2000IPR
Chapter 8
Intellectual Property Rights
By Derek Law
Intellectual Property Rights (IPR) pose one of the least regarded, most complex and most dangerous areas of activity in education. Most institutions will have resolved how to deal with patents and their exploitation and probably with software written by staff. There is a tacit understanding to ignore issues concerned with publication of books and articles and this has implicitly but thoughtlessly extended to the electronic arena, where something much closer to an anarchic frontier culture operates than the settled environment of the paper world. IPR is usually managed, if at all, by either the Research Office or its equivalent for IPR created within the institution and by quite junior administrators and/or librarians for IPR purchased or leased by the institution. Yet legally the registrar and vice-chancellor or principal are at significant risk of personal prosecution because of such laxness.
Actions
The JISC, in one of its senior management briefing papers1, makes a number of sensible recommendations on intellectual property. The reasons behind these are explored further below, but the nine key points are worth highlighting as a useful checklist of recommendations and as a context to what follows. Few institutions will have made any real progress on implementing all of these recommendations.
1. All members of HEIs should be educated about copyright and what is acceptable.
2. All institutions should ensure that student regulations cover copyright infringement as a disciplinary offence.
3. All institutions should, similarly, update staff contracts.
4. All HEIs should ensure that copying of material is undertaken within the law.
5. All institutions should review what is made publicly available on the Web and implement controlled access to material which they are unwilling to see as in the public domain.
6. Institutions should ensure that systems are in place to seek copyright permission for material downloaded from the World Wide Web.
7. Institutions should review policy and contracts on all material created by staff.
8. HEIs should educate staff in not giving away copyright in its entirety to publishers.
9. Institutions should have expeditious procedures for granting copyright clearance where this is sought from them.
Copyright, Intellectual Property and Scholarship
The academic community is becoming more aware of the problems that are being caused by a failure to resolve this issue which has emerged as a problem. In 1999 an article explored how the system, which worked well for printed publications, is falling apart under the twin pressures of technology and copyright 2. In the past, institutions allowed authors to sign away all copyright in all formats and in perpetuity in return for which the system assured that copies were distributed to libraries where they were permanently available and around which a system of indexing and referencing, as well as inter-library loan has grown, which assured ready access to information. However, as material becomes electronic, the material is leased to institutions rather than owned by their libraries and is slowly accreting, at least in science, into the hands of large multinational companies with aggressive pricing and harsh intellectual property rights management. In a notorious case one publisher sued an American scholar who dared to suggest that their publications were bad value for money. It can cost thousands of pounds per year to subscribe to a major journal despite the fact that it is within the universities that the original research is largely conducted and the articles written. Major universities will spend over £1 million a year on journal subscriptions alone. In the UK and internationally, institutions have shied away from tackling the problem at its roots by asserting their own right to the intellectual property created by their staff. Only very slowly are major organizations such as the Committee of Vice Chancellors and Principals (CVCP) beginning to consider whether some collective action would benefit the system as a whole. As Sutherland comments “Universities could lose proprietary control of the knowledge base which is their reason for being” 3. Some aggressive responses are beginning to be heard. In the USA the Scholarly Publishing and Academic Resources Coalition (SPARC) was set up in 1997 by the Association of Research Libraries to underwrite the publishing of high quality electronic journals competing head-on with commercial products. Al of the 114 member libraries have agreed to buy the titles. SPARC has now teamed up with the Royal Society of Chemistry to publish a journal PhysChemComm which will appear at a fraction of the price of its competitors 4. Prophets of the end of scientific journals such as Ginsparg and Harnad have argued that savings of up to 80 per cent can be made if the scholarly community reclaims its own publishing.
This debate is being driven by the science, technology and medicine (STM) community, where the big money lies. Paradoxically, exactly the opposite fear applies to other disciplines. Even in the largest university, STM rarely forms more than half the institution. Yet the electronic model that is emerging threatens the small almost cottage industry which publishes the research of these other disciplines. Small learned societies, often based in universities, will find it almost impossible to supply the level of technical competence or the global infrastructure which will allow them to disseminate journals internationally in the easy way that the postal system does. The Academy must begin to consider not how to fund the profits of publishers but how to create the global academic networks which will allow the sharing of knowledge, which is the basis of academic life.
