ONLINE EDUCATION RIGHTS: RELATIONSHIPS BETWEEN FACULTY AND INSTITUTION

IVAN HOFFMAN, B.A., J.D.

The staid walls of academia, whether or not covered with ivy, are shaking. The cause? The Internet and web-based publishing and its related progeny. I’ve spoken at a number of prominent colleges and universities about the complexities of intellectual property and Internet law in this arena and it seems clear that both faculty and administration alike are actively questioning centuries old models of their relationship.

Everyone, it appears, has awakened from the monastic slumber that was academia. All parties are seeking their share of the projected multibillion dollar marketplace for online education and distance learning that is expected in the next several years.

Thus then, what are the legal and business issues both the faculty and the institution need to face so that their respective rights may be effectively exploited to both parties’ best interests? This article deals with some of those issues in the event there is no written agreement between the parties as is too often the case. Many of the institutions are relying on “tradition” and “custom” instead of rules of law. As long as no one questioned those traditions and customs, it did not matter. Today, everyone is a questioner. The answers, however, are none too clear.

In answering the various aspects of the puzzle, keep in mind that I do not take the position of either faculty or institution in this article. Advocacy is reserved for my respective clients. My role here is to explain the issues both parties must face. And in the end, my primary responsibility is to bring clarity to the most important issue of all: that there is an absolute and essential need to embody the myriad of provisions of their complex relationship into a valid, written and mutually executed agreement so that not only the requirements of the law are satisfied but, even if no writing is mandated by law, that the parties understand that a writing is far, far more beneficial to both parties than none at all. In nearly 27 years of practicing law and making deals of all sorts, my experience is that it is not contracts that destroy relationships. The things that destroy relationships are the “I thought you said that…” stuff that comes from no contracts. A contract benefits both parties since the parameters of the deal and the respective rights and obligations of both parties are then set out for all to read. And with any luck, the agreement will be itself readable!

And a contract should solve more problems than it creates. It should be thoroughly drafted so that there are no vagaries that can become the subject of litigation down the road. By covering all the points with precision, even by making it somewhat longer than desired, it seems likely that those areas of uncertainty would be eliminated and thus resort to expensive and destructive litigation avoided.

And beneficial relationships preserved.

The Context

The foundational issue that the parties must face is determining who, under the law, is the owner of the rights to the faculty’s class notes and curricula (“notes” in this article for simplicity sake). Once that determination is made, the parties can then discuss how they might alter their legal relationship so as to accomplish reaching an agreement that is mutually satisfactory.

The basic federal copyright law dealing with course material is the United States copyright act. Section 101 states:

A “work made for hire” is--

(1) a work prepared by an employee within the scope of his or her employment; or

(2) a work specially ordered or commissioned for use as a contribution to a collective work, as a part of a motion picture or other audiovisual work, as a translation, as a supplementary work, as a compilation, as an instructional text, as a test, as answer material for a test, or as an atlas, if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire. For the purpose of the foregoing sentence, a “supplementary work” is a work prepared for publication as a secondary adjunct to a work by another author for the purpose of introducing, concluding, illustrating, explaining, revising, commenting upon, or assisting in the use of the other work, such as forewords, afterwords, pictorial illustrations, maps, charts, tables, editorial notes, musical arrangements, answer material for tests, bibliographies, appendixes, and indexes, and an “instructional text” is a literary, pictorial, or graphic work prepared for publication and with the purpose of use in systematic instructional activities.

Thus, the question becomes: what is the legal relationship between faculty and institution? Keep in mind that these issues become relevant in the absence of a valid, written and signed agreement between the parties.

Faculty as Employee

Let’s first examine the section (1) situation in which the faculty is or better still, may be an employee of the institution.

Initially, often a person who appears to be an employee may not be. It depends on a series of factors, many of which were articulated by the United States Supreme Court in Community for Creative Non-Violence et. al. Vs. Reid in 1989. The situation in that case arose because the Center engaged the services of an artist, a sculptor, to create a work of art for the Center. There was no written agreement between the parties. The issue was the ownership of the rights to the finished artwork and the question was whether the artist was a bona fide employee of the Center and thus the work would be owned by the Center as a work made for hire or whether the artist was an independent contractor and thus outside the (1) section and perhaps covered under the (2) section, which requires a whole host of other issues to be addressed. (It was conceded, however, that section (2) was inapplicable because none of the requirements were met so the case for the Center and artist rose or fell on the basis of the employee issues).

The court analyzed general agency law principles and concluded that Reid was in fact not an employee within the meaning of the work made for hire doctrine. The Center lost. The sculptor won. The Court cited several factors that went into that determination. Let me rephrase some of those factors in light of the within discussion.

• Does the instructor supply his own tools (in that instance or in the instance of the instructor, his or her own equipment, computers, papers, books etc.)?
• Does the instructor work under the direct and continuous supervision of a superior?
• Does the instructor have the absolute freedom to decide when and how long to work to fulfill his or her commitments?
• Does the instructor pay his or her own staff and assistants?
• Does the institution have the right to assign the instructor additional tasks?
• Does the institution withhold taxes from the compensation of the instructor and supply benefits to the instructor?

If then it is determined that the instructor is an employee, then the next threshold question is: is the work that is being done (and sought to be licensed) done by the instructor within the course and scope of the instructor’s job?

Without a thorough definition within the 4 corners of an agreement of what is and perhaps more importantly what is not part of the duties of the instructor, the parties are left to dispute job mandates. Dispute leads to litigation and under any circumstances, uncertainty and animosity, all qualities to be avoided. Often job descriptions are never written down or are so covered in the dust of ages as to unavailable. Custom and tradition are uncertain at best, unenforceable at worst. Without a written agreement, other issues complicate the matter such as what happens if the instructor works from home? What happens if the instructor works from campus but on these notes, say over lunch or when not conducting regular hours?

