularly those institutions with a transnational presence.

Social Forces. Intellectual property rights, particularly during the informa-

tion age, purportedly address what is usually understood as the "public good

problem." That is, given that the cost of creation is high but the cost of repro-

duction is low and that once the work is created it may be easily reproduced

without depleting the original creation, intellectual property protection is nec-

essary to ensure that the creator has an economic incentive to create works

that, at least ultimately, will benefit the public (Litman, 1990). Consequently,

because technology makes creations initially expensive but expansive and reproduction easy at a substantially lower cost, the legal history of intellectual

properties in the United States has been one of access and use, balanced with

incentives and rewards.

Intellectual Property in the Information Age 5

Stated differently, in the United States, the government grants intellectual

property rights primarily to promote the public interest, such as creating a bal-

ance between the economic benefits to the inventor and the interests of soci-

ety at large (Wallerstein, Mogee, and Schoen, 1993). To promote the welfare

of the public, intellectual property rights establish an incentive structure

through laws and policies that reward the holder of the intellectual property.

This protection is critical for institutions, including higher education institu-

tions, as the discoveries and creations contribute to the public good in the

form of solutions to societal problems.

Intellectual property rights are deemed to protect investments in innova- tion by granting the owner a temporary, limited monopoly on the use of the

innovation. Because the owner can keep the economic benefits of the innova-

tion, being able to keep the economic rewards serves as further incentive for

others to innovate, further benefiting the public through more creations and

discoveries in the market. Of course, intellectual property rights also restrict

the public from using the innovation without permission, and they prevent

others from developing and improving on innovations, thus limiting the ben-

efits to the public (Wallerstein, Mogee, and Schoen, 1993). Given these con-

siderations, the social forces shape the extent to which intellectual property

policies and practices at colleges and universities serve the public good.

Direct Factors While the social, political, and economic forces change the role of intellectual

property in colleges and universities, these forces also shape, and are shaped

by, three primary factors that directly contribute to intellectual property poli-

cies and practices at colleges and universities: the legal parameters, new tech-

nologies, and competing interests (see, for example, Jobe, 2006; Levine and

Sun, 2003; Monaghan, 2006; Powell and Owen-Smith, 1998).

Legal Parameters. The laws pertaining to intellectual property rights serve as

the starting point for policies and practices in higher education regarding the

rights governing creations and discoveries. Although intellectual property laws

themselves serve as the most obvious example, laws governing contracts, state

employment relations, sovereign immunity, and international treaties at times

also establish the parameters for intellectual property policies and practices at

colleges and universities. For example, tinder copyright law, the default rule indicates that the author holds the ownership rights to expressions; however,

contract law permits the author to negotiate the ownership rights with another

party. As such, the legal parameters extend beyond intellectual property laws

and touch on other laws that contribute to the language of institutions' intel-

lectual property policies and practices.

Technological Advancements. Technological advancements contribute to the

language of intellectual property policies and practices at colleges and univer-

sities. For example, current electronic technologies enable delivery of courses

online. Online courses represent expressions of content that qualify today for

intellectual property protection, primarily because, unlike traditional courses,

they can be "fixed" onto a tangible form as required by copyright laws. Con-

sequently, because of technological advances, teaching online qualifies for copyright protection and affects intellectual property policies and practices in

institutions of higher education (Levine and Sun, 2003; Salomon, 1999).

Competing Interests. Because intellectual property law establishes ownership

and control over the works, competing interests from various individuals and

groups also contribute to the crafting of intellectual property policies and prac-

tices in higher education (Bobbitt, 2006; Daniel and Pauken, 1999). For exam-

ple, when ownership over online courses emerged as a central question in higher

education, the interests of institutions, students, and faculty emerged (Levine

and Sun, 2003). As competing interests came to light, colleges and universities

responded with intellectual property policies and practices (see Figure 1).

Impact on Core Academic Functions As legal parameters, new technologies, and competing interests contribute to

the formation of intellectual property policies and practices at colleges and

universities, we recognize the impacts of the policies and practices in the core

academic functions of colleges and universities, particularly in terms of teach-

ing and research activities. As we noted earlier, online courses qualify for

Intellectual Property in the Information Age 7

FIGURE 1 Forces and Factors that Contribute to Intellectual Property Policies and Practices in Institutions of Higher Education

problematically, into the instructional function of higher education, colleges

and universities have been faced with concerns about ownership rights of fac- ulty handbooks or explicit agreements between parties, with rights and priv-

ileges associated with modifying online courses (that is, derivative works), with

approaches to using existing copyrightable works through online courses, and

with other special arrangements such as unbundling rights when multiple

rights are associated with the creation of one course (see, for example, Daniel

and Pauken, 1999; Kelley, Bonner, McMichael, and Pomea, 2002).

Like teaching, intellectual property also affects research. For example, once

discoveries of DNA sequences qualified as patentable knowledge, a slew of

possible patentable research associated with living matter became commodi-

ties in the information age (see, for example, Blumenstyk, 2005). As such,

today patent law raises questions about what is patentable and thus shapes the

course of research in more or less explicit ways. Again, competing interests in

these "properties" interfere in the traditional functions of institutions of higher

education in ways previously unirnagined.

Colleges and universities grapple with very complex legal questions requir-

ing them to identify and address what is intellectual property, who can own

the products of knowledge, and how to manage the various legal, technical,

and competing interests associated with intellectual property We consider sev-

eral complex questions in this monograph: If a professor creates a database of

research findings, who holds the proprietary rights to those data? If academic

researchers gather data on a patient's DNA coding, can they patent that knowl-

edge? If professors design an online course, who holds the copyright? When

students download pirated music and movies from peer-to-peer networks from

a college server, can the college be held liable? If an accounting professor

records her lectures and sells the digital recordings to a professional develop-

ment training company, will the college win a suit over ownership rights

against the company and the professor? If a student takes copious notes and

sells them to a company that distributes course notes and if the professor in

that course sues the company for copyright infringement, will she prevail?

Intellectual property policies and practices in higher education certainly

affect the academic core. Universities can dictate the terms of intellectual prop-

erty rights for faculty and students (through employment contracts and poli-

cies related to academic programs). The question of ownership of patents is

generally moot, as universities have claimed such ownership for some time

through state legislation and preemployment contracts. Furthermore, indi-

viduals who have contested university ownership usually have not prevailed

(Baez and Slaughter, 2001). Universities have not pursued copyrights for tra-

ditional academic work such as publications and course materials (but today,

Intellectual Property in the Information Age 9

new technologies create controversy over ownership of online course materi- als). Even with publications, the question seems generally moot as well, as fac- ulty members usually assign their rights to a publisher, which then owns the copyrighted materials. The issue as to whether anyone should own ideas, how- ever, raises philosophical concerns, such as whether ideas or expressions of ideas should be owned. This question has significant political implications as well. All ownership necessarily privatizes ideas and makes them inaccessible to oth- ers. That postsecondary institutions and their faculty, which traditionally have served the public function of creating and disseminating knowledge as well as preparing citizens for participation in civic life, can own ideas, make a profit from those ideas, and, more significantly, withhold public access to those ideas, leads to questioning their public functions and the role they play in a democ- ratic society (McSherry, 2001).

This monograph explores these overarching concerns and the correspond- ing issues along with others through an examination of the laws (as primary sources) and scholarly and research literature. The monograph frames its analysis along two dimensions: (1) the economic, political, and social forces that shape and are shaped by (2) more direct, prevailing factors of legal parameters, new technologies, and competing interests that contribute to the intellectual prop- erty policies and practices at colleges and universities. This framework guides

the discussion of the intellectual property in the information age. Thus, we offer an overview of the monograph to illustrate the development of key intellectual property concepts and its application of the framework.

Organization of the Monograph This chapter presents a framework for understanding the role of intellectual property in the field of higher education. In particular, this framework accounts for the economic, political, and social factors, which set the stage for the roles of law, technology, and competing interests. Based on the literature and legal analyses, these dimensions represent identifiable yet also interrelated components to account for intellectual property subject matter, the rationale for its protection, and, in particular, how the higher education community tackles the issues of these property rights during this information age. To structure

our overarching framework, this chapter presents the arguments and evidence

of the current economic, political, and social factors that contribute to the

growing importance of knowledge and information and the corresponding

value on intellectual property. It also addresses the role of laws as legal param-

eters that guide current practices and policies in higher education. In addi- tion, it reveals the nature and impact of technological advancements onto our

intellectual property practices and policies in higher education. Equally impor-

tant, it raises questions about various competing interests from parties directly

and indirectly connected with intellectual property works. In other words, it

offers the framework that structures this monograph.

Following the model, the next chapter presents the general concepts of fed-

eral copyright law, including copyright subject matter, duration of the protec-

tion, rights granted under the protection, and ownership determinations. This

coverage raises several questions: Who owns the copyrighted works of faculty

publications and course lectures as well as the works of students and staff?. How

does the Internet change conceptions of copyrighted works in higher educa-

tion? In what ways might higher education reenvision copyright protections to

unbundle the works similar to musical works, which contain rights associated with musical composition, lyrics, performance, and sound recordings?

"Copyright and Fair Use" lays out the concepts of fair use in terms of laws

and guidelines established with industries that control many copyrighted

works. Our discussion asks what qualifies as fair use, emphasizing the differ-

ences among books, music, television broadcasts, and video recordings; how

technologies such as peer-to-peer software, photocopy machines, and learn-

ing management systems (for example, Blackboard) altered concepts of fair

use; and how various groups have expressed their interests in protecting or

gaining access to copyrighted works through fair use and how institutions of

higher education have responded.

"The Law of Patents" introduces basic concepts about federal patent law

as applied to higher education. In particular, the chapter describes types of

patents, subject matter of patents, filing requirements, and the ownership and

rights associated with federal patent protections. The chapter raises numerous

questions: What qualifies for patent protections? How do the nature and scope

of patent coverage change with emerging discoveries, particularly in the

Intellectual Property in the Information Age I1I

biotechnology field? What struggles exist between and among groups over use of patentable materials for research, instruction, and other academic purposes?

"Patents and Higher Education's Entry into the Market" traces the devel- opment of patent activities in higher education and discusses the issues sur- rounding the debate about university patents. The chapter presents questions

about what laws and federal policies contributed to university patent activi-

ties; how technological advancements such as nanotechnology spurred on new inventions and discoveries and altered the landscape for colleges and univer-

sities; and how inventors and universities balanced questions about access,

control, and attribution of the patented works.

Building on earlier chapters, "Shared and Related Concerns About Intellec-

tual Property" describes additional legal topics covering shared and related con- cerns with copyright and patent laws. Specifically, it addresses topics of

trademarks, trade secrets, international treaties governing intellectual property,

and sovereign immunity. The chapter raises questions: With the growing pres- ence of transnational universities, how do universities respond to the international

treaties pertaining to intellectual property in light of their emphases on trade? How has the ease of mimicking college logos and identifying unauthorized users

of logos, particularly with new electronic technologies, altered enforcement poli- cies and practices in higher education? How do expressions of universities' and

corporate partners' interests with preliminary discoveries and confidential for- mulas affect intellectual property policies at colleges and universities?

Finally, the conclusion revisits our framework that identifies the forces and direct factors contributing to the language of intellectual property policies

and practices in institutions of higher education. Drawing on previous

discussions from the preceding five chapters, the chapter illustrates how the economic, political, and social forces shape the treatment of intellectual

property as well as the policies and practices at colleges and universities. In

addition, we further explain the relationship among legal parameters, which include laws specifically about intellectual property as well as laws related to

intellectual property, technological advancements, and competing interests as

direct factors that contribute to intellectual property policies and practices in

institutions of higher education.

The Law of Copyrights

N THEIR MEDIEVAL ORIGINS, copyrights had nothing to do with

the encouragement of intellectual creativity or originality of expression. The

rights to published works remained legally unprotected until the fifteenth cen-

tury, when the printing press made the rewards for publishing or plagiarism

far greater than ever before. The new technology of printing transformed the

copying business by substantially increasing the disparity between the cost of

the first copy and the cost of subsequent copies. In other words, the econom-

ics of publication shaped copyright law more than the economics of author-

ship (David, 1993).

The first known copyrights appeared in Renaissance Italy, which granted

monopolies in the form of exclusive licenses to print or sell books for a par-

ticular term, prohibitions of the importation of books abroad, and patents for

improvement of printing and typography. The rights of the author were dis-

regarded because much of the demand was for already existing books, like the

Bible, which was in the public domain and whose authors (along with several

generations of heirs) were likely long dead and not inquiring about rights

(David, 1993).

The modern right to the author's copyright in the United States occurred

in the eighteenth century, which limited the exclusive right to printing new

materials to fourteen years and gave holders of copyrights for existing books the

sole right to print for twenty-one years. Specifically, in the United States

the constitutional basis for intellectual property derives from Article I, §8,

cl. 8: "Congress shall have Power ... to promote the progress of science and

useful arts, by securing for limited times to authors and inventors the exclusive

Intellectual Property in the Information Age 13

right to their respective writings and discoveries." As an incentive to foster original, creative works, the law grants exclusivity over the expression. In prac- tice the law protects the owner of the right from such events as unauthorized

use, dissemination, and alteration of one's work. At the most basic level, the federal copyright law grants authors a limited, exclusive right to their writings. As Justice O'Connor acknowledged in the majority opinion for Harper & Row Publishers, Inc. v. Nation Enterprises (1985), "[t] he Framers intended copyright itself to be the engine of free expression. By establishing a marketable right to the use of one's expression, copyright supplies the economic incentive to cre- ate and [to] disseminate ideas" (1985, p. 558). Consequently, the provisions under the law provide for exclusivity over a period of time as an incentive to foster creative works.

Copyright Law Framed around the economic, political, and social forces, incentives furthered the goals of intellectual property creations. Additionally, other more direct factors-more specifically, legal parameters, competing interests from various actors, and technological advancements-present new creations or alter the way creations are treated at colleges and universities. Accordingly, in light of the legal parameters surrounding creative works, technological advancements, and various actors (individuals and groups) vying for property interests, this chapter responds to these overarching questions regarding copyright in higher education: What are original expressions? Who owns them, if one even knows? What rights are derived from this ownership and others' use? In the form of copyright policies and practices, how has the higher education community responded to these questions of ownership and usage of original expressions?

Copyright Qualifications Under the federal act, a copyrightable item is an original expression that is fixed in some tangible format. The general language of the statute states in rel- evant part that copyrightable products are the "original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated,

either directly or with the aid of a machine or device" (17 U.S.C. §102(a)). Viewed another way, the determination of whether an expression is copy- rightable has two major components: originality and fixation of the work.

Originality is a fundamental element in copyright law. In fact, the U.S.

Supreme Court stated in Feist Publications, inc. v. Rural Telephone Service Co., Inc. (1991) that "originality remains the sine qua non of copyright" (p. 348).

Consequently, without originality, copyright would not be codified. For a product to qualify as an original expression, it must meet the requirements of

independence and creativity. Independence refers to the free thought process

of the product. That is, the expression cannot be copied from another source.

Likewise, the creativity standard requires that the expression be something dif-

ferent and not imitated, but it does not need to be novel or unique. The cre-

ativity requirement maintains a very low threshold; it must simply have some

small amount of creativity. For example, in a case filed by the University of

Minnesota to assert its rights over statements used in a psychometric instru-

ment (that is, survey items), the court determined that the survey items met

the originality standard and constituted copyrightable matter (Applied inno-

vations, Inc. v. Regents of the University of Minnesota (1989)). Put simply, orig-

inality is a basic component for copyrightable works, and as the Court in Feist

(1991) indicated, "Originality does not signify novelty; a work may be origi-

nal even though it closely resembles other works so long as the similarity is

fortuitous, not the result of copying" (p. 345).

Besides the originality component, the expression must be fixed through

some tangible form of expression. 2 According to the federal copyright law, fix- ation of an expression occurs "when its embodiment in a copy or phonorecord,

by or under the authority of the author, is sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period

of more than transitory duration" (17 U.S.C. §101). For instance, as the Court acknowledged in U.S. v. Board of Trustees of the University ofAlabama (1997), a

doctoral student's printed dissertation, study abstract, and drafts of the disser-

tation met the requirements of having originally authored works, which are

fixed on tangible media of expression. Additionally, courts have recognized

other fixed forms of original work, including video game images (Williams Elec-

tronics, Inc. v. Artic Intern., Inc. (1,982)) and broadcasts that are simultaneously

Intellectual Property in the Information Age 15

recorded (Baltimore Orioles, Inc. v. Major League Baseball Players Association

(1986)).

In sum, to qualify for copyright, the general principles require the works

to meet the standards of originality and fixation on any tangible medium of

expression. Furthermore, copyright covers the expressions, but they do not protect the ideas themselves. For example, a publication is copyrightable, but

the ideas about a publication concept do not qualify for copyright protection. In other words, copyright protects the actual works themselves, not the ideas.

Copyrightable works come in multiple forms such as symbols, words, or pic-

tures. Initially, when the federal copyright law was enacted in 1790, copy- rightable products were limited to maps, charts, and books. As new

technologies emerged along with the shift in economic, political, and social priorities, various actors placed pressure on Congress to protect other forms

of expression like motion picture and sound recording studios. Today, the

(1) literary works; (2) musical works, including any accompanying words; (3)

dramatic works, including any accompanying music; (4) pantomimes and

choreographic works; (5) pictorial, graphic, and sculptural works; (6) motion

pictures and other audiovisual works; (7) sound recordings; and (8) architec-

tural works (17 U.S.C. §101 (2008)). Based on the copyright subject matter

category, different rights and privileges attach, such as the forms that consti-

tute an expression, different uses (or exclusive rights) associated with each cat- egory, legal anomalies framed around artistic and societal benefits, and the

length of the copyright protection. Thus, the type of copyright affects

the nature and scope of the protection.

As a general rule, a copyrighted work is an expression that falls into one of

the eight categories. In terms of volume, the most common form of copy-

rightable items produced in higher education falls under "literary works."

According to the federal statute, literary works "are works, other than audiovi-

sual works, expressed in words, numbers, or other verbal or numerical symbols

or indicia, regardless of the nature of the material objects" (17 U.S.C. §101 (2008)). Literary works may be "books, periodicals, manuscripts, phonorecords,

film, tapes, disks, or cards, in which they are embodied" (17 U.S.C. §101 (2008)). In addition, the courts declared that literary works may be represented

as journals (Salinger v. Random House, Inc. (1987); Wright v. Warner Books, Inc.

(1991 )), letters ( Wright v. Warner Books, Inc. (1991)), a song's lyrics (Zomba

Enterprises, Inc. v. Panorama Records, Inc. (2007)), brochures (Edmark Indus-

tries v. South Asia International (2000)), computer programs (Apple Computer,

Inc. v. Franklin Computer Corp. (1983)), exam questions (National Conference

of Bar Examiners v. Multi Legal Studies, Inc. (1980, 1982)), greeting cards (Roth

Greeting Cards v. United Card Company, (1970)), and survey items used to con-

struct a test or measures such as a psychometric instrument (Applied Innova-

tions, Inc. v. Regents of the University ofMinnesota (1989)).

Although literary works represent the largest copyrightable category in

higher education, technology has the capacity to transform the formats of

existing copyrightable works to new and additional copyrightable formats

(Arewa, 2006; Townsend, 2003). For instance, written lectures, articles, dis-

sertations, play manuscripts, and lyrics may appear as expressions in the forms

of podcast lectures, online articles, digital dissertations, videocast plays, and

digitally recorded songs. That transformation to a different format (for exam- ple, podcast lectures, online articles, digital dissertations, videocast plays, and

digitally recorded songs) potentially unbundles the final works into multiple

copyrights for various interested parties. To understand this concept of

unbundling of copyright protections from a final work, one might examine

the copyrights associated with musical works for illustrative purposes.

Musical works may be unbundled just like online classes, videocast plays,

and online articles. Generally speaking, "musical works" refers to the melody,

harmony, rhythm, and structure of the music, which may include lyrics or

accompanying words. In practice, musical works appear in the form of songs,

orchestral scores, operas, and even advertising jingles. The treatment of musical

works and the related components, however, is not straightforward, because

a musical performance potentially involves numerous interested parties with

different roles. Accordingly, the law separates the various interests associated

with copyrighted music. According to Staggers v. RealAuthentic Sound (1999),

"Copyright protection extends to two distinct aspects of music: (1) the musical

composition, which is itself usually composed of two distinct aspects-music

Intellectual Property in the Information Age 17

and lyrics; and (2) the physical embodiment of a particular performance of the musical composition, usually in the form of a master recording" (p. 61).

A brief discussion about copyright protection associated with a song illus-

trates these various rights. Under copyright law, the songwriter may copyright

the lyrics, which are categorized as literary works. The lyrics, even without any

accompanying music, retain copyright protection. In addition, the musical

expression, which contains four components (melody, harmony, rhythm, and structure), qualifies for copyright protection under musical works, and the

musical expression may also include the words (Autry, 2002). Furthermore,

the recording of the musical performance, whether with or without words, typically occurs on a phonorecord such as a CD, which constitutes a sound recording and is covered under a separate category of the copyright law (see

below). In sum, similar to works created with new technologies, copyright over

musical works contains multiple rights that may be unbundled.

Because multiple actors (for example, artists, musicians, recording studios,

record producers, and distributors) participate in the process of musical works

from the creative act to the technical responsibilities, the law delineates the

different rights associated with the various works (for example, literary works, musical works, and sound recordings) that contribute to the overall output to

the end user. This concept of unbundling rights for various actors could be

applied to higher education (Kelley, Bonner, McMichael, and Pomea, 2002;

see also Carnevale and Young, 1999). For example, to move a lecture into an online interactive course typically involves multiple parties such as the instruc-

tor as composer and performer, the course designer and other technology sup-

port staff as producers, and the university as recording studio and distributor.

Although the current legal arrangements do follow this structure of

unbundling rights, the potential for such negotiated rights is available under

the law, and these enumerated categories play a significant role in enabling an

arrangement to unbundle legal rights such as contracts for copyrighting aca-

demic services.

The categories of copyrightable subject matter also point out the legal

anomalies. Although much of the copyright law balances economic, political, and social conditions, selected portions of the law are framed solely around

artistic and societal benefits, and their statutory language responds to the moral

rights connected with the works. For example, to protect the interests of artists

and society from loss of limited pieces of art, the Visual Artists Rights Act adds

additional protection to authors of visual arts (17 U.S.C. §106A (2008)). A visual art covers a single "still photographic image produced for exhibition

purposes only"; a painting, drawing, print, or sculpture; or a limited edition

of those items with two hundred or fewer copies that are consecutively num-

bered and contain the author's signature to properly attribute the work (17

U.S.C. § 101). Under this law, authors of visual arts have a right of attribution

to the work. In other words, the author is given proper credit for the work

regardless of whether the visual art is sold or passed on to another person.

In addition, the author of the visual art may disclaim authorship to the

work if it is distorted, mutilated, or modified in a manner that "would be prej-

udicial to his or her honor or reputation" (17 U.S.C. §106A(a)(2) (2008)).

Moreover, the law extends rights to the visual art's continuation. Specifically, the

author can prevent intentional distortion, mutilation, or modification of

the work as well as intentional or gross negligence to works of recognized

stature. 3 Violation of any of these provisions constitutes copyright infringe-

ment. Consequently, because the nature of the rights (that is, protecting the

integrity of the works, attribution to the author, and the continuation of visual

art of a recognized stature) is associated with the author of the work, the law

attaches these rights only to the author. As a result, the rights are not trans-

ferable, although the author can waive rights established under the Visual

Artists Rights Act. In short, distinguishable from other copyrightable subject

matter, which provides exclusive rights to the copyright owner or holder, works

of visual art attach exclusive rights to the author of the work. Practically speak-

ing, if a visual art qualifies under the Visual Artists Rights Act, its use may be

so restricted that it cannot be displayed for an online class-even if the artist

is a professor at the institution-without expressed authorization of the artist.

Similarly, under the statutory language, digital images likely do not qualify for

the special rights contained in the Visual Artists Rights Act. Simply put, the

law protects the artist and the artwork, but it does not adequately afford edu-

cational access to the art.

Finally, the copyrightable subject matter determines the length of the copy-

right protection. In fact, besides the subject matter consideration, the term

Intellectual Property in the Information Age 19

period of copyright protection also depends on when the work became

published (if at all) and by whom (see Hirtle, 2008). As a general rule,

works published after 1977 with some type of notice maintain federal

is a corporation, the copyright protection lasts for ninety-five years from

publication. The complication associated with the calculation of the copyright

protection term reflects the multiple categories of work and the various itera-

tions of the law, which are products of the economic, political, and social forces

driven by special interests (for example, the Sonny Bono Term Extension Act).

Rights of Copyright Protection

Assuming qualification of copyrightable subject matter, the copyright holder

retains a set of protections to the work's exclusive use in terms of controls over

reproduction, adaptation, distribution, performance, and display rights. In

other words, the copyright holder may freely duplicate the work, modify the work such as converting its format or deleting portions, disseminate copies of

the work, perform the work (that is, "recite, render, play, dance, or act"

through some mechanism such as video recording), or display the work (for example, in the form of an image or artwork). In addition, copyright holders

of sound recordings may perform the work for digital audio transmission (17

U.S.C. §106). The next chapter discusses the fair use of copyrighted works

along with the conditions and limitations connected with those uses.

Copyrights and Faculty, Students, and Staff As we established in the previous chapter, the information age advanced the

value of intellectual property as a critical commodity in society. Given that

focus, the ownership of intellectual property emerges to the forefront. Accord- ing to the federal copyright law, the legal presumption attaches ownership to

the author unless the work is transferred to another party or the work was con-

ducted under some contractual or employment arrangement (17 U.S.C.

§§ 101, 201). The latter exception (that is, whether the work was conducted under some contractual or employment arrangement) represents a highly

debated and contentious issue to determine the treatment of ownership rights

of works made by faculty, students, and staff. Ultimately, the context of the

authored work becomes an important determination. To explore the signifi-

cance of context as a determinant for copyright ownership, we examine the

law as a primary source to set the legal parameters and the literature as a sec-

ondary source to explain the arguments based on both technological advance-

ments and actor-based interests over faculty scholarly and creative works,

faculty course materials (especially in light of distance education), student

works, and staff works.

Faculty Scholarship Absent some expressed agreement to the contrary, some universities and schol-

ars interpret professors' participation in research as a job function (Denicola,

2006; Simon, 1983; Wadley and Brown, 1999). Under this viewpoint, the

for hire" provision of the copyright law effectively transfers the ownership of a

work from the author to the entity that has paid for her or his services (17

U.S.C. §201 (b)). In the case of a professor's work, the most frequently asserted

argument to support the interests of the institution is that the professor is

under a work-for-hire agreement (see "Faculty Course Materials" below for a

more extensive discussion of this doctrine). According to the Copyright Act,

works made for hire occur when "the employer or other person for whom the

work was prepared is considered the author[,] unless the parties have expressly

agreed otherwise in a written instrument signed by them, [that the employer]

owns all of the rights comprised in the copyright" (17 U.S.C. §201). Stated

differently, under this logic the professor is hired to engage in scholarly

research. Therefore, the work is for the institution, and the institution holds

rights of ownership. The institution may also waive its rights to the scholar-

ship as per academic custom and permit the faculty member to keep the copy-

right. 4 Nevertheless, under the work-for-hire argument, by default the college

or university retains the rights.