European legislation
Substantial legislation is under way at the European level although it is again librarians who are fighting the institutional corner. The proposed new EU directive on copyright is largely aimed at protecting the rights of commercial publishers and almost in passing poses huge threats to the scholarly community5. Unusually an advertisement was placed in The Times in February 1999 drawing attention to this threat. It brought together groups as varied as CVCP, Standing Conference of Principals (SCOP), and the Local Government Association to complain that “The Directive is harming consumers at the expense of large multinational media conglomerates”6. Material created by that community is in danger of becoming inaccessible except at great cost.
Teaching Materials
Librarians have complained about the situation regarding research results for some years with little effect. There is then a certain irony in the fact that it may be that the issue of teaching materials will be what forces institutions to act. The ownership of teaching materials ranging from course notes to examination questions has never really been considered by institutions, although a few newer universities do control this through staff contracts. Indeed, few institutions will have any idea of how much it costs to set up a new course. In the past this has barely mattered while this was a purely internal matter. But recently something of a rush has begun to create Web based courses, partly to allow students to learn when they like – asynchronous learning – and partly to ease the burden of course administration. The parallel growth of distance learning has also focused attention on the cost and quality of materials, with a general agreement that electronically delivered courses are very expensive to create. And yet many staff will assume that when they move from one institution to another ‘their’ course can go with them, despite the fact that the material was clearly prepared to further the work of the first institution. During 1998-9, geographers from several institutions set up a databank of examination questions to be shared by their community, precisely because the creation of such questions is expensive and time-consuming. It seems unlikely that many institutions will be happy to see their investment taken by staff to another institution, not least as the education marketplace becomes more competitive. Most administrators will find it difficult to establish the present contractual position, far less enforce it, until there is some institutional commitment to address this issue, perhaps through a much more cost-conscious attempt to discover true costs. It should be noted in passing that some ‘virtual’ universities are paying academic staff to create courses for them and academics are willing to do this despite the fact that the virtual university may be in direct competition with their employer.
Academic staff often have a fairly cavalier attitude to copyright. Again this has not been critical when perhaps a cartoon has been shown on an overhead projector during a lecture. Similarly, a casual attitude to what might be libel or slander is accepted in a lecture, but takes a quite different face when placed on a network. Placing material on the Web, where the audience is massively larger, is a real threat to copyright and other issues such as data protection also come into play. Some institutions are beginning to appoint intellectual property rights managers. The University of Sunderland advertised such a post in The Times Higher to ‘develop a strategy for recording and assessing all forms of research disclosure made by members of academic staff’, while the University of Strathclyde has approved the appointment of a Digital Information Officer with the rather different role of managing the electronic assets of the university and its staff to ensure that they are protected, up to date and not exploited unfairly by third parties. The JISC-funded CATRIONA II project, also based at the University of Strathclyde I preparing guidelines for institutions on managing such resources 7. Incoming intellectual property also requires detailed management. A number of eLib projects, such as SCOPE 8, have shown the increasing difficulty in obtaining timely and inexpensive permissions to use copyright material in support of courses and it seems inevitable that as institutions focus on courseware they will seek to encourage original content creation, rather than using supporting material from third parties.
Libel and Slander
A little regarded but related area is that of libel and slander and yet these are activities which information strategies should address. Lawrence Godfrey, a UK physics lecturer, issued a writ against Philip Hallam-Baker, who works in a European research centre, complaining about material posted on a bulletin board. In June 1995 he accepted an undisclosed out of court settlement. Wessex Institute of Technology sued over newsgroup remarks that a conference it was arranging had low refereeing standards. Also in 1995, Peter Lilley, then a government minister, sued Leeds University over personal allegations made about him by a student on a bulletin board. The action was withdrawn when the offending material was removed. Under UK law it could be argued that the institution mounting the information was as liable as the individual. It should then be clear that institutions are responsible for all of the content and comment which is sent electronically from their networks. Institutions should review the contractual and regulatory environment in which they and their employees operate.
