Gary B Hunter

System Director for Intellectual Property

Spring Joint CAO/CSAO/Deans Meeting
St. Paul College
May 26, 2010

Understanding Ownership of Intellectual

Property within MnSCU
Who owns what?
Staring Point:
1. Federal Copyright and Patent Law


Work-for-Hire Doctrine (copyright law)


Hire-to-Invent Doctrine (patent law)
2. Academic Exception


Recognized (Yes or No?)


Scope?
3. Transfer of State Assets


Fiduciary of State of Minnesota


Good Stewards of State resources

What is the Work-Made-for-Hire

Doctrine?
The doctrine is codified in 201 of the Copyright Act of 1976:
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 coowners 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.
Note: 1. Patent Laws equivalent is the Hire-to-Invent Doctrine.

Work-Made-for-Hire cont.
Two Types:
1.

2.

Applies to employee works created within the scope of employment.

Scope of employment is interpreted broadly, usually when employee is
serving the interests of the employer.
Specially Commissioned Work. A project assignment that is expressed in
a written, signed agreement.
Are there any exceptions to this doctrine?

What is the Teachers Exception?

Answer: An exception to the work-made-for-hire doctrine that allowed

specific employees to own their scholarly work in Higher Education.

Over the years it became known as the academic exception.
Some courts had recognized this exception prior to 1976.
When the Copyright Act of 1976 was passed, it abolished the recognition
of this exception in law.
No court in the past 34 years has recognized this exception in any case.
There are no exceptions in law to the work-made-for-hire doctrine.
The starting point for employee works is that the employer owns them.

Academic Exception cont.

The academic exception is now only recognized through labor agreements and
policies in Higher Education.

MnSCU recognizes the academic exception through:

> Labor Agreements with IFO and MSCF, and

> Board Policy 3.26 Intellectual Property
1.
2.

The Labor Agreements and Board Policy 3.26 have worked in conjunction to address IP issues.
Remember this language in 201 of the Copyright Act of 1976?
(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.

3.
4.

Labor agreements meet the definition of a signed writing.

Board Policy 3.26?

Ownership Policy
Board Policy 3.26 Intellectual Property, Part 4,
Subpart A sets forth the basic ownership categories:
1. Institutional Works (employer ownership, works-for-hire,
commissioned works, creative works authored within the scope of
employment, etc.)

2. Scholarly Works (faculty/student ownership in their scholarly

works)

3. Personal Works (developed on your own time and dime)

4. Student Works (enrolled students excludes student
employees)

Modifying Ownership of a Work

Part 4, Subpart B can modify the basic ownership of
intellectual property:
1. Sponsorship Agreement
2. Collaborative Agreement
3. Specially Commissioned Work Agreements
4. Substantial Use of Resources

Intellectual Property (IP) Ownership Agreements

Written Signed Agreements are essential on the front end.

Agreements should be used when projects will result in the creation of

intellectual property.

Intellectual property implications should be collaboratively discussed
during the planning phase of a project.

Agreements identify ownership and other rights associated with the IP
asset.

Agreements manage the expectations of all the parties involved.
Assistance and Agreement templates are available
from the System Director for Intellectual Property.

License Agreements

Licenses (grant permission to use something owned by another)

Royalty free, perpetual, irrevocable, non-exclusive

Situations:
1.
College/University wants to continue offering a course after faculty
member departs.
2. Faculty member brings course or other IP to college/university.
3. Grant ownership to faculty member of work, but retain a license to
use the work (rubric, digital library of topic, etc.).

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Intellectual Property Policies & Procedures

Lets review the actual drafts or amended policy:

Board Policy 3.26 Intellectual Property (scheduled for 2nd reading in June).

Board Policy 3.27 Copyrights (amended May 19, 2010).

Procedure 3.26.1 Patent Inquiry Process (New, adoption scheduled for June).

Procedure 3.27.1 Copyright Clearance (New , adoption scheduled for June).

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Creative Commons Licenses

With Creative Commons licenses creators keep their copyright.
http://creativecommons.org/licenses/
1.
2.
3.
4.
5.
6.

Attribution
Attribution-NoDerivs
Attribution-NonCommercial-NoDerivs
Attribution-NonCommercial
Attribution-NonCommercial-ShareAlike
Attribution-ShareAlike

D2L Learning Object Repository uses three CC Licenses.

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Intellectual Property Resources

Intellectual Property Coordinator
MnSCU Copyright website www.copyright.mnscu.edu
MnSCU Intellectual Property website www.intellectualproperty.mnscu.edu/
Board Policy 3.26 Intellectual property http://www.mnscu.edu/board/policy/326.html
Board Policy 3.27 Copyrights http://www.mnscu.edu/board/policy/327.html
Gary B Hunter
System Director for Intellectual Property
Academic and Student Affairs
Office of the Chancellor
Minnesota State Colleges and Universities
Phone: 651-201-1659
gary.hunter@so.mnscu.edu

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