Faculty as Independent Contractor

On the other hand, what about adjunct teachers as well as those that teach in extension courses? If they are independent contractors because they do not fall within the scope of an employee under CCNV vs. Reid, how are their rights and the corresponding rights of the institution to be handled?

Initially, one should note a rather peculiar set of circumstances under California law. Under Labor Code section 3351.5 as well as Unemployment Code sections 621 and 686, to the extent that any independent contractor transfers any of his or her rights to another under circumstances that fall within the scope of the work made for hire federal statute cited above, for the purposes of both unemployment insurance and workman’s compensation insurance, that person is deemed to be an employee. And while this may not affect the issue of copyright rights that are the subject of this article, it may affect the need of the institution to provide coverage for that person under their workman’s compensation insurance and if that person is fired, may be required to contribute to that person’s unemployment compensation.

But let’s get back to the rights questions. Firstly, in order to qualify as a work made for hire relationship, the transaction must fall within the ambit of the statutory scheme. This means that the “employer” must have “specially ordered and commissioned” the instructor’s work. How often does this happen? Is simply the act of hiring this independent contractor to teach one or more classes also the act of “specially ordering and commissioning” the notes that are the subject of the dispute?

Second, the work must fall within the scope of the specifically denominated categories. Under certain circumstances, it appears that many of the works in question may qualify as “instructional texts” if they were prepared “for publication.” If they were prepared solely for classroom instruction, the question is whether or not this qualifies. Merely because something is later published does not, in and of itself, mean that it was prepared “for publication.”

This is the definition of “publication” in the law:

“Publication” is the distribution of copies or phonorecords of a work to the public by sale or other transfer of ownership, or by rental, lease, or lending. The offering to distribute copies or phonorecords to a group of persons for purposes of further distribution, public performance, or public display, constitutes publication. A public performance or display of a work does not of itself constitute publication.

An open question it seems to me.

But even if it falls within that section of the statute, the last requirement is that the parties must have entered into a written agreement that is expressly denominated as a “work made for hire agreement.” Issues arise as to what is a sufficient “agreement” and when this agreement must be signed. Is it valid if it is signed after the work has been created or must it be signed before? For that you should read “Playboy and the Work Made For Hire Agreement.”

In sum, if the faculty’s work is a work made for hire under law, then the faculty owns no rights of any sort in and to that work and indeed, the institution is deemed to be the “author” of the work for all purposes and thus owns all rights to that work. No sums need be paid to the instructor for any exploitation of the work.

Is this what the parties intend?

All this of course in the absence of a valid, written and mutually executed agreement.

Exclusive vs. Non-Exclusive Rights and Royalties

Another issue that arises in the absence of a written contract is whether or not what rights the parties have, retain, grant by law etc. are exclusive or non-exclusive rights. For instance, under United States copyright law, the creator of any copyrightable work (who is not a bona fide employee or otherwise in a work made for hire relationship) owns all rights to that work except if there is a written agreement transferring some or all of the creator’s exclusive rights. However, in the absence of that written agreement, a non-exclusive transfer of rights can occur. The problem with non-exclusive grants is that they are terrible from a legal and a marketing standpoint. It means that 2 or more parties can have concurrent rights to exploit the work and this leads to overlapping of markets, overlapping of grants to third parties, inability of either party to make any exclusive grants and the need for accountings, among many other issues.

Complicating this non-contractual, non-exclusive situation is that it is often very unclear exactly what non-exclusive rights have been granted and on what terms. Which party has what rights and what does that party have to pay to the other party for the exploitation of those rights? Or is that party obligated to pay anything at all? Is the rights owner to be able to exploit the materials without payment to the other party?

Other issues just to name some are representations and warranties from the creators, term of rights, sublicensing rights and so on.

Conclusion

These are some, but certainly not all, of the open questions faced in these situations. In other articles, I intend to explain the contractual provisions that are ways to deal with these uncertainties and make title to the class notes and other materials “clean” and marketable.

In sum, given the vagaries of the relationship and consequent impact on rights ownership, the multiplicity of uses on the Net and otherwise, the need for accounting and revenue sharing, it is simply unclear to me, as an experienced attorney and negotiator, the reasons the parties do not embody their relationship in a written agreement. In today’s legal and business climate, the “private laws” that are agreements are essential, often times essential in a legal context as well but certainly essential in real terms. Read “Private Laws.”

Leave it unsaid and you can be reasonably certain there will be claims made on both sides. Claims are costly, not only in absolute “pay the lawyers” terms but in the loss of revenue that happens during the pendency of the claim.

Write it down. Make it clear. Then go out and market the hell out of it.

© 2000 Ivan Hoffman

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This article is not intended as a substitute for legal advice. The specific facts that apply to your matter may make the outcome different than would be anticipated by you. You should consult with an attorney familiar with the issues and the laws. **************** No portion of this article may be copied, retransmitted, reposted, duplicated or otherwise used without the express written approval of the author.

FAIR USE IN ONLINE EDUCATION AND WEB BASED TRAINING

IVAN HOFFMAN, B.A., J.D.

“Fair Use,” as that term is defined in section 107 of the United States copyright act, is one of the bedrock principles of the education system. It is the exemption from copyright licensing generally enjoyed by schools at every level and which allows those institutions to make copies of otherwise protected works for classroom instruction. NOTE: this article deals primarily with the “for-profit” sector of online education. See below for a reference to TEACH dealing with non-profit issues.

That statute is currently inadequate to cover such uses in the online environment and course materials that contain copyrighted works may not be usable in that environment. Here is how the situation arises: an instructor has prepared material for use in a traditional classroom setting and that material contains third party copyrighted materials such as text, graphics, videos and so on. (Read “The Use of Protected Materials in Multimedia Projects.”) Now the instructor or the institution (depending on the ownership of rights questions as but a part of the issues. See “Online Education Rights: Relationships Between Faculty And Institution”) seeks to put those materials including the third party copyrighted materials online or in CD, DVD or other format for use as part of a distance learning or web based instruction program. Will the fair use provisions of the copyright law protect these uses from copyright claims by the third party?

