Michael Kostiuk is a first year law student at Osgoode Hall and is taking the Legal Values: Challenges in Intellectual Property course
Adherents to rights-based theory have long posited that a creator possesses an inherent and inalienable initial right to her respective creation. After all, with no possessory rights, why would anyone create at all?
In Canada, this common law tradition is reflected in s. 13(1) of the Copyright Act, which grants initial copyright of any work to the author. However, s. 13(3) of the Copyright Act adds the caveat that, in the absence of an agreement otherwise, an employer becomes the first owner of copyright for work done by an author in the course of employment. A myriad of reasons exist for this distinction, principle among them is the neo-classical argument that any materials produced by an employee should inure to the employer, because without the factors of production it is unlikely that they would have been produced. The impetus for authors to create in the course of employment is not determined by ownership rights, but rather by a salary paid by the employer. Empirically, Law firms, movie studios, advertising companies, and alike, often retain copyright interests in the work of employees without experiencing a dearth of labour; the so-called labour desert.
While this paradigm holds for many employers, universities traditionally contractually allow copyright interests to be vested with their employees. The distinction between universities and other employers rests largely on the idea that creating copyrightable works lies outside the scope of employment for university professors. Professors are ostensibly employed by the university to teach students. But does this de-contextualize the process of authoring works in a university setting?
The modern university is markedly different from its medieval European predecessor. Education is no longer the solitary goal of the institution, with professors left to pursue their research and publishing interests on their own. Instead, research is a fundamental aspect of the modern university. In its University Academic Plan (UAP) for 2005-2010, York University listed ‘research’ as the number one priority. Other universities seeking to expand the scope of employment for which employees are responsible are beginning to eat away at the edifice of academic copyright tradition. In University of Western Australia (UWA) v Gray  20 FCA 49, UWA attempted to obtain copyright and patent interests in biotechnology innovations made by Dr. Bruce Gray by claiming that his contract with the university contained implied terms to create innovations on behalf of the university. Though UWA was ultimately unsuccessful, the recent jurisprudence highlights the increasing desire of universities to recoup research costs through copyright ownership.
As the considerable costs associated with some forms of research continue to rise, efficiency arguments are increasingly brought to bear against the traditional allocation of initial copyright to university employees. Research in such fields as software or biotechnology, have a considerable cost of technological inputs, as well as a high turnover rate associated with being on the ‘cutting edge’. This creates a heavily resource-intensive environment that Canadian universities must fund with largely public money. Potentially, allocating millions of dollars in public money to facilitate an individual’s copyright could force the public to pay for a product twice, once as a taxpayer and once as a consumer. Additionally, much resource-intensive research is done collaboratively, involving several employees and departments. Allocating copyright interests to individuals presents the difficulty of determining who should, or should not have copyright interest in a collaborative product.
To combat this inefficiency, a number of organizations have moved to enforce the concept of ‘Institutional Ownership’ where copyright interests are owned by publicly funded institutions, rather than individual employees. In 2002, Germany adopted this approach nation-wide by removing the ‘Professor’s Privilege’ from the legislation. With the exception of Sweden and Italy, the rest of the EU has enacted similar legislation and curtailed the Professor’s Privilege.
While Canadian legislators should consider a similar legislative principle, it is important to consider works by university employees that may become marginalized. Certain manuscripts, journal articles, and other traditional scholarly works often have no financial value. Universities could conceivably discourage such “invaluable” works, or in the very least not pursue copyright protection as vigorously as an individual copyright holder.
Striking a balance between the copyright interests of authors and publicly funded institutions is a delicate task. As research becomes a greater mandate for universities, the point at which the scale tips towards the greater interests of society is a matter that the legislature will have to confront.