Scope of Advisory Group #5:
Copyrights: An Important Commodity in UC-Industry Relationships

The University has traditionally been a generator of a vast number of scholarly writings and other copyrightable works as it pursues its mission of teaching, research and public service. The emergence of new technologies has brought new opportunities to faculty, who now have easy and rapid access to external sources of information and are using videos, computer based technologies, and digitized images to develop and disseminate course materials, research results and scholarly works.

These changes in the marketplace have also expanded the opportunities for the University to interact with industry. Suddenly commercial development rights for software, lectures, and copyrightable results of research have become viable commercial properties. Sponsors of research seek to control distribution and commercially exploit the copyrightable results of research. Faculty and students are offered lucrative opportunities to work with industry to develop software and share in the financial rewards. Publishers are approaching the University in increasing number to obtain rights to develop and distribute audio-visual lecture materials and expand the reach of the University beyond the traditional classroom environment. At the core of this evolution are the issues of ownership, control and obligations of copyrighted works created by University faculty and students. The University is interacting with industry in ways not previously envisioned in policy development and as a result, faculty, students and staff are questioning their rights and responsibilities in this complex arena. It is not clear what the role of the parties should be or how copyrights should be managed to ensure the fulfillment of the University mission. The University has a well established program for disclosure and dissemination of patentable results of research for public use and benefit, but the policies and guidelines governing transfer of copyrighted works for public use are less well developed.

Advisory Group #5 will consider principles to guide the University as it explores its role in the management and dissemination of copyrighted works created at the University.

Participants in Advisory Group #5:
Copyrights: An Important Commodity in UC-Industry Relationships

Randy Katz (Chair)
Professor & Chairman, Electrical Engineering and Computer Sciences
UCB

Catherine Whenmouth (Specialist)
Campus Liaison Officer, Office of Technology Transfer
UCOP

Robert W. Conn
Dean, School of Engineering
UCSD

Carol Fox
Director of Public Affairs
UCSF

James Holst
General Counsel
UCOP

C. Judson King
Provost & Senior Vice President of Academic Affairs
UCOP

Peter Lyman
University Librarian
UCB

Pamela Samuelson
Professor, School of Law
UCB

George Vradenburg III
Partner, Latham & Watkins
Los Angeles, CA

Martha Winnacker
Coordinator, Office of Research
UCOP

Robert Winter
Professor, Department of Music and Associate Dean for Technology, Curriculum Innovation and Research
UCLA

W. Todd Wipke
Professor of Chemistry
UCSC

Report of Advisory Group #5:
Copyrights: An Important Commodity in UC-Industry Relationships

The University must balance its primary commitment to the dissemination of knowledge with the opportunities for economic gain through commercial development of research results. The key issue is intellectual property rights management, which encompasses more than technology transfer. We must develop a comprehensive framework for addressing issues of ownership, management and dissemination of intellectual property rights within the University. Such a framework is in place for patentable inventions, however, a parallel system for copyrighted works is not in place. Copyright policies and procedures should clearly specify what is being protected (e.g., scholarly articles, textbooks, software, multimedia, course materials, and complete courses), what rights are retained by the creator and the University, and what rights are available for licensing. The intellectual property policies should also recognize that patents and copyrights are merely the legal instruments that provide protection, and are of secondary consideration in understanding the management of intellectual property rights issues.

Policies addressing intellectual property should recognize the diversity of intellectual properties and that different approaches and rules may be needed for each kind of property. The policies should optimize for the common case, such as faculty scholarly publication, versus the occasional creation of economically valuable copyright like a hit computer program. Traditional faculty control of faculty created copyrighted works should be recognized. The copyright ownership policies should continue to provide an incentive to faculty and student innovation and creativity, while recognizing that substantial use of University facilities influences the determination of who owns the work. Whoever does own the work, the policy should recognize the need of owners to control and protect derivative works. Should certain copyrightable works be owned by the University, this should not imply bureaucratic control and onerous oversight for the creators of the work. We are particularly concerned about disclosure rules for copyrighted works, and how burdensome these could become for items like scholarly publications.

Any new policies that are formulated should be sensitive to the possibilities of multiple authorship and multiple institutional involvement in the creation of copyrighted materials (like software and multimedia titles), and again the need for flexibility in our own policies. Certain forms of copyrighted works may require special considerations, and in the case of both patent and copyright policies may apply.