Absent an expressed agreement to demonstrate a work-for-hire arrange-

ment, the legal and educational research literature overwhelmingly concludes

that copyright ownership over faculty scholarship resides with the faculty author

(see, for example, Borow, 1998; Dreyfuss, 1987; Kilby, 1995; Kulkarni, 1995;

Intellectual Property in the Information Age 21

Meyer, 1998). Two frequent arguments surface in support of the proposition that professors own the copyright to their scholarship. One argument is that the conditions of the work-made-for-hire provision are not met with profes- sors' work on research, so it does not apply to that context. Several legal com- mentators have asserted that the copyright law defaults ownership rights to the author, and because the work-made-for-hire provision is not applicable to fac- ulty, the default rule applies (Borow, 1998; Kilby, 1995; Meyer, 1998). According to these scholars, the work-made-for-hire provision requires the employer to maintain direction, control, and supervision over the works (Borow, 1998;

Kilby, 1995). They argued that although universities may require faculty to publish or participate in research, universities do not dictate, direct, control, and supervise faculty research in part because that would violate academic free- dom as well as academic norms. Furthermore, Kilby (1995) pointed out that academic scholarship contributes to the field of study, not the employing uni- versity, and so the university's role of not directing, dictating, and supervising

the research is consistent with the expectation of a noncopyright owner. Another argument takes a constitutional interpretation. The scholars with

this perspective analyzed the constitutional source for intellectual property law and indicated that the law's basis stems from a reward-incentive concept to the creator or the motivating force of the work (Borow, 1998; Dreyfuss, 1987; Kilby, 1995; Meyer, 1998). Because universities are neither the creator nor the motivating force, the intellectual property of professors' research (for exam- ple, academic papers and scholarly presentations) and creative activities (for

example, artwork or musical composition) cannot reside with the university or any other random party unless expressly transferred. According to Meyer (1998), giving the university copyright ownership, when it is neither the cre- ator nor the motivating force, would only create unjust enrichment, a legal

term used to signify an unfair benefit to another party. In sum, the literature overwhelmingly supports the proposition that fac-

ulty own and control their scholarship. Most often, writers assert one of two reasons to support this conclusion. One rationale is that faculty scholarship

does not constitute work made for hire because institutions have little input in professors' research projects that qualify for copyright protection. Further-

more, colleges and universities typically do not direct, control, and supervise

the works. Another rationale is that the institutions do not serve as the moti-

vating force for the work's creation. Therefore, the institution does not retain

ownership of faculty works. These reasons serve as viable arguments to grant

highly contested arguments over ownership to faculty works over course con-

tent, especially in terms of online courses, and as discussed later, they are

inconsistent with the practice and policies regarding the ownership of faculty's

patentable research.

Faculty Course Materials

As indicated, the literature for faculty course materials does not offer a clear

interpretation of who owns the copyright. With the increasing number of

online courses and the movement toward a more competitive market in higher

education, many recognize the potential and possibly inevitable debate sur-

rounding the intellectual property rights attached to recorded classes and other

course materials (see, for example, Bobbitt, 2006; Daniel and Pauken, 1999;

Lape, 1992; McIsaac and Rowe, 1997; Rhoades, 1998; Scott, 1998; Wadley

and Brown, 1999). In particular, this body of literature has focused primarily

on whether intellectual property in course content resides with the professor

or the institution.

Faculty Ownership of Course Content. A group of authors argue that fac-

ulty, not the institution, own course content. As the primary justification for

institutional ownership of faculty course content is premised on the copyright

law's work-made-for-hire provision, the authors who advance the perspective

of faculty owning their course content present three arguments that revolve

around the nonapplicability or exception of the work-made-for-hire doctrine.

One argument indicates that the work-made-for-hire provision in the fed-

eral law is not applicable to professors (Daniel and Pauken, 1999; Dreyfuss,

1987; Lape, 1992; Kulkarni, 1995; Seeley, 2001). These authors contend that

the nature of professors' work does not fit the elements of work made for hire.

That is, the work is not commissioned or directed, as the legal provision

intends to cover. Instead, professors engage in creative work and work inde-

pendently, and creativity and independence are what the law specifically

Intellectual Property in the Information Age 23

intends to promote. Scully (2004) pushes the point further and postulates that "the starting point for restoring the intellectual property balance for copy-

righted works of authorship between professors and universities is to recog-

nize that the work of authorship begins with teaching, to which other written

and fixed copyrightable formats are derivative, and not the other way round" (p. 265). Thus, if the institution records the instructor, that work is a deriva- tive piece to the lecture. A set of legal commentators forwards another argu-

ment that interprets the existence of an academic exception to the work-made-for-hire doctrine (Daniel and Pauken, 1999; Dreyfuss, 1987;

Holmes and Levin, 2000; Kulkarni, 1995; Kwall, 2001; Lape, 1992; Scully,

2004). As support for this exception, these commentators cite three cases that

discussed this issue. In Williams v. Weisser (1969), a UCLA professor sued a

company, Class Notes, to prevent the dissemination of his lectures and to seek monetary damages. Following common-law and existing California state statutes, the court found in favor of the professor as the owner of his expres-

sions. The court began its analysis with the issue of whether the institution or the professor had held the ownership rights. The court determined that the

professor was deemed the author and owner. In distinguishing this employ- ment context with others, the court noted that "university lectures are sui

generis" (p. 547). That is, they are unique and of their own class; therefore, they should be treated differently from the work of most other kinds of

employees. Unfortunately, this case was decided before the last substantial

overhaul of the Copyright Act in 1976, so its validity is uncertain. The second case involved a lawsuit to determine the order of the authors'

names for a publication. The court determined that the joint authorship prod-

uct describing a proposed academic program was to be shared among the

authors and not owned by the institution (Weinstein v. University of Illinois (1987)). The ultimate issue, however, neither was about faculty teaching nor involved a dispute between the faculty and its institution. In a third case, Hays

and MacDonald v. Sony Corporation ofAmerica (1988), the court interjected a passing comment-legally referred to as a dictum-that "a college or uni- versity does not supervise its faculty in the preparation of academic books or articles, and is poorly equipped to exploit their writings, whether through pub- lication or otherwise" (p. 416). These three cases appear to support the

argument that the professors' coursework is unique and thus not subject to

the work-made-for-hire doctrine.

A third argument raised in support of faculty ownership of course materials

centers on academic custom and tradition, including academic freedom (Holmes

and Levin,.2000; Kulkarni, 1995; Kwall, 2001; Lape, 1992; Laughlin, 2000;

Scully, 2004). Under this argument, faculty ownership rights follow a long his-

tory and tradition in the academic community, a logic that supports the aca-

demic exception to the work-made-for-hire doctrine. Per academic custom,

faculty have rights to their lectures, handouts, and other course expressions.

Equally important, if universities own professors' course works, then derivative

works and other materials would be under the institution's direct control and

would stifle professors' academic freedom. Faculty may not be able to modify,

reproduce, or distribute course materials as they see fit. That unintended but

potential consequence would harm society, and, accordingly, academic custom

justifies a public policy argument that allows professors to hold the copyright

over course materials they create. Furthermore, as Holmes and Levin (2000)

note, professors change universities, so if universities owned the course materi-

als, professors would be denied the freedom to take their materials with them.

Institutional Ownership of Course Content. Proponents of the position that

the respective institution owns the faculty-created course content base their argu-

ments primarily on the work-made-for-hire doctrine. Drawing from language

contained in the Copyright Act, the work-made-for-hire doctrine indicates that

any work produced during employment constitutes ownership to the institu-

tion (Barnett, 2001; Klein, 2004; Packard, 2002; Rothman, 2007; Simon,

1983). According to the Copyright Act, works made for hire occur when the

employer or someone who commissions the work is considered the author and

is entitled to the copyright unless the parties agree otherwise (17 U.S.C. §201).

With course materials and instruction, like the arguments asserted over univer-

sity ownership of research, the university would assert that the professor is hired

to create these materials and thus the university owns them.

Indeed, Simon (1983) argued that a reading of the 1976 Copyright Act's

language inevitably places the work of faculty members under the work-for-

hire doctrine and specific language suggesting this ownership delineation is

Intellectual Property in the Information Age 25

not necessary. He reached the conclusion that the statutory language should not exempt faculty from the work-made-for-hire doctrine. Furthermore, in Com- munityfor Creative Non-Violence v. Reid (1989), the U.S. Supreme Court made

it clear that "work prepared by an employee within the scope of his or her employment" (p. 738) constitutes work made for hire. To determine whether the work occurred in the scope of employment, the Court examined the rules governing the law of agency. 5 In analyses from several legal commentators, professors as employees meet the work-made-for-hire standards articulated in the statute as well as explanations given in the case law.

Besides the applicability of the work-for-hire doctrine, authors who sup-

port ownership of faculty-created work for the institution refute claims that the doctrine does not apply to or contains exceptions for professors' course materials. For instance, in response to the claims of an academic exception to

the work-made-for-hire doctrine, several scholars have analyzed the legislative history of the Copyright Act of 1976 as well as the case law since the law was passed (for example, Barnett, 2001; Klein, 2004; Packard, 2002; Townsend, 2003). Based on their legal interpretations, "academic exception has not sur-

vived the revisions to the Copyright Act" and the cases do not stand for the proposition that the academic exception is alive in the case law (Klein, 2004,

pp. 168-169). The work-made-for-hire doctrine still determines the copyright ownership of course materials, and that ownership resides with the employ- ing university absent a signed contract stating transference of rights. That uni-

versities do not often attempt to capture the products of teaching is more a matter of custom than of law.

Similarly, in opposition to the argument that academic custom trumps the work-made-for-hire doctrine, several authors vigorously dispute that assertion (Klein, 2004; Packard, 2002; Rothman, 2007). For example, Rothman (2007) presents reasons why analysis of professional custom would improperly influ-

ence and negatively affect copyright law in educational settings, arguing that academic custom arguments negate the autonomy and freedom for parties to contract. Furthermore, custom creates expectations even when they would be

unfair or unjust. Consequently, Rothman counters the notion that the aca-

demic custom argument could (or should) be asserted. Packard (2002) also indicates that although academic freedom might have been the one strong

argument to justify professors' copyright ownership, institutional academic freedom appears to overcome individual academic freedom arguments. Thus,

the academic custom assertion should fail.

Institutional Policies. Some have recommended reliance on institutional poli- cies to dictate ownership (Kwall, 2001; Laughlin, 2000; Packard, 2002; Scully,

2004). Indeed, recommendations inform the scholarly and practice commu- nities on policy content and construction, particularly because they examine

the presence of copyright policies (Bobbitt, 2006; Kelley, Bonner, McMichael, and Pomea, 2002; Lape, 1992; Loggie and others, 2006, 2007; Sanders and

Richardson, 2002; Sanders and Shepherd, 2000), the terms and conditions of

the policies (Bobbitt, 2006; Kelley, Bonner, McMichael, and Pomea, 2002; Lape, 1992; Loggie and others, 2006, 2007; Mclsaac & Rowe, 1997; Sanders

and Richardson, 2002; Sanders and Shepherd, 2000), and the dynamics of the

policy construction and adoption processes (Myers, 2003; Welsh, 2000; Zhang and Carr-Chellman, 2006). Unfortunately, the debate continues and the liter- ature offers no definitive determination as to whether the faculty or the insti-

tution own faculty-created course content absent an expressed agreement.

Alternatively, the statutory provisions indicate that if a work-made-for-hire arrangement exists, then absent a signed agreement the ownership remains

with the employer. Therefore, the initial legal determination-which is cur- rently an open question-is whether faculty work on course materials falls

uinder the work-made-for-hire doctrine. To circumvent this legal debate, an

expressed contract with signatures from both a university agent and the pro-

fessor could eliminate any challenges between the parties, and several legal commentators recommend that contracts be executed for every university

employee (Borow, 1998; Kilby, 1995).

Summary. In sum, the law offers little guidance to set parameters for insti-

tutions to establish policies and practices, yet to construct an institutional pol- icy, faculty and administrators at a given college or university must respond

to the following questions: Are faculty course materials work made for hire? If so, is there an exception for academics and teachers? If not, is there a signed

agreement transferring the copyright ownership to the faculty (or any other

Intellectual Property in the Information Age 27

party)? Put simply, the discussion above presents the copyright ownership

dilemma for professors' course materials and illustrates how legal parameters,

technological advancements, and actor-based interests can play a role in intel-

lectual property policies and practices at institutions of higher education.

Student and Staff Works

The copyright ownership of students' works typically resides with the student

(Todd, 2007; Townsend, 2003). That general rule may change, however, with

joint work with faculty (Patel, 1996; Todd, 2007), a determination that the

student worked as an employee (Patel, 1996; Seymore, 2006a, 2006b), or sub-

stantial funding and expressed arrangements of institutional ownership (Iowa

State Univ. Research Foundation, Inc. v. American Broadcasting Company, Inc.

(1980)). Cases that emerge under these circumstances typically conclude that

the university owns the copyrighted works. But the analysis becomes muddled

again in the context of students who serve in the capacity of instructors or

teaching assistants. That determination, particularly as more students serve as

instructors or teaching assistants for online courses, will likely follow one of

two possible approaches. First, the court would simply follow a similar legal

analysis to that of determining the copyright ownership of faculty course mate-

rials. Or second, the court would follow the logic that the student-instructor

or teaching assistant prepares the course materials for the learning process, and

so those expressions are akin to a student's paper or supervised project. Regard-

less of which approach the courts take, the determination of copyright own-

ership of students' works as an instructor or teaching assistant is uncertain.

By contrast, the debate about copyright ownership is less controversial for

nonacademic staff (see, for example, Foraste v. Brown Univ. (2003)). For

instance, in a case regarding a staff member's work, the plaintiff, Foraste, sued

for copyright ownership over the photographs he took as a university staff pho-

tographer. In relevant part, the university policy indicated that unless other-

wise agreed upon, university employees retained copyright ownership of their

works; however, the court, relying on the Copyright Act and several other cases

for statutory interpretation, clearly indicated that the university photographer

conducted his work under a work-made-for-hire arrangement. Under the

federal law, when the copyrighted work constitutes work made for hire,

an organizational policy is insufficient for the employer to surrender its rights

to the work. In other words, under a work-for-hire arrangement such as the

court recognized with assignments for university staff, the university legally

gives up ownership and other rights with a signed, expressed agreement.

Because one did not exist, the court indicated the university photographer's

works fell under the work-made-for-hire doctrine, but the court noted in the

case's facts that Foraste was not employed in any capacity as faculty. There-

fore, by inference, an argument might be made that the matter would have

been different if Foraste held a faculty appointment and the pictures pertained

to that role. Because the facts of the case pertained only to the university, the

ruling supports only the legal proposition that works of nonacademic staff

involve work made for hire and that ownership thus resides with the employer

unless a signed agreement indicates otherwise.

Chapter Summary This chapter presents general concepts of copyright, with particular emphasis

on determination of the work's author, subject matter, term, exclusive rights,

and ownership. Addressing these legal constructs, copyright law touches on mat-

ters related to the author's integrity, attribution, rewards, and control over the

works (for example, use, reproduction, alteration, distribution, display) (Levine

and Sun, 2003). These interests in copyrights derive from economic, political,

and social forces that explain the complicated categories of copyrightable sub-

ject matter and the terms for copyright protection. Indeed, the copyright law

creates the various copyright subject matter categories with the intent to "unbun-

dle" rights. For instance, a musical work does not represent a single copyright. Instead, the law factors the multiple parties, who have an interest in the musi-

cal work, and it gives copyright protection over the musical composition, lyrics,

performance, and sound recording. Despite these great efforts from industry to

parse out a variety of rights and litigants, surprisingly the analyses of copyright

ownership and rights in higher education establish a dichotomy between the

institution and faculty, students, or staff. Kelley, Bonner, McMichael, and Pomea

(2002) suggest, however, that it is time to unbundle the interests and rights of

the multiple authors and situations involved in works of the higher education

Intellectual Property in the Information Age 29

community, particularly to account for differing legal rights, technological

advancements, and various competing interests. Finally, Scully (2004) raises a provocative claim: "Perhaps the timing is

now right to rethink copyright for academic authors, taking into account a global, binary coded world, where no authorial expression survives without

virtually instantaneous duplication, manipulation and reuse" (p. 276). If future

technology eventually takes place with instantaneous activity, works typically copyrighted may no longer qualify. For instance, online courses are fixed to a

medium of expression through delivery over the Internet, which qualifies them for copyright protection; however, a live lecture of a class in a brick-and-mortar

classroom does not qualify for copyright protection because it is not fixed to a medium of expression. Therefore, with technological advancements, course materials may one day transmit instantaneously without any fixation. In other words, technology, which created a greater need for copyright protection espe- cially over course materials, may one day create environments in which course materials may no longer qualify for copyright protection as the law is currently constructed. Consequently, Congress and others will need to reframe copy- right concepts to prepare the legal terrain for the future.

T HIS CHAPTER FOCUSES on the use of copyrighted works. As a gen- eral rule, users of copyrighted work may license selected works for a fee

through a centralized licensing service such as Copyright Clearance Center for

articles and books, icopyright.com for Web sites, American Society of Com-

posers, Authors and Publishers for musical works and lyrics, the Motion Pic-

ture Licensing Corporation for motion picture studios, and Artists Rights

Society for visual arts. Nevertheless, given certain conditions, the law on fair

use permits limited access of copyrighted works. Because the educational enter-

prise relies heavily on fair use of copyrighted works, this chapter defines areas

of fair use, articulates the legal conditions and limitations of fair use, describes

the confusion surrounding qualifications of fair use materials, identifies the

various parties who have a financial interest in fair use, and highlights obstacles

to fair use when heightening commercial values are associated with the copy-

righted works.

Fair Use The law permits limited uses and reproduction of copyrighted materials with-

out the owners' permission. We refer to it as "fair use." The copyright law per-

mits "fair use" of works after weighing four factors:

1. The purpose and character of the use, including whether such use is of

commercial nature or is for nonprofit educational purposes;

2. The nature of the copyrighted work;

Intellectual Property in the Information Age 31

3. The amount and substantiality of the portion used in relation to the copy- righted work as a whole; and

4. The effect of the use upon the potential market for or value of the copy-

righted work [Copyright Act, 17 U.S.C. §107 (2008)].

The statute indicates that acceptable fair use purposes may include "criti- cism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research" (17 U.S.C. §107 (2008)). Indeed, to

some extent the law accommodates educational institutions, and, not surpris- ingly, colleges and universities frequently assert fair use claims of copyrighted works for classroom discussions, readings, display, and demonstrations.

According to Frazier (1999), "Fair use exists in copyright law because there always has been a compelling interest in a democratic society to balance the exclusive rights of publishers with legitimate needs of the public for reason- able and affordable access to information" (p. 1321). Despite this policy inter-

est, the law is not written in a manner that clearly delineates the democratic interests of society and the rights of the copyright holders. Although the law

is well settled that copying an entire copyrighted work for profit-making

motives fails to adhere to fair use standards (Zomba Enterprises, Inc. v. Panorama Records, Inc. (2007)), confusion, misinterpretation, and general

unawareness of educational users' rights to copyrighted materials still exist (Crews, 1993; Fisher, 1988; Hobbs, Jaszi, and Aufderheide, 2007). In prac- tice, what do the four factors mentioned above really mean?

Fisher (1988) asserted that the lack of clarity in the fair use doctrine makes

it difficult for users of copyrightable works to act in a manner consistent with their rights. Rather than assuming fair use, Fisher suspects that the ambigu-

ous statutory language actually prevents legitimate fair uses of copyrighted works from ever happening. In other words, the confusion actually stifles the exchange of the copyrighted works. In addition, Fisher called for a review of the fair use doctrine so the law would factor in an economic approach with public good preferences. In simplified terms, the public good preferences adjust pricing, availability, or fair use determinations through factors that ben- efit society such as educational purposes. This approach would in turn give those settings special treatment. Specifically, the law would place academic

institutions in a preferential category when it uses copyrighted works for pur-

poses that support societal needs such as taking a copyrighted article and dis-

seminating it for academic research or altering a copyrighted work for scholarly

purposes. Despite Fisher's proposed approach, the law is not as generous, and

as many report, the fair use provisions are for the most part ambiguous

and confusing, particularly for educational institutions that tend to use the

materials for the public good.

Books and Periodicals

In anticipation of the ambiguity of the law and based on numerous meetings

and negotiations, representatives from the Ad Hoc Committee on Copyright

Law Revision, the Authors League of America, and the Association of American

Publishers, Inc., issued fair use guidelines for books and periodicals in 1976,

when the Copyright Act underwent major revisions (U.S. Copyright Office,

1995). The guidelines included provisions for single copies of these materials

for research and teaching, multiple copies for classroom use, and other param-

eters for fair use of copyrighted books and periodicals. These guidelines were

touted as extremely helpful (see, for example, Steinbach, 1989) but also criti-

cized as extremely vague (see, for example, Carroll, 2007; Fisher, 1988).

On the one hand, the guidelines offer more detail, clearer acceptable prac-

tices, and explicit prohibitions. Compared with the fair use language in the

clarity for educational fair use of books and periodicals. First, the guidelines

provide substantially more detail and parameters for duplicating books and

periodicals. For example, the guidelines indicate that educators may copy a

book chapter, an article from a journal, a short story, and a paragraph from

a newspaper for teaching or research purposes. With the statutory language

alone, an educator is left to guess what exactly fair use is. Second, the guide-

lines also establish general principles for multiple copies of works from books

and periodicals. Under §107 of the copyright law, fair use determinations fac-

tor the "amount and substantiality" of the work, but the provision offers no

guidelines on what constitutes an appropriate amount and a substantial por-

tion of a work. Instead, when making multiple copies of a copyrighted work

for a class, the guidelines inquire into three factors to determine fair use: degree

Intellectual Property in the Information Age 33

of brevity, extent of spontaneity, and amount used relative to the cumulative effect. For example, the guidelines indicate that fair use applies if a complete article

consists of fewer than twenty-five hundred words, if the decision to use the arti-

cle occurred without sufficient time to seek copyright permission, and if no more than three articles were copied from the same periodical volume. Third, the guidelines establish which acts and purposes are prohibited. For example, copying shall not serve to circumvent copyright law by displacing books and other copyrighted materials, nor shall fair use apply to consumable materials such as workbooks and standardized tests or involve direct charges to the stu-

dents for these educational materials. On the other hand, the guidelines convey mixed messages about limits,

still perpetuate levels of ambiguity, and lack legal force. With regard to mixed messages, the guidelines explicitly claim that their purpose is to establish min- imum standards for educational fair use, yet they read as maximums. For example, for multiple classroom copies of educational materials, the

cumulative cannot be more than "one short poem, article, story, essay ... nor more than three from the same collective work or periodical volume during one class term" (U.S. Copyright Office, 1995, p. 8). Thus, because the guide- lines set upper limits, particularly with regard to the number of articles and words that can be used, they convey maximums despite purporting to offer

only minimums as the report indicates.

Not surprisingly, when Crews (1993) reviewed the copyright policies at ninety-eight research universities in the late 1980s to identify their copyright policies, he found that although many adopted the guidelines, they also devel- oped a more restrictive interpretation than necessary. Crews indicated that the

guidelines were viewed as limits to avoid litigation. Furthermore, based on interviews with sixty-two educators, media producers, and organizational

leaders, Hobbs, Jaszi, and Aufderheide (2007) found that lack of clarity in the fair use guidelines as well as poor communication about these guidelines resulted in the perpetuation of misinformation about the fair use parameters. They noted that those misinterpretations included overly restrictive under-

standings of the guidelines.

Moreover, with regard to ambiguity, the guidelines basically caution edu- cators that these guidelines represent acceptable practices at the time of the

guidelines' establishment but that, in the future, the scope of educational fair

use may be broadened or narrowed. Such ambiguity, especially the indefinite

time frame and notice when the scope does actually broaden or narrow, is

problematic. Hobbs, Jaszi, and Aufderheide (2007) concluded that the cau-

tious academics who are unaware of the guidelines create "pedagogical costs,"

which include their using "less effective teaching materials" (p. 16). Finally,

the guidelines represent negotiations among several parties; however, they do

not carry the force of law (Ebenstein, 1987). Thus, institutions know that even

if they follow the guidelines they are not released from future claims of

infringement. Alternatively, to avoid the fair use determination, institutions

often require the copyright holders' permission, creating what Hobbs, Jaszi, and

Aufderheide (2007) call "distribution hurdles," which often complicate, delay,

or even result in the work's use becoming impractical (Keyser, 2005), or not

used at all.

Music In 1976, several months after the completion of the guidelines for books and

periodicals, a joint effort of several organizations-the Music Publishers' Asso-

ciation of the United States, Inc., the National Music Publishers' Association,

Inc., the Music Teachers National Association, the Music Educators National

Conference, the National Association of Schools of Music, and the Ad Hoc

Committee on Copyright Revision-drafted and endorsed Guidelines for Edu-

cational Uses of Music. These guidelines resemble the basic structure and

process of the guidelines for books and periodicals, but they also contain sev-

eral distinctive aspects.

The guidelines resemble the guidelines for books and periodicals in a few

ways. First, like the guidelines for books and periodicals, the music guidelines

detail the statutory provisions of fair use. Under the guidelines, educational

fair use of music permits:

Temporary emergency copies of music;

Copies of limited sections of music, but never more than 10 percent of musi-

cal works for nonperformance academic purposes;

Intellectual Property in the Information Age 35

Editing or simplifying music that does not fundamentally alter the work so

long as the educator or institute purchased printed copies of the music;

Single copies of performance recordings for evaluation or rehearsal, such as

for grading or practice purposes; and

One duplication of the educator's or institution's sound recording for aural exercises or examinations, with the educator or institution required to

retain the copy.

Thus, the general tenor is that a brief portion or section of music

constitutes fair use, and copies for instructional purposes within defined param- eters are acceptable under the law. Second, both guidelines maintain similar

principles, such as minimum fair use standards, not maximums. Like the guidelines for books and periodicals, they read more like prescriptive maxi-

mums. Moreover, as expected, both guidelines prohibit reproductions and dis- tributions that circumvent copyright. Third, similar to the guidelines for books

and periodicals, the music guidelines carefully construct the language of fair use in a manner that does not impinge on the exclusive rights of certain par-

ties. For instance, under the fair use guideline that allows educators to make

one copy of a sound recording for aural exercises or examinations, the fair use

application applies only to the music, not the sound recording. This distinc-

tion demonstrates the interests of the recording studios in retaining their rights

(Crews, 2001). Likewise, the guidelines do not include performance rights connected with the music, which also likely represents the interests of certain

with the guidelines for books and periodicals. First, although both guidelines articulate more details relative to the statutory provisions for fair use, the music

guidelines do not prescribe as many quantifiable levels. Part of the distinction may reside with distinctions between printed materials (that is, books and peni- odicals) versus music; however, a portion of the distinction may also relate to

the policy goal of avoiding overprescription. A second distinction relates to

the commentaries surrounding this guideline. Unlike the guidelines for books and periodicals, the section of the music guidelines in the U.S. Copyright

Office's Circular 21 (1995) explicitly mentions the disagreements and

criticisms associated with the music guidelines by the American Association

of University Professors and the Association of American Law Schools. Their

disapprovals represent differing interests and perspectives. According to the

commentary in the circular, these organizations noted that the guidelines were "too restrictive with respect to classroom situations at the university and grad- uate level" (pp. 9-10). In other words, both education-based professional orga-

nizations assert high "pedagogical costs" with the adoption of the music

guidelines. Furthermore, music professors convey problems with the guide-

lines, particularly use of sound recordings and their need for band, instru-

mental, and music instruction (see, for example, Woody, 1994).

Television Broadcast Recordings

In 1979, several years after adoption of the guidelines for books and periodi-

cals and music and the technological advances of videocassette recorders,

another group with interests in television broadcasts convened a series of meet-

ings to negotiate fair use guidelines. By 1981, this group produced Guidelines

for Off-Air Recording of Broadcast Programmingfor Educational Purposes. Gen-

erally speaking, the policy permits educational institutions (or educators) to

record television broadcasts for instructional purposes for later off-air view-

ing. The guidelines' basic parameters state that educators cannot record more

than one broadcast program or alter the recorded broadcast (although the

entire broadcast does not need to be shown). In addition, educators may retain

the recording for up to forty-five days and make a limited number of copies

within the scope of the educators' legitimate needs. Finally, the television

broadcast must display the copyright notice as displayed on the broadcast.

Fair Use Challenge to Course Materials: Course Packs Course packs are compilations of readings, typically of copyrighted works.