The Statutory Set Up

The federal statute says in part:

§107. Limitations on exclusive rights: Fair use

Notwithstanding the provisions of sections 106 and 106A, the fair use of a copyrighted work, including such use by reproduction in copies or phonorecords or by any other means specified by that section, for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright.

The operative language is “including multiple copies for classroom use.” If the statute is to apply , clearly the definition of “classroom” would have to be extended to cover uses on the Internet and via CD, DVD etc. Copyright proprietors have grown accustomed to having their materials used for limited purposes within the confines of a classroom, given the limited number of copies that can theoretically be made for a given class number. But extending the concept of the classroom to the potentially huge number of audiences that are possible “students” on the Internet and otherwise will surely be met with objection.

Additionally, there are other uses of such materials that are not even remotely akin to classroom use or “scholarship.” Online and web based training may be for courses that are commercial and industrial in nature such as marketing and other courses. If such material as are the basis for such courses contain protected materials, will they too fall outside the scope of the fair use protection?

It is not all just a one-sided argument, however, since the more commerciality a given project possesses, the less likely a “fair use” defense will hold up. Commerciality is not conclusive but certainly a part of the generalized guidelines the fair use statute and the cases decided under it consider in making the determination.

But there are additional problems. Using materials on the Internet and in CD-ROM and DVD formats involves other copyright rights including the right of “display” and in the instance of a video etc. also the right of performance. Section 110 of the United States copyright law provides, in part:

§110. Limitations on exclusive rights: Exemption of certain performances and displays

Notwithstanding the provisions of section 106, the following are not infringements of copyright:

(1) performance or display of a work by instructors or pupils in the course of face-to-face teaching activities of a nonprofit educational institution, in a classroom or similar place devoted to instruction….;

(2) performance of a nondramatic literary or musical work or display of a work, by or in the course of a transmission, if--

(A) the performance or display is a regular part of the systematic instructional activities of a governmental body or a nonprofit educational institution; and

(B) the performance or display is directly related and of material assistance to the teaching content of the transmission; and

(C) the transmission is made primarily for--

(i) reception in classrooms or similar places normally devoted to
instruction, ….

Thus, you can see the problem. In order to qualify for the “display” or “performance” exemptions, several factors must be present and they are each requirements.

First: the display or performance must be by “instructors or students.” This may eliminate the exemption if the actual party displaying on the Internet or a CD is not in truth either an instructor or a student but some third party licensee of materials.

Second: under any circumstances, the display or performance must take place in a “face to face” setting inside a classroom or similar place of learning. Clearly neither of those conditions is satisfied on the Net or in other media.

Third: the party making the display or performance must be a “non-profit educational institution.” This is a major obstacle.

Fourth: the display or performance of the work must be a “regular part of the systematic instructional activities of a governmental body or a nonprofit educational institution…” and it too must be part of a presentation in a “classroom” or similar setting.

The TEACH Act

In 1992, Congress passed the “Technology, Education, and Copyright Harmonization Act” (TEACH) in order to create rules for how educational, non-profit organizations can use copyrighted materials in online distance education without having to pay licensing fees therefor. The rules are complex and beyond the scope of this article, which article deals with for-profit companies conducting online distance education courses.

Conclusion

Without changes in the law, the use on the Internet and in other digital forms of copyrightable works currently contained in teaching materials may constitute an infringement of the copyright rights of the proprietors. Without such changes, parties that seek to use such materials are faced with the need to license that content from those proprietors including perhaps paying royalties and other fees.

Thus, those seeking to license this content for the creation of online educational materials and other such uses must be very careful about obtaining appropriate and enforceable representations and warranties from the instructor or institution about third party materials contained within that content.

Copyright © 2000, 2006 Ivan Hoffman. All Rights Reserved.

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This article is not legal advice and is not intended as legal advice. This article is intended to provide only general, non-specific legal information. This article is not intended to cover all the issues related to the topic discussed. The specific facts that apply to your matter may make the outcome different than would be anticipated by you. This article is based on United States law. You should consult with an attorney familiar with the issues and the laws of your country. This article does not create any attorney client relationship and is not a solicitation.

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No portion of this article may be copied, retransmitted, reposted, duplicated or otherwise used without the express written approval of the author.

THE VALIDITY OF SCHOOL POLICIES

IVAN HOFFMAN, B.A., J.D.

Given the huge rise in interest in both corporate training and distance education, schools and their faculty are beginning to dust off what often amounts to decades old “policies” about who owns what rights to course work. Indeed, many schools probably do not even have any policies at all, at least none written, and thus the issues related to rights and revenue derived from those rights may have simply never been addressed. Since corporate training materials are often based on academic curricula, the issues presented by these questions apply to both distanced learning and corporate training repurposed materials.

Let me then address the fundamental legal issues regarding these policies.

Copyright Law Issues

The foundational issues relate to questions that concern the nature of the relationship between school and faculty. I have written about these issues extensively in “Online Education Rights: Relationships Between Faculty And Institution” and “Who Owns the Rights to the Material?” and you should read the full articles. However, let me summarize these issues so that the within article can be more integrated.

If the faculty is a bona fide employee and the work created by that faculty is within the course and scope of his or her employment, then the presumption is that the school owns all rights to that material including all rights to fully exploit it. This is because the work has been created as a “work made for hire,” as that term is defined in the United States copyright law. School policies, on the other hand, can vary the legal relationship provided that the policies are implemented in a legally effective way, meaning that any change in the work made for hire rules are embodied in a writing and signed by the parties. See the definitions below.

On the other hand, if the faculty is not a bona fide employee, say for example the faculty is adjunct or part time and none of the qualifying requirements for employee status are present, then the presumption is that the faculty has created that work as an independent contractor and not as a work made for hire, whether or not there is a school policy in place.