In determining licensing arrangements for copyrighted works, the University should consider the long term value of sponsored research agreements as well as the stream of licensing revenues. Furthermore, new policies should be formulated to protect the University from liability while retaining flexibility and the ability to move rapidly when necessary.

Within the context of this framework, we need a comprehensive copyright policy that reflects the multiple roles of the university with respect to copyrighted materials. Licensing is one dimension that refers to the creation of materials. Policies must also be formulated that cover the consumption of copyrighted works created by others, such as photocopying and concepts of fair use. A comprehensive copyright policy should acknowledge and protect the rights of faculty as well as student authors.

A uniform policy that encourages the retainment of rights for the University's and Creator's own use in education and scholarship ("Intellectual Interest") is highly desirable. For example, faculty and student creators should receive advantageous copyright rights for non-commercial uses, even if they change institutions. Copyright policies should recognize the contributions of the institution to the creation of work, and should ensure that the institution receives advantageous fair use rights to the intellectual property. Shop rights should be reserved for the creator of the work.

In the case of sponsored works, the copyright policy should formulate guidelines that determine the rights retained by partner/sponsor versus those that are retained by university/creator.

Recommendations

Digital representations and electronic dissemination is radically changing the world of publishing and scholarship. It is important for UC to engage in the national debate and to take a leadership role in defining effective copyright policy for the 21st Century.

The University should formulate a uniform policy on intellectual property rights for patentable inventions as well as copyrighted works. It should encompass consistent disclosure rules, appropriate for the category of intellectual property. For example, the common case of individual scholarly publications should not require onerous disclosure -- standard yearly biobibliographies should be sufficient. The policies should distinguish between ownership and control of intellectual property, and provide a uniform royalty sharing scheme for both patentable inventions and copyrighted works created using substantial University facilities.

The University needs a well defined policy formulation and review process. Begin by forming an Ad Hoc committee, spanning legal expertise, faculty constituencies (in the arts, humanities, physical science, biosciences, social sciences, medical, engineering), as well as administrators, and librarians. Give this committee a well defined time frame, such as six months, to draft its recommendations. Make sure to engage the President's Technology Transfer Advisory Committee as well as the Academic Senate in the processes of education and policy formulation. The Academic Senate should make the issues of intellectual property rights management one of its high priorities. The committee should develop a UC position on what is owned by the University, what rights should be retained, and the nature of the licenses (exclusive versus non-exclusive). The policies proposed should derive from the University's primary goal of encouraging the wide-spread dissemination of knowledge.

Specific tasks for the committee include a review of policies for the retention of intellectual property rights. For example, Berkeley's University Librarian Peter Lyman is drafting a statement to inform the Berkeley Academic Senate Committee on Research of actions taken by other universities to retain certain rights when copyrights are assigned to publishers. Such actions may serve as guidelines for UC system-wide actions. There is strength in adopting a common position across the UC system and with universities with respect to negotiations on copyrights with publishers. The committee should consider the following policy documents: "University Library Committee Proposed Resolutions on Faculty Concerns on Copyright and the Role of Libraries", University of Wisconsin-Madison, May 6, 1996, and "Copyright and the University Community", University of Texas, on-line at http://www.utsystem.edu/OGC/IntellectualProperty/admin2.htm.

In addition, the committee should carefully consider the Distance Learning Initiative and the role of University copyright issues in that initiative. The Administration should encourage an open discussion of the issues of intellectual property rights in order to help the education of faculty and students. Efforts to raise the consciousness level among faculty should be proactive. Specific recommendations include publishing information in the Notice of the Academic Senate, sending E-mail announcements to all of the faculty, and publishing the determined guidelines in the Faculty Handbook. It is important to communicate the University's Acceptable Use Policies to faculty and students. Furthermore, model statements of what retention rights are possible to negotiate with publishers and good guidelines for issues that should be raised with publishers would be highly desirable. Finally, it is important to disseminate as much information as possible through an appropriate UC Web Page. The University of Texas' web page on intellectual property rights matters serves an excellent model.

Finally, we must establish a service-oriented office that can answer questions about copyright use and dissemination matters and process disclosure requests in a timely manner. This operation should not be tied to the licensing process itself, which is the proper domain of the Office of Technology Transfer, and should not be self-funded. The tradition of decentralization, to insure better service coupled with a better understanding of the local needs of a given campus, should be retained.

Comments on the Report of Advisory Group #5:
Copyrights: An Important Commodity in UC-Industry Relationships

All comments were incorporated into final report.

Return to Main

Return to Post-Retreat Reports/Comments