External users
Institutions are also at risk when signing licences for the use of electronic materials. These tended to be standard and are usually processed with little regard for the legal implications of the contract. The European Copyright Users Forum has a Web site which gives a useful checklist of things to watch for when signing contracts and is well worth further investigation 9. Again this may seem remote, but where institutions and their libraries or resource centres are used regularly by people from outwith the community there is a real danger that the licensee will pursue unauthorized use. The most obvious example is where NHS staff use HE or FE facilities.
Records management and archives
Most institutions will have more or less sophisticated records management systems for their paper materials. This percolates down to the department where departmental secretaries generally keep systems in order which allow the ready recovery of administrative information and correspondence. Yet most institutions will have a quite haphazard, indeed almost irresponsible, attitude to electronic documents. Readers will be familiar with the difficulty of remembering file names on their own PC. Many e-mail systems automatically delete mail after a fixed period of time. There is little attempt to standardize document types – although some innovative work has been done on this at the University of Glasgow. Electronic archiving policies do not exist. This is no doubt partly because first generation exclusively electronic systems have only recently appeared and longer term issues of preservation and preservation standards have been able to be ignored and so have been. But such issues are much better addressed before data are lost and problems arise.
A variety of practices exist as far as paper archives are concerned. In some cases, the archives sit managerially within the administration; in some cases, there is a split between administrative and academic archives, which often sit within the library; in yet other cases all archives are managed by a professionally qualified archivist, who can have variable reporting lines. One unremarked change has come about with the much wider involvement of institutions in training for health professionals. As a result, many institutions have almost by accident become responsible for hospital and NHS records. These form part of the public record and as such are liable to public scrutiny by the Historic Manuscripts Commission. They will require that certain standards are met, particularly environmental standards such as BS 5454 for the preservation of records. As yet no institution has suffered the ignominy of having records removed from its control, but that danger exists.
Nor should the proper management of administrative archives be seen as a necessary but tedious chore preserving material for some future historian. It can provide a small but increasing revenue stream. As more students attend institutions and as more institutions become involved in courses leading to qualifications associated with lifelong learning or continuous professional development they will by definition have a larger set of records regarding the performance of individual students. Certification that qualifications have been achieved or that grades were achieved is increasingly sought by both employers and former students. Fees can legitimately be charged for this service. Good well managed archives will find a surprising number of both internal and external users.
Best practice
This chapter began by highlighting JISC’s recommendations on copyright. It is useful to finish with the recommendations of the CATRIONA II project. This Scottish Higher Education Funding funded project was led by Dennis Nicholson at the University of Strathclyde. It has attempted to identify the sorts of electronic content created by institutions and to look at standards associated with that and how universities should manage such IPR. It has produced a set of guidelines which are the only known work on this topic. There is then a certain irony that it is unclear whether the IPR in such guidelines is owned by the author, the university, the Funding Agency or is in the public domain. But institutions would do well to consider their implications.
CATRIONA II: intellectual property rights – draft guidelines
1. Aims
The aims of the guidelines set out in this document are to:
1.1 Provide a structure for the protection and exploitation of intellectual property
created by university employees and to clarify the position with respect to ownership
1.2 Preserve academic freedom while protecting intellectual property rights.
1.3 Encourage and stimulate innovative work by university employees by providing a framework for rewarding work of strategic or commercial value to the university. In respect of work of commercial value, the position set out provides for benefits that go beyond the statutory rights of university employees as set out in the following extract from the Patents Act 1977:
Employees’ inventions: right to employees’ inventions
39 – (1) Notwithstanding anything in any rule of law, an invention made by an employee shall, as between him and his employer, be taken to belong to his employer, for the purposes of this Act and all the other purposes if:
a) It was made in the course of the normal duties of the employee or in the course of duties falling outside his normal duties, but specifically assigned to him, and the circumstances in either case were such that an invention might reasonably be expected to result from the carrying out of his duties, or:
b) The invention was made in the course of the duties of the employee and, at the time of making the invention, and the particular responsibilities arising from the nature of his duties he had a special obligation to further interests of the employer’s undertaking.
(2) Any other invention made by an employee shall, as between him and his employer, be taken for those purposes to belong to the employee.
2. Definition of Intellectual Property
Intellectual Property (IP), as referred to in these guidelines, includes, but is not necessarily limited to, multimedia packages, courseware, lecture notes, material subject to copyright, computer software, designs, video and similar material, animations, still images, audio items, research results and related background material, and professional knowledge and skills. Essentially, it entails any intellectual output or associated skills that may be of strategic or commercial value to the university.