They challenge the concepts of fair use for institutions of higher education and

the copy centers that faculty use to create course readers (Metcalfe, Diaz,

and Wagoner, 2003). Many course packs appear to comply with the copyright

law's four factors for fair use as follows. First, the purpose and character of

Intellectual Property in the Information Age 37

course packs are for nonprofit educational use. Second, the nature of the copy- righted work offers educational knowledge and resources. Third, the amount and substantiality of a copyrighted work is often limited to an article or a book chapter because course packs generally originate from multiple sources. A read- ing compilation is akin to an edited textbook, however, so a course pack is likely to fail the fourth fair use factor: "the effect of the use upon the poten- tial market for or value of the copyrighted work" (17 U.S.C. §107). That is, the course pack diminishes the chances of students' buying the original work. Course packs also fail to comply with the explicit prohibitions contained in Agreement on Guidelines for Classroom Copying in Not-For-Profit Educational Institutions with Respect to Books and Periodicals. Specifically, course packs are created as compilations of readings, and although instructors are likely to use the same readings in subsequent terms, the ultimate legal determination rests on the market impact of selling course packs without copyright permission (Basic Books, Inc. v. Kinkoý' Graphics Corp. (1991); Princeton Univ. Press v.

Michigan Document Servs., Inc. (1996)). The push for a market analysis to determine fair use, even within the higher

education context, is becoming more pervasive. Metcalfe, Diaz, and Wagoner (2003) examine several scenarios in which higher education asserts fair use of

copyrighted materials for purposes such as copies for classroom instruction and research. With each scenario, they identify four frames to present the interests

of the creators and public regarding the fair use of copyrighted materials. Specif- ically, they frame each scenario around the creator or public's interests within

an academic frame, technological frame, social frame, and market frame. For example, in a scenario of fair use of copyrighted materials for class, an academic frame examines the instructor's role by assigning the materials; a technological

frame views technological resources that host or enable distribution of the mate- rials; a social frame views the overall benefit to the students and society more

generally; and the market frame examines the interest of the copyright holders. The interests in the copyrighted materials expressed through the four frames demonstrate the multiple purposes that claimed, fair use materials have to higher education. More important, Metcalfe, Diaz, and Wagoner's frames cap- ture how the recent fair use cases reflect the market frame at the expense of the academic, social, and technological frames.

Several fair use cases arose over copyright infringements from the creation

of course packs. The initial course pack case took place in 1982 against New

York University. The copy center at NYU reproduced course readers without

a result, nine publishers sued NYU. After several months of discussions and

negotiations, NYU settled with the publishers, crafted a model copyright pol-

icy, distributed a notice of copyright compliance and liability, and sought copy-

right clearance for subsequent course packs (Bartow, 1998; Crews, 1993, 2001;

Steinbach, 1989). According to Crews (1993) and Steinbach (1989), after this

case arose many colleges and universities reviewed or instituted a policy on the

use, including fair use, of copyrighted works.

Nearly a decade later, several major publishers sued Kinko's, a national pho-

tocopy chain, for copyright infringement based on the duplication and dis-

tribution of course packs. The suit targeted two Kinko's locations that

reproduced course packs for students at New York University, the New School

for Social Research, and Columbia University. Kinko's principal argument

relied on fair use for educational purpose. The company even asserted that

"the evidence shows that course packets are of tremendous importance to

teaching and learning, and are the subject of widespread and extensive use in

schools throughout the country" and that a ruling inconsistent with fair use "would pose a serious threat to teaching and the welfare of education" (Basic

Books, Inc. v. Kinko's Graphics Corp. (1991), p. 1535). Not persuaded by the

fair use and other alternative arguments, the court found Kinko's course packs

did not satisfy the fair use exception and that the commercial value of the

packets represented duplication of the publishers' works. In short, the court

found Kinko's liable for copyright infringement.

Similarly, in 1996, three publishers sued Michigan Document Services

(MDS), a commercial copy shop that reproduced course packs for students at the

University of Michigan. Like the Kinko's case, MDS defended itself against

the infringement claim by asserting educational fair use. The trial court ruled

in favor of the publishers, so MDS appealed. Upon the initial appeal, the court

overturned the trial court's decision and ruled in favor of the copy shop; how-

ever, in the rehearing, thirteen judges of the U.S. Court of Appeals for the

Sixth Circuit reviewed the case. Eight judges joined the majority opinion that

Intellectual Property in the Information Age 39

a market existed for the work, that the works were altered to make a new com- pilation, and that the guidelines on books and periodicals had some legally persuasive value to determine whether the works qualified as fair use. Five judges dissented, arguing that under the plain meaning of fair use law, MDS was only carrying out what the Michigan professors gathered for the students' educational benefit. Their analysis also pointed out flaws in the majority's asser- tion of market effects. MDS did not create a market, and the publishers did not plan to enter the market of publishing these readers. Instead, the profes- sors created the readers, and no harm associated with the market effect argu- ment was demonstrated. In short, the dissent raised arguments that the law pertaining to educational fair use appears to extend beyond the strict mean- ing of the statutory provisions.

The collective effects from the Kinko's and MDS rulings demonstrate sev- eral critical points about the fair use of copyrighted materials. First, guidelines such as the Agreement on Guidelines for Classroom Copying in Not-For-Profit Educational Institutions with Respect to Books and Periodicals clearly play some role in judicial decisions. The courts appear to use the guidelines as interpre- tative law. Second, the courts liberally interpreted the market effect factor to discount fair use. The court focused on the market value for readers and the market effects from loss of royalties or sales of anthologies and compilations, even though the publishers would not compile these readings. Because edu- cators would not distribute multiple copies of a set of articles, the compila- tion into a reader translates into royalty losses for publishers (Rife and Hart-Davidson, 2006). Oddly enough, if the publishers themselves decided to create anthologies based on these professors' course syllabi, they would need copyright permission because the syllabi represent fixed media of expression. Furthermore, because five of the thirteen judges disagreed with the majority opinion in the Michigan case, the market factors argument might not survive in future legal challenges, particularly with new library reserve systems and learning systems management tools that permit instructors to post articles

and book chapters for students to review if the library already maintains the collection of readings. Third, for now, these cases narrow the scope in which professors may assert fair use for multiple classroom copies. In light of these decisions, an outside vendor will not reproduce the copies. Furthermore,

students cannot purchase the copies from an on-campus duplicating center.

Given these circumstances, the university or the professor must pay for the

copies themselves by using university equipment. The multiple copies for class-

room use, therefore, might be only applicable in departments and institutions

with access to copiers and expenses to cover those costs.

Fair Use and Online Instruction From 1994 to 1997, the Working Group on Intellectual Property Rights in

the Electronic Environment (known as CONFU) gathered parties with an

interest in copyrights over educational multimedia works to meet at a confer-

ence on fair use. During that time, they discussed and negotiated guidelines

for educational multimedia, distance learning, digital images, interlibrary loan

processes, electronic reserve systems, and computer programs in libraries

(Lehman, 1998). Although many provisions were established, the guidelines

failed to reach consensus. In fact, many groups expressed disapproval or at

least nonendorsement of the guidelines. Only the guidelines that reached con-

sensus and general recognition were published. Some universities, however,

including Montclair State University, Piedmont Technical College, the Uni-

versity of Texas, and Washington University, refer to these guidelines in their

own guidelines. Because the CONFU policy negotiations failed, lobbyists and

many interested parties sought further clarification, and in 2002 Congress

passed the TEACH Act, which addresses use of copyrighted materials through

digital transmission.

Before 2002, the transmission of educational fair use primarily required

a physical classroom and prohibited digital transmissions. At that time, the

law prohibited transmission of copyrighted material because the transmission

process created another copy, which typically constituted infringement. Criti-

cisms over the legal barriers also pervaded the literature (see, for example,

Crews, 2001; Gasaway, 2001b). In response to requests for copyright reform,

Congress explored ways to address the legislative hurdles presented to distance

education. The legislative policy required the balancing of the copyright hold-

ers' interests (for example, authors and publishers) with educators' and students'

interests in using copyrighted materials for distance learning (Gasaway, 2001 a).

Intellectual Property in the Information Age 41

The outcome became the passage of the Technology, Education, and Copy- right Harmonization Act of 2002, frequently referred to as the TEACH Act.

The TEACH Act permits educational institutions to use certain copy- righted materials through distance education mediums (see Exhibit 1). Because the TEACH Act balanced the political, economic, and social interests of the copyright holders and those of the educational field in the context of techno- logical media, the law has multiple conditions and qualifications (see, for example, Ashley, 2004; Crews, 2002; Gasaway, 200 la). As several have indi- cated, the TEACH Act created a set of seemingly onerous limitations and con- ditions to online fair use (Ashley, 2004; Crews, 2002; Gasaway, 2001a; Huber, Yeh, and Jeweler, 2006; Lipinski, 2003). Ashley (2004) argued that at times a cost-benefit analysis may determine that compliance with the TEACH Act leads some educators to use simply the general fair use policies or seek copy- right permission to avoid the hassles associated with the law. For instance, the law requires certain technological obligations from institutions such as find- ing ways to block students from keeping and distributing copyrighted mate- rials. The problems arise when educators use copyrighted materials with high market value (for example, a popular movie or musical excerpt). In those instances, the odds of students' finding ways to circumvent the institution's system from reproduction and distribution become high. Rather than sub- jecting the institution to scrutiny, educators may opt to use more traditional ways of dealing with the fair use, pay for the license, or forgo the educational opportunity. Each case incurs pedagogical costs.

Kehoe (2005) asserted that the TEACH Act's limited application to non- profit educational institutions fails to advance the goals of distance education because for-profit institutions are excluded from the TEACH Act. According to Kehoe, the exclusion of for-profit colleges is unnecessary. As he argued, the law's application to accredited institutions already ensures the legislator's pur- pose of meeting some educational standards. Moreover, the exclusion of for- profit colleges from the TEACH Act only stifles education, because according to Kehoe, for-profit schools are more inclined to try innovative teaching for- mats such as online education. Therefore, the law creates a barrier for the cat- egory of educational institutions that is most inclined to need fair use exceptions for online courses. The law's intentional exclusion of for-profit

EXHIBIT 1

Legal Parameters of the TEACH Act

Part I: Qualified Works and Amount of Fair Use

Does the copyrighted work fall under one of these categories? If so, the corre-

sponding amount for fair use is listed below and proceed to Part II for further

TEACH Act determination.

"* Displays include an approach for multiple types of works including but not lim- ited to pictorial, graphic, or sculptural works, images from a movie or slide, or

an ebook. The amount of fair use for displays is the same as the fair use restric-

tions for a live classroom.

"* Nondramatic literary or musical works - other than operas, music videos, and musicals - are not restricted for digital transmission of educational fair use mate-

rials. Nondramatic works include novels, poems, and music composition.

"• Any other performances such as an opera, dance, play, or movie clips permit usage of reasonable and limited portions: "account for both the nature of the

market for that type of work and the pedagogical purposes of the performance"

(Senate Rep. 107-31, 2001 p. 8).

nondramatic

Qualified displayed literary or any other

Work materials musical work performances

"reasonable

Amount of live classroorn not and limited

Usage equivalent restricted portions"

Part f1: Instructional Conditions

Are the following instructional conditions met? If YES to the questions below, then

proceed to Part Ill.

"• Is the course under the direction or actual supervision of an instructor? "* Is the copyrighted work an integral part of class session? "* Does the class session serve as regular component to the systematic mediated

instructional activities?

"* Is the copyrighted work directly related and of material assistance to the teach- ing content?

"• Are the instructional activities offered through an accredited, nonprofit educa- tional institution?

(Continued)

Intellectual Property in the Information Age 43

EXHIBIT 1 (Continued)

Part II1: Transmission Conditions: Access Are the following transmission conditions met regarding access limits? If YES to the questions below, then proceed to Part IV. * Is the transmission made sole purpose for students enrolled in the class? * Is the transmission process limited as much as technically feasible?

Part IV: Transmission Conditions: Institutional Policies Are the following transmission conditions met regarding access limits? If YES to the questions below, then proceed to Part V. * Do the institution's copyright policies accurately describe the copyright laws? * Do the institution's copyright policies promote compliance with copyright laws? * Does the institution issue proper notice to students that materials used in course

may have copyright protection?

Part V: Transmission Conditions: Institutional Policies For digital transmissions, are the following copyright integrity measures taken? If YES to the questions below, then proceed to Part VI. "* Through technological measures, does the institution reasonably prevent reten-

tion beyond class session and unauthorized dissemination of works? "* Does the institution acknowledge that it does not participate in ways that would

interfere with copyright owners' rights?

Part VI: Exceptions to the Exemption Do the works used fall into one of the exceptions to the TEACH Act exemptions for fair use? If NO to the questions below, then the work and the conditions meet the TEACH Act. "* Is the work produced or marketed primarily for performance or display via dig-

ital networks and the institution knew or should have known of its illegality? "* Is the work a copy or phonorecord of performance or display not lawfully made

or acquired and the institution knew or should have known of its illegality?

Source: Technology, Education, and Copyright Harmonization Act of 2002.

educational institutions, however, represents the interests of the book, music,

and movie trade associations. That is, fair use permits limited use of copy-

righted works with no royalties to the copyright holders. Accordingly, the

TEACH Act simply indicates that, as a matter of national policy, copyright

holders will forgo royalties in a set of limited circumstances when used by non-

profit, accredited educational institutions but that these copyright holders will

not forgo these royalties as easily for for-profit educational institutions.

Finally, although the TEACH Act contains some imperfections, Crews

(2002) articulated four ways in which the law improved past fair use provi-

sions for distance education. Specifically, the TEACH Act expanded the scope

of copyrightable subject matter that could fall under fair use; it extended the

locations to more than just traditional classrooms; it did not bar students'

retention of the works for a short period of time; and it permitted the con-

version of analog works to digital format (Crews, 2002).

Implications About the Debate on Fair Use With technological advances, accessibility to copyrighted works heightens the

infringement activity in noninstructional contexts too, and these technologies

also call for a reevaluation of institutional practices and the practicability of

the copyright law. Sharing files, particularly of copyrighted music and movies,

illustrates one problem in the growing debate about the law of fair use from

the standpoint of how the intersection among three factors-existing legal

parameters, technological advances, and differing viewpoints from various

actors involved in the situation-shapes intellectual property policies and prac-

tices in higher education. Accordingly, this section discusses the uses of copy-

righted material through sharing media files, the debates surrounding file

sharing, and the associated challenges for colleges and universities.

Today, peer-to-peer software applications serve as one of the most frequent

approaches to exchange of copyrighted products, and college and university

networks have enabled these actions through their quick download speeds

(Intellectual Property Institute, 2006; Kruger, 2004; Read, 2005a, 2005b;

Student Monitor, 2007; Timiraos, 2006). As one court suggests, "approximately

90 percent of the content on [peer-to-peer] systems is copyrighted movies,

Intellectual Property in the Information Age 45

software, images, and music disseminated without authorization" (In re Char- ter Communications, Inc. (2005), p. 773), and many of these activities occur on college campuses.

According to the Pew Internet and American Life Project, college students are more likely than the general population of Internet users to download music and share files. For example, in 2002, 14 percent of college students reported that they downloaded music, whereas only 4 percent of Internet users in 2001 generally engaged in such activity. Similarly, during those same years, 44 per- cent of college students reported that they share files online, compared with 26 percent of overall Internet users (Jones, 2002; see also Blue Coat Systems, 2004; Gross, 2005; Student Monitor, 2007; Timiraos, 2006). The amount of illegal file sharing among college students has therefore created legal problems for their institutions (Moore and McMullan, 2004; Read, 2 006a, 2006b, 2007).

The trade associations and many copyright holders want the public to value copyrights, but attitudes about copyrights shape the adherence and respect for such rights. For instance, in 2000, the Pew Internet and American Life Project surveyed 6,413 Internet users and found that 64 percent of respondents between the ages of eighteen and twenty-nine believed down- loading music for free was acceptable. Likewise, according to a 2003 study of randomly telephoned adults, a majority of students indicated that they were not inhibited by copyright restrictions when it comes to downloading and sharing files. Furthermore, in a comparison of full-time and part-time stu- dents, full-time students were more likely to indicate their lack of concern about copyright protections when downloading music.

According to a study from the Student Monitor (2007), 39 percent of full- time undergraduate students admitted to illegally downloading music or movies. Moreover, by some accounts, the location of choice is often the col- lege campus (Intellectual Property Institute, 2006). According to the Intel- lectual Property Institute, college campuses ranked as the top location for illegal downloads of music through peer-to-peer applications. Data about the broadband method most frequently used for peer-to-peer music demonstrates a slightly different picture. Moore and McMullan (2004) report that students surveyed at one institution used dial-up modems and cable modems more often than the university network.

In light of the various data and news reports, universities are legitimately

concerned, especially as copyright infringement can extend beyond the party

who directly and actively engages in the wrongful act. Under federal law, lia-

bility exists for those who facilitate copyright infringement. Universities, as

Internet service providers to their academic communities, potentially serve

as facilitators to infringement activities through peer-to-peer networks. To deal

with the research and teaching functions, the Digital Millennium Copyright

Act includes a safe harbor provision for nonprofit higher education institu-

tions that are service providers. The act states in relevant part:

(e) Limitation on liability of nonprofit educational institutions.-

(1) When a public or other nonprofit institution of higher edu-

cation is a service provider, and when a faculty member or

graduate student who is an employee of such institution is per-

forming a teaching or research function, for the purposes of sub-

sections (a) and (b) such faculty member or graduate student shall

be considered to be a person other than the institution, and for

the purposes of subsections (c) and (d) such faculty member's or

graduate student's knowledge or awareness of his or her infring-

ing activities shall not be attributed to the institution, if:

(A) such faculty member's or graduate student's infringing

activities do not involve the provision of online access to instruc-

tional materials that are or were required or recommended,

within the preceding [three]-year period, for a course taught at

the institution by such faculty member or graduate student;

(B) the institution has not, within the preceding [three]-

year period, received more than two notifications described in

subsection (c)(3) of claimed infringement by such faculty mem-

ber or graduate student, and such notifications of claimed

infringement were not actionable under subsection (f); and

work informational materials that accurately describe, and promote

compliance with, the laws of the United States relating to copyright

[Digital Millennium Copyright Act, 17 U.S.C. §512(e) (2008)].

Intellectual Property in the Information Age 47

In other words, copyrighted materials retrieved through the network for teach- ing and research do not hold the institutional liable if the infringement did not take place in the preceding three years, the institution did not ignore three or more notices of past infringement from the same person, and the institution takes steps to comply with the copyright laws. Although the law shields educational service providers that comply with the outlined steps, copyright holders or their agents are contacting institutions of higher education through legal channels established under provisions of the Digital Millennium Copyright Act (DMCA).

Under the DMCA, copyright holders or their agents may serve a subpoena to an Internet service provider to identify the alleged infringer (17 U.S.C. §512(h) (2008)). Under that provision, the copyright holders along with their agents, particularly the trade associations for the recording, movie, software, gaming, photography, and im'age industries, have engaged in protecting copy- right holders' interests in copyrighted works. 6 In particular, these organiza- tions have sought action against college students and served universities as Internet service providers.

Two organizations in particular appear to be leading the charge to stop col- lege students from illegal downloading through peer-to-peer applications: the Recording Industry Association of America (RIAA) and the Motion Picture Association of America (MPAA) (see, for example, Read, 2005a, 2005b). These organizations present two primary interests. First, they advocate the continu- ing existence of legal protection as a remedy to resolve copyright infringement disputes. Second, and more important, as Cary Sherman of the RLAA contends, they request fair compensation for the use of copyright holders' works.

These umbrella organizations support the continued protection and enforcement of intellectual property laws (Spanier and Sherman, 2005). Although some groups and individuals take the position that technology is changing and intellectual property rights should be reenvisioned (Electronic Frontier Foundation, 2007), copyright holders and their agents still argue that users of peer-to-peer applications, particularly college students who represent a significant population of this group, should respect the law and that the exist- ing copyright law should govern the treatment of copyrighted works such as music, movies, images, and games. Furthermore, nonadherence to the copy- right law often results in wrongfully appropriating works, and copyright

infringements should be enforced through the law and campus policies as if

they were thefts. Consequently, as a foundational strategy, the trade associa-

tions as agents and actual copyright holders went after the peer-to-peer soft-

ware application companies.

In several landmark court cases against Napster and Grokster, the movie

and music industry representatives went after the peer-to-peer providers (see

A &M Records, Inc. v. Napster, Inc. (2000); A &M Records, Inc. v. Napster, Inc.

(2001); and M.G.M. v. Grokster (2005)); today, copyright holders and their

agents have targeted college students who have coordinated file-sharing devices.

In 2003, the recording industry went after four college students at three dif-

ferent universities (Ahrens, 2003; Harmon, 2003). According to the RIAA,

the college students directly participated in illegal downloading of copyrighted

materials, and they operated a peer-to-peer system with music indexing fea-

tLires. Most important to college administrators, these events occurred on the

university networks. Similarly, college students have increasingly participated

in exchanges that try to evade the trade association spyware mechanisms by

sharing files in college local area networks (Carlson, 2002; Read, 200 6 a).

Industry groups and copyright holders assert that they are losing sales

because consumers are obtaining unlicensed materials, in particular through

peer-to-peer file sharing (Kruger, 2004; Siwek, 2007). For instance, based on

a convenience sample of 412 college students at four different urban

universities, Rob and Waldfogel (2006) concluded that free music download-

ing sources result in at least a 10 percent loss of CD sales. The research demon-

strates CD sales displacement, but the actual effects have come into question

(see, for example, Madden and Lenhart, 2003; Oberholzer-Gee and Strumpf,

2007). Furthermore, several reports and empirical studies note the adverse

financial impacts of piracy on the economy and corporate sales more broadly

than just with CD sales. For instance, one estimate reports that in the music

industry alone approximately 4 billion unlicensed downloads occurred in the

United States in 2005 (Siwek, 2007).7 When adjusted to account for estimated

actual purchases and the retail margin calculations for lost sales, the report

estimates losses from illegal music downloads to U.S. retailers of approximately

$890 million. In addition, according to a state-by-state software privacy study,

the report indicated that "piracy cost more than 105,000 jobs, or $5.3 billion

Intellectual Property in the Information Age 49

in lost wages, during 2002" (Kruger, 2004, p. 48). Of course, the various methods of piracy are not considered in this calculation, yet reproduction on a CD likely accounts for a significant portion of the impact. Furthermore, these groups are abundantly clear that piracy plays a huge role in hurting the employment conditions and wages of actors, directors, publicists, distributors, artists, composers, producers, software designers, and retailers, including small, independent college-town music stores (see, for example, Carlson, 2003). Put simply, it is often argued that the loss of sales revenue affects industry employ- ment patterns, corporate performance through loss earnings, and reduced tax revenues (Siwek, 2007).

Although use of the DMCA raises questions about particular organizations' business practices (Carlson, 2003; Chmielewski, 2003), some preliminary data indicate desirable outcomes for the entertainment industry (Madden and Lenhart, 2003). For example, according to Madden and Rainie (2005), record- ing industry lawsuits and letters of potential lawsuits against peer-to-peer users have reduced copyright piracy. In particular, the report indicates a drop in use of peer-to-peer file sharing, such as Grokster, Kazaa, WinMX, and BearShare. More important, the authors state that music downloading among students and other groups has dropped sharply. The authors suggest two reasons to account for the declines in peer-to-peer file sharing. First, the chart tracked when RIAA lawsuit threats started and of actual lawsuits initiated against peer- to-peer users, and it noted declines in peer-to-peer piracy following those legal actions. Second, the increasing availability and subscription to fee-based online music services have provided an outlet for proper license venues.

Several reports and articles indicate movements in higher education to respond to these infringements, including education about copyright, enforce- ment of laws, alternative means to piracy, and digital network management (see, for example, "Reducing Peer-to-Peer (P2P) Piracy on University Cam- puses," 2005; "Piracy on University Networks," 2007). First, educational sem- inars, student service programs, and notices about copyright infringement address issues surrounding perceptions about downloadingand file swapping as wellas understanding the laws and policies of copyright (Kruger, 2004; Lane and Hendrickson, 2005; Lane and Healy, 2005; Lenhart and Fox, 2000; Moore and McMullan, 2004; O'Donnell and Parker, 2005; Read, 2007).

Second, colleges and universities have issued "take-down" notices (that is,

warning notices that an illegal activity is likely occurring so the infringer must

cease and "take down" the infringing network mechanism), pursuant to

DMCA when infringement activities occur over their networks ("Reducing

Peer-to-Peer (P2P) Piracy on University Campuses," 2005; "Piracy on Uni-

versity Networks," 2007). Third, numerous institutions implemented legal

music downloading services for their community to use (Spanier and Sher-

man, 2005; Read, 2007). The primary intent of this approach is to support

students through legal means and avoid the piracy entanglement between the

entertainment industry and students (Read, 2007). Although these services

do not completely eliminate media piracy (Timiraos, 2006), they still provide

a legal avenue for music available on those networks ("Reducing Peer-to-Peer

(P2P) Piracy on University Campuses," 2005; "Piracy on University Net-

works," 2007). Fourth, colleges and universities have adopted practices that

moderate or curb file swapping (Liebowitz, 2002). For example, one approach

includes managing bandwidth use during traditionally heavy periods of down-

loading and during critical times for university operations. In addition, more

sophisticated software monitors file swapping or unusually heavy bandwidth

use, typically associated with downloading media. Finally, pursuant to the

Higher Education Act, colleges and universities continue their measures to

combat illegal downloading of copyrighted materials, including using tech-

nology-based deterrents and offering legal alternatives to accessing music,

movies, and other protected downloaded works.

The peer-to-peer file-sharing problem represents more than simply illegal

downloading of music and movies. First, the situation signals a major shift in

attitudes about copyrightable works. Many college students and others

acknowledge their actions and defend those actions. Some even question

whether easy access to materials qualifies as fair use through a pseudo-public

domain. Second, parties with an interest in the copyrighted works do not hes-

itate to involve colleges and universities in their pursuits. Third, the severity

of the problem requires federal legislation to mandate controls in universities

to curb the activities. Fourth, as technology advances, this problem is likely to

filter into other disputes that may involve colleges and universities with video

game owners, publishers of e-books, and even copyright holders who work for

Intellectual 1)roperty in the Information Age 51

the institution. Fifth, this situation clearly depicts our framework of how tech- nological capacities, actor-based interests, and existing legal parameters shape

college and university intellectual property policies and practices.

Chapter Summary This chapter presented the challenges for colleges and universities when tech-

nology, law, and competing interests intersect. Technological advancements alter the way the higher education community works; the law sets the para-

meters in what constitutes fair use; and multiple interests arise over the uses of copyrighted materials and their access. In this instance, the difficulty is illus-

trated with a fundamental question: How does a university serve as educator and industry monitor? The technological changes altered the economic, polit- ical, and social environment for the higher education community. Conse- quently, while addressing the fair use and nonfair use of copyrighted works in instructional and noninstructional contexts, this chapter drew attention to the problems faced in higher education over copyrighted works.

This chapter illustrated the lack of legal clarity in fair use; the role of law- suits to alter behavior by the current subpoenas issued to students for peer-to- peer file swapping; the contested terrain of various copyrighted works, especially

as evidenced from the CONFU guidelines that could not reach consensus and the distinctions between the treatments of sound recordings and musical works; the mandated practices (for example, guidelines), processes (for example, TEACH Act provisions), and materials (for example, software) to monitor

potential copyright infringement and interfere when it occurs; and the signifi- cance of commercial value such as sales displacement from peer-to-peer file swapping and course packs as substitutes to anthologies over the noncommer-

cial values associated with moral rights (that is, attribution and integrity). Finally, the copyright discussion comes with a caveat. This chapter did not

capture the relationship between technological advancements and their cor- responding effects on college and university libraries. Although the chapter mentioned some impact on library services, much more could be said but is

beyond the scope of this monograph. Those impacts are numerous, perhaps warranting their own monograph.

The Law of Patents

T HE PATENT HOLDER possesses the exclusive rights to use, sell, produce, and distribute the patented subject matter. With such levels of

control over the invention as well as the corresponding rewards attached to the

invention such as royalties, actors who participate in the creation or discovery

phases often desire some interest in it. In addition, as technology changes, the

role and coverage of patents become refined as policies and practices in aca-

demic communities also change. Accordingly, this chapter articulates the legal

elements of patent law, highlights the evolving judicial and federal agency inter-

pretations of patent law in light of technological shifts, explains the impact of

university patents on academic communities and other key actors, and describes

some important legislative and institutional policy proposals.