The United States copyright law provides as follows:

Ҥ 201. Ownership of copyright

(a) Initial Ownership. Copyright in a work protected under this title vests initially in the author or authors of the work. The authors of a joint work are co-owner of copyright in the work.
(b) Works Made for Hire.-In the case of a work made for hire, the employer or other person for whom the work was prepared is considered the author for purposes of this title, and, unless the parties have expressly agreed otherwise in a written instrument signed by them, owns all of the rights comprised in the copyright.”

Under section 101 of that same law, this is the definition of a “work made for hire”:

A “work made for hire” is —

(1) a work prepared by an employee within the scope of his or her employment; or

(2) a work specially ordered or commissioned for use as a contribution to a collective work, as a part of a motion picture or other audiovisual work, as a translation, as a supplementary work, as a compilation, as an instructional text, as a test, as answer material for a test, or as an atlas, if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire. For the purpose of the foregoing sentence, a “supplementary work” is a work prepared for publication as a secondary adjunct to a work by another author for the purpose of introducing, concluding, illustrating, explaining, revising, commenting upon, or assisting in the use of the other work, such as forewords, afterwords, pictorial illustrations, maps, charts, tables, editorial notes, musical arrangements, answer material for tests, bibliographies, appendixes, and indexes, and an “instructional text” is a literary, pictorial, or graphic work prepared for publication and with the purpose of use in systematic instructional activities. [emphasis added. See the section below “Timing of the Transfer.”]

The copyright law then goes on to say:

Ҥ 201 (d) Transfer of Ownership.-

(1) The ownership of a copyright may be transferred in whole or in part by any means of conveyance or by operation of law, and may be bequeathed by will or pass as personal property by the applicable laws of intestate succession.”

And:

Ҥ 204. Execution of transfers of copyright ownership

(a) A transfer of copyright ownership, other than by operation of law, is not valid unless an instrument of conveyance, or a note or memorandum of the transfer, is in writing and signed by the owner of the rights conveyed or such owner's duly authorized agent.”

The legal effect of all this is that if the initial ownership of the work belongs to the independent contractor faculty, the only way that a transfer of exclusive rights to the school can be accomplished is through the means of a written and signed agreement transferring some or all of those rights to the school.

Thus, without more, the mere existence of a school policy proclaiming the status of rights ownership would not be legally sufficient to transfer rights to the school. There must be some legally effective writing that accomplishes this transfer. Whether or not a separately signed memorandum whereby faculty agrees to the terms of the school policy is legally sufficient to achieve this end is unclear but would be dependent upon how a court interpreted the phrase “instrument of conveyance, or a note or memorandum of the transfer.” See the discussion below.

And clearly if there is no school policy in effect, at least none in writing, then the school is essentially locked out of the rights questions except for some perhaps elusive, non-exclusive rights to use the course work but probably only as part of the course itself in a classroom setting. The school would likely have no rights to license that content for other purposes.

Timing of the Transfer

Here is a further wrinkle. Example: a school adopts an “after the fact” policy to cover not only future material developed by independent contractor faculty but past materials as well. What is the legal validity of this kind of retroactive adoption?

Despite the fact that this situation probably arises quite frequently, there is a scant body of law in response to these questions. And what law there is is in conflict and the United States Supreme Court has yet to hear a case to resolve that conflict.

Let me use much of the article “Playboy and the Work Made For Hire Agreement” from my site.

On the one hand, there is the case of Playboy vs. Dumas, 53 F.3rd 549 (2d. Cir. 1995) in which the litigants were fighting over the rights to the work of the artist Nagel. In that matter, the artist had done many drawings and paintings that were published in the magazine. This was all done without a formal agreement, the only indication as to the rights transferred being the legends on various checks, all of which were endorsed after the works had been delivered.

In that case the Court held that:

“We therefore find that the 1976 Act requires that the parties agree before the creation of the work that it will be a work made for hire. We are not convinced, however, that the actual writing memorializing the agreement must be executed before the creation of the work.”

Applied here, this would seem to indicate that the faculty and the school had to both understand, before the work was commenced, that the work was going to be done as a work made for hire for the school. However, that Court indicated that the actual execution of the written agreement embodying that understanding did not have to take place until a point after the work was commenced as long as that writing embodied the original understanding.

But in Schiller & Schmidt, Inc. v. Nordisco Corp., 969 F.2d 410 (7th Cir.1992), that Court held that in order to be a valid work made for hire agreement the parties not only must have agreed before the work was commenced that the transfer of rights would be as a work made for hire but, more importantly, the actual agreement must have been signed by the parties prior to work having been even commenced.

Thus, in my example above, were the situation to be determined under the law as set forth in the Schiller case, the results might be entirely different than had the Playboy rule been applied. Which law applies depends primarily on under which law the contract is to be interpreted.

As I indicated above, the copyright statute (17 USC § 101) specifically requires that “the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire.” This would seem, from a grammatical standpoint, to require that this writing be executed before the work was done but as you can see, such is not necessarily the law in the United States.

Therefore, the issue is presented as to exactly when the agreement defining the work made for hire must be entered into. If the work has already been commenced before the agreement is signed, in certain parts of the United States the parties run the risk of having the agreement be deemed not a work made for hire but simply some form of license to use the work in a limited capacity.

The Sufficiency Of The Writing

In Playboy, the court also discussed what is or is not a sufficient “writing” in order to qualify as a work made for hire agreement.

Often it appears that the law requires that certain “magic words” be used in order to achieve a given result. The rules regarding work made for hire agreements are just such a situation. Without the use of the appropriate “incantation,” the agreement runs the risk of failing to achieve its goals and the parties are left with nothing.

In the Playboy case, there was no formal contract and the only writings that existed relative to the claims of rights ownership were a series of checks that bore various legends at various times. You can read those legends in the full article. For the purposes of this article however, the issue is whether the recitation in some separate writing, signed by the faculty, that the faculty accepts the provisions of the school policy, is a valid transfer of rights to the work under these cases and the statute.