3. Intellectual property rights and strategic or commercial value
The university’s position with regard to IPR in individual instances is determined by the extent to which the material in question is judged to be of strategic or commercial value to the university.
3.1 Material of relatively high strategic or commercial value
Material in this category includes but is not necessarily limited to:
· Teaching materials of all kinds that are either currently in use or are intended for future use
· Research and development materials of relatively high strategic or commercial value, including background materials such as research data that may be crucial to continuing research
· Most software and multimedia material
In respect of such material the university:
· Specifically retains its rights as set down in the Patents Act 1977 (see 1.3 above)
· Places on heads of department the responsibility for ensuring that access to the material is limited to members of the university only, except in instances where strategic or commercial agreements are in place, or where funding body requirements specify the provision of wider access. This responsibility includes control in respect of access to electronic forms of material, including network access to such forms.
3.2 Material of relatively low strategic or commercial value.
Material in this category includes, but is not necessarily limited to:
· Textbooks and chapters in textbooks and other similar works
· Research and development materials of relatively low strategic or commercial value, including, in many cases, research papers and associated background materials.
In respect of such materials the university:
· Specifically waives its rights in respect of copyright, including electronic copyright (but see also Guidelines on Transference of Copyright, below)
· Retains the right to re-examine the strategic and commercial value of research material at any time and it charges heads of departments with the responsibility for reviewing the value of research material on an annual basis.
The decision to publish the material, whether in hard copy or in electronic form, rests with the individual member of staff concerned, but is subject both to any legal restrictions, but is subject both to any legal restrictions resulting from earlier transference of copyright and, in respect of electronic publication, to the university guidelines on electronic publication, set out in Appendix 2 below. Responsibility for ensuring that both legal restrictions and university guidelines are adhered to, particularly in respect of networked electronic publication, rests with heads of department.
4. Determining and monitoring strategic or commercial value
Responsibility for determining and monitoring the strategic or commercial value of intellectual property created by university staff in the course of their duties rests with heads of department.
University procedures in respect of this process are set out in Appendix 3 below. Individual members of staff are responsible for consulting the department head prior to publishing or otherwise communicating material that may be of strategic or commercial value.
5. Rewards for work of strategic or commercial value
The university aims to encourage and stimulate innovative and other useful work by university employees by rewarding work of significant strategic or commercial value according to the guidelines set out below in Appendix 3.
Appendix 1: Copyright assignment or transfer – awareness of the implications
1. All members of university staff should be aware of the implications of agreeing to transfer ownership of copyright to publishers and of the advantages to themselves and the university of considering alternatives, such as insisting on the retention of certain rights or of only granting a limited licence to the publisher for the use of the copyright in certain circumstances. To this end, they are advised to attend the Intellectual Property Rights Course offered by the Centre for Academic Practice in conjunction with the Research and Consultancy Office and the university copyright officer.
2. Before agreeing to transfer ownership of copyright to publishers, staff should consider, in conjunction with their head of department and the Research and Consultancy Office, the likely commercial and strategic value of the work concerned. Where a work is judged to be of commercial or strategic value, negotiations with regard to rights transference must be concluded in conjunction with the Research and Consultancy Office.
3. It is common practice for publishers to request or require authors to assign their entire copyright to the publishers and the university recognises that authors may often find it necessary to agree to this. Authors should be aware however that this practice can often put themselves and the university in the position of buying back subsequent uses of their own work and should consider the advantages of retaining certain rights. In particular, authors are encouraged to negotiate the retention of rights for on-site use in hard copy and electronic form, for on-site teaching packs, for on-site delivery of articles in hard copy or electronic form, the extension of these rights to the university’s strategic partners, and for inter-library borrowing and lending.
4. In addition, where publication in the one form (for example hard copy) is the intention, rights to publish in other forms (such as electronic) should, if possible, be retained. The university manages a service which aims to exploit the commercial, strategic and promotional value of the electronic forms of all works created by university staff by providing (as appropriate) controlled or free access to other universities. Where possible, the needs of this service should be considered when transference of rights are being considered.