Patent Law Unlike a copyright, which exists immediately upon the fixing of an expression

in a tangible medium, a patent is a document issued by the U.S. Patent and

Trademark Office that grants a monopoly on use to the owner of the patent.

To understand patent law, this section surveys key elements of patent law by

discussing the legal conditions to qualify for a patent and rights available to

patent holders.

Types of Patents

The federal law recognizes three types of patents: utility, design, and plant. Each

statutory category for patents establishes qualifications and requirements as well

Intellectual Property in the Information Age 53

as the length of time for the protection. The most frequently applied patent is the utility patent. A utility patent applies to an invention or discovery that is a

new and useful machinery, manufactured article, composition of matter, process, or new and useful improvement of a process or product. Sample filings of util- ity patents from higher education institutions include the University of Min- nesota's creation of the seat belt, Stanford and the University of California's joint project on recombinant DNA, Columbia University's discovery of a process for inserting DNA into eukaryotic cells and producing proteinaceous material,

Georgetown's creation of the CT scan, and Clark University's creation of rocket fuel. The protection period for a utility patent is twenty years.

A design patent protects original creations of an ornamental design applied to a manufactured article such as a chair configuration, handheld phone, or computer. Its period of protection is only fourteen years. And a plant patent provides protection for inventions and discoveries of new and distinct vari-

eties of plants, which may reproduce asexually. In higher education, these fil- ings include the University of California's avocado cultivars, Pennsylvania State

University's mushroom plants, and Cornell University's specialized raspberry plants. A plant patent lasts for twenty years. Although each statutory category for patents establishes qualifications and requirements, a patentable product or process may qualify for more than one statutory category. In those instances,

the patent filer must clearly specify each reference component to describe its

form and function for the respective patent type.

Patentable Subject Matter

To qualify for a patent, the product or process must conform to two general classes of requirements in terms of form and qualities. First, the patentable subject matter must be in the form of a machine, manufactured article, com-

position of matter, or process (35 U.S.C. §101 (2008)).

Machinery. The law refers to machinery as equipment or mechanical devices that maintain multiple components to construct or create an end prod- uct. Thus, when scientists at the University of Texas at Austin improved the homopolar generator, a machine that generates the same levels of polarity from magnetic forces, the university filed for a patent for it.

Manufactured articles. Manufactured articles represent humanly constructed

products, including items created through machinery or some other type

of nonnatural process. The end product must be some physical manifes-

tation such as an ergonomic chair. With scientific advancements, items

that constitute manufactured articles are expanding. For instance, in

Diamondv. Chakrabarty (1980), the U.S. Supreme Court held that the

creation of a new bacterium qualified as a patentable manufactured article.

Although the substance dealt with living organisms, which are not

patentable under the law, the Court rationalized that the bacteria result

from genetic engineering and derive from a scientific laboratory. This case

expands dramatically the categories of patentable matter.

Compositions of matter. This category involves the mixture of chemicals or other

substances in an effort to transform the elements into a new matter. For

example, chemical mixtures of prescription drugs, drinks, and lotions are

all patentable.

Processes. A process is also patentable. A process involves steps, methods, and

even artful construction of activities that may result in tangible items.

According to State Street Bank and Trust Co. v. Signature Financial Group

(1998), a sophisticated business method constitutes a patentable subject

matter. In this case, a computer program that structured investment pack-

ages sufficiently met the requirements for a patentable process. Similarly,

computer software that produces useful, tangible outputs has also been

awarded patent protections under the category of patentable processes.

Second, in addition to the form that the invention must take, under the

law the invention must meet the three quality criteria of novelty, nonobvi-

ousness, and utility. The criterion for novelty requires (1) that the invention

not already exist or be previously described, (2) that it be reduced to practice

to display the invention's functionality, and (3) that it be filed with the U.S.

Patent and Trademark Office within one year of its revelation. Accordingly,

under the statutory provisions covered under the criterion for novelty, the

patent examiner typically asks the following questions: Was the invention

invented or described earlier? Is the invention reduced into practice to display

Intellectual Property in the Information Age 55

the invention's functionality? Did the inventor file within one year from reveal-

ing the invention?

Under the condition for novelty, the federal patent law establishes a pri-

ority rule to determine the status of the patent holder (35 U.S.C. §102 (2008)). In the United States, the priority rule for the novelty criterion defaults

to the party that created or discovered the product or process first. Although many advanced nation-states such as Canada, France, Germany, and Japan

operate under a first to file priority rule, the United States adopts a first to

invent priority rule (Ubel, 1994). That is, the inventor who first creates or dis-

covers the patentable subject receives the rights. The debate over the first to invent versus the first to file priority rule dates

back to early statutory proposals (see, for example, Frost, 1967). Today, Con- gress continues to entertain revisions to the policy of first to invent with dis-

cussions of aligning this nation's patent policies with those of other

industrialized nations, that is, a first-to-file priority rule. Although this policy

shift is not likely to occur, if it does, universities may increase their patent sup-

port staff in technology transfer offices to address the timing issue, particu- larly because higher education institutions would be competing for time

against industry, which has more available staff per scientist. Putting aside the debate, under current U.S. patent law the priority rule

for patent filings relies on a principle of "first to invent." Consequently, before issuance of a patent, the patent officer determines whether an earlier filing or

some other prior knowledge of the patent subject exists. In legal jargon, the

patent officer inquires into the "prior art" or the "state of the art." As knowl- edge about prior art may not be identical in description or contain precise

details, the patent officer examines the components and description of the

patentable subject for comparison with other filings to determine whether "prior art references" are mentioned because of close links or whether the

patent filing is not novel because prior art exists. References to prior art may occur in journal articles, conference presenta-

tions, dissertations, grant applications, or media reports (Garabedian, 2002).

Furthermore, they are not limited to documents available in the United States

or in existing patent filings. In fact, In re Hall (1 986) involved the denial of a patent to an enzyme because a prior publication described the enzyme. The

publication, a doctoral dissertation, was available at Freiburg University in

Germany. The U.S. scientist declared no knowledge of the study, and evidence

submitted demonstrated that the dissertation was available only as a "single

catalogued thesis in one university library," which made its accessibility very

limited (p. 898). Nevertheless, the patent filer could have had access to the

prior publication, and a prior publication disqualifies a patent issuance. Thus,

the application was denied.

Besides being the first to create or discover an invention, the federal patent

law requires the inventor to put the invention into practice. A written descrip-

tion of the patentable subject matter satisfies the practice requirement of the

law. Basically, the policy mandates that information appear sufficient so that

one may test the functionality of the product or process and that the descrip-

tion appear with adequate references to determine whether another product

or process is related or identical to the patent being sought.

In addition, the patent filing must occur within one year of initially reveal- ing the invention. As a matter of policy, the one-year grace period provides

sufficient time for the inventor to file the patent, and it also places sufficient

limits so inventors cannot delay filing as a strategy to extend the patent pro-

tection period. Furthermore, the law precludes the patenting of products and

processes in public use or on sale more than a year from the initial invention

(35 U.S.C. §102(b) (2008)).

A second criterion for quality for patentable subject matter involves nonob-

viousness. To evaluate the subject matter's obviousness, the review consists of

three interactive components. According to Graham v. John Deere Co. of Kansas

City (1966), the nonobvious criterion relies on the relationship among prior

art, the patent subject matter, and experts who possess ordinary skill in a field

or craft. Another way to view the nonobviousness criterion is to ask to what

extent prior art informed others of the pending patent's subject matter? Does

the invention reveal something more than what has already been established?

Did the typical person in a craft or field already possess the skills to invent the

subject matter?

A third quality criterion for patentable subject matter requires the inven-

tion to be useful. The usefulness criterion requires the utility with a readily

apparent purpose. According to the eighth edition of Manual of Patent

Intellectual Property in the Information Age 57

Examining Procedure (U.S. Patent and Trademark Office, 2007), the purpose may be explicit or implicit. Despite those guidelines, the courts and the U.S.

Patent and Trademark Office consistently articulate utility in the form of a specific and substantial nature. The specific utility component requires "a well-

defined and particular benefit to the public" (In re Fisher, 2005, p. 1371). Besides the criteria of novelty, nonobviousness, and usefulness, the courts have

articulated that nonpatentable subject matter includes abstract ideas, laws of nature, mathematical equations without applications, and natural phenomena

(Gottschalk v. Benson (1972)).

Patent Filing

Besides the requirements for the patentable subject matter form and qualities,

the patent filing requires documentation of "specification" and "claims" (35 U.S.C. § 112 (2008)). Specification refers to adequacy in the patent descrip- tion so that others in the craft may replicate the invention. Furthermore, the

patent instrument must contain the stated claims of the invention or what the invention accomplishes. To do so, the written description must include the various structural or physical characteristics and their properties, and it must

spell out the elements of the invented product or process and its functionality. In practice, the specification and claims components of a patent applica-

tion mandate a detailed instrument, particularly for a biotechnology patent

application. In Regents of the University of California v. Eli Lilly and Co. (1997), the issue related to whether the university had "possession" of the invention. The rationale for this standard is to prevent a patent holder from later extend-

ing the capacity of the patent with assertions that its patent covers some process or product not explicitly indicated on the initial patent application

(Holman, 2007). With that policy in mind, the judges in Regents of the Uni-

versity of California v. Eli Lilly and Co. crafted an interpretation of the written

description requirement in which transference of information from one con-

text to another was not acceptable. The researchers used recombinant DNA technology to extract rat insulin, and based on the researchers' belief that the process concept would be transferable to humans, they also filed a patent with

the same procedures to extract human insulin. According to the court, the patent application contained sufficient description for the rat insulin treatment

process but lacked the required description for the human insulin patent. It

noted that the description required a "precise definition, such as by structure,

formula, or chemical name, of claimed subject matter sufficient to distinguish

it from other materials" (p. 1566), and in this instance the description indi-

cated only a general method to extract a synthesized DNA sample, known as

cDNA, encoding human insulin. Although the description contained suffi-

cient information about the process, the court indicated that more informa-

tion regarding the properties and characteristics of the microorganism

connected with the process was needed in the patent. In this case, which is

still good law, the court declared that a very detailed written description of

related scientific properties and characteristics must be indicated in the patent

application. For many, this written description standard raises the bar for

patents, especially for biotechnology patents, as the articulation of structural

sequences of particular genes from a patented process is extremely difficult

(Holman, 2007). Nevertheless, the trend in court decisions appears to move

toward greater and more specific details.

In many past cases, the details in the written description also permitted

some inference or imputation of information to individuals who are skilled in

the craft (see, for example, Merges and Nelson, 1990, 1994). As such, the writ-

ten description did not have to recite every piece of information, provided an

enabling disclosure standard was met (that is, the application contained clear

enough details for an individual with ordinary skills of the trade to replicate

or use the invention). In University of Rochester v. G. D. Searle (2004),

Rochester claimed that Searle and several other pharmaceutical companies

infringed on its patent. The patent covered a treatment method selectively

using Cox-2 inhibitors to reduce inflammation while also reducing side effects

such as stomach ulcers, bleeding, and irritation that existed with other treat-

ments. The pharmaceutical companies successfully argued that no infringe-

ment occurred because Rochester's patent was invalid. They claimed that the

patent description did not disclose the compounds needed to achieve

the intended outcome, and they contended that Rochester was stretching its

patent coverage. In response, Rochester asserted that it did sufficiently describe

the method and that scientists with ordinary skills in the field could properly

administer the methods and achieve the same results. The court disagreed with

Intellectual Property in the Information Age 59

Rochester. It concluded that Rochester's method depended on a specific com- pound, which was not articulated in the patent. Consequently, the court inval-

idated the patent. Thus, this case indicates that generalizations in a patent

without specific claims cannot be upheld; otherwise, those patent holders could assert a patent's purpose that was not intended or recognized at the time

of the patent filing.

Patent Ownership and Rights By default, federal patent laws presumptively assume that the first inventor

files and receives the patent. This filing pursuant to federal patent law deter- mines the proper inventor, but it does not always identify the owner of the

invention or the rightful holder of the patent. Because a patent is a property right, state law governs-as it generally does in dealing with all property rights

(Kaplin and Lee, 2006). Typically, in cases dealing with property interests, par- ticularly for patents, those interests are determined through the applicable

state's contract law. Indeed, inventors may enter into a contract to assign (that is, transfer) their

rights to another party, which usually occurs between inventors and

their employer.8 At many universities, the inventor is required to disclose both the invention and to assign (that is, transfer) his or her rights to the univer- sity (Korn, 1987). For example, a university intellectual property policy may

explicitly state that inventions created with any university resources belong to the university. Likewise, a university employment agreement may explicitly

state that employees, including academic researchers, are hired for the express purpose of creating, discovering, and inventing products and processes for

commercial and intellectual purposes. Such statements through an employ- ment contract present expectations of ownership rights to employees' inven-

tions. In short, the law of contracts dictates the ownership rights.

Contract law is primarily interpreted through applicable state laws, not federal laws; thus, the determinations may vary somewhat from state to state. Nevertheless, some general contract law principles apply (Drechsler, 2008;

Weidemier, 2007). For one, an express agreement represents the clearest form of ownership determination. A university employment contract between the employer and employee serves as an expressed agreement to articulate

the intentions of the parties regarding ownership and corresponding rights to

inventions. Second, express terms in a contract with an industry research spon-

sor often spell out the ownership rights, related distributions, and controls

over the invention.

In rare instances, a state university's policies may be equivalent to a state

statute. In Kucharczyk v. Regents of the University of California (1996), the court

indicated that the University's status as a state constitutional agency makes its

policies akin to state statutes. Despite this elevated category of university poli-

cies, the court's analysis followed state contract law interpretations.

When express terms for patent ownership are not given in the contract,

implied terms or an implied contract might exist. According to Weidemier

(2007), an implied agreement governing patent ownership usually occurs in

one of three ways: (1) the individual was hired to invent, (2) the individual

was hired to solve a specific problem, or (3) the individual served the employer

in a fiduciary capacity. For example, in Regents of the University of New Mex-

ico v. Knight (2003), the court ruled that the university and the academic sci-

entists had an implied contract. Under New Mexico contract law, employment

policies constitute an implied contract, and as evidence of an agreement the

university cited language from the employment contracts, its patent policy,

and coinventor agreements to demonstrate that inventors are required to assign

patents to the university. The court concluded that the university owned the

inventions in question. Similarly, even when no employment arrangement

exists for others in the academic community, such as with graduate or under-

graduate research assistants, the law generally interprets an implied contract

based on the student handbook or other prevailing policy documents (but see

Patel, 1996).

When no agreement can be located either through expressed or implied

terms, a university may assert "shop rights" if the invention was made using

the university's equipment, facilities, or other resources (Drechsler, 2008). "Shop rights" permit employers to use an invention created by its employees

when the invention used resources from the "shop." By operation of law, a

quasi-contract is recognized, and the employer receives a nonexclusive license

through the shop right privilege. The focus is on employment conditions, not

necessarily the status of the employee. Therefore, part-time staff and employed

Intellectual Property in the Information Age 61

students such as graduate research assistants could meet the standard for col- leges and universities to seek shop rights (see, for example, University of West

Virginia Board of Trustees v. Vanvoorhies, 2002). In addition, under contract

law universities may specify in their handbooks the required assignment of rights to all inventions created by the university community when campus

resources are used.

Coinventor Status An invention may involve more than one inventor, and the law in this case

reflects the conflicts associated with patenting. Under the law, coinventors

apply and declare inventor status jointly (35 U.S.C. §116 (2008)). The stan- dard for qualifying for joint inventions is high, and one's mere participation in the inventive works alone is insufficient. In Stern v. Trustees of Columbia

University (2006), the court drew from past cases to articulate the standards for joint inventorship and indicated that each joint inventor must generally

contribute to the conception of the invention. In this case, Stern, a former medical student at Columbia University, assisted a professor for one semester

with a research project that used prostaglandins to reduce intraocular pressure as a treatment for glaucoma. The professor later patented the glaucoma treat-

ments and assigned the inventions to the university. Stern then learned of the

patents and sued the professor and the university, claiming joint inventorship.

The legal presumption is that nonlisted inventors are not coinventors.

Consequently, the burden was on the student to prove otherwise. The legal burden falls between the preponderance of evidence in most civil trials and

beyond a reasonable doubt required of criminal cases. In this case, the former

student attested to the experiments that he carried out, but the court deter- mined that he was unaware of certain claims made on the patent application

and held that Stern was not a joint inventor.

In prior rulings, joint inventor claims were dismissed when an individual who claims to be the inventor assigns patent ownership to another party such as a university (Patel, 1996; Seymore, 2006a, 2006b). In these cases, the uni-

versity typically holds the patent rights, and the courts have held that the claimed coinventors have no standing to challenge the rights that were assigned to them. In Chou v. University of Chicago (2001), however, the court permitted

a claimed coinventor's challenge over the assignment of rights because the coin-

ventor indicated that although she would assign her rights to the university

per the employment agreement, her inclusion as a named coinventor was crit-

ical to her reputation in the scientific community. Consequently, in this case

the court held that the claimed coinventor, who was also a graduate student,

could pursue her action to be named as a coinventor even though questions

of ownership were not at issue. For many, this case also stood for the propo-

sition that graduate students could not be taken advantage of by their faculty

advisor (Patel, 1996; Seymore, 2006a, 2006b).

In biopharmaceutical inventions, the law is well established that coinven-

tors must have "knowledge of both the specific chemical structure of the com-

pound and an operative method of making it" (Board of Education v. American

Bioscience, Inc., 2003, pp. 1341-1342). In a case challenging inventorship sta-

tus for the cancer treatment drug Taxol, several scientists who were at Florida

State University as lab participants in the drug's development sued the uni-

versity for inclusion as joint inventors. In that case, the court provided addi-

tional legal guidance in joint inventor claims. Specifically, it declared that "teaching skills or general methods that somehow facilitate a later invention,

without more, does not render one a coinventor" (Board of Education v. Amer-

ican Bioscience, Inc., 2003, pp. 1341-1342).

In light of the patent joint inventor qualifications, differences between the

list of authors who write about academic inventions in a publication and

the list of coinventors declared on patent applications can be expected. Norma-

tive behaviors in the academic-scientific field often list numerous authors on

articles in which one or more authors played a relatively minor role in the pub-

lication. Although that standard suffices for the academic-scientific publishing

arena, it is insufficient to qualify as a coinventor of a patent. As discussed, the

patent filing requires the claimed coinventors to show that they actively partic-

ipated in the invention's conception, formulation, and understanding.

The Research Exemption Patent law exempts certain acts from infringement claims. Under the experi-

mental use exemption, researchers may use patented inventions in very limited

Intellectual Property in the Information Age 63

circumstances. According to the law, under the experimental use exemption a party without any legal approval from the patent holder or its assignee may still use a patented invention provided that its use is "solely for amusement, to satisfy idle curiosity, or for strictly philosophical inquiry" (Madey v. Duke University, 2002, p. 1362). One might argue that university research and instruction would fall into the experimental use exemption, yet in 2002 the court in Madey ruled that the experimental use exemption did not apply to Duke University. According to the court, the research exemption to patent infringement does not apply when use of the patented product is in further- ance of a university's business activities. Because the projects that required the use of the patented product furthered the "institution's legitimate business objectives, including educating and enlightening students and faculty partic- ipating in these projects," the court did not accept Duke's argument that its activities fell into the research exemption (Madey, 2002, p. 1362). Thus, the use of the invention amounted to a patent infringement.

The case centered around two patents. Before working at Duke Univer- sity, Madey invented two free electron laser technologies while at Stanford

University and retained full patent rights to those inventions. When Madey arrived at Duke, he directed the free electron laser research lab and used equip- ment under his patent ownership. After a decade as director of the lab and a bitter dispute, Duke officials removed Madey as the lab director. As a result, Madey resigned, but Duke continued to use the two patented free electron laser technologies, which led to the lawsuit.

Duke's primary argument rested on the acceptable use of patents for "research, academic, or experimental purposes" (Madey, 2002, p. 1361). As further support of the exemption to patent infringements, the university argued that its nonprofit status plays a role. The appellate court disagreed. The court emphasized the narrow application of the experimental use exemp- tion to instances of general inquiry without any business engagement. The court interpreted the academic research laboratory's activities with the patented technologies as furthering the legitimate business activities of the university (Eisenberg, 2003). Thus, the experimental use exemption did not apply, and the court ruling determined that Duke's actions amounted to patent infringement.

Besides contributing to the patent thicket problem (see the next chapter

for a discussion of patent thickets), academic researchers who conducted basic

research often bypassed intellectual property rights and ignored the patent

thicket problem because they asserted a research exemption (Yancey and Stew-

art, 2007). That is, they simply used patented products and processes because

they assumed a research exemption protected them. In 2002, the U.S. Court

of Appeals for the Federal Circuit declared that the research exemption does

not exist as broadly as researchers had thought.

Madey illustrates how commercialization of research undermines the very

activity needed to commercialize the research: research itself. In other words,

the research exemption in patent law allows for a kind of "fair use" of patented

inventions. But if the institution promotes such use for the purposes of seek-

ing commercial gain, then the research exemption may be nullified and may

actually subject itself to a patent infringement lawsuit. Such activities high-

light the conflicts associated with patenting specifically and intellectual prop-

erty generally. Moreover, engaging in research activities to educate students,

further faculty interests, "increase the status of the institution[] and lure lucra-

tive research grants" as well as top quality students and faculty, thereby dis-

qualifies academic institutions from asserting the research or experimental

use exemption over patented products and processes (Madey, 2002, p. 1362).

Put simply, the laws are narrowing circumstances that qualify using patented

products and processes under the research exemption, and the courts incre-

asingly recognize the commercial nature of higher education for private

interests.

Copyrights and Patents: Computer Software In certain cases, the invention, which is also placed on a fixed medium, falls

uinder both copyright and patent protections. The legal questions associated with these cases are even more complex because individuals are uncertain

about which laws and guidelines apply. Innovations in technology thus con-

strain the application of existing laws and in turn present more contentious

and uncertain situations in higher education. One particular technology high-

lights this problem: computer software.

Intellectual Property in the Information Age 65

Computer software is expensive to develop but easy to copy, making it vul- nerable to piracy (Bhattacharjee, Gopal, and Sanders, 2003; Gross, 2005;

Schacht, 2006). The United States was the first nation to actively protect soft- ware; however, extensive debates occurred about whether software should be protected under copyright or patent law or some other law. Proponents of copyright law argue that computer software is simply another form of "writ- ing" brought about by technological changes. Proponents of patent protec-

tion argue that the effort and functional uses of software are more analogous to inventive activity than to artistic creation. Others argue that neither copy- rights nor patents are analogous in such a case and that some special kind of protection is necessary. In the United States, the decision came down primar- ily in favor of copyright protection, and in 1980 the Copyright Act of 1976 was amended to explicitly cover software (Wallerstein, Mogee, and Schoen, 1993).9 The debate lingered on as to whether software qualified for a patent. After decades of debates and mixed court messages on whether software con- stituted a patentable subject matter, the U.S. Supreme Court ruled in Dia- mond v. Diehr (1981) that a computer program used to recalibrate a production method qualified for a patent. Consequently, computer software would be protected with a patent and a copyright.

During the early development of computer software programs, the higher education community infrequently raised concerns over issues about proprietary rights. To the extent that there were proprietary rights, they tended to be enforced by restrictive trade secret licensing agreements (Samuelson, 1993). Four significant developments in the 1980s, however, changed the landscape

of the software industry and intellectual property rights. First, the growth of personal computers led to the increasing need for software. Second, the com- mercial success of early software for personal computers such as Visicalc and Lotus 1-2-3 also increased activity in this area. Third, the legal decision to offer protection of software under copyright law and the decision of the Copyright Office to discontinue its policy of requiring that the full text of source codes be deposited with it permitted the full disclosure of the software without the need to resort to trade secrecy. Finally, the decision of the Patent and Trade- mark Office to start issuing patents to software gave added protection to soft- ware and led to the proliferation of patents (Samuelson, 1993).

Computer programs are controversial because the type of protection they

warrant is under debate. Because they can be easily reproduced and copied,

pilation (common with patented information for design improvement) would

be problematic as reproduction itself would constitute infringement. Some

patents have been granted for software, but perhaps only if it is adequately

embodied in a machine (such as the iPhone) or adequately restricted to a par-

ticular range of applications (Barton, 1993).

Institutional Patent Policies To determine the rightful owner of patentable works created at colleges and

universities, parties may not find helpful answers from the law of copyright or

patents. Instead, laws pertaining to contract law may be more instructive, and

institutional patent policies serve as one source to figure out the terms of the

contractual arrangement if an explicit agreement does not exist.

As institutions of higher education recognized the value of patent protec-

tion for academic research, university patent policies emerged on campuses

across the nation. This development was noticeable. In 1934, Palmer pub- lished one of the early studies of university patent policies and practices at

more than twenty U.S. universities and the University of Toronto. He found

that most universities in his sample did not have a patent policy in place

and that patent determinations were made case by case. But by the latter part

of the 1950s, eighty-five universities had some form of patent policy in place.

Much of the movement occurred because the National Research Council

encouraged and even advocated for patent policies so that inventions would

be protected and controlled by the academic community (Robbins, 2006). In

addition, a provision in the Bayh-Dole Act of 1980 requires nonprofit uni-

versities that file for patents to maintain policies regarding rights and respon-

sibilities over the inventions. Today it is highly unlikely that any institution

does not maintain patent policies, even if it engages in a low level of research

activity (Korn, 1987).

With the increasing adoption of university patent policies, several papers

have examined the content of entire institutional patent policies (see, e.g.,

hItellectual Property in the Information Age 67

Audette, 1980; Bowers and Leon, 1994; Heathington, Heathington, and

Roberson, 1986; National Association of College and University Business Offi-

cers, 1978; Sun, 2008). For instance, in 1978, the National Association of

College and University Business Officers published a report of intellectual property policies at thirteen research universities (Boston University, Califor- nia Institute of Technology, Cornell University, Massachusetts Institute of

Technology, Purdue University, Rockefeller University, University of Califor- nia, University of Connecticut, University of Georgia, University of Pennsyl-

vania, University of Southern California, University of Virginia, and

Washington University). The report briefly commented on selected aspects of

the policies and attached copies of the policies. Taking those 1978 policies, Sun (2008) analyzed and compared them with the 2008 policies of the same thirteen research universities. Sun found significant similarities in the fram- ing of these policies' purposes and the legal provisions governing the patent

rights. For example, the policies from 1978 and 2008 justified their patent- ing purposes around three principal concerns: patenting for the public good,

supporting scientific talent, and addressing the needs of economic develop- ment (see also Bowers and Leon, 1994; Metlay, 2006; Rhoades and Slaugh-

ter, 1991). In addition, nearly all of these policies in 1978 and in 2008 included provisions regarding invention disclosure requirements, the role of

the technology transfer office, ownership rights, and distribution over licens-

ing royalties and equity. Some differences existed, though most appeared neg-

ligible. For instance, with regard to the urgency of invention disclosures, only

two of the patent policies in place by 1978 expressed urgency and expressly mandated disclosures. By 2008, all thirteen institutions conveyed clear require-

ments to disclose and language that indicated expediency in the disclosure

process. Similarly, the 1978 and 2008 policies discussed royalties, but in the 2008 policies, a few institutions changed their basis for calculation from gross

to net amounts.

With a larger sample, Bowers and Leon (1994) examined sixty-five insti- tutional policies from primarily high-activity research universities. Their analy-

sis illustrated the diversity in policy language while also highlighting the

primary provisions contained in these policies, particularly sections that addressed equity rights of universities, procedures for distribution of patent

policies and disclosure of inventions, and income distribution to inventors.