Therefore, we can conclude from the Playboy decision that any writing must specifically mention the words “work made for hire” and reflect the express agreement that the parties intend the writing to be a transfer of rights under the work made for hire doctrine. In other words, there are 2 issues: what was the intention of the parties at the time the work was commenced and is there a sufficient writing to satisfy the language of the statute.

“Specially Ordered and Commissioned”

There were other issues covered by the Playboy Court that also are required to determine the validity of the work made for hire agreement. One of those issues was the meaning of the term “specially ordered and commissioned,” another specific set of magic words that are required by the statute.

The Court found that that term requires that the party requesting the work, in this instance Playboy or in the instance in terms of this article, the school, had to have expressly asked for the work to be done. The work had to be done under the direction and supervision of the party requesting the work and the request by that party had to be the “motivating factor” in having the work done. In other words, would the work have been created except for the request by the commissioning party, in this case the school? And how often is that the circumstance?

Thus, you cannot have a valid work made for hire agreement that seeks to acquire a work that had already been fully created before the relationship between the commissioning party and the creator was established. This, because the work was not created at the specific instance and request of the commissioning party.

These are all questions of fact that can only be resolved on a case by case basis.

Conclusion

Because this area of distance education and corporate training is very new, there are and will likely remain significant legal issues that must be addressed by both school and faculty. It is best that neither party rely on antiquated policies and that it is in the best interest of both parties to enter into valid and legally sufficient written agreements so that both parties may clarify their rights and in turn be in a position to profit from the exploitation of the material. Playing “ostrich” is simply not a viable approach.

Copyright © 2000 Ivan Hoffman. All Rights Reserved.

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This article is not legal advice and is not intended as legal advice. This article is intended to provide only general, non-specific legal information. This article is not intended to cover all the issues related to the topic discussed. The specific facts that apply to your matter may make the outcome different than would be anticipated by you. This article is based on United States law. You should consult with an attorney familiar with the issues and the laws of your country. This article does not create any attorney client relationship and is not a solicitation.

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No portion of this article may be copied, retransmitted, reposted, duplicated or otherwise used without the express written approval of the author.

THE RIGHTS TO STUDENT WORK

IVAN HOFFMAN, B.A., J.D.

Here’s the situation: a teacher puts together a class program that uses the work of a student and, in addition to the use within the 4 corners of the class curriculum, the student’s work is now intended to become part of a corporate training or distance learning program administered by the school for which the teacher works. Who has rights to the student’s work?

Unlike the area of legal rights to faculty work, which is often complex (read the several articles on my site under the link “Articles About Corporate Training and Online Learning”), the answers when it comes to student work are mostly pretty straight forward. As a rule, students own all the rights of copyright in and to the work they create as part of their education, whether generally or within the scope of a particular class. Any use of that work must be with the express and generally speaking written permission of the student. This is because under United States copyright law the creator of any copyrightable work owns all rights to that work unless they are bona fide employees (not so in the case of students in respect of the school, although the students may be treated like servants) or have entered into a valid, written and signed agreement transferring those rights to a third party.

But despite the breadth of that statement, there are some issues that should be discussed in this area.

Fair Use

Within the confines of the classroom, in a face to face setting, the rules regarding “fair use” as applied to educational uses of protected materials apply to the use of student work. For a fuller discussion of these issues, read “Fair Use” on my site. Issues then present themselves when course work including student contributions to that work is then modified to prepare class summaries that are for sale, either by the school or some outside institution for these may reduce the availability of the fair use defense and may require appropriate licenses from all rights holders.

However, it is far from clear whether or not those rules regarding fair use apply to the use of student work in a more commercial, corporate training or online learning environment. For a more fully developed explanation, read “Fair Use in Online Education and Web Based Training.”

Student’s Oral Contributions

What happens if a class is being video or audio taped for further usage such as the sale of those tapes for some corporate training or distance learning project? What then is the status of the legal rights of the student to comments, questions, responses etc. the student makes during the course of the class?

The response here is that there may be some implied license granted by the student to have his or her image and audio comments included in the video. However, one could argue that such a consent, if it existed at all, may not include a consent to have the student’s work included in a more commercial version of the project. By analogy, one could argue that when a spectator goes to a public event there is a consent, implied in law and often printed on the ticket somewhere (though often covered in hot dog mustard), to have one’s image included as part of the “performance” of the event and to have that image included as part of the use of that performance including commercial uses, at least provided one’s image is not distinguishable from the crowd in general. But a classroom environment seems a far cry from a commercial project and further, the contribution of the spectator at the ball game, for example, most often does not involve a definable contribution such as commentary, substantive contribution and so on.

In this regard then, perhaps it is up to the school or teacher to include some sort of notice of waiver of rights in some school policy memorandum or in the class syllabus. However, as I have written in “The Validity of School Policies,” this would very likely be insufficient to transfer to the school or the instructor any intellectual property rights to the student’s contributions as they appear on the tape. The mere “performance” of the student’s contributions in the form of the student conveying the information orally, does not constitute a publication of the underlying protectable elements of that contribution. Thus having some implied license to use a student’s name and/or likeness, a waiver of some level of a right of privacy, is different in kind from obtaining rights to copyrightable material. To obtain those rights, the school would have to have a valid, written agreement.

The Use of Online Policies

Given the growing use of online learning experiences, what happens to the rights issues if the school posts some online version of its policies regarding intellectual property rights? Does this change the equation regarding ownership of those rights?

Clearly the answer to this starts with an analysis of the content of that policy. Does it state, in appropriate language, what happens to student contributions made during the online course, whether in chat rooms or other interactive sessions, or to materials submitted online? Premise number one again is that the creator owns all the rights to that creation. Read “C Rights in E Mail” on my site.

However, it is possible that the policy could be deemed a non-exclusive transfer of some rights if only to use the student’s contributions as part of the course material only but this would not likely be sufficient to grant further rights including the rights necessary to sublicense the course for a corporate project.