5. The university maintains a database of information related to the transfer of copyright on works created by its staff. Full details of all agreements or copyright transfers made by staff must be recorded in this database.
Appendix 2: Guidelines on electronic publication
1. The aims of these regulations/guidelines are to encourage the electronic publication of high quality research and teaching resources, and the process of academic communication, while at the same time seeking to ensure that the university and its staff:
· Do not infringe copyright laws and regulations.
· Are protected against the infringement of their own intellectual property rights by others.
2. Members of university staff must make themselves aware of the university guidelines on the transfer of copyright and should aim to retain the rights to electronic publication of material wherever possible. Where such rights are transferred to another party, the transfer should be logged in the database of such transfers maintained by the university. Members of the university staff must not publish material electronically where they have transferred this right to another party.
3. Members of university staff must make themselves aware of university procedures for determining and monitoring strategic or commercial value of intellectual property created by university staff and should ensure that access to electronic material regarded as being of high strategic or commercial value is only available to individuals or groups with appropriate security level accreditation on the university intranet. This is particularly important where the groups or individuals concerned are not members of the university.
4. Members of university staff intending to publish material electronically are advised to consult the university’s Information Office who will advise on:
· Pre-publication on the Web
· Subsequent hard-copy publication
· Metadata standards required for inclusion in the university e-resource service
· Quality and design standards for inclusion in the university e-resource service
· Alternatives to direct mirroring of hard-copy publications on the Web and vice versa
They are also advised to consult the Research and Consultancy Office regarding pre-planning to enhance the strategic or commercial value.
5. Heads of department are responsible for ensuring that:
· Members of staff in their departments are aware of these university regulations
· Members of staff do not infringe copyright through electronic publication of material for which publication rights have been transferred to another party.
Appendix 3: Procedures for determining and monitoring strategic or commercial value, for protecting such work and for rewarding associated staff
1. The aims of these guidelines are both to allow the university to identify, protect and exploit intellectual property that is of high commercial or strategic value created by members of staff in the course of their duties, and to put in place procedures to reward staff concerned through:
· Offering staff reasonable remuneration beyond their statutory rights where commercial exploitation is involved
· Offering grade-related and/or increment related rewards for work of high strategic value.
A key concern in carrying out this aim will be to protect both academic freedom and the process of academic communication.
2. Members of staff embarking on new research or development work should seek advice on assessing its potential commercial or strategic value from the Research and Consultancy Office, who will also advise on pre-planning to enhance potential strategic or commercial value, register work of potential strategic or commercial value in the research and innovation (R&I) database and advise on publication decisions, public relations (PR) protection, and exploitation.
3. The Research and Consultancy Office shall be responsible for advising staff on the matters outlined in 2 (above) in the best interests of both the university and the member(s) of staff involved, while at the same time seeking to protect both academic freedom and the process of academic communication.
4. Heads of department shall be responsible for:
· Advising members of staff in their departments about these guidelines
· Ensuring that members of staff in their departments are given due credit during annual review procedures for having created works of high strategic value to the university or the department
· Ensuring that members of staff embarking on research and development initiatives seek the advice of Research and Consultancy as regards potential strategic or commercial opportunities at the earliest possible opportunity
· Ensuring that intellectual property assessed as being of low commercial or strategic value is reassessed on an annual basis and a decision taken within the department as to whether a reassessment by Research and Consultancy is required
· Protecting intellectual property of high commercial or strategic or commercial value by restricting access to associated local publication while at the same time protecting academic freedom and the process of academic communication.
Notes
1. 1. JISC (1998) Copyright. JISC senior management briefing paper No 5. Nottingham, JISC Assist
2. 2. J. Sutherland (1999) Who owns John Sutherland? London Review of Books, 7(January): 3-6
3. 3. Ibid. p4.
4. 4. D. Butler (1999) The writing is on the web for science journals in print. Nature, 397: 195-200
5. 5. See for example a 1998 report in the Library Association Record, 100: 393.
6. 6. The Times, 8 February 1999, p.8.
7. 7. http://wp269.lib.strath.ac.uk:5050/Cat2/index.html
8. 8. http://stir.ac.uk/infoserv/scope/
9. 9. http://kaapell.fi/~eblida/docs