The study highlighted particular characteristics and approaches to framing

patent policies. First, the policies contained generalized themes, particularly

about the universities' interest in inventions. For instance, sixty-two of the

sixty-five policies expressed institutional rights to the inventions of faculty,

staff, or students. In addition, these institutions specified an interest when

inventors use significant university resources. Furthermore, many of the insti-

tutions expect their faculty and staff to disclose inventions. Because these pro-

visions appear with high frequency among the policies, they signal some

standardization among policies. Second, although many of the policies differ

in how they structure and share revenue derived from the intellectual prop-

erty, this article revealed several ways to structure distribution of revenues at

least as the policy committees set the arrangements back in 1993. Third, Bow-

ers and Leon acknowledged that in several instances the policy audience and

policy purposes differed. For instance, according to the authors, Louisiana

State University's policy addressed rights of external sponsors, while many of

the other policies conveyed institutional priority over faculty, staff, or student

rights. Fourth, Bowers and Leon highlighted special provisions contained in

the policies, which also identified interested parties and institutional priori-

ties. For instance, at the University of Mississippi, the policy requires the uni-

versity to favor state firms when engaging in technology transfer, which is likely

consistent with the state's other government contract priorities and is aligned

with its role as an economic engine in the state.

The challenge in studying patent policies, very broadly, is that generaliza-

tions are very difficult to draw (see, for example, Fine and Castagnera, 2003).

Bowers and Leon (1994) and Sun (2008) examined numerous patent policies

in their entirety, and they all concluded that many of the policies contained

similar overarching headings but that variations in key provisions existed in

areas such as royalty distribution and interested parties. Each institution struc-

tures its policies to meet particular interests (for example, intellectual prop-

erty committees or individual administrators who crafted the language to meet certain institutional concerns) or to adhere to the specifics of its state's laws.

Rather than examining the entire institutional patent policies to locate

broad overarching similarities, several articles examine a particular concept

Intellectual Property in the Information Age 69

captured in the policies. These studies attempted to establish categories in a given concept to capture the various ways to determine ownership. Under one

approach, the researcher analyzed institutional patent policies from a resource

frame (Chew, 1992). Based on the resources used, ownership of patentable

works followed. For that study, Chew (1992) surveyed the patent policies of

twenty universities with the largest research expenditures during the 1987 fis-

cal year plus seven other research universities that fall under the Carnegie Clas- sification of doctoral institutions. Chew observed three categories of

intellectual property policies designed to differentiate patent ownership. In

one set of policies, which she referred to as resource-providers, institutions

based their claims to ownership on the amount of university resources used.

Typically, if the inventor used significant university resources, the invention

would become university property. In another set of policies, known as max-

imalists, universities asserted ownership rights when one of two conditions

were met: either university resources were used or inventing was part of the

creator's employment. The final group of intellectual property policies justi-

fied extensive university ownership. Known as the supramaximalists, these institutional policies took ownership of all faculty work created during employ-

ment, whether or not the invention was created during faculty personal time.

Chew pointed out that often universities permitted faculty to have, use, or keep a portion of the royalties but a general presumption existed that "the uni-

versity, as the employer, owns faculty research" (p. 261).

In another approach, the researcher analyzed institutional patent policies

based on employment arrangements. Using this frame, Smith (1997) argued

that the determination of ownership begins with an examination of any state

statutes that might apply or language from a contractual agreement that

addresses assignment of inventions to employers. Without it, he explained

that claims to ownership derive from common law (that is, case law). According

to Smith, the case law identifies three types of employment arrangements asso-

ciated with different intellectual property ownership or rights to the intellec-

tual property. In one employment arrangement, when an employee is explicitly

hired to invent, the employee's inventions belong to the university. Smith

referred to this employment arrangement as "specific inventive employment." In another employment arrangement, an employee would have responsibilities

to carry out "research," "design," or "development." For this arrangement, the

inventor would retain ownership rights, but the employer would obtain shop

rights or a nonexclusive privilege to use the invention. Smith labeled this

employment arrangement "general inventive employment." In a third category,

the employment arrangement is such that the employee works without any

expectation to invent. In such instances, known as "general employment," the

inventor retains the rights and the university has no legal rights to the inven-

tion. Of course, all these rules about patent ownership beg the question of the

power struggles associated with patenting, which are important for determining

the nature of the agreements established in institutions.

Questions of Ownership: Faculty Versus Administrators The construction of intellectual property policies illustrates the competing

interests and the impending power struggles among the parties to university-

based inventions (see, for example, Mendoza and Berger, 2005; Rhoades and

Slaughter, 1991). At one level, the power struggles highlight the authority

structures, particularly tinder the law. Because employment and contract laws

dictate the ownership and corresponding rights (for example, royalties), the

imbalance of power is skewed toward the universities as employers. Rhoades

and Slaughter (1991) studied one research university's processes in adopting

a technology transfer policy and related intellectual property provisions. They

illustrated how certain groups, particularly administrators, emphasized hier-

archical structures as a means to remind faculty and other process participants

of their ultimate authority. In addition, to further accentuate the authority

and power divide, Rhoades and Slaughter observed differences in resource

availability among the participants. For example, the administrators had staff

at their disposal to carry out some of the work related to the policy construc-

tion, whereas faculty and other participants had no supporting personnel.

Similarly, changes in administrative roles and control over intellectual prop-

erty may occur over time. Identifying the relational shift between the univer-

sity and faculty, Slaughter and Rhoades (1993) traced the policy shifts over

intellectual property at one state institution. Specifically, they examined state

Intellectual Property in the Information Age 71

statutes, system rules, and institutional policies during three periods of intel-

lectual property policies (that is, 1969, 1977, and 1988). They observed a shift in administrative roles and control over those three periods. For example, in the initial 1969 policy, the university stood as the primary, relevant authority over intellectual property. In 1977, the policy added the Board of Regents to

the mix while simultaneously increasing the university's "control and discre- tion over faculty's commercially relevant work" (p. 297). By 1988, new refer- ences to the state statutes were incorporated into the policy. According to Slaughter and Rhoades, this change indicated the increasing control of the overarching entity, the state, over commercially related activities. The change from 1969 to 1988 represents a shift in control over research away from aca-

demics to the state, and differentiation among state employees became blurred.

The construction of university patent policies also raises questions about group representation and whether faculty represent the greater corporate body

or a narrower interest in the larger body or a subgroup. Rhoades and Slaugh- ter (1991) noted the differences among viewpoints in which multiple groups

acted in their own interest. They highlighted the conflicts and power strug- gles among the various actors: administrators, faculty, committee members,

subcommittee members, and system boards. Each operates to further its goals seemingly without regard for the others, and faculty in the sciences particu- larly appear to advance goals related to their overarching field's needs without

consideration of faculty in other domains or fields of study. The development of university patent policies also illustrates the mixed

messages that interested parties may send in their efforts to promote multiple yet conflicting benefits. As Rhoades and Slaughter (1991) observed, faculty presented "multiple symbolic commitments that undercut each other" (p. 76),

such as when they expressed the norms of open science but then proposed lan- guage to reward academic inventors financially. These conflicting messages

might be the result of faculty concessions. That is, when the faculty realized that these patent policies would be in place no matter what, they sought to compromise so as not to be left out of any financial returns.

Likewise, the conflicting messages are observable over time as intellectual property policies in the same institution or system are followed. Based on a study about intellectual property policies constructed at one state institution,

Slaughter and Rhoades (1993) traced how the ideology behind the intellec-

tual property policy shifted from 1969 to 1988. In 1969, commercial activ-

ity and ownership arrangements defaulted to whatever agreement was made.

By 1977, the policy indicated that transferring ownership to for-profit groups

would not serve the public interest and discouraged such activity. But the tone

of the 1988 policy changed, and the "public interest was redefined to allow

the transfer of technology and title to the private sector" (p. 294). Thus, the

prospects of commercial activity became more accepted, and the lines between

the private and public sectors became less distinguishable.

These studies signal a turn away from the professoriate's control over its

work products and work environments. Slaughter and Rhoades' study (1993),

for example, explained how in the 1969 policy, faculty could participate in an "invention solely on their own time." In 1977, the policy no longer provided

such a proviso and only acknowledged the possibility that faculty could have

created inventions "partly on their own time." By 1988, the language of fac-

ulty ownership was deleted, and "there was no recognition that faculty had

time separate from and outside the control of the university" (p. 294). In short,

the policy changes reflected the movement from a professor with autonomy

to a professor who reported to an employer. Thus, the power struggles in these

studies illustrate the inherent conflicts and expressions of competing interests

that arise when negotiating institutional patent policies at colleges and uni-

versities.

Questions of Ownership: Academe Versus Industry Inventions and other research work between the academic community (that

is, universities and academic scientists) and industry are typically legally gov-

erned by contract law. Generally, parties connected with the work sign an

agreement, which derives from the principal contract. For instance, the uni-

versity may have a written contract with a company to study a chemical reac-

tion. The relevant parties, such as the academic scientists in the lab, would

also likely sign a contract that adheres to the primary agreement between the

university and the company.

Intellectual Property in the Information Age 73

Because the parties are free to negotiate the terms of the contract, the pre- cise negotiated terms of these contracts vary substantially. Terms incorporated into the agreements regarding the patent provisions may outline provisions for ownership of patent rights, right of first refusal to obtain licensing, type of licensing, royalty amounts, management of the invention, prepublication reviews of works related to the invention, publication delays (typically not longer than three to six months), conditions for follow-up studies, invention

audits, periodic lab inspections, arrangements for payment of services, steps to address conflicts of interest, and procedures to deal with infringement vio- lations such as arbitration proceedings (see Castagnera, Fine, and Belfiore,

2002; Maxwell, Turley, Warren, and Wright, 2003; Newberg and Dunn, 2002).

Like university patent policies, provisions governing patents in contracts between the university and industry also demonstrate power struggles (see, for example, Blumenthal, Campbell, Causino, and Louis, 1996; Blumenthal, Causino, Campbell, and Louis, 1996; Press and Washburn, 2000). As a result of these negotiations, industry sponsorship results in industry ownership. This point is not surprising because industry pays for the services and expects a return in the form of patent ownership and revenues that derive from the intel-

lectual property ownership. Furthermore, Mello, Clarridge, and

Studdert (2005) found that conflicts also arose over intellectual property mat- ters after the signing of the contract. Based on a study of 107 medical schools that participated in clinical trials for industry, 30 percent of respondents reported disputes with industry sponsors over intellectual property even after

the contract was signed.

Despite these studies, some argue that power is not limited to one party, and imbalance of power may in reality represent equal power when the terms of the contract are properly negotiated upfront (see, for example, Casey, 2004; Newberg and Dunn, 2002). Based on feedback from members in the Uni- versity-Industry Partnership, which represents universities and industry, 10

Casey (2004) noted that intellectual property issues are one of the most sig- nificant barriers to university and industry collaborations. Because intellectual property serves as a major stumbling block toward moving forward on proj-

ects, the parties likely have more equal footing at the negotiation table during

the outset. Therefore, the provisions on intellectual property may not be as

one-sided as perceived to be between universities and industry. The level play-

ing field might be because the contract itself dictates the terms and no default

rules are derived from, say, employment contracts and student handbooks,

which would favor one party over another. As additional evidence of perhaps

a more equal balance of power between universities and industry, Newberg

and Dunn (2002) examined a case study over the establishment of the Net-

centricity Laboratory at the University of Maryland to understand the

processes of contract negotiations, particularly with regard to patent provi-

sions. They concluded that the university's negotiating power was not negli-

gible, and the institution had the leverage to negotiate terms that the university

deemed critical, such as terms for intellectual property.

Challenges over patents, whether for infringement or interference, take

their toll, and large litigation costs are associated with litigation avoidance,

preparation, and actual procedures.] I Of course, the payoff can sometimes be high for colleges and universities. For instance, in July 2006, Inside Higher

Education reported that a "biotechnology company has agreed to pay the Uni-

versity of Alabama System $25 million to settle a patent infringement lawsuit"

(Lederman, 2006). The university stied Nektar Therapeutics, alleging that its

founder, a former professor at the university's Huntsville campus, had used

patents owned by the university to create technologies valued at nearly $200 million. Similarly, in 2004 the Chronicle of Higher Education reported that

after "11 years of litigation, the University of Colorado Health Sciences Cen-

ter will finally receive a $58.3-million patent-infringement judgment from Wyeth, now that the U.S. Supreme Court has declined to consider an appeal

sought by the giant pharmaceutical company" (Blumenstyk, 2004, p. A28).

Chapter Summary This chapter illustrated how the law drives academic inventions, facilitates

commercialization, and arbitrates conflicts associated with the first two. First,

the combination of patent law and other legislation drives academic inven-

tions because they provide substantial incentives for universities to engage

in the commercialization of patentable products and processes. Second, as a

Intellectual Property in the Information Age 75

facilitator to this commercial enterprise, the law leads to technology transfer

now that federally funded research may be commercialized. Third, in response

to questions of patent ownership and contract negotiations, the law delineates the rights and conditions associated with conflicts over academic inventions

and their commercialization, conflicts exacerbated by technological changes,

particularly shifts in biotechnology.

Several questions must be resolved to figure out the ownership rights of university and inventor: Do the documents and other supporting materials indicate whether an expressed agreement, implied agreement, or shop rights

exist? In what capacity was the inventor hired, that is, was she or he hired to invent? Did the inventor use any university resources? Although this legal analysis serves its role in deciphering the parties' rights, based on the litera- ture, more likely than not the university maintains an institutional patent pol-

icy that directs the parties to rights and responsibilities over an invention, so the focus is typically on whether an expressed or implied agreement exists. The

construction of agreements and institutional policies, however, generates a dis-

cussion about the degree of power plays. The literature reveals that the power differential between faculty and administrators likely diminishes professors' rights over intellectual property, and in some cases, a divide may exist among faculty who negotiate for their own interests, not the interests of the corpo- rate body. The power differential appears less significant between universities

and industry so long as the negotiated terms are clear upon signing of the agreement.

Patents and Higher Education's Entry into the Market

S EVERAL FORCES CONTRIBUTED to the formation of a national innovation policy, and universities stood at the center of this policy devel-

opment and implementation (Mowery, Nelson, Sampat, and Ziedonis, 2001;

Nelson, 2001). A critical component of this national innovation policy move-

ment included universities' participation in commercial activities (Pulsinelli,

2006). By doing so, universities and academic scientists were drawn to legal

structures to protect their interests from encroachers who might hoard the

invention and harm American innovation. For some inventors and universities,

patents served as the best solution to protect these academic inventions from

outside interference or infringement. But the seeking of patent protections

does not come without controversy. A patent grants exclusive rights to the

inventor or holder of the rights from others' use, sale, distribution, or pro-

duction of the invention. These legal rights essentially establish a temporary

monopoly over matters related to the invention and have been recognized as

antithetical to the academic culture. To expand on these developments of the

innovation agenda and choices of whether to patent academic research, this

chapter discusses the forces that moved universities toward greater patent activ-

ities and explores the very arguments and interests related to university engage-

ment in patent protections.

Development of University Patent Activities The concept of commercializing academic research through patent activity

started after a 1907 invention at Berkeley. At that time, Frederick Cottrell of

Intellectual Property in the Information Age 77

the University of California patented his electrostatic precipitator, a device that removed particles from the air. His invention and subsequent patent sparked attention in higher education because it initiated the commercializa- tion of academic research (Metlay, 2006; Mowery and Sampat, 2 001 a, 2001b). Further, after rolling out his invention in 1912, Cottrell established the Research Corporation, a patent management organization that relieves inven- tors from tackling the bureaucracy associated with the patent process. These events marked the start of a new era: commercialization of academic research.

The role of government also expanded around the conclusion of World War II (Geiger, 1986, 1993, 2004). During that time, a national report spurred conversation about government's advancement of science. Specifically, in 1945 Vannevar Bush proposed the idea that the government should stim- ulate scientific research to fight diseases, protect the nation, and support the public. To meet these goals, he recommended that the federal government invest in scientific talent and relinquish control over governmentally spon- sored research to industry and universities. Berneman (2003) characterized this report as the application of the reservoir theory, a concept in which the federal government would subsidize basic research at universities and univer- sities would thereby advance science with a reservoir of knowledge. In return, industry would transform the knowledge into commercial technology. Yet selected members of Congress and public officials at federal agencies ques- tioned whether the government should engage in commercial activities and what role university-government projects would have in commercial ventures (Etzkowitz, Webster, Gebhardt, and Terra, 2000). Equally important, many universities behaved cautiously because governmental support could translate into governmental interferences (Price, 1954; Sanger, 1984, 1985). Despite these concerns, the federal government adopted Vannevar Bush's policy pro- posal and moved forward with subsidies for scientific research.

With increasing scientific research funding from the federal government, academic scientists could carry out their role as reservoirs of knowledge and explore critical national scientific policies such as space studies, drug treat- ments, and agricultural approaches. In addition, patenting of academic research started to grow from the late 196 0s through the 1970s, when selected federal agencies permitted ad hoc determinations over whether universities

could retain intellectual property rights of federally funded research (see, for example, Henderson, Jaffe, and Trajtenberg, 1998; Mowery, Nelson, Sampat,

and Ziedonis, 2001). In 1968, the U.S. Department of Health, Education, and

Welfare (HEW) formulated an institutional patent agreement so that univer-

sities could request filing of patents for academic research products and

processes developed with HEW funds (Metlay, 2006; Mowery and Sampat,

2001a, 2001b; Mowery and Ziedonis, 2002). Following that policy change,

university patents from governmentally sponsored projects increased substan-

tially during the 1970s (Mowery and Sampat, 2001a, 2001b). With the growth, Mowery and Sampat (2001 a) noted, many universities began to move

away from using external brokers like Research Corporation and instead devel-

oped university patent and licensing offices. In fact, in the 1970s high research

productive universities such as Boston University, California Institute of

Technology, Colorado State, Cornell, Georgia, Harvard, Iowa, Johns

Hopkins, Stanford, Southern California, and Virginia established patent and

licensing operations (Association of University Technology Managers, 2007).

These factors contributed to the increases in university patents.

Although specific federal agencies' intellectual property agreements

and the growth in the number of university patent and licensing offices facili-

tated the increases in the number of university patent activities, it was passage

of the Bayh-Dole Act in 1980 (35 U.S.C. §200, et seq. (2008)) that represented

the single monumental event for the commercialization of federally supported

academic research (Gulbrandsen, 2007). This legislation permitted universities

to patent federally funded research, a policy that was not uniformly applied

by many federal funding agencies until 1980.

The Bayh-Dole Act

Officially known as the Patent and Trademark Act Amendments of 1980, this

legislation, which was authored by Senators Birch Bayh of Indiana and Bob

Dole of Kansas and enacted on December 12, 1980, permits universities to

hold the patent rights and corresponding license revenue from federally funded

projects. Before passage of the Bayh-Dole Act, only selected federal agencies

participated in institutional patent agreements with universities. Furthermore,

treatment of intellectual property differed even in a federal agency and its

Intellectual Property in the Information Age 79

contract with a university. The Bayh-Dole Act established a uniform system

for intellectual property over federally funded research to nonprofit universi-

ties. Specifically, the law provides for the following applications to federally

funded research:

A uniform patent agreement with federal agencies;

An opportunity for nonprofit organizations, including universities, to file for

patent protections of discoveries and inventions;

A reward system for inventors, which includes sharing proceeds;

A nonexclusive license to the federal government;

"March-in" rights (or access) to technology not used for commercial activities;

A mandate that discoveries and licenses remain in the United States; and

Rights of universities holding the patent to assign exclusive licenses to the

technology.

The law formally established another opportunity for universities to qualify

for an additional interest from federally subsidized projects.

Accordingly, university patent activity increased significantly after the pas-

sage of the Bayh-Dole Act (Dai, Popp, and Bretschneider, 2005). In the decade

before the passage of the Bayh-Dole Act, the U.S. Patent and Trademark

Office issued fewer than four hundred U.S. patents each year to the universi-

ties that represented the top one hundred institutions in research and devel-

opment (National Science Board, 1993). By 1985, the number of patents issued to these institutions soared to 587, and by 1991, more than thirteen

hundred patents were issued to these institutions (see Figure 2). Furthermore,

during fiscal year 2006, the U.S. Patent and Trademark Office issued more

than thirty-two hundred patents to the 189 member institutions of the Asso-

ciation of University Technology Managers, which are primarily universities

(Association of University Technology Managers, 2007). Put simply, the Bayh-

Dole Act contributes to the heightened interest about university patents.

Upon the law's enactment, many touted that it nearly single-handedly

accelerated higher education's participation in commercial enterprises and

FIGURE 2 U.S. Patents Awarded to the 100 Academic Institutions with the Greatest R&D Volume: 1972-1991

- 1,400

"• 1,200

< 1,000-

800-

L. 600-

o 400-

E 200C

z 0

ON OM OIT ON ON ON ON ON ON ON ON ON ýO O ON ON ON O

Year

Source: Authors' depiction oF NSF data on patents awarded to U.S. universities (National Science Board, 1993).

patent activities (see, for example, Ramirez, 2004). Although in practice this

law may not have accomplished as much as is attributed to it (Boettiger and Bennett, 2006; Nelson, 2001), the law appealed to many universities that

sought to patent academic research, and it serves as a reminder of academic research's commercial potential through patenting and licensing activities.

Thus, at the very least, the law advanced its purpose of commercializing research and spurring on technological innovation through patent and licens-

ing activities at American universities.

Expansion of Patentable Subject Matter Also in 1980, a landmark case that emerged from research advancements fur- ther defined what qualified as patentable subject matter. In Diamond v. Chakrabarty, the Supreme Court held that a genetically manufactured microorganism qualified as a patentable subject matter. To arrive at its deci-

sion, the Court broadly construed the meaning of patentable subject matter in the patent statute, which gives patent protection to "any new and useful

Intellectual Property in the Information Age 81

process, machine, manufacture, or composition of matter" (p. 307). Addi-

tionally, the Court examined the legislative history of patent law and con-

cluded that "Congress intended statutory subject matter to 'include anything

under the sun that is made by man"' (p. 309). Consistent with that decision,

patent examiners and the federal courts adopted a more expansive determi-

nation of what qualified as patentable subject matter. In fact, later that year

the U.S. Patent and Trademark Office issued a patent for a gene cloning

process, which surprised many when it occurred (Demaine and Fellmeth,

2002; Dillen, 1997).

In addition to the inclusion of biotechnology in the scope of patentable

subject matter and processes, the U.S. Patent and Trademark Office included

electronic technology in the scope of patentable inventions. Indeed, in the late

1990s, computer technology using specially defined algorithms became rec-

ognized as patentable subject matter (see State Street Bank and Trust Co. v.

Signature Financial Group, 1998). Basically, as technological advancements

occurred, judicial and federal agency interpretations expanded the scope of

patentable subject matter. This broadening of the patentable subject matter

opened more opportunities for universities to patent new academic research

and resulted in more patent filings (Mowery, Nelson, Sampat, and Ziedonis,

2001).

Technology Transfer

With the events described, the interest over the commercialization of academic

research increased substantially after 1980 (Seeley, 2003). Universities began

to engage in "technology transfer," the process to convert research knowledge

and findings into commercial products or processes, which in turn establishes

patenting and related intellectual property activities such as licensing and mar-

keting. As technology transfer became a more recognized practice, universities

formed technology transfer offices with the express intent to commercialize aca-

demic research through patenting and licensing. In the 1980s, the higher edu-

cation community observed the establishment of technology transfer programs

at large research universities such as Arizona State, Case Western, Dartmouth,

Duke, Emory, Florida, Illinois, North Carolina State, Oregon State, Purdue,

and Washington (Association of University Technology Managers, 2007).

Today, although most university patents do not generate enough income

to cover sufficiently the operating costs (Powers, 2006), research activities are

pursued with an eye toward potential financial rewards. Not surprisingly when

university patents are mentioned, academics and the lay public think in terms

of the big patent winners. For instance, the literature and media discussions

often refer to Gatorade (University of Florida) and the search engine Google

(Stanford University). But other major products and processes connected with

university patents also play a major role in the market-Carnegie Mellon's

search engine Lycos; Emory's Atripla, the single tablet for HIV patients;

Florida State's anticancer drug Taxol; and the University of Florida's cellulosic

waste processing to produce more efficient forms of ethanol. Less well known

but very successful university patents include the University of Washington's

interactive simulation of legislative and electoral politics known as LegSim.

In sLim, an interactive development has occurred between patent law and

policy, technological advancements, and competing interests which shape intel-

lectual property policies and practices for colleges and universities. Given these

developments, universities could hardly resist the movement toward patents.

Yet these movements have not come without controversy and critique.

Debates About University Patent Activities The national system of innovation encouraged university participation in

advancing technology transfer (Mowery, Nelson, Sampat, and Ziedonis, 2001;

Nelson, 2001), but studies have expressed differing conclusions about whether

universities should engage in the commercialization of research through

patenting. Proponents of university patents argue that intellectual property

enables academic scientists and universities to support knowledge flow and

benefits to the public. Opponents of university patents argue that intellectual

property limits access and allows one party to dictate the direction of that

invention, which is antithetical to the academic culture and scientific inquiry.

Supporting University Patents

The literature presents four reasons to support university patenting of inven-

tions over other entities: acknowledgment of the inventors, control of the

Intellectual Property in the Information Age 83

invention quality, accessibility to the invention, and a mission and goals aligned with the public interest.

First, university patents acknowledge the inventors (Campbell and Slaughter, 1999). Patents provide proper attribution of those significantly engaged in the invention's conception and development (Bagley, 2006; Patel, 1996). In particular, the patent process recognizes listed inventors through a national recording process that appears in the public record. In addition, upstream technologies (that is, new inventions based on knowledge from an earlier invention) often require citations of earlier patents, and these patent references attribute the patent application invention to earlier works. Fur- thermore, even if a university requires an inventor's assignment of patent rights (that is, to transfer the inventor's rights to the employer), the patent still iden- tifies the inventor or inventors. Because financial rewards may be negligible for many inventions, attribution serves as a symbolic reward to the inventor, which in turn meets the intended policy purpose of creating incentives for cre- ators and discoverers of academic inventions.

Second, university patents enable universities to control the invention's quality (Apple, 1989, 1996; Metlay, 2006; Mowery and Sampat, 2 0 01a). As Apple (1989) noted, when Professor Harry Steenbock discovered the fortifi- cation process for Vitamin D while at the University of Wisconsin, one of the reasons that he patented his discovery was to control the product's quality. For him, the patent protection ensured control over the manufacturing process, which for Steenbock translated into manufacturing integrity. Similarly, Metlay (2006) illustrated an example in which another Wisconsin inventor who was also Steenbock's mentor, Stephen Babcock, did not patent his invention. The lack of control resulted in the distribution of poor-quality products. Besides the problems faced by retail consumers, the quality control problem could jeopardize the reputation of the university and the inventor. Thus, university patents permit some degree of control for the inventor.

Third, university patents typically allow for greater access to these inven- tions (Campbell, Powers, Blumenthal, and Biles, 2004; Kesselheim and Avorn, 2005; Pressman and others, 2006). In a study of DNA licensing at nineteen of the top thirty universities, many respondents indicated rather complex licensing schemes that closed survey responses do not factor. In particular,

other studies on licensing did not reveal that exclusive licenses issued by the

university sometimes include a humanitarian exception. The incorporation of

these clauses suggests that universities might serve as better conductors of inno-

vation than industry.

Similarly, academic scientists, by the nature of their professional culture,

are more inclined to avail the invention to a greater scope of users (Ramirez,

2004; see also Hermanowicz, 1998). Under a university patent, the academic

community is less likely to operate in a manner that monopolizes the inven-

tion and strictly controls the licensing practices of others to drive price con-

trols and other unethical practices (Apple, 1996; Metlay, 2006). In fact,

Professor Harry Steenbock's decision to patent his vitamin D discovery in

1924 was his effort to avoid "extortionate charges" that could potentially result

from private industry if a company held the patent (Apple, 1989, p. 377; see

also Metlay, 2006). Furthermore, universities are not likely candidates of tech-

nological suppression (Kesselheim and Avorn, 2005; Schacht, 2006). Accord-

ingly, Ramirez (2004) suggested that patenting research tools, particularly by

universities, might spur the downstream product development rather than

result in an "anticommons" effect (see also Kesselheim and Avorn, 2005, for

discussions of upstream patents).