Further, any policy, to even have a remote chance of being deemed a valid transfer, would have to be set up technically on the school’s site in such a way as to constitute a contract between school and student. By this I mean that the policy has to be posted in such a way that, in order to participate in the online course, the student would have to travel through the page containing the policy and affirmatively consent by clicking on some sort of “I Accept” button. With the adoption of digital signatures, this could constitute an acceptance of the transfer of rights.

Conclusion

In sum, there is a strong and probably legally valid presumption that the student retains all rights to the student’s contributions to a course. It would take a significant shift in legalities to change that presumption. Thus, if a school is intent on making use of its curricula for purposes other than as course material, it should start by examining its policies and approaches for obtaining the requisite rights from students.

And faculty as well.

© 2000 Ivan Hoffman

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This article is not intended as a substitute for legal advice. The specific facts that apply to your matter may make the outcome different than would be anticipated by you. You should consult with an attorney familiar with the issues and the laws. **************** No portion of this article may be copied, retransmitted, reposted, duplicated or otherwise used without the express written approval of the author.

THE NOTICE AND TAKE DOWN PROVISIONS OF THE DMCA: NON-PROFIT EDUCATIONAL RULES

IVAN HOFFMAN, B.A., J.D.

In “The Notice And Take Down Provisions Of The DMCA,” I wrote extensively about the statutory rules regarding the application of the statute to normal “service providers.” Rather than repeat that entire article, you should read it first. However, the statute has a special section dealing with non-profit educational institutions which are such service providers.

The statute provides that if a faculty member or graduate student who is an employee of the institution and is performing a teaching or research function, that faculty member or graduate student shall be “considered a person other than the institution.” This means that as to the first two areas of service provider activity (transitory communications and system caching), the institution is not charged with the knowledge of the faculty member or graduate student as to any infringing materials.

Further, as to the other 2 areas (storage of materials and information location tools), the knowledge of the faculty or graduate student is not attributable to the institution provided:

(A) such faculty member’s or graduate student’s infringing activities do not involve the provision of online access to instructional materials that are or were required or recommended, within the preceding 3-year period, for a course taught at the institution by such faculty member or graduate student;

(B) the institution has not, within the preceding 3-year period, received more than two notifications described in subsection (c)(3) of claimed infringement by such faculty member or graduate student, and such notifications of claimed infringement were not actionable under subsection (f); and

(C) the institution provides to all users of its system or network informational materials that accurately describe, and promote compliance with, the laws of the United States relating to copyright.

These exemptions are clearly designed to further the free communication of ideas within the educational system but some important limits are also clear:

1. These exemptions do not apply to any for profit educational organizations; and
2. Would seem to exclude graduate students not bona fide employees of the institution. So, for example, if a graduate teaching assistant for a professor was paid by the professor or was paid by the institution as an independent contractor, perhaps the exemptions might not apply.

Conclusion

An institution, even if it nominally falls within the exemption provisions of the statute must still have a system in place to deal with notices received from copyright claimants so that the 3 year provisions above do not bar resort to this exemption.

© 2001 Ivan Hoffman

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This article is not legal advice and is not intended as legal advice. This article is intended to provide only general, non-specific legal information. This article is not intended to cover all the issues related to the topic discussed. The specific facts that apply to your matter may make the outcome different than would be anticipated by you. This article is based on United States law. You should consult with an attorney familiar with the issues and the laws of your country. This article does not create any attorney client relationship. **************** No portion of this article may be copied, retransmitted, reposted, duplicated or otherwise used without the express written approval of the author.

THE RIGHTS TO STUDENT WORK

IVAN HOFFMAN, B.A., J.D.

Here’s the situation: a teacher puts together a class program that uses the work of a student and, in addition to the use within the 4 corners of the class curriculum, the student’s work is now intended to become part of a corporate training or distance learning program administered by the school for which the teacher works. Who has rights to the student’s work?

Unlike the area of legal rights to faculty work, which is often complex (read the several articles on my site under the link “Articles About Corporate Training and Online Learning”), the answers when it comes to student work are mostly pretty straight forward. As a rule, students own all the rights of copyright in and to the work they create as part of their education, whether generally or within the scope of a particular class. Any use of that work must be with the express and generally speaking written permission of the student. This is because under United States copyright law the creator of any copyrightable work owns all rights to that work unless they are bona fide employees (not so in the case of students in respect of the school, although the students may be treated like servants) or have entered into a valid, written and signed agreement transferring those rights to a third party.

But despite the breadth of that statement, there are some issues that should be discussed in this area.

Fair Use

Within the confines of the classroom, in a face to face setting, the rules regarding “fair use” as applied to educational uses of protected materials apply to the use of student work. For a fuller discussion of these issues, read “Fair Use” on my site. Issues then present themselves when course work including student contributions to that work is then modified to prepare class summaries that are for sale, either by the school or some outside institution for these may reduce the availability of the fair use defense and may require appropriate licenses from all rights holders.

However, it is far from clear whether or not those rules regarding fair use apply to the use of student work in a more commercial, corporate training or online learning environment. For a more fully developed explanation, read “Fair Use in Online Education and Web Based Training.”

Student’s Oral Contributions

What happens if a class is being video or audio taped for further usage such as the sale of those tapes for some corporate training or distance learning project? What then is the status of the legal rights of the student to comments, questions, responses etc. the student makes during the course of the class?

The response here is that there may be some implied license granted by the student to have his or her image and audio comments included in the video. However, one could argue that such a consent, if it existed at all, may not include a consent to have the student’s work included in a more commercial version of the project. By analogy, one could argue that when a spectator goes to a public event there is a consent, implied in law and often printed on the ticket somewhere (though often covered in hot dog mustard), to have one’s image included as part of the “performance” of the event and to have that image included as part of the use of that performance including commercial uses, at least provided one’s image is not distinguishable from the crowd in general. But a classroom environment seems a far cry from a commercial project and further, the contribution of the spectator at the ball game, for example, most often does not involve a definable contribution such as commentary, substantive contribution and so on.

