IP Rights and the Modern University

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  [2008] 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.

  1. While Locke’s labour theory and Hegel’s human freedom and autonomy arguments present a good case for private property in one’s own research, I would like to depart from theoretical viewpoints to a practical example of a Canadian university which has followed the policy of allowing students and professors to keep 100% of the proceeds of their research.

    In the Canadian Chamber of Commerce Business Forum on Illicit Trade: “Global Threat – Local Consequences” event (http://www.iposgoode.ca/2009/02/live-event-blog/), Dr. Tom Corr, the CEO of the Accelerator Centre (http://www.acceleratorcentre.com/) at the University of Waterloo (UW) Research and Technology Park, alluded to the benefits of this policy in encouraging both innovation and commercialization. This might explain the many successful spin-offs witnessed by UW. While some of the other universities favour a 75-25 split (student to university) in the commercialization process, Dr. Corr draws attention to another largely ignored phenomenon. According to him, the gains from the gifts and donations from the spin-offs have proved to be financially more beneficial than the research cut at the outset.

    It is understandable that universities would want to redeem their investment- research resources and funding- by claiming a share of revenues from the commercialization of the research. However, by bestowing full copyrights to their rightful inventors/ authors, universities are likely to attract more of both “big buck” and traditional scholarly researchers. Undeniably, the overall impact of this sheer increase in volume will be financially more beneficial as per Corr’s theory of donation phenomenon.

  2. There are indeed significant philosophical arguments for granting creators copyright in a university setting, on the basis of personhood arguments. However, it is evident from other fields of copyright that the property right granted on account of this personal connection to one’s work is typically deemed to have been relinquished when this work has been paid for through employment (Copyright Act, s. 13(3)).

    One argument against granting copyright to universities, accepted in University of Western Australia (UWA) v Gray [2008] 20 FCA 49, is that producing inventions is not part of a professor’s contractual duties. This duty to invent was considered distinct from the duty to conduct research, held to be a term of Dr. Gray’s appointment. I find this at odds with the reality of how university research occurs; if a professor’s inventions are outside of the scope of his employment, why would a university support her by providing factors of production?

    Michael also makes an excellent efficiency argument. However, I find it difficult to ignore the opposing viewpoint of whether professors would have invented in the first place were they not to obtain copyright. It is my personal opinion is that they would, as I do not believe that professors are motivated by money as much as a desire to research. I believe that inventions come as a by-product of this research, as some professors’ have a more practical approach to their research. I am quite curious to know whether statistics agree with my personal speculation.

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