Fourth, in furtherance of research for the public good, university engage-

ment in patent activities fits its mission and roles better than other organiza-

tions, even other public service entities such as the government (Kesselheim

and Avorn, 2005; Pressman and others, 2006). As Eisenberg (1996) noted,

the government is not in business to commercialize (that is, to participate in

patent and licensing activities). Universities are a better fit to serve as keepers

of inventions, however, because they tend to share inventions, as demonstrated

by the data on humanitarian licensing activities for basic research and research

tools.

Opposing University Patents

Robert Merton's early works (1968, 1973) described the key features of sci-

entific work, specifically that of scientific communalism, which involves the

shared and open nature of scientific research. Patenting, however, involves

the ownership and control over inventions. Consequently, patents transform

85Intellectual Property in the Information Age

the scientific norm of open access to a norm of proprietary interest (Metlay, 2006). This shift away from a sphere of communal use raises several arguments against university patenting activities. Opponents of university patenting argue that intellectual property in academic science alters scientific norms of open- ness, which alters the environment for academic-scientific work (Heller and Eisenberg, 1998; Rai, 1999; see generally Stein, 2004). The principal message in opposition of university patents thus rests on the theme of the anticom- mons. The following discussion elaborates on five reasons to oppose univer- sity patent activities as presented in the literature.

First, patents run counter to universities' public service role. According to these critics, the commercialization or privatization of academically created knowledge and goods specifically violates universities' public service role (Metlay, 2006; Palmer, 1934). In particular, if universities serve the public, their research should be free and readily accessible, and universities should not finan- cially benefit from those inventions. In particular, Metlay (2006) and Palmer (1934) emphasized the inherent conflict with the university service role and financial rewards for medical inventions, including medicines and instruments.

Consistent with that stance, Harvard and Johns Hopkins Universities in 1934 discouraged patenting research findings unless such protection served the public good to avoid blocked access of the invention (Palmer, 1934). That position changed around the 1970s, however, when the two universities estab- lished technology transfer offices with significant patenting and licensing responsibilities, especially for medical products and processes (see also Mowery and Sampat, 2001 b; Sampat, Mowery, and Ziedonis, 2003). Despite those earlier positions, the numbers may illustrate more concretely how these two universities changed their positions and subsequently became active participants in patent activities. In fiscal year 2006, Harvard received thirty- five U.S. patents, applied for 167 patents, and reported more than $20.8 million in license income (Association of University Technology Managers, 2007). Also in 2006, Johns Hopkins received eighty-two U.S. patents, applied for 329 patents, and reported more than $13.9 million in license income (Association of University Technology Managers, 2007). Simply put, the pub- lic service rhetoric changed substantially from the early 1900s to the present (Metlay, 2006).

Second, patents encourage at least two forms of data blockage: the with-

holding of data and the secrecy of academic research. For many academic sci-

entists, such behaviors are linked to the commercialization of research and to

the competition among the scientific community to receive inventor status.

As inventor status follows a priority system (that is, the first inventor to give

notice through a patent or publication holds the property rights), academic

scientists have an interest to restrict, delay, or block scientific knowledge

through such mechanisms as patenting (Campbell and others, 2002; Cohen

and Walsh, 2007). Cohen and Walsh (2007) found that academic scientists

do disclose required information related to patent descriptions and validation

of the invention, but they question the extent to which academic scientists

disclosed steps and other relevant data not required for disclosures yet perti-

nent to scientific progress. This secrecy increases with industry involvement (see, for example, Bagley,

2006; Blumenthal and others, 1986; Blumenthal, Campbell, Causino, and

Louis, 1996; Campbell, Louis, and Blumenthal, 1998; Hall, Link, and Scott,

2003). For example, in a 1985 survey of biotechnology faculty from the top

forty universities in terms of federal research funds, respondents with indus-

try funding were four times more likely than others to classify works as trade

secrets (Blumenthal and others, 1986). A subsequent study in 1995 of 2,052

life science faculty from the top fifty universities that received funding from

the National Institutes of Health also concluded that faculty involvement with

industry significantly increased the likelihood of classifying works as trade

secrets (Blumenthal, Campbell, Causino, and Louis, 1996). Consistent with

those findings, Thursby and Thursby (2002) also concluded that industry

agreements contributed to delays in publishing. In addition to the tactic of limiting data sharing to protect one's interest

for eventual commercial activity, the data access may result in an effort to keep

inventions from patent and license activities. Based on a survey conducted in

1996-1997 of 3,804 medical faculty from 117 institutions, 2,366 faculty

(62.2 percent response rate) responded to inquiries regarding data access to

academic research (Campbell, Weissman, Causino, and Blumenthal, 2000).

Among the key findings, the authors reported an increased likelihood that

respondents would not share data with faculty who maintain high commercial

Intellectual Property in the Information Age 87

activities. According to the authors, "Some scientists are reluctant to share their research results with commercially active investigators for fear that the shared data will be used for commercial rather than academic purposes" (Campbell, Weissman, Causino, and Blumenthal, 2000, p. 310).

Third, because patents require declaration of an invention's useful or prac- tical purpose, the movement toward more university patents encourages applied research over basic research (Nelson, 2002). The Bayh-Dole Act, which encourages universities to engage in patent research for commercial use, exac- erbates this priority on commercialization of academic research. As Landes and Posner (2003) cautioned, research done "to earn substantial income from patent licensing has, it appears, induced universities to substitute away from basic research, and the result may have been a net social loss" (p. 316). These activities encourage a shift away from basic research to applied research (but see Trajtenberg, Henderson, and Jaffe, 2002, who found that university patent holders still engaged in basic research). Nelson (2002) and others (for example, Lieberwitz, 2003, 2005) argued that economic incentives and legal policies favored commercial activity and most likely shifted academic research toward more applied areas. Indeed, two studies found that the choice of aca- demic scientists' topics was significantly influenced by their commercial value (Blumenthal and others, 1986; Blumenthal, Campbell, Causino, and Louis, 1996; Walsh, Cho, and Cohen, 2005).

Fourth, inventions with multiple patents require so many layers of licens- ing approvals that they severely inhibit and stifle scientific progress, and uni- versity patents are not immune to this effect. Several have argued that multiple patents required for an invention complicated the research process because the barriers to patenting scientific studies were onerous (Clarkson and DeKorte, 2006; Heller and Eisenberg, 1998; Shapiro, 2000). As such, they serve as dis- incentives to pursue research.

Similar to universities' argument about their public service role, some have argued that a problem arises when researchers must overcome multiple patents from various patent holders to conduct a study (see, for example, Clarkson and DeKorte, 2006; Heller and Eisenberg, 1998; Kesselheim and Avorn, 2005; Shapiro, 2000). "When multiple organizations each own individual patents that are collectively necessary for a particular technology,... their

competing intellectual property rights form a 'patent thicket"' (Clarkson and

DeKorte, 2006, p. 181). Patent thickets require lengthy licensing approvals

from each patent holder, and depending on the thoroughness and accuracy of

the licensing approval process, the end user might be subject to an infringe-

ment action. Although articles about the patent thicket do not specifically

address university patents, they illustrate a reason why university patents

should not be sought: university patents would simply contribute to the patent

thicket problem, which in turn represents anticommons behavior (see, for

example, Clarkson and DeKorte, 2006; Heller and Eisenberg, 1998; Shapiro,

2000).

Fifth, university patent activities pass new, additional costs onto higher

education and the public (de Larena, 2007). The literature overwhelmingly

reports that technology transfer as measured through patents and licensing

occurs at a loss (see, for example, Powers, 2006; Thursby and Thursby, 2003).

Equally important, universities cannot afford to patent every invention. A

university patent office must assess the potential value of the invention in light

of its expected costs. Based on interviews with members of nineteen of the

thirty academic institutions with the highest number of DNA patents, respon-

dents indicated that "patent prosecution, maintenance, and management costs"

for DNA patents would amount to approximately $20,000 to $30,000 per

patent (Pressman and others, 2006). Indeed, a significant portion of those

costs includes legal fees associated with filing the patent. According to the

Association of University Technology Managers (2005), 191 of the associa-

tion's members reported $221 million in expenditures for legal fees in 2004.

Of that amount, only $91 million (41.3 percent) of their expenditures were

reimbursed. Patenting and licensing activities represent significant expenses in

the process.

Like the patent thicket problem (that is, licensing and approvals require

multiple patent holders), Heller and Eisenberg (1998) argue, inflated costs

from granting licensing to patents result in "stacking licenses" (that is, multi-

ple licenses required to conduct research). These costs may inhibit the inven-

tion's progress. Furthermore, the patent thicket problem becomes more

pronounced when the government underwrites the research. When the gov-

ernment pays for the research, the argument for public access strengthens; that

89Intellectual Property in the Information Age

is, because the public already paid for the research through tax dollars, every- one should have access to the works, and patents only prevent that access (Heller and Eisenberg, 1998). Consequently, as Heller and Eisenberg (1998) indicated, any additional costs to use the invention create economic "rents" paid to the holder of the patent. Simply put, costs associated with patenting serve as additional barriers to the goals of communal science.

Chapter Summary This chapter traced the development of American higher education's corn- modification of knowledge and research products. At the core of U.S. inno- vation policy, universities were charged with the responsibility to invent and disseminate new creations for the public, which in turn reflected commercial purposes. The shaping of this policy operated with three significant triggers. First, universities and members of the academic community recognized their participation in patentable activities. For proponents of university patents, the intellectual property right acknowledged the first creators as inventors, enabled quality control over the inventions, provided greater accessibility to the inven- tions relative to what industry behaviors would follow, and supported higher education's mission to serve the public interest. Second, by 1980 with passage of the Bayh-Dole Act, universities gained patent rights over governmentally sponsored research. In other words, universities received a greater incentive to move inventions to market. Consequently, universities emphasized the commer- cialization of academic research products and processes. Furthermore, like many other situations in higher education, the legal structure opened the door for expressions of new preferences and interests, and bargaining, balancing, and leveraging took place (see also Pusser, 2004; Sun and Permuth, 2007). Third, as technology advanced, research increased. Equally important, tech- nology forced changes to what became acceptable patentable subject matter. This change expanded the scope of patentable products and processes, par- ticularly in the biotechnology field, which maintains a significant academic presence. Of course, this patent progress and U.S. policy innovation also come with drawbacks (Geiger, 2004; Heller and Eisenberg, 1998). Universities' asser- tion of intellectual property rights runs counter to their public service role,

encourages data blockages and secrecy, rewards applied research over basic

research, creates many layers for licensing approvals that severely inhibit or sti-

fle scientific progress, and results in additional costs for the public to access

the invention. In other words, university patent activities potentially support

knowledge flow to benefit the higher education community and the public,

and they potentially restrict knowledge flow by hindering research progress in

the higher education community and the public but retain benefits at the indi-

vidual or unit organizational levels.

Intellectual Property in the Information Age 91

Shared and Related Concerns About Intellectual Property

T HE LAWS OF PATENTS AND COPYRIGHTS contain shared and related concerns about other legal issues pertaining to intellectual prop-

erty. First, intellectual property includes more than the laws of patents and

economic, political, and social forces set the stage, the legal parameters, tech-

nological advancements, and actor-based interests further define college and

university policies and practices regarding trademarks, trade names, and trade

secrets. For example, what is truly at stake when an unauthorized party uses a

college's logo? How do universities protect their research secrets from industry

and other educational institutions? What rights do universities have if an

independent company uses references to their mascots in connection with its

Web address or the corporate name (for example, Badger Inn and Suites, Bruin

Brewery, Buckeye Industries)?

Second, the sources for these property rights-patents, copyrights, trade-

marks, trade names, and trade secrets-are not limited to the federal statutes.

Although many refer to these respective laws as the source of legal parameters,

other laws also govern the treatment of intellectual property, especially

sovereign immunity. How does sovereign immunity alter the conditions of use

and protection of intellectual property rights? What do these differences

represent for higher education?

Third, we examine the role of the international setting to describe com-

mon characteristics of treaties pertaining to intellectual property, compliance

with the international treaties, and a brief discussion about the comparative

literature on higher education institutions' international policies and practices.

Intellectual Property in the Information Age 93

Trademarks and Trade Secrets Unlike copyright and patent law, the law of trademarks and trade secrets does not expressly derive from the U.S. Constitution. Nevertheless, it represents significant legal protections over intellectual property, and for higher educa- tion, it symbolizes more obviously colleges' and universities' behaviors that resemble a business that attempts to protect its intellectual capital. Given the increasing competition for higher education and particularly the importance of college athletics, colleges and universities are increasingly involved in producing trademarks and trade names. 12 The institutions' involvement in technology transfer also creates the need for trade secrets. A trade secret, how- ever, allows an organization to prevent disclosure of information that gives it a competitive edge over others. Thus, a trade secret protects information, while a trademark protects a distinctive name, design, logo, slogan, or other mark that identifies the organization and distinguishes it from others.

Trademarks Trademarks are words, names, symbols, or devices used to distinguish and iden- tify businesses, their products, or their processes to the general public. The trade- mark may be applied to T-shirts, hats, brochures, key chains, Web sites, Internet addresses, blog names, and names of organizations, including nonprofit entities (Lattinville, 1996; Manas, 2 003)-as well as caskets (Troop, 2008). The first to use the "mark" owns it; however, to qualify for federal protection, the party must file the trademark with the U.S. Patent and Trademark Office.

To qualify for protection, the mark must be distinctive. A trademark is not limited to use of the college or university's name or logo. It may be the name, word, symbol, or device that signals a curriculum program, educational process, research project, event on campus, or residence hall, but it must be sufficiently distinctive from other potential marks or carry a secondary mean- ing that the consuming public likely associates with that product or process (Bearby and Siegal, 2002; Lattinville, 1996). Several decades ago, the New Jersey Institute of Technology created the name "Virtual Classroom" and reg- istered the name for federal trademark protection when it established an edu- cational program for students to learn from outside the traditional

brick-and-mortar format (Blumenstyk, 1998).

Trademarks are covered by federal law under the Lanham Act. In addition,

states also have laws that protect unauthorized use of trade names and trade-

marks. In fact, owners of trademarks and trade names may sue unauthorized

users under multiple sources of law to maximize the potential for obtaining

jurisdiction over the defendants and seeking legal remedies. The reasons for

granting exclusive rights to trademarks originally stemmed from the logic of

protecting the public from being deceived, but more recently, their protection

stems from the justification that unauthorized users do not undermine the

rights of trademark owners through misappropriations or illegal uses of brand

names (Doellinger, 2007). Recent treaties also offer relative global protection

of trademarks (Leaffer, 1998).

Trademark law applies generally to commercial entities, but many institu-

tions of higher education can and do assert trademarks for at least three inter-

related reasons. First, institutions wish to protect their names and reputations,

and their names and symbols distinguish one organization from another

(Manas, 2003). Johnson (2006) argues that proliferation of unaccredited

online degree programs and fake institutions and practices, such as diploma

mills' maintaining names resembling existing colleges and universities, raises

concerns about consumer protection. For example, Johnson (2006) notes the

similarity between the name of Trinity Southern University, a diploma mill,

and Trinity University, "a reputable accredited school in San Antonio, Texas"

(p. 445). Based on reputational concerns, Trinity University sought a perma-

nent injunction to stop Trinity Southern University from using the name

"Trinity." The court granted the injunction because the name, Trinity

Southern University, was too close and would create confusion with the

established Trinity University.

In 1999, Ohio University and the Ohio State University also settled a

trademark dispute, but oddly enough, it was about the use of the word "Ohio"

("Ohio U. and Ohio State U. Settle Trademark Tussle over 'Ohio'," 1999).

Ohio University registered the word, and a dispute soon arose with Ohio State.

The agreement negotiated acceptable uses of the word Ohio, so it would not

create confusion for the public.

Second, colleges and universities recognize the direct financial benefits asso-

ciated with protecting their trademarks (Lattinville, 1996). In particular,

Intellectual Property in the Information Age 95

lucrative athletic activities have led colleges and universities to protect their financial interests in their logos, names, products, and mascots. Many uni- versities have established licensing offices to protect their trademarks and to exploit them for commercial gain. In 2006, the University of Texas reached the highest levels for collegiate licensing royalties with estimates of revenues at around $90 million (Palaima, 2006). Although most institutions report small fractions of this amount such as the University of Kansas' estimate of about $1 million annually from trademark licensing revenues (Aronauer, 2005), trademarks and licensing of the trademarks still generate revenues to subsidize athletics or other administrative units (Phillips, 2007).

Third, universities, particularly those engaged in commercial activities, may use trademarks to protect their products, processes, or traditions. For example, universities engaged in inventing pharmaceutical drugs may have to contend with trademark and patent laws. The production of drugs can also implicate trade secrets. Similarly, Brown, Zuefle, and Batista (2007) trace the brand equity significance of a historical event to one university. The authors describe the dispute between Texas A&M University and the professional foot- ball Seattle Seahawks over references to "the twelfth man." Texas A&M claimed rights to references about the twelfth man. Based on a crucial foot- ball game in 1922, the Texas A&M coach asked a player, E. King Gill, to suit up because the team was running low on reserve players and he might be needed. Texas A&M won the game and beat the then top team in the nation. Although Gill never played in the game, he was available as the twelfth player in the event he was needed. Because the Seattle Seahawks would not stop using references to the twelfth man, Texas A&M initiated a lawsuit that was even- tually settled; however, the case symbolizes the significance of brand equity and control over historical references to one university. Similarly, Princeton University sued Trenton State College in 1996 when the latter changed its name to the College of New Jersey. Princeton had been incorporated and was known as the College of New Jersey until 1896. The lawsuit was settled when both colleges agreed to make clear that each has a separate history ("Princeton

Settles Suit," 1996).

Simply put, a college or university's trademark signifies a mark with repu- tational and economic values. An institution's trademark represents the brand

equity, so protection has become essential for control, attribution, use, and

reward. It places efforts to distinguish itself from other organizations to avoid

confusion, avoid reputational harm, and ensure revenues associated with the

trademark.

Trade Secrets

Trade secrets represent protected information in the form of formulas,

patterns, devices, techniques, processes, or compilations. Through legal pro-

tection as trade secrets, owners maintain competitive advantages over those

who do not know the information. By definition, trade secrets do not exist if

the information is copyrighted, patented, or otherwise properly "known."

Generally speaking, trade secrets protect information that attaches some eco-

nomic value, whether definitively realized or not, and warrant reasonable rea-

sons to block others from having the information (David, 1993).

Unlike other intellectual property, which enjoys federal laws for protection,

protection of trade secrets varies from state to state. Most states, however, have

adopted the Uniform Trade Secrets Act, thus ensuring relative uniformity in

defining trade secrets and misappropriations of those protected secrets among

the adopting states. Trade secrets have been brought closer to patents and copy-

rights by technological developments and recent history of litigation, as infor-

mation that is kept secret can be a source of income (David, 1993).

In the context of higher education, trade secrets do not present as major a

concern as patents and copyrights; however, as institutions and faculty look

to private sources for funding research, the private interests of those sources

begin to shape what happens in universities-which includes the increasing

focus on protection of trade secrets. Faculty and students may be required to

maintain secrecy over the results of research, for example, thus creating con-

flicts between their and private entities' economic interests in keeping secrets

to maintain their competitive advantages and their academic interests in mak-

ing ideas freely accessible. University-industry collaborations present particu-

larly difficult dilemmas in this regard (see, for example, Blumenthal and others,

1986; Newberg and Dunn, 2002). For instance, a chemistry professor at

Wayne State misappropriated protected information that a chemist in New

England classified as a trade secret (Blumenstyk, 1994, 1995). The protected

Intellectual Property in the Information Age 97

information revealed a chemical composition that would glow at the presence of selected diseases in human bodies. Rather than complying with the nondis- closure of the trade secret, the professor used the information, patented it, and created a spin-off company. Later, he was sued, and Wayne State was required to surrender its interest in the company.

The reasons for protecting trade secrets may also serve the interests of the public. Protecting trade secrets potentially provides academics-particularly academic scientists-more time to study an issue such as a process, drug, or technique before placing it on the market. The more in-depth studies may prevent unintended consequences or unknown variables related to the product or process that with time may be uncovered. The university's corporate partner, however, may wish to roll out the product or process quickly to establish itself in the market.

Although attempts to maintain secrecy in research occur in higher educa- tion, certain instances present possible limits to asserting nondisclosure under protection of trade secrets, which may discourage industry interactions (Shockley, 1994). For public institutions, laws requiring open records and open meetings may, for all practical purposes, preclude trade secrets. Shockley (1994) concludes that state sunshine laws, particularly state open record laws, likely require disclosure of research documents and other related documents at pub- lic institutions. Blumenstyk (1991) reports that a public institution's decision to classify research information as a trade secret does not always mean that the information qualifies as a trade secret. Based on a lawsuit decided by the North Carolina Court of Appeals, animal activists could receive data about the Uni- versity of North Carolinds research that involved the use of animals.

Similarly, disclosure of data on projects that involve federal agencies or fed- eral grants is not necessarily protected as a trade secret. Except in cases of pre- mature data or entanglement with national security, information involving federal agencies or federal grants falls under the Freedom of Information Act (5 U.S.C. §552, et seq.), which also requires disclosure of federal documents. More important, the Data Access Amendment of 1999 in the Freedom of Information Act mandates public access to federally sponsored research data that grantees maintain (Wagner, 2005). Thus, trade secrets likely do not apply to projects that receive public funding.

The International Setting Interests and infringements on intellectual property are not bound to the

United States. Our global access to educational materials, expressions, ideas,

and concepts extends beyond country boundaries (Dinwoodie and Okediji,

2004). Not surprisingly, the issues of intellectual property are becoming more

pervasive as members of the academic community share resources and post

original expressions on the Internet and in other media, colleges and univer-

sities increasingly become transnational organizations with campuses in mul-

tiple countries and online availability, and academic content continues to

expand with the inclusion of global products and processes and permission

required from overseas. Given these circumstances, international intellectual

property issues are of particular concern to the higher education community.

For the signatory countries, international treaties typically establish three

common guidelines, which shape intellectual property policies at U.S.-based

colleges and universities. First, many of the international treaties establish min-

imum standards. The purpose of the minimum standards permits some con-

sistency in protection policies throughout the signatories to the treaty. For

example, the 1989 amendments to the Berne Convention for the Protection

of Literary and Artistic Works establish copyright protections for fifty years

beyond the author's death, except for photographic and cinematographic works,

which follow different standards. Second, the international treaties typically

require declared participants to carry out their laws under a principle of equal

treatment. That is, creators of intellectual property who are outside the partic-

ipating country are still eligible for the same rights as those in the participat-

ing country. For example, the Berne Convention, which is in force in the

United States, permits writers, artists, and other creators of intellectual prop-

erty who reside outside the United States to receive the same rights as copy-

right applicants who reside in the United States. Third, the treaties also attempt

to harmonize international policies and procedures. Because a creator of intel-

lectual property may desire protections from multiple countries, international

treaties attempt to create harmony or common standards that reduce the com-

plex nature of an applicant who seeks protection in multiple countries. For

instance, the Patent Law Treaty, to which the United States acceded, establishes

Intellectual Property in the Information Age 99

a standard form for international patent applications. Consequently, an appli- cant may easily establish patent rights in multiple countries that are signatories

to the treaty with the use of the same form, or, in some cases, the applicant maintains substantially similar information among the signatory countries with-

out having to file forms that require drastically different information. Practically speaking, international treaties that pertain to intellectual prop-

erty defer to the country at issue. Accordingly, compliance of intellectual property requires knowledge of the laws of the nation to which the right is

being asserted or challenged. For the most part, legal parameters pertaining to intellectual property derive from the respective nation, and there are no per se international laws on intellectual property. In the United States, several fed-

eral laws, mentioned earlier in this monograph, craft the laws around intel- lectual property. In addition, selected state laws also serve as additional or related legal parameters to define intellectual property rights. In contrast, inter- national treaties do not prescribe domestic laws as detailed legal parameters.

Instead, compliance of international treaties simply refers to legal compliance

of the nation that awards the intellectual property.

Besides compliance with international treaties, the literature pertaining to the process of international intellectual property provides more revealing insights about the forces and direct factors that shape intellectual property

policies at U.S.-based colleges and universities. Over the past several decades, activity in international intellectual property laws has signaled significant changes in matters of trade and naturally followed concerns of industry. In

particular, international dialogue in groups-especially the World Intellectual Property Organization, a United Nations office that oversees intellectual property matters-and participants of the Uruguay Round pushed for intellectual prop- erty treaties that centered on trade. In 1994, the Agreement on Trade-Related

Aspects of Intellectual Property Rights (TRIPS) failed to even include critical groups such as higher education, libraries, and research centers in the draft.

Okediji (2003) posited that the omission of these voices signaled international priorities. Basically, the "coalition preference suggests that the governments'

interests in negotiating the TRIPS Agreement were more or less consistent

with those of industry" (Okediji, 2003, p. 852). Consequently, one may argue that higher education does not meet the goals of the group; therefore, as a

100

body, its opinion is not valued. An alternative argument is that higher educa-

tion need not be differentiated from industry because higher education main-

tains the same private, commercially driven interests. Regardless of the actual

intent, the outcome of TRIPS is to treat intellectual property as an industrial

trade item, which does not appear inconsistent with the general message of

commodifying knowledge, even in higher education.

Similarly, from an international perspective, the privatization of knowl-

edge and its market effects have filtered into higher education institutions

beyond the United States. For instance, Wilkinson (2000) examined intellectual

property and national policies in Canada with regard to innovation and con-

cluded that Canada's universities face conflicting messages. On the one hand,

they display evidence of increasing commercialization of academic works with

public funds, but on the other, they advocate public interest and openness to

academic works. Similarly, in the context of trademarks, Reimertshofer (1997)

compared U.S. trademark protections with German trademark law in the set-

ting of collegiate trademarks and licensing, especially in light of a recent

German Supreme Court opinion that permitted protections for German

universities. Reimertshofer suggested that in light of Germany's reduced

governmental support for higher education, universities may resort to finding

alternative revenue streams like many public institutions in the United States, and

trademark licensing income in Germany may follow some U.S. policies

and practices.

The practices of intellectual property activity, especially technology transfer,

also align with this perspective. According to a study conducted by Slaughter

and Leslie (1997), which included institutions from Australia, the United

Kingdom, and the United States, the forty-seven faculty members from eight

different units reported the reason for tapping into new revenue streams was a "means to serve their unit, do science, and serve the common good" (p. 179).

This quasi-altruism shifted the faculty identities as researchers "to define them-

selves as inventors and entrepreneurs," and their behaviors placed new empha-

sis on intellectual property rights, development, and marketing (Slaughter and

Leslie, 1997, p. 179). Across the continents, faculty from each institution

believed that if they did not participate with industry and governmental enti-

ties and build an understanding of economic development practices, they

Intellectual Property in the Information Age 101

would lose control of their work environment. In essence, they compromised their positions slightly to avoid major changes in their profession entirely. According to Slaughter and Leslie (1997), these movements represent aca-

demic capitalism, the process of commodifying academic expertise. Simply put, this body of literature conveys a global movement in which

higher education institutions increasingly pursue commercial activities. The economic, political, and social forces along with more direct factors related to the legal, technological, and various competing interests contribute to the intellectual property policies and practices at colleges and universities, even

internationally.

Sovereign Immunity Sovereign immunity represents a crucial legal construct that furthers the

privatization of knowledge, which intellectual property laws ensure. Sovereign immunity is a doctrine that permits a state actor or an entity deemed as an arm of the state from being sued without expressly authorizing suits on that subject matter. In very basic terms, it stands for the proposition that state enti-

ties cannot be sued. Because intellectual property primarily derives from fed- eral law, the doctrine of sovereign immunity means that public institutions of higher education are not subject to certain provisions, specifically monetary

damages owed from infringements of intellectual property. Consequently, this doctrine shifts the balance of power over intellectual property in favor of

public institutions.

Rationale for Sovereign Immunity The classic American statement of sovereign immunity was uttered by Justice Oliver Wendell Holmes in the 1907 case Kawananakoa v. Polyblank: "There can be no legal right against the authority that makes the law on which the right depends" (p. 353). In the case, a bank received partial proceeds from the foreclosure of a mortgage, but part of the land was exempted from the judg- ment because it had been conveyed to the territory of Hawaii. The bank wanted the proceeds from all the land, arguing that the territory of Hawaii was much like the District of Columbia, a municipal corporation subject to a civil lawsuit. The territory argued that it was sovereign and did not consent

102

to be sued. Justice Holmes' opinion for the Supreme Court agreed with the

territory.