In this regard then, perhaps it is up to the school or teacher to include some sort of notice of waiver of rights in some school policy memorandum or in the class syllabus. However, as I have written in “The Validity of School Policies,” this would very likely be insufficient to transfer to the school or the instructor any intellectual property rights to the student’s contributions as they appear on the tape. The mere “performance” of the student’s contributions in the form of the student conveying the information orally, does not constitute a publication of the underlying protectable elements of that contribution. Thus having some implied license to use a student’s name and/or likeness, a waiver of some level of a right of privacy, is different in kind from obtaining rights to copyrightable material. To obtain those rights, the school would have to have a valid, written agreement.

The Use of Online Policies

Given the growing use of online learning experiences, what happens to the rights issues if the school posts some online version of its policies regarding intellectual property rights? Does this change the equation regarding ownership of those rights?

Clearly the answer to this starts with an analysis of the content of that policy. Does it state, in appropriate language, what happens to student contributions made during the online course, whether in chat rooms or other interactive sessions, or to materials submitted online? Premise number one again is that the creator owns all the rights to that creation. Read “C Rights in E Mail” on my site.

However, it is possible that the policy could be deemed a non-exclusive transfer of some rights if only to use the student’s contributions as part of the course material only but this would not likely be sufficient to grant further rights including the rights necessary to sublicense the course for a corporate project.

Further, any policy, to even have a remote chance of being deemed a valid transfer, would have to be set up technically on the school’s site in such a way as to constitute a contract between school and student. By this I mean that the policy has to be posted in such a way that, in order to participate in the online course, the student would have to travel through the page containing the policy and affirmatively consent by clicking on some sort of “I Accept” button. With the adoption of digital signatures, this could constitute an acceptance of the transfer of rights.

Conclusion

In sum, there is a strong and probably legally valid presumption that the student retains all rights to the student’s contributions to a course. It would take a significant shift in legalities to change that presumption. Thus, if a school is intent on making use of its curricula for purposes other than as course material, it should start by examining its policies and approaches for obtaining the requisite rights from students.

And faculty as well.

© 2000 Ivan Hoffman

****************

This article is not intended as a substitute for legal advice. The specific facts that apply to your matter may make the outcome different than would be anticipated by you. You should consult with an attorney familiar with the issues and the laws. **************** No portion of this article may be copied, retransmitted, reposted, duplicated or otherwise used without the express written approval of the author.

THE VALIDITY OF SCHOOL POLICIES

IVAN HOFFMAN, B.A., J.D.

Given the huge rise in interest in both corporate training and distance education, schools and their faculty are beginning to dust off what often amounts to decades old “policies” about who owns what rights to course work. Indeed, many schools probably do not even have any policies at all, at least none written, and thus the issues related to rights and revenue derived from those rights may have simply never been addressed. Since corporate training materials are often based on academic curricula, the issues presented by these questions apply to both distanced learning and corporate training repurposed materials.

Let me then address the fundamental legal issues regarding these policies.

Copyright Law Issues

The foundational issues relate to questions that concern the nature of the relationship between school and faculty. I have written about these issues extensively in “Online Education Rights: Relationships Between Faculty And Institution” and “Who Owns the Rights to the Material?” and you should read the full articles. However, let me summarize these issues so that the within article can be more integrated.

If the faculty is a bona fide employee and the work created by that faculty is within the course and scope of his or her employment, then the presumption is that the school owns all rights to that material including all rights to fully exploit it. This is because the work has been created as a “work made for hire,” as that term is defined in the United States copyright law. School policies, on the other hand, can vary the legal relationship provided that the policies are implemented in a legally effective way, meaning that any change in the work made for hire rules are embodied in a writing and signed by the parties. See the definitions below.

On the other hand, if the faculty is not a bona fide employee, say for example the faculty is adjunct or part time and none of the qualifying requirements for employee status are present, then the presumption is that the faculty has created that work as an independent contractor and not as a work made for hire, whether or not there is a school policy in place.

The United States copyright law provides as follows:

Ҥ 201. Ownership of copyright

(a) Initial Ownership. Copyright in a work protected under this title vests initially in the author or authors of the work. The authors of a joint work are co-owner of copyright in the work.
(b) Works Made for Hire.-In the case of a work made for hire, the employer or other person for whom the work was prepared is considered the author for purposes of this title, and, unless the parties have expressly agreed otherwise in a written instrument signed by them, owns all of the rights comprised in the copyright.”

Under section 101 of that same law, this is the definition of a “work made for hire”:

A “work made for hire” is —

(1) a work prepared by an employee within the scope of his or her employment; or

(2) a work specially ordered or commissioned for use as a contribution to a collective work, as a part of a motion picture or other audiovisual work, as a translation, as a supplementary work, as a compilation, as an instructional text, as a test, as answer material for a test, or as an atlas, if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire. For the purpose of the foregoing sentence, a “supplementary work” is a work prepared for publication as a secondary adjunct to a work by another author for the purpose of introducing, concluding, illustrating, explaining, revising, commenting upon, or assisting in the use of the other work, such as forewords, afterwords, pictorial illustrations, maps, charts, tables, editorial notes, musical arrangements, answer material for tests, bibliographies, appendixes, and indexes, and an “instructional text” is a literary, pictorial, or graphic work prepared for publication and with the purpose of use in systematic instructional activities. [emphasis added. See the section below “Timing of the Transfer.”]

The copyright law then goes on to say:

Ҥ 201 (d) Transfer of Ownership.-

(1) The ownership of a copyright may be transferred in whole or in part by any means of conveyance or by operation of law, and may be bequeathed by will or pass as personal property by the applicable laws of intestate succession.”

And:

Ҥ 204. Execution of transfers of copyright ownership

(a) A transfer of copyright ownership, other than by operation of law, is not valid unless an instrument of conveyance, or a note or memorandum of the transfer, is in writing and signed by the owner of the rights conveyed or such owner's duly authorized agent.”

The legal effect of all this is that if the initial ownership of the work belongs to the independent contractor faculty, the only way that a transfer of exclusive rights to the school can be accomplished is through the means of a written and signed agreement transferring some or all of those rights to the school.

