Managing the Rights to Use Works Created at the University:

Frequently Asked Questions Concerning Ownership, Rights of Use and the Memorandum of Understanding

Prepared by the
COPYRIGHT MANAGEMENT CENTER

The Following are FAQs regarding Ownership and the Memorandum of Understanding - "MOU".
Click here to read the "MOU".
Click here to read a Summary and Overview of the "MOU".

Kenneth D. Crews, Samuel R. Rosen II Professor of Law
Associate Dean of the Faculties for Copyright Management
David Wong, Senior Copyright Analyst

Indiana University-Purdue University Indianapolis
530 West New York Street
Indianapolis, Indiana 46202-3225
Voice: 317-274-4400 Fax: 317-278-3326
http://www.copyright.iupui.edu

Introduction
Who owns works created at the university?
Can the university’s IP policy grant copyright ownership to the creator?
Can both the university and an instructor be assured rights to use the instructor’s works?
How does the MOU work?
Which schools at IUPUI have adopted the MOU?

Click here for information about negotiating publishing agreements

Introduction

The “Memorandum of Understanding” is offered for adoption by the university community as a tool for addressing one of the most perplexing issues surrounding the management of our own intellectual works: How can the university community hold and manage the rights to instructional materials in a manner that best promotes quality teaching and scholarship? The MOU preserves the basic principle that faculty hold rights to their instructional works, while allowing a sharing of rights to assure the continuation of university programs. The law of copyright is simply inadequate to meet the wide range of interests that diverse parties have in collaborative projects, especially in the academic setting. The law also embodies tremendous risk. Recent court rulings have indicated that much faculty work product may well be “work made for hire” under copyright law, with all rights belonging to the employer university. Such a sweeping grant of all rights to any one party conflicts with the more cooperative nature of academic work. The “Memorandum of Understanding” is an attempt to establish a more mutually beneficial model for sharing rights to use instructional materials.

Who owns works created at the university?

The General Rule for Copyright Ownership:
The general rule of copyright ownership is the creator of a work owns the copyright to that work. Copyright protection vests automatically upon the creation an original work of authorship fixed in a tangible medium.

The Exception to the Rule:
An exception to the general rule is the “work made for hire” doctrine. If the work is deemed a work for hire, the employer of the creator is considered the author, and copyright ownership vests automatically with the employer.

The Possible Exception to the Exception:
In the past, courts had suggested a possible “teacher’s exception” to the work-made-for-hire doctrine for traditional works of scholarship and creativity. Instructors employed by universities that created works within the scope of their teaching responsibilities were believed to be the copyright owners of their works. Recent court rulings give little credibility to this rule.

Result:
The law in this area is uncertain, but the possibility is great that much faculty work will be regarded as “for hire.” The federal law of copyright was overhauled in 1976, and the new law made no mention of the “teacher’s exception” that had been recognized by some courts. Some copyright experts argue that this exception survives, but the most recent cases make no mention of it, and it is not mentioned in relevant statutes passed since the revision of the Copyright Act in 1976. Therefore, universities may well be the owners of many of the works created by instructors at the universities.

Can the university’s IP policy grant copyright ownership to the creator?

Many university intellectual property policies purport to “allow” instructors to retain most, if not all, rights to many of their works. However, the typical university IP policy, by itself, may not be legally sufficient to grant the copyright ownership of works made for hire back to the faculty creator. If a work is deemed by a court to be a work-made-for-hire, the university will be considered the author (and therefore, the copyright owner), unless both the university and the creator have expressly agreed otherwise in a written instrument signed by both parties. Since most university IP policies are not supplemented with the signatures of both the university and the instructor, any grant of ownership made under such a policy may not be legally valid.

Can both the university and an instructor be assured rights to use the instructor’s works?

The law allows copyright owners to permit or license to others the right to use their works, with or without limitation, exclusively or non-exclusively, for a set amount of time, for certain purposes, in certain geographical locations, etc. Therefore, regardless of whether the university or the instructor holds the copyright, these parties may agree to give one another specified rights of use. A properly drafted and adopted agreement can produce the result and certainty that the law does not currently provide.

The Memorandum of Understanding: Assuring Rights of Use of Instructional Materials (MOU) seeks to meet that objective. The MOU is an agreement between the university (represented by the school) and the instructor. It assures to both the university and the instructor certain rights to use the instructional materials. The MOU creates a “window of opportunity” for the university to use a set of the instructor’s materials, while the instructor may concurrently use the same materials in ways that do not directly compete with the university’s use. For example, the university may wish to use an instructor’s materials in conjunction with a distance education course for a limited period of time. At the same time, the instructor may wish to use the materials for teaching courses on related topics, preparing textbooks, journal articles, conference presentations, consulting projects, and other scholarly works or professional activities. The MOU protects both parties in their endeavors.

How does the MOU work?

Generally, each school at Indiana University is asked to lead the management of the relevant instructional materials created within that school. The MOU becomes the terms of an agreement between an instructor and the university (through the instructor’s school) regarding the use of specified instructional materials.

First, the school must formally adopt the MOU. The procedure for each school’s adoption of the MOU is left up to each particular school and the adoption is finalized with the signature of the dean of that school.

Once the MOU is adopted by a school, the school and its instructors may desire to use the MOU to assure their rights of use to specifically identified works created by the instructor. The MOU is not general policy. It applies only to identified works, and only by voluntary agreement between the school and the faculty author. Application of the MOU to certain materials is documented by completion of the Instructor’s Addendum to the MOU (the last page of the MOU).

The Instructor’s Addendum requires that the parties reach agreement on a few matters, which generally include:

(1) the scope of materials included in the agreement and the schedule for their delivery;
(2) the funding and other support provided to the instructor;
(3) the termination date, if any, of the university’s rights;
(4) the agreement, if any, regarding division of revenue between joint contributors; and
(5) the agreement, if any, regarding exercise of management rights between joint contributors.

The agreement between the school and instructor for the terms of use of the specified instructional materials is finalized with the signing of the Instructor’s Addendum by both parties. Both parties should keep signed copies.

Example:
A professor of Computer Science is asked by her dean to contribute instructional materials to a distance education course that the School is developing. She wants to assure her right to use her contributed materials in a textbook that she is preparing. The professor should advocate that the School adopt the MOU, if it has not done so already, and then negotiate the details of the agreement in her Instructor’s Addendum to the MOU. The MOU would assure to the School that it would be able to use the instructor’s materials for the distance education course, and at the same time assure to the instructor the right to use her materials for her textbook.

Which schools at IUPUI have adopted the MOU?

Click here for a list of schools at IUPUI that have adopted the MOU.

Click here to view the Copyright Management Center's presentation on the MOU (RealPlayer required)

Click here to view the PowerPoint from this presentation

Page Created: Jan. 5, 2004