The doctrine of sovereign immunity was codified in the Eleventh Amend-

ment, which states, "The Judicial Power of the United States shall not be con-

strued to extend to any suit in law or equity, commenced or prosecuted against

one of the United States, by citizens of another state, or by citizens or subjects

of any foreign state." The legal question of Eleventh Amendment law is to

what extent a state (or its subdivisions, agencies, and officials) may be sued by

a private citizen in federal court. The Eleventh Amendment seeks to preserve

or restore the states' sovereign immunity, and it extends to the political bod-

ies that can claim the status of "sovereignty." The courts have determined that

political subdivisions of the state that are essentially "arms of the state" can

claim immunity, as Congress cannot abolish state immunity under its author-

ity to create laws. States can waive immunity, and they have done so in cer-

tain situations (for example, in negligence suits that involve a state actor's

harming a person or entity); however, based on several U.S. Supreme Court

cases, a state waives sovereign immunity only upon clear expressions of that

waiver. 13 A number of reasons have been given for state immunity. First, the

state treasury belongs to everyone, and it would be unfair to all if it were used

to pay damages to particular individuals or institutions. The related concern

here is that lawsuits against the state will flood the courts. Second, suits against

the state prevent government officials from doing the jobs they are obligated to

do, jobs that are in the public interest. Furthermore, one can sue officials who

act outside the law, and enforcing, say, an unconstitutional statute is consid-

ered acting outside the law (Exparte Young, 1908). Third, the state can waive

its immunity if it deems it in the public interest. The notion behind this idea

is that the state is a representative bureaucracy whose decisions are subject to

change through the political process. At the root of the sovereign immunity

doctrine is a fear of federal power, which is uniquely American.

Public/Private Colleges and Universities Distinguished

The sovereign immunity doctrine presents a legal conundrum for state enti-

ties such as public colleges and universities over the enforcement of monetary

liability under federal intellectual property laws. Because the sovereign

Intellectual Property in the Information Age 103

immunity doctrine permits states to block certain claims against state entities, this doctrine gives public institutions of higher education a legal advantage over private institutions in cases of intellectual property challenges. Private institutions would have to pay for intellectual property infringement, while public institutions often do not. For instance, the U.S. Court of Appeals for the Fourth Circuit held in RichardAnderson Photography v. Brown (1988) that Radford University, a public institution in Virginia, could not be sued for vio- lating the Copyright Act of 1976. Radford University had contracted with a Baltimore company to produce a student prospectus. The company in turn contracted with Richard Anderson Photography (RAP) to provide photographs for use in Radford's student prospectus. RAP owned the copyrights to a large set of photographs, some of which were published in the prospectus in accordance with their contract. RAP then heard that Deborah Brown, the university's director of public relations, was using the photographs without authorization (apparently she was using them in brochures soliciting money for the Radford Athletic Association). RAP sued Radford University and Brown (in her individual capacity) for damages under the federal Copyright Act of 1976. Radford University and Brown sought to dismiss the case on Eleventh Amendment grounds, with Brown also claiming immunity under a state law permitting immunity for officials.

RAP argued that by passing the Copyright Act, Congress essentially abol- ished the states' sovereign immunity, or, conversely, that by using copyrighted materials, the state institution constructively waived its immunity. The court held that Radford University had immunity but that Brown did not. Radford

University's immunity was upheld because the Copyright Act did not clearly and unequivocally show an intention by Congress to abolish Eleventh Amend- ment immunity, and participation in the activity governed by the statute did not constitute a waiver of immunity. The court here took as given that Radford University was a sovereign entity simply because it was a public institution, an assumption that most courts make. Furthermore, this case suggests that public institutions may infringe on others' intellectual property, even for their own economic (as opposed to academic) purposes, and the law will shield them. These institutions then gain a significant competitive advantage over private entities, including private colleges and universities.

104

Similarly, in a multiyear litigation involving the University of Houston,

the U.S. Court of Appeals for the Fifth Circuit ruled that a university press at

a public institution also qualified for sovereign immunity for copyright chal-

lenges (Chavez v. Arte Publico Press, 2000). In that case, Denise Chavez, a

nationally renowned playwright and commentator on issues relating to Latinas,

entered into a contract in 1984 with Arte Publico Press, a component of the

University of Houston, for publication of her books. In 1986, the press pub-

lished a first printing of The Last of the Menu Girls, a collection of Chavez's

short stories, registering the copyright in Chavez's name as author and owner.

Twice in later years, the parties agreed on additional publishing contracts for

the book, but in 1992, Chavez, dissatisfied because the university had failed

to correct errors in the earlier printings, refused to permit the university to

print any more copies than agreed to in a 1991 contract. Around October

1992, however, the university informed Chavez that the 1991 contract did

not limit the number of copies it could print and declared its intention to print

five thousand more copies of the book.

Chavez's complaint alleges that the university and one of its officials

infringed her copyright in her book. She sought a declaratory judgment secur-

ing her rights under the contract, damages, and an injunction against the

university. The university moved to dismiss the suit on Eleventh Amendment

grounds because it had sovereign immunity from intellectual property law-

suits. In light of a U.S. Supreme Court case decided in 1998, which reaffirmed

that sovereign immunity could not be removed without the express autho-

rization from a state, the U.S. Court of Appeals for the Fifth Circuit ruled in

favor of the university based on sovereign immunity.

This case illustrates several points about the significance of sovereign

immunity as a defense for public institutions in intellectual property lawsuits.

First, it illustrates what now happens to lawsuits that seek damages for intel-

lectual property infringement against public universities: generally speaking,

those universities may infringe intellectual property of private individuals with-

out fear of monetary liability. Second, even public university presses can now

claim sovereign immunity, even though their actions have very little to do with

governmental actions or even actions that are core to the university's purpose.

Furthermore, although university presses function like a business with the

Intellectual Property in the Information Age 105

hope of serving auxiliary functions of the state with a profit, it warrants sovereign immunity protections.

In light of the intellectual property activities and state institutions' defenses of intellectual property lawsuits under sovereign immunity, questions arise over the "public" nature of higher education and specifically public colleges and uni- versities. For instance, in BVEngineering v. University of California, Los Angeles (1988), the plaintiff, BV Engineering-which manufactures and sells computer software products-sued UCLA for copyright infringement. UCLA purchased one copy each of seven computer programs, with the accompanying user man- uals, but then made three copies of each program and ten copies of each man- ual. BV sued UCLA for copyright infringement, trademark infringement, and breach of contract under the Copyright Act of 1976. The U.S. Court of Appeals for the Ninth Circuit held for the university, indicating that the Copy- right Act did not expressly abolish state immunity. This case illustrates the gen- eral trend that the copyright acts do not abolish state immunity because they do not do so expressly, despite language indicating that "anyone" who violates the acts is liable, and so public universities probably can freely violate copy- rights. The Supreme Court would later make abolishing immunity in intellec- tual property cases extremely difficult, even when expressly done so in the law. It is clear also that public universities are becoming adept at using the courts to shield themselves from the laws. The University of California, in this case a defendant, is soon to become a major plaintiff in intellectual property cases, using intellectual property laws to further its economic goals, but when sued it resorts to its "publicness" to shield itself from those very laws.

Likewise, in Genentech v. Regents of the University of California (1998), Genentech appealed the dismissal of its case, seeking declaratory judgment that the university and Eli Lilly were violating its rights regarding a patent for producing human insulin. The U.S. Court of Appeals for the Federal Circuit indicated that to waive Eleventh Amendment sovereign immunity, a state must expressly waive those rights. At the end, the court ruled that the university consented to this suit through its voluntary, deliberate, and continuous liti- gation in this matter and its own charge of patent infringement raised in the case. More interesting to us here is the court's questioning of the university's purported "publicness," stating:

106

It is also a factor to be considered that the University's actions are

not at the core of the educational/research purposes for which the

University was chartered as an arm of the state, although the

record contains no basis for disputing that a research university's

patenting activity serves to move into public benefit scientific

inventions that might otherwise languish as laboratory curiosi-

ties.... We too do not answer that question [of whether there

may be some state instrumentalities that qualify as "arms of the

state" for some purposes but not others], for our decision does

not require analysis of the magnitude of the commercial compo-

nent in the relationship between the University's research activities

and its dissemination of that research through patents and indus-

trial licenses. However, it is not irrelevant, in connection with the

University's claimed immunity, that this commercially-oriented

activity is not central to the University's charter [Genentech v.

Regents of the University of California, 1998, pp. 1453-14541.

In short, a public college or university's actions may resemble a private

firm, but in cases involving intellectual property challenges, it also holds the

rights of public protection through the sovereign immunity doctrine.

Maneuvering Around Sovereign Immunity A state agency, including a public college or university, may, however, waive its

rights to sovereign immunity when the public institution initiates the action

or makes claims toward rights of intellectual property over a product or process.

In New Star Lasers v. Regents of the University of California (1999), the issue

related to the university's disputed patent for the Dynamic Cooling Device

(DCD) technology. This technology is useful in conjunction with a laser skin

treatment process marketed by New Star Lasers (NSL). In 1994, the university

and NSL attempted to negotiate the sale of a limited-use license for the DCD

technology. The negotiations apparently proceeded only to an option agree-

ment to continue exclusive negotiations, and the parties disputed whether or

not NSL exercised that option. Meanwhile, a disagreement over the technol-

ogy developed between the university and Candela Corporation, culminating

Intellectual Property in the Information Age 107

an infringement action in federal court in Massachusetts, which the university

ultimately settled by granting to Candela an exclusive license in the DCD tech-

nology, a settlement allegedly in conflict with the negotiations or agreements

with NSL. Candela and NSL attempted to negotiate a license of their own but

failed to reach agreement, and NSL subsequently filed suit against both Can-

dela and the university. The university claimed Eleventh Amendment immu- nity. A federal district court held against the university, arguing that this case

was not merely about an infringement, which would be barred by the Eleventh

Amendment, but about the validity of the patent in question. Thus, amenabil-

ity to a suit challenging the validity of a patent is an integral part of the patent

scheme. The issue here is that the university was attempting to claim that ques-

tions about its patents can never be addressed, giving it not only a competitive

edge over private entities in being shielded from infringement actions but even

from challenges to patents themselves, which would essentially kill the patent

system and allow state actors to shut out private ones.

Likewise, in Vas-Cath, Inc. v. Curators of the University ofMissouri (2007),

the University of Missouri initially filed as a patent interference hearing against

Vas-Cath over patent rights associated with specially designed catheters to treat

kidney failure. The federal trial court ruled in the University of Missouri's

favor, and Vas-Cath appealed. On appeal of the decision, the university

asserted sovereign immunity to block Vas-Cath from pursuing its appeal. The

U.S. Court of Appeals for the Federal Circuit, which hears patent appeal cases, ruled that a state entity could not assert sovereign immunity after the state

entity initiated and participated in the interference hearing.

Although the literature is bereft of discussions that address colleges' and

universities' assertion of sovereign immunity over intellectual property

challenges, Klein (2005) presents a detailed analysis of the legal strategies that

might avail public institutions to lawsuits under federal copyright law despite

defenses of sovereign immunity. Based on a legal analysis of case law and sug-

gestions from constitutional law scholars who comment on sovereign immu-

nity, Klein (2005) highlights the differences between public and private in legal

treatment, but he suggests that lawsuits against public colleges and universities

for copyright infringement are legitimate, as the U.S. Supreme Court declared patent laws subject only to sovereign immunity and not copyright law.

108

Furthermore, Klein notes that the Eleventh Amendment is not an absolute

right and that avenues exist to initiate a federal copyright lawsuit against a state

agency or individual state employee. For instance, he suggests that plaintiffs

sue the state under the Fifth Amendment's Takings Clause. That is, the state

is taking property owned by a citizen and experiences economic harm from

such action.1 4 In addition, he proposes that plaintiffs may sue the public insti-

tution employee personally. If accepted by the courts, this proposal would

likely limit the use of copyrighted works, even those eligible for fair use,

because public employees such as professors and other academic staff would

likely air on cautionary measures. As established in the previous chapter, mat-

ters of fair use raise more questions than answers. Therefore, in light of the

ambiguity on what constitutes fair use and the potential for public employ-

ees' personal liability for using copyrighted works, public colleges and uni-

versities may become more disadvantaged than many writers and legal

commentators could ever imagine.

Equally important, such a challenge could hold employees liable for dam-

ages under copyright infringement when they are required to use the copy-

righted materials and have no autonomy or authority to stop the use of the

works. Given the problems associated with this potential form of lawsuit,

Pulsinelli (2007) advocates protection for public employees through an

absolute immunity when public employees use intellectual property works in

the context of their employment, regardless of their knowledge. The clear mes-

sage from the conflict between the sovereign immunity doctrine and provi-

sions of the intellectual property laws over monetary damages is that public

colleges and universities may be immune from lawsuits over monetary dam-

ages and that creative legal avenues may even hold public employees liable for

damages.

Elaborating on the Legal Conundrum

At stake in these cases of public institutions' infringement of another's intel-

lectual property is the ability to collect money derived from the use of the

intellectual property (but see Crews and Harper, 1999). The metanarrative

underlying these cases, then, is that the modern state is made up of forces that

drive its subdivisions to compete with each other and with private entities and

Intellectual Property in the Information Age 109

that these subdivisions even exceed the interests of the individuals that make them up, as in the Genentech case in which the university was at odds with its former professors. The privatization movement in public higher education,

therefore, is not merely a reworking of state functions in response to market forces; it is a movement that requires state sanction. From the perspectives of economic, political, and social forces, we have to pay attention to the growth of state governments, the growth and autonomy of their agencies, and the entrepreneurial ideology that drives how they behave, not just because it sheds

doubt on their pursuit of public interests but because this activity is sanctioned

and protected by law.

While state governments are shifting the burden of funding to individual institutions, decreasing the latter's reliance on the state for revenues and in

some cases forcing or encouraging those institutions to privatize themselves,

these same institutions wear the mantle of the state to shield them from the law. Increasingly, their budget mechanisms suggest that states are trying to give

them even more independence. One may wonder, therefore, whether the idea of sovereign immunity for public institutions of higher education is struc- turally coherent. Those institutions do tend to separate themselves from state control, often claiming academic freedom against state legislatures. Their his- tory thus makes them odd "arms of the state" in that traditional notions of

academic freedom give them a great deal of autonomy.

More fundamentally, these cases shed doubt on the ability of the public to hold their own institutions accountable to it. With public institutions of

higher education, the "public good" they serve is one that is also premised on an idea that it is "good of the public" and that they would not harm that pub- lic (and if they violate, say, patent rights, they do so "innocently," as the

Supreme Court indicated in College Savings Bank (1999) and Florida Prepaid (1999)). The idea that public colleges and universities are not in business for

themselves needs to be dispelled. At the same time, intellectual property hold-

ers, particularly of copyrights, may devise a more creative lawsuit to seek dam- ages from parties affiliated with the state, including state employees as individuals who are personally liable. Thus, this conundrum drives states to

act freely, privatize, and hold themselves not liable, but the law may not pro- tect state employees from personal liability for actions based on copyright

110

infringement conducted on behalf of the state, nor can the state use its

resources to defend its employees sued for personal liability. As Klein (2005)

points out, this situation becomes particularly troublesome as online courses

increase and professors act more like independent agents, which further sub-

stantiates a case for personal liability of a professor at a public institution. Sim-

ply put, professors at public institutions may be required to pay for illegal

actions of the state while the public colleges and universities behave more like

private entities, and both remain responsible for furthering the public good

through educational activities.

Chapter Summary This chapter examined how the laws of patents and copyrights contain shared

and related concerns with other areas of law that illustrate treatment of higher

education as playing a significant role in commerce and trade, and yet the laws

also shield public institutions from trade practices that constitute intellectual

property infringement. To uncover these themes of commerce, trade, and pub-

lic institutions' shield, this chapter addressed trademarks, trade secrets, inter-

national treaties pertaining to intellectual property, and state sovereign

immunity over infringement.

As the terms signify, trademarks and trade secrets represent activities of

trade and commerce. Like patents and copyrights, trademarks and trade secrets

serve as additional intellectual property options available to protect the inter- ests of the creator, which in turn fosters more innovation in society as inven-

tors know that their interests may be protected. In higher education, a

trademark protects the identity or mark of an entity such as a university, a unit

of an organization, or a product or process that an entity developed from unauthorized users. Therefore, the mark reveals to the world the economic

and reputational interests that the trademark holder has as applied to the

entity, product, or process. Put simply, a trademark attaches an added assur-

ance of keeping the trademark holder's interests contained and blocking unau-

thorized uses of the trademark so the consuming public does not get confused

between two different entities, products, or processes.

In addition, trade secrets protect knowledge by not disclosing valued infor-

mation. As the critics of trade secrets indicate, this protection fosters

Intellectual Property in the Information Age 111

organizational hoarding, a practice that is contrary to the norms of the aca-

demic environment. At the same time, the protection permits nondisclosure

so academic researchers or industry may keep their works free from misap-

propriation, which in the long run may protect the public from improper han-

dling, use, or exposure to the research findings. Nevertheless, this chapter

demonstrated that the legal parameters, technological advancements, and com- peting interests along with the economic, political, and social forces more

broadly shape intellectual property policies and practices at institutions of

higher education.

Similarly, the international setting operates heavily off trade principles. In

terms of international compliance, international treaties focus on policies that

foster foreign markets and access to products and services while also stan- dardizing the concept of protective economic measures without much excep-

tion and consideration to the academic environment. The treaties typically

establish uniformity among signatory countries in the process and recognition

of intellectual property along with basic standards of practice (for example,

minimum number of years to recognize a protected work). In the compara-

tive realm, the priorities of trade practices, commercialization of academic

works, declining government funding, and other dimensions fit the movement

toward academic capitalism.

Although the protections of trademarks and trade secrets and the princi-

ples of international law emphasize uniform application of the law, sovereign immunity creates an imbalance in the equal treatment of the law, and it pre-

sents a legal conundrum. The state may participate in trade and commerce,

and indeed public institutions are expected to do so. At the same time, the

state may assert protections over sovereign immunity, which protects state

actors from infringement lawsuits.

According to the doctrine of sovereign immunity, state actors cannot be

sued without consent, and absent some explicit, affirmative action, states did not waive their sovereign immunity through the enactment of federal intel-

lectual property laws. Consequently, public colleges and universities are

immune to lawsuits demanding monetary awards, while private institutions may be sued and held financially liable for the same infringement actions.

Viewed another way, the law shifts the balance of power over intellectual

112

property in favor of public institutions. As an alternative for intellectual prop- erty holders who seek monetary recovery, the legal literature suggests suing the state employee who initiates the infringement in his or her personal capacity. By pursuing that legal recourse, if the intellectual property holder prevails, the individual state employee must pay from his or her own funds and without

the backing of the state. As these matters come to light, the legal parameters, technological advancements, and competing interests will further alter intel- lectual property policies and practices at colleges and universities.

Intellectual Property in the Information Age 113

Conclusion

A S THE INFORMATION AGE emphasizes knowledge, intellectual property escalates as an issue of concern, especially for colleges and

universities. Certainly, higher education serves the society of the informa-

tion age through preparation for the labor force, but equally critical, higher

education participates in the commercial world of intellectual property. As

an industry that currently transacts with $375 billion in terms of expendi-

tures (Blumenstyk, 2008), higher education no doubt produces, maintains,

controls, and trades intellectual property, which requires colleges and uni-

versities to construct intellectual property policies and practices balancing

several considerations.

In one dimension, intellectual property policies and practices at colleges

and universities are shaped by the economic, political, and social forces. The

economic forces drive incentives and rewards for creators and holders of intel-

lectual property. The economic value of the intellectual property represents a

critical component of national and international policy justifications. More-

over, the economic environment of the information values even more the

intangible property. Accordingly, copyright and patent laws protect the inter-

ests of the holders through infringement actions, and trademarks and trade

secrets protect holders from parties that misappropriate their works.

The political forces advance the power dynamics connected with intellec-

tual property. In copyright law, determinations of fair use, although not bind-

ing law, are largely dictated by guidelines established by industry. Similarly,

the Recording Industry Association of America and the Motion Picture Asso-

ciation of America garnered sufficient political clout to include provisions in

Intellectual Property in the Information Age 115

the most recent Higher Education Act's reauthorization to require technolog- ical blocks and monitoring of media piracy at U.S. colleges and universities. Patent law also infuses political power with contests over ownership rights between faculty and administrators as well as between the academic commu- nity and industry.

The social forces present the relationships and the outcomes. Under the social forces, intellectual property potentially serves the greater good and ben- efits society by fostering innovation. In copyright and patent laws, writers, artists, publishers, and inventors receive protections, in turn spurring further creative expressions, and society enjoys the products, processes, and expres- sions that emerge. In addition, the social forces capture more than the con- suming public's benefit. Intellectual property contains moral rights such as the rights of attribution and integrity of the products, process, and expressions.

In another dimension, intellectual property policies and practices at col- leges and universities are shaped by three factors: legal parameters, techno- logical advancements, and competing interests. The legal parameters include quite obviously intellectual property laws. In addition, as we discussed, con- tract laws, state laws, international treaties, and even sovereign immunity through the Eleventh Amendment to the U.S. Constitution contribute to poli- cies and practices at institutions of higher education. For example, many insti- tutions of higher education use contract law to grant some financial rewards to university staff who patent their works.

Technological advancements represent a second factor that shapes intel- lectual property policies and practices at colleges and universities. For exam- ple, as discoveries in the biotechnology area developed, higher education and industry sought patents for new subject matter not previously included. Sim- ilarly, when subject matter did not qualify for patent protection, institutions of higher education as a matter of policy protected their works as trade secrets. In addition, as technological advancements occurred and made piracy of music and movies easier, colleges and universities proposed alternative, legal down- loading avenues and implemented technological applications to curb piracy

on campus.

As a third factor, competing interests also shape intellectual property poli- cies and practices at colleges and universities. For instance, as online education

116

emerged as a copyrightable expression, faculty and college administrators vied

for a stake in the copyrightable works. Similarly, book publishers established

guidelines on fair use to maintain their interests and to influence college and

university policies and practices. Under patentable items, we also recognize

the competing interests that contributed to intellectual property policies and

practices at colleges and universities as members of the academic community

desired quality control, access, and rewards.

Our framework attempts to capture the complex economic, political, and

social forces that explained the surrounding circumstances. These environ-

mental pressures contributed to the development and refinement of intellectual

property policies and practices at colleges and universities along with the legal

parameters pertaining to intellectual property, technological advancements

that shifted the eligibility and form of intellectual property, and competing

interests of various actors who vied for a stake in the intellectual property. Col-

lectively, the factors in the context of the economic, political, and social forces

shaped intellectual property policies and practices at colleges and universities.

We focused on the law as illustration of this phenomenon, but attention

to other concerns highlights similar issues and similar tensions. We think that

the question of whether or not institutions of higher education should play

such a role is moot, as the conditions we mentioned have required this par-

ticipation. Instead, in the field of higher education, this movement, whether

inevitable or not, does not go uncontested. Consequently, administrators seek-

ing to engage faculty, researchers, and students more actively in technology

transfer and other forms of intellectual property commercialization may be

well advised to consider that many faculty, researchers, and students will act

unwillingly, which certainly creates tensions in light of the value and empha-

sis on information.

The reason for tension relates to the beliefs that the university is a public

domain and that the privatization of knowledge, which intellectual property

laws and policies protect, seems antithetical to this concept of publicness.

Some members of the higher education community are sanguine about the

forces that will require such privatization and thus try to accommodate the

movements toward intellectual property with the ideals of institutions of

higher education as public domains. In these cases, the arguments take the

Intellectual Property i .n the Information Age 117

form of expanding the concepts of free speech and fair use in copyright law and the research exemption in patent law, limiting the availability of intellec- tual property rights in certain areas and requiring that universities and other research-oriented entities grant compulsory licenses to their intellectual prop- erties. The most critical argument that institutions should consider is the pri- vatization of knowledge and enclosure of the public domain. These latter critiques require us to ask whether it is appropriate to even own knowledge. We think this central question, while in some ways academic (that is, rhetor- ical), is nevertheless one with which administrators and others seeking to expand intellectual property policies must contend.

Intellectual property law will shape the course of knowledge for the fore- seeable future. This movement does not come without controversy, as the own- ership of knowledge severely constrains inter- and intrauniversity relationships. Universities seek greater returns on marketable intellectual property, leading some to question their public role in disseminating knowledge for their own sake and for the sake of the firms. The ownership of knowledge has also dra- matically changed the nature of faculty work, so that it becomes redirected from publications to commercially motivated research. Even students begin to see their work as copyrightable. Whether one is in favor of intellectual prop- erty or not, no clear understanding of intellectual property law can take place without an understanding of the controversies associated with it that will shape how institutions must behave.

Modern economic analysis now sets the terms for policy discussion. No longer do discussions reflect philosophical questions such as natural rights or just desserts, but in keeping with the utilitarian spirit of the times, the issues relate to whether or not intellectual property enhances economic welfare by stimulating technological progress (David, 1993). On the one hand, economic analysis provides more widely accepted rationales for public intervention, but on the other, it is unable to achieve consensus on the answer to two difficult empirical questions, which it itself has set up: Will faster technological progress always be an unambiguously good thing that warrants the sacrifice of other societal goals? How responsive is the supply of socially useful discoveries and inventions to the creation of greater private economic incentives (David, 1993, pp. 2 0 -21)?

118

Adding to these broader questions, this monograph presents key issues of

intellectual property rights nested in the context of higher education. In par-

ticular, it examines the intersection among legal parameters pertaining to intel-

lectual property, technological advancements, and competing interests framed

in our information economy and executed under intellectual property law. In

doing so, it captures the discussion surrounding the interests, priorities, and

influences of multiple actors and the battles for rights among them. Equally

important in this framework, the monograph raises significant concerns about

how the law and technology can even deal with very practical realities for uni-

versities and academic communities. For instance, the law currently requires

nonprofit educational institutions to take steps to curb infringement. At what

point will new technologies continuously outpace the prior generation's tech-

nology so that we can no longer refer to technology change in terms of "gen-

erations" but in units of days or minutes? When it occurs, how can universities

comply with the laws and stop students, faculty, and staff from infringement?

Similarly, the law currently permits use of protected works for limited uses,

which are prescribed in ways that make sense today but may not in the future.

What is fair use of a digital dissertation? How do academics place limits on

use of academic simulations when the simulation is available for an online

course? How does the research exemption work with multimedia technology?

Likewise, the law prescribes parameters on use of copyrighted works as applied

in the United States, but it fails to consider the global environment of educa-

tion, especially when online education no longer contains the physical divide.

If that is the case, how do academic institutions determine the legal parame-

ters? What do universities and members of the academic community do when

others do not respect the same intellectual property laws and practices in the

United States? How does it change intellectual property law to an international

realm not just a nation-state, jurisdictional matter?

We raise these issues because the changes are inevitable and some frame-

work is needed to address these matters. This monograph presented the cur-

rent state of intellectual property as derived from the law and literature. It

trailed the changes in the law and higher education practices and policies, yet

we are certain that our discussion will be foreign to scholars in a decade.

Indeed, although we cannot forecast what precisely will occur, we suspect that

Intellectual Property in the Information Age 119

our framework will continue to capture the dimensions (that is, the economic, political, and social forces, which sets the stage for the direct factors of legal parameters, technological advancements, and competing interests that shape intellectual property policies and practices at colleges and universities) that account for these future iterations of intellectual property in the impending, more advanced information age.

120

Notes

1. At present, few institutions actually make money in technology transfer

(Powers, 2006; Thursby and Thursby, 2003); however, as institutions become

more efficient through such financial structures (including lowering fixed

costs, developing expertise in handling patentable works, and waiting for

existing patents to produce more revenue or capital), these technology trans-

fer offices may eventually recognize income to cross-subsidize other parts of

the university. Likewise, with the influx of online learning and other tech-

nologically mediated creations, we anticipate that many public colleges and

universities will begin to recognize new revenue sources from these outlets

and that these institutions will likely use these funds to supplement short-

falls from state appropriations and other governmental support.