Thus, without more, the mere existence of a school policy proclaiming the status of rights ownership would not be legally sufficient to transfer rights to the school. There must be some legally effective writing that accomplishes this transfer. Whether or not a separately signed memorandum whereby faculty agrees to the terms of the school policy is legally sufficient to achieve this end is unclear but would be dependent upon how a court interpreted the phrase “instrument of conveyance, or a note or memorandum of the transfer.” See the discussion below.

And clearly if there is no school policy in effect, at least none in writing, then the school is essentially locked out of the rights questions except for some perhaps elusive, non-exclusive rights to use the course work but probably only as part of the course itself in a classroom setting. The school would likely have no rights to license that content for other purposes.

Timing of the Transfer

Here is a further wrinkle. Example: a school adopts an “after the fact” policy to cover not only future material developed by independent contractor faculty but past materials as well. What is the legal validity of this kind of retroactive adoption?

Despite the fact that this situation probably arises quite frequently, there is a scant body of law in response to these questions. And what law there is is in conflict and the United States Supreme Court has yet to hear a case to resolve that conflict.

Let me use much of the article “Playboy and the Work Made For Hire Agreement” from my site.

On the one hand, there is the case of Playboy vs. Dumas, 53 F.3rd 549 (2d. Cir. 1995) in which the litigants were fighting over the rights to the work of the artist Nagel. In that matter, the artist had done many drawings and paintings that were published in the magazine. This was all done without a formal agreement, the only indication as to the rights transferred being the legends on various checks, all of which were endorsed after the works had been delivered.

In that case the Court held that:

“We therefore find that the 1976 Act requires that the parties agree before the creation of the work that it will be a work made for hire. We are not convinced, however, that the actual writing memorializing the agreement must be executed before the creation of the work.”

Applied here, this would seem to indicate that the faculty and the school had to both understand, before the work was commenced, that the work was going to be done as a work made for hire for the school. However, that Court indicated that the actual execution of the written agreement embodying that understanding did not have to take place until a point after the work was commenced as long as that writing embodied the original understanding.

But in Schiller & Schmidt, Inc. v. Nordisco Corp., 969 F.2d 410 (7th Cir.1992), that Court held that in order to be a valid work made for hire agreement the parties not only must have agreed before the work was commenced that the transfer of rights would be as a work made for hire but, more importantly, the actual agreement must have been signed by the parties prior to work having been even commenced.

Thus, in my example above, were the situation to be determined under the law as set forth in the Schiller case, the results might be entirely different than had the Playboy rule been applied. Which law applies depends primarily on under which law the contract is to be interpreted.

As I indicated above, the copyright statute (17 USC § 101) specifically requires that “the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire.” This would seem, from a grammatical standpoint, to require that this writing be executed before the work was done but as you can see, such is not necessarily the law in the United States.

Therefore, the issue is presented as to exactly when the agreement defining the work made for hire must be entered into. If the work has already been commenced before the agreement is signed, in certain parts of the United States the parties run the risk of having the agreement be deemed not a work made for hire but simply some form of license to use the work in a limited capacity.

The Sufficiency Of The Writing

In Playboy, the court also discussed what is or is not a sufficient “writing” in order to qualify as a work made for hire agreement.

Often it appears that the law requires that certain “magic words” be used in order to achieve a given result. The rules regarding work made for hire agreements are just such a situation. Without the use of the appropriate “incantation,” the agreement runs the risk of failing to achieve its goals and the parties are left with nothing.

In the Playboy case, there was no formal contract and the only writings that existed relative to the claims of rights ownership were a series of checks that bore various legends at various times. You can read those legends in the full article. For the purposes of this article however, the issue is whether the recitation in some separate writing, signed by the faculty, that the faculty accepts the provisions of the school policy, is a valid transfer of rights to the work under these cases and the statute.

Therefore, we can conclude from the Playboy decision that any writing must specifically mention the words “work made for hire” and reflect the express agreement that the parties intend the writing to be a transfer of rights under the work made for hire doctrine. In other words, there are 2 issues: what was the intention of the parties at the time the work was commenced and is there a sufficient writing to satisfy the language of the statute.

“Specially Ordered and Commissioned”

There were other issues covered by the Playboy Court that also are required to determine the validity of the work made for hire agreement. One of those issues was the meaning of the term “specially ordered and commissioned,” another specific set of magic words that are required by the statute.

The Court found that that term requires that the party requesting the work, in this instance Playboy or in the instance in terms of this article, the school, had to have expressly asked for the work to be done. The work had to be done under the direction and supervision of the party requesting the work and the request by that party had to be the “motivating factor” in having the work done. In other words, would the work have been created except for the request by the commissioning party, in this case the school? And how often is that the circumstance?

Thus, you cannot have a valid work made for hire agreement that seeks to acquire a work that had already been fully created before the relationship between the commissioning party and the creator was established. This, because the work was not created at the specific instance and request of the commissioning party.

These are all questions of fact that can only be resolved on a case by case basis.

Conclusion

Because this area of distance education and corporate training is very new, there are and will likely remain significant legal issues that must be addressed by both school and faculty. It is best that neither party rely on antiquated policies and that it is in the best interest of both parties to enter into valid and legally sufficient written agreements so that both parties may clarify their rights and in turn be in a position to profit from the exploitation of the material. Playing “ostrich” is simply not a viable approach.

Copyright © 2000 Ivan Hoffman. All Rights Reserved.

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This article is not legal advice and is not intended as legal advice. This article is intended to provide only general, non-specific legal information. This article is not intended to cover all the issues related to the topic discussed. The specific facts that apply to your matter may make the outcome different than would be anticipated by you. This article is based on United States law. You should consult with an attorney familiar with the issues and the laws of your country. This article does not create any attorney client relationship and is not a solicitation.

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No portion of this article may be copied, retransmitted, reposted, duplicated or otherwise used without the express written approval of the author.