2. To comply with an international agreement such as the Uruguay Round

Trade Agreement, this requirement has one exception. Unauthorized sound

recordings of live performances, which are not fixed in any tangible

medium of expression, also violate a provision in the copyright act (17

U.S.C. §1101).

3. Robinson (2000) notes that courts determine the stature qualification

based on "opinions of artists, art dealers, collectors of fine art, curators of

art museums, restorers and conservators of fine art, and other persons

involved with the creation, appreciation, history, or marketing of fine art"

(p. 1945).

4. In addition to the legal issues over copyright ownership of faculty

scholarship, Springer (2005) identified two very practical matters as to why

Intellectual Property in the Information Age 121

colleges typically do not assert any ownership over these works. "If the administration owned all the work of faculty, then it would be responsi- ble for the content. Few administrations want to claim responsibility for every conclusion reached by faculty." In addition, "if the institution owned the scholarly work of faculty, it would also be responsible for things like negotiating book contracts, publishing agreements, handling revisions and updates, etc. Few institutions have the desire or resources to take this on" (http://www.aaup.org/NR/exeres/517C85B6-CC13-4A47-AE3E-

5C1763713B02.htm). 5. The Court raised the issue by stating, "In determining whether a hired

party is an employee under the general common law of agency, we con- sider the hiring party's right to control the manner and means by which the product is accomplished" (p. 751).

6. The trade associations that have participated in the peer-to-peer copyright infringement dialogue include American Society of Media Photographers, Association of American Publishers, Association of American University Presses, Authors Guild, Inc., Business Software Alliance, Directors Guild of America, Entertainment Software Alliance, Independent Film & Tele- vision Alliance, Motion Picture Association of American, National Music Photographers of America, Professional Photographers of America, Record- ing Industry Association of America, Screen Actors Guild, and Software and Information Industry Association.

7. According to the report, the calculation is "based primarily on a review of confidential sources" (Siwek, 2007, p. 7). Although the calculation of the downloads is not disclosed, the number is plausible in light of the other reports (see, for example, Kruger, 2004).

8. See, for example, Fenn v. Yale University (2003); Kucharczyk v. the Regents of the University of California (1996); University of West Virginia Board of Trustees v. Vanvoorhies (2002).

9. Semiconductor chips pose similar dilemmas, as they are expensive to make but easy to reproduce. Furthermore, the chips are too functional for copy- right protection, but their technology is fairly well known now and so they do not qualify as novelties or nonobvious inventions. Thus, the United

122

States decided on a special protection and in 1984 passed the Semicon-

ductor Chip Protection Act, which borrows from existing copyright and patent law but offers only ten years of protection (Wallerstein, Mogee,

and Schoen, 1993).

10. University-Industry Partnership is a consortium of several organizational representatives with a charge to facilitate contracts between universities

and industry.

11. A patent infringement action occurs after a patent issuance against an opposing party that is claimed to have no rights to the patent or license

to the patent. In contrast, an interference proceeding typically refers to challenges made during the initiating party's patent application.

12. Trade names are typically subsumed into the intellectual property cate-

gory of trademarks.

13. See College Savings Bank v. Florida Prepaid Postsecondary Education Expense Board (1999) and Florida Prepaid Postsecondary Education Expense Board

v. College Savings Bank (1999); these cases applied the sovereign immu-

nity doctrine to patent law. See also Seminole Tribe v. Florida (1996). 14. The Takings Clause is the basis for a public entity's payments when it

takes property under authority of eminent domain.

Intellectual Property in the Information Age 123

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140

Name Index

A Ahrens, E, 49 Aoki, K., 5

Apple, R. D., 84, 85

Arewa, 0. B., 17

Ashley, C. L., 42

Audette, L. G., 68

Aufderheide, P, 32, 34, 35

Autry, J. R., 18

Avorn, J., 84, 85, 88

B Babcock, S., 84

Baez, B., 5, 9 Bagley, M. A., 84, 87

Barnett, A. T., 25, 26

Barton, J. H., 67

Bartow, A., 39

Batista, P. J., 96 Bayh, B., 79

Bearby, S., 94

Belfiore, A., 74

Benjamin, R., 3

Bennett, A. B., 81 Berdahl, R. 0., 2

Berger, J. B., 71

Berneman, L., 78

Bhatacharjee, S., 66

Biles, B., 84

Blumenstyk, G., 9, 75, 94, 97, 98, 115

Blumenthal, D., 74, 84, 87, 88, 97

Bobbitt, W. R., 7, 23

Boettiger, S., 81 Bonner, K., 9, 18, 27, 29

Borow, T A., 21, 22, 27

Bowers, L. J., 68, 69

Boyle, J., 4 Bretschneider, S., 80

Brown, J. M., 21, 23, 96

Bush, V., 78

C Campbell, E. G., 74, 84, 87, 88

Carlson, S., 49, 50

Carr-Chellnan, A. A., 27

Carroll, M. W., 33

Casey, J. J., J r., 74

Castagnera, J. 0., 69, 74 Causino, N., 74, 87, 88

Chavez, D., 105

Chew, P. K., 70

Chmielewski, G., 50

Cho, C., 88

Clarkson, G., 88, 89

Clarridge, B. R., 74

Cohen, W. M., 87, 88

Cottrell, E, 77

Crews, K. D., 4, 32, 34, 36, 39, 41, 42,

45, 109

D Dai, Y., 80

Daniel, PT.K., 7, 9, 23, 24

David, P.A., 2, 13, 97, 118

Intellectual Property in the Information Age 141

de Larena, L. R., 89 DeKorte, D., 88, 89 Demaine, L. J., 82 Denicola, R. C., 21 Diaz, V., 37, 38 Dillen, J. S., 82 Dinwoodie, G. B., 99 Doellinger, C. J., 95 Dole, B., 79 Drechsler, C. T., 60, 61 Dreyfuss, R. C., 21, 22, 23, 24 Dunn, R. L., 74, 75, 97 Dutton, W, 4

E Ebenstein, D., 35 Eisenberg, R. S., 64, 85, 86, 88, 89, 90 Etzkowitz, H., 78

F Fellmeth, A. X., 82 Ficsor, M., 2 Fine, C. R., 69, 74 Fisher, W W, 32, 33 Fox, S., 50 Frazier, K., 32 Frost, G. E., 56

G Garabedian, T. E., 56 Gasaway, L. N., 41, 42 Gebhardt, C., 78 Geiger, R. L., 78, 90 Gill, E. King, 96 Gopal, R. D., 66 Gross, M., 46, 66 Gulbrandsen, C. E., 79 Gumport, P. J., 2

H Hall, B. H., 87 Harmon, A., 49 Harper, G. K., 109 Hart-Davidson, W, 40 Healy, M. A., 50

Heathington, B. S., 68 Heller, M. A., 86, 88, 89, 90 Henderson, R., 79, 88 Hendrickson, R. M., 50 Hermanowicz, J. C., 85 Hettinger, E. C., 3 Hirtle, P. B., 20 Hobbs, R., 32, 34, 35 Holman, C. M., 58, 59 Holmes, G., 24, 25 Holmes, 0. W, 100-101 Holmes, W., 102 Huber, J., 42

J Jaffe, A. J., 79, 88 Jaszi, P., 32, 34, 35

Jeweler, R., 42 Jobe, J., 6 Johnson, C., 95 Jones, S., 46

K Kaplin, W. A., 60 Katz, R. N., 4 Kehoe, B. T., 42 Kelley, K. B., 9, 18, 27, 29 Kesselheim, A. S., 84, 85, 88 Keyser, M. W., 35 Kilby, P. A., 21, 22, 27 Klein, M. W., 25, 26, 108, 109, 111 Korn, D. E., 60, 67 Kruger, B., 45, 49, 50, 122 Kulkarni, S. R., 21, 23, 24, 25 Kwall, R. R., 24, 25, 27

L Lane, J. E., 50

Lape, L. G., 23, 24, 25, 27 Lattinville, R., 94, 95 Laughlin, G. K., 25 Leaffer, M. A., 95 Lederman, D., 75 Lee, B. A., 60 Lehman, B. A., 41

142

Lenhart, A., 49, 50 Leon, V., 68, 69 Leslie, L. L., 4, 101, 102 Levin, D. A., 24, 25 Levine, A. E., 6, 7, 29 Lieberwitz, R. L., 88 Liebowitz, S., 51 Link, A. N., 87 Lipinski, T. A., 42 Litman, J., 5 Loggie, K. A., 27 Louis, K. S., 74, 87, 88

M Madden, M., 49, 50 Manas, A. E., 94, 95 Maxwell, B., 74 May, C., 3, 4 Mclsaac, M. S., 23, 27 McMichael, J. S., 9, 18, 27, 29 McMullan, E. C., 46, 50 McSherry, C., 10 Mello, M. M., 74 Mendoza, P., 71 Merges, R., 59 Merton, R. K., 85 Metcalfe, A., 37, 38 Metlay, G., 68, 78, 79, 84, 85, 86 Meyer, M. L.., 22 Miyoshi, M., 4 Mogee, M. E., 1,2, 4, 6, 66, 123 Monaghan, P., 6 Moore, R., 46, 50 Mowery, D. C., 4, 77, 78, 79, 82, 83, 84, 86 Munzer, S. R., 1, 2 Myers, P. E., 27

N Nelson, R., 4, 59, 77, 79, 81, 82, 83, 88 Newberg, J. A., 74, 75, 97

0 Oberholzer-Gee, F., 49 O'Connor, K. W., 1, 14 O'Donnell, M. L., 50

Okediji, R. L., 99, 100 Ostergard, R. L., 1, 2

Owen-Smith, J., 6

P Packard, A., 25, 26

Palaima, T. G., 96

Palmer, A. M., 67, 86

Parker, C. W., 50

Patel, S. H., 28, 61, 62, 63, 84

Pauken, P. D., 7, 9, 23, 24

Permuth, S., 90

Phillips, M., 96

Pomea, N., 9, 18, 27, 29

Popp, D., 80 Powell, W. W, 6

Powers, J. B., 83, 84, 89, 121

Press, E., 74, 84 Pressman, L., 85, 89 Price, D. K., 78

Pulsinelli, G., 77, 109 Pusser, B., 90

R Rai, A. K., 86

Rainie, L., 50 Ramirez, H. H., 85

Read, B., 45, 46, 48, 49, 50, 51

Reimertshofer, J. E, 101

Rhoades, G., 23, 68, 71, 72, 73

Richardson, M. D., 27

Rife, M. C., 40

Rob, R., 49

Robbins, J., 67 Roberson, A. J., 68 Robinson, C. J., 121 Rothman, J. E., 25

Rowe, J., 23, 27

S Salomon, K. D., 7

Sampat, B. N., 4, 77, 78, 79, 82, 83,

84, 86 Samuelson, P, 66

Sanders, D. W., 27

Intellectual Property in the Information Age

143 143Intellectual Property in the Information Age

Sanders, G. L., 66 Sanger, D. E., 78 Schact, W H., 66, 85 Schoen, R. A., 1, 2, 4, 6, 66, 123 Scott, J. T., 23, 87 Scully, J., 24, 25, 30 Seeley, S. L., 23, 82 Seymore, S. B., 28, 62, 63 Shapiro, C., 88, 89 Shepherd, S. G., 27 Sherman, C. H., 48, 51 Shockley, P., 98 Siegal, B., 94 Simon,T. F., 21, 25 Siwek, S. E., 49, 50, 122 Slaughter, S., 4, 9, 68, 71, 72, 73, 84,

101, 102 Smith, G. K., 70 Spanier, G., 51 Springer, A., 121 Steenbock, H., 84 Stein, D., 86 Steinbach, S. E., 33, 39 Stewart, C. N., Jr., 65 Strumpf, K., 49 Studdert, D. M., 74 Sun, J. C., 6, 7, 29, 68, 69, 90

T Terra, B.R.C., 78 Thursby, J. G., 87, 89, 121 Thursby, M. C., 87, 89, 121 Timiraos, N., 45, 46, 51 Todd, J., 28

Townsend, E., 17, 26, 28 Trajtenberg, M., 79, 88 Troop, D., 94 Turley, P., 74

U Ubel, F A., 56

w Wadley, J. B., 21, 23 Wagner, W, 98 Wagoner, R., 37, 38 Waldfogel, J., 49 Wallerstein, M. B., 1, 2, 4, 6, 66, 123 Walsh, J. p., 87, 88 Warren, J., 74 Washburn, J., 74 Webster, A., 78 Weidemier, B. J., 60, 61 Weissman, J. S., 87, 88 Welsh, J. E, 27 Wilkinson, M. A., 101 Woody, R. H., 111, 37 Wright, N. J., 74

Y Yancey, A., 65 Yeh, B. T, 42

z Zhang, K., 27 Ziedonis, A. A., 4, 77, 79, 82, 83, 86 Zuefle, D. M., 96

144

Subject Index

A Ad Hoc Committee on Copyright Law

Revision, 33

Agreement on Guidelines for Classroom

Copying in Not-For-Profit Educational Institutions with Respect to Books and

Periodicals, 37, 40

Agreement on Trade-Related Aspects of

Intellectual Property Rights (TRIPS),

100-101

American Bioscience, Inc., Board of

Education v., 62

American Broadcasting Company, Inc.,

Iowa State Univ. Research Foundation, Inc. v., 28

Apple Computer, Inc. v. Franklin

Computer Corp., 17 Applied Innovations, Inc. v. Regents of the

University of Minnesota, 15, 17 Art/artists, 18, 19, 31

Arte Publico Press, Chavez v., 105

Attic Intern, Inc., Williams Electronics, Inc. v., 15

Assignment of rights, 60

Association of American Publishers,

Inc., 33

Association of University Technology

Managers, 79, 80, 82, 86, 89

Authors League of America, 33

Authorship, 13

B Baltimore Orioles, Inc. v. Major League

Baseball Players Association, 16

Basic Books, Inc. v. Kinko's Graphics

Corp., 37, 39

Bayh-Dole Act, 67, 79-80, 88, 90

BearShare, 50 Benson, Gottschalk v., 58

Berne Convention, 99

Blue Coat Systems, 46

Board of Education v. American Bioscience, Inc., 62

Board of Trustees of the University of

Alabama, U.S. v., 15

Books and periodicals, 33-35

Brand protection, 96-97 Brown, Richard Anderson Photography v.,

104

Brown Univ., Foraste v., 28-29

BV Engineering v. University of California,

106

C Candela Corporation, 107-108

Chakrabarty, Diamond v., 81

Charter Communications, Inc., In re, 46

Chavez v. Arte Publico Press, 105

Chou v. University of Chicago, 62

Chronicle of Higher Education, 75

Circular 12 (U.S. Copyright Office), 36-37

Intellectual Property in the Information Age

145 145Intellectual Property in the Information Age

Coinventor status, 62-63 College of New Jersey, 96 College Savings Bank, Florida Prepaid

Postsecondary Education Expense Board v., 123

College Savings Bank v. Florida Prepaid Postsecondary Education Expense Board, 110, 123

Columbia University, 54 Community for Creative Non-Violence

v. Reid, 26 Competing interests, 7, 116 Computer software, 17, 45-46, 65-67 Consumer protection, 95 Contract law, 60 Copyright Act, 21, 24, 25, 26, 28, 32, 33,

66, 104, 121 Copyright law; computer software, 65-67;

history of, 13-14; legal parameters, 6-7; length of protection, 19-20, 123; qualifications for copyright, 13-15; rights of protection, 20; shared issues of patent and, 93; sovereign immunity and, 108; subject matter, 16-20

Copyrightable formats, 17 Copyrightable subject matter, 16 Cornell University, 54 Course materials/content; course packs,

37-39; faculty ownership of, 23-25; fair use of, 37-41; institutional ownership of, 25-27

Criteria for patentability, 56-58 Curators of the University of Missouri,

Vas-Cath, Inc. v., 108

D Data Access Amendment, 98 Data blockage, 87, 97 Default rule, 7 Diamond v. Chakrabarty, 81 Diamond v. Diehr, 66 Digital Millennium Copyright Act

(DCMA), 47, 48 Downloading music, 46

Duke University, Madey v., 64, 65 Dynamic Cooling Device technology, 107

E Economic issues, 3, 115 Edmark Indust ties v. South Asia

International, 17 Electronic Frontier Foundation, 48 Eleventh Amendment, 104, 105, 108, 116 Eli Lilly, 106 Eli Lilly and Co., Regents of the University

of California v., 58 Employee liability, 20, 109 Ex parte Young, 103 Examination questions, 17 Experimental use exemption, 64-65

F Fair use, 20, 50; books and periodicals,

33-35; course materials, 37-41; implications of debate on, 45-52; music, 35-37: online instruction, 41-45; overview, 31-33; television broadcast recordings, 37

Federal agency agreements, 79 Federal laws, 14; copyrightable products,

16-20; filing/receiving a patent, 60; Internet-related, 47; legal presumption of ownership, 20-21; trademark, 95

Feist Publications, Inc. v. Rural Telephone Service Company., Inc., 15

Fenn v. Yale University of California, 122 Fifth Amendment, Takings Clause, 109, 123 Filing patents, 58-60 First to invent criterion, 56-57 Fisher, In re, 58 Fixation of an expression, 15 Florida Prepaid Postsecondary Education

Expense Board, College Savings Bank v., 110, 123

Florida Prepaid Postsecondary Education Expense Board v. College Savings Bank, 123

Foraste v. Brown Univ., 28-29

146

Forms of copyrightable works, 16-20 Framework of policies and practices, 3-6 Franklin Computer Corp., Apple

Computer, Inc. v., 17 Freedom of Information Act, 98

Freiburg University, 57

G G. D. Searle, University of Rochester v., 59 Genentech, 106, 110 Genentech v. Regents of the University of

California, 106-107 Germany, 57 Gottschalk v. Benson, 58 Graham v. John Deere Co. of Kansas City',

57 Greeting cards, 17 Grokster, 49, 50 Guidelines for Educational Uses of Music,

35 Guidelines for Off-Air Recording of

Broadcast Programming for Educational Purposes, 37

H Harper & Row Publishers, Inc. v. Nation

Enterprises, 14 Hays and MacDonald v. Sony Corporation

of America, 24 Higher education. See universities/higher

education Higher Education Act, 51, 116

Holders of copyrights, 20 Holders of patents, 53

I Immunity. See sovereign immunity

Information age, 3-6 Infringement issues, 2, 39; by institutions,

109-110; international, 99-102; patent infringement actions, 123; peer-to-peer, 49, 122; research exemption, 63-65;

take-down notices, 51 Innovation policies, 77

Inside Higher Education, 75 Intellectual Property Institute, 45, 46 International issues, 99-102 Internet; illegal downloading, 46-47;

online courses, 7, 41-45; search engine patents, 83

Inventorship status, 63, 84; Iowa State Univ. Research Foundation, Inc. v. American Broadcasting Company, Inc., 28

J John Deere Co. of Kansas City, Graham v.,

K Kawananakoa v. Polyblank, 102-103 Kazaa, 50 Kinko's, 39-40 Kinko's Graphics Corp., Basic Books, Inc.

v., 37, 39 Knight, Regents of the University of New

Mexico v., 61 Kucharczyk v. the Regents of the University

of California, 61, 122

L Lanham Act, 95 Lectures, 23-24 Legal guidclines/parameters, 27-28, 32-35,

43-44. See also copyright law; patent law Licenses, stacking, 89-90 Licensing works, 31 Literary works, 16-17 Logos, 94

M Madey v. Duke University, 64, 65 Major League Baseball Players Association,

Baltimore Orioles, Inc. v., 16 Manual of Parent Examining Procedure,

57-58 Michigan Document Services, Inc.,

Princeton Univ. Press v., 38

Intellectual Property in the Information Age 147

Michigan Document Services (MDS),

39-40 Monopolies, 77 Motion Picture Association of America

(MPAA), 48, 115 Movie industry, 48-49 Multi Legal Studies, National Conference

of Bar Examiners v., 17 Music industry, 48-49 Musical works, 17-19, 29, 31, 35-37, 46 Music-related organizations, 33

N Napster, 49 Nation Enterprises, Harper & Row

Publishers, Inc. v., 14 National Association of College and

University Business Offices, 68 National Conference of Bar Examiners

v. Multi Legal Studies, 17 National innovation policy, 77 National Research Council, 67 National Science Board, 80 New Jersey Institute of New Jersey, 94 New Star Lasers (NSL), 107 New Star Lasers v. Regents of the University

of California, 107-108 Nonacademic staff's works, 28-29 Novelty condition, 55-56

0 Ohio State University, 95

"Ohio U. and Ohio State U. Settle Trademark Tussle over 'Ohio"', 95

Ohio University, 95 Online courses, 7, 41-45. See also TEACH

Act Opposition to university patents, 85-90 Original expressions, 14-16 Ownership; academe versus industry, 72;

course materials/content, 23-25, 25-27; determination of patent, 70-71; faculty, 121-122; faculty versus administrators, 71-73; federal laws, 20-21; legal guidelines/parameters, 27-28; legal presumption of, 20-21; nonacademic

staff's works, 28-29; patents, 60-62; sorting out, 76; students' works, 28

P Panorama Records, Inc., Zomba

Enterprises, Inc. v., 17, 32 Parameters of intellectual property, 93 Patent and Trademark Act Amendments

(Bayh-Dole Act), 67, 79-81,88, 90 Patent law; academe versus industry

ownership, 73-75; coinventor status, 62-63; computer software, 65-67; debates about, 83-90; development of patent activity, 77-79; educational institution policies, 67-71; faculty versus administrator ownership, 71-73; filing a patent, 58-60; multiple-patent inventions, 88; ownership and rights, 60-62; patentable subject matter, 54-58, 81-82; research exemption, 63-65; rights of protection, 60-62; sovereign immunity and, 108; technology transfer, 82-83; types of patents, 53-54

Patent Law Treaty, 99-100 Patent thickets, 89 Patentable subject matter, 54-58, 81-82 Patent-associated costs, 89-90 Patents and copyrights, shared issues of, 93 Pedagogical costs, 35 Peer-to-peer infringements, 45-46, 48-52,

49, 122 Pennsylvania State University, 54 Periodicals and books, 33-35 Piracy, 2 "Piracy on University Networks," 50, 51 Political issues, 4-5, 115-116 Polyblank, Kawananakoa v., 102-103 "Pressing Legal Issues," 3, 4 "Princeton Settles Suit," 96 Princeton Univ. Press v. Michigan

Document Services, Inc., 38 Princeton University, 96 Prior art condition, 56-57 Public domain, 118 Public good, 110 Public versus private institutions, 103-107

148

R Random House, Inc., Salinger v., 17 Real Authentic Sound, Staggers v., 17 Recorded materials, 23 Recording Industry Association of

American (RIAA), 48, 50, 115 "Reducing Peer-to-Peer (P2P) Piracy on

University Campuses," 50, 51 Regents of the University of California,

Genentech v., 106-107 Regents of the University of California,

Kucharczyk v., 61, 122 Regents of the University of California,

New Star Lasers v., 107-108 Regents of the University of California

v. Eli Lilly and Co., 58 Regents of the University of Minnesota,

Applied Innovations, Inc. v., 15, 17 Regents of the University of New Mexico

v. Knight, 61 Reid, Community for Creative Non-

Violence v., 26 Research; academic, 7-10; applied versus

basic, 88; Bayh-Dole Act, 67, 79-81; commercialization of, 77; National Research Council, 78; patenting

academic, 78-79, 86 Research Corporation, 78 Research exemption, 63-65

Richard Anderson Photography v. Brown, 104 Roth Greeting Cards v. United Card

Company, 17 Rural Telephone Service Company., Inc.,

Feist Publications, Inc. v., 15

S Salinger v. Random House, Inc., 17 Scholarship rights, 21-23 Search engine patents, 83 Seattle Seahawks, 96 Secrecy, 87 Semiconductor Chip Protection Act, 123 Seminole Tribe of Florida v. Florida, 123

Shop rights, 61-62 Signature Financial Group, State Street

Bank and Trust Co. v., 82

Social issues, 5-6 Software, 17, 45-46, 65-67 Songs. See musical works Sonny Bono Term Extension Act, 20 Sony Corporation of America, Hays and

MacDonald v., 24 Sound recordings, 20 South Asia International, Edmark

Industries v., 17 Sovereign immunity, 112; legal conundrum

of, 109-111; maneuvering around, 107-109; public versus private colleges/universities, 103- 107; rationale for, 102-103

Stacking licenses, 89-90 Staggers v. Real Authentic Sound, 17 Stanford University, 54 State Street Bank and Trust Co. v. Signature

Financial Group, 82 Stature qualification, 121 Stern v. Trustees of Columbia University, 62 Student Monitor, 45, 46 Students' works, 28 Subject matter, patentable, 81-82 Support for university patents, 83-85 Supramaximalists, 70

T Takings Clause, 109, 123 TEACH Act, 41, 42-45, 52

Teaching/research, 7-10 Technological advancements, 7, 30, 52, 118 Technology, Education, and Copyright

Harmonization Act (TEACH Act),

42-45, 44 Technology transfer, 4-5, 82-83, 89, 121 Television broadcasts, 15-16, 37 Tests/test measures, 17 Texas A&M University, 96 Trade associations, 46 Trade names, 123 Trade secrets, 94, 96, 97-98, 111-112 Trademarks, 94-97 Treaties, international, 99- 100 Ilrenton State College, 96 "Trinity Southern University, 95

Intellectual Property in the Information Age 149

Trinity University, 95 Trustees of Columbia University, Stern v., 62

U Unbundling rights, 18 Uniform Trade Secrets Act, 97 United Card Company, Roth Greeting

Cards v., 17 Universities/higher education; Bayh-Dole

Act, 79-81; context of, 119; course materials/content, 23-25, 25-27; debates about, 83-90; development of

patent activity, 77-79; fair use of course materials, 37-41; federal laws, 20-21;

legal guidelines/parameters, 27-28; nonacademic staff's works, 28-29;

online instruction guidelines, 41-45; patent law policies, 72; patentable subject matter, 81-82; patents awarded to, 81; policies/practices, 8, 9-10, 67-71, 116; public versus private institutions, 103-107; students' works, 28; technology transfer, 82-83

University of California, 54, 58, 61, 106-107, 107-108, 122

University of California, BV Engineering v., 106

University of Chicago, Chou v., 62 University of Houston, 105

University of Illinois, Weinstein, v., 24 University of Minnesota, 15, 17, 54 University of New Mexico, 61 University of Rochester v. G. D. Searle, 59 University of West Virginia Board of

Trustees v. Vanvoorhies, 62, 122 University-Industry Partnership, 74, 123 Uruguay Round Trade Agreement, 121 U.S. Constitution, 1 U.S. Copyright Office, 33, 34, 36-37 U.S. Department of Health, Education,

and Welfare (HEW), 79

U.S. Patent and Trademark Office, 53-55, 80, 82, 94

U.S. policies/laws, 4-5 U.S. v. Board of Trustees of the University

of Alabama, 15

V Vanvoorhies, University of West Virginia

Board of Trustees v., 62, 122 Vas-Cath, 108 Vas-Cath, Inc. v. Curators of the University

of Missouri, 108 Video game images, 15 Visual Artists Rights Act. See musical works

Visual arts, 18, 19

w Warner Books, Inc., Wright v., 17 Web sites, 31 Weinstein v. University of Illinois, 24 Williams Electronics, Inc. v. Attic Intern,

Inc., 15 Williams v. Weisser, 24

WinMX, 50 Work made for hire; faculty course

materials, 21-23, 23-24, 25, 26, 27; nonacademic staff, 28-29

Working Group on Intellectual Property Rights in Electronic Environment (CONFU), 41, 52

Wright v. Warner Books, Inc., 17

y Yale University of California, Fenn v., 122 Young, Ex parte, 103

z Zomba Enterprises, Inc. v. Panorama

Records, Inc., 17, 32

150

TITLE: Intellectual Property in the Information Age: Knowledge as Commodity and Its Legal Implications for Higher Education

SOURCE: ASHE Higher Educ Rep 34 no4 2009

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