Do faculty own the copyright to course materials they create even if their contract or university IP policy specify otherwise?

Question

An answer on Academia.SE claims that

in general, any lectures, slides, textbooks, or scholarly articles you [as faculty] write belong to you and not your school, and this is true regardless of whether the school posts a policy on its web site claiming otherwise, and even regardless of whether they get you to sign a contract stating otherwise.

and cites Weinstein v. University of Illinois and Hays v. Sony Corp in support of this statement.

However, it seems to me that Weinsten v. University of Illinois explicitly considers university IP policy in making the determination of whether the scholarly work under consideration was "work for hire". First it says

The statute is general enough to make every academic article a "work for hire" and therefore vest exclusive control in universities rather than scholars. See DuBoff, An Academic's Copyright: Publish and Perish, 32 J. Copyright Society 17 (1984). The University of Illinois, like many other academic institutions, responded to the 1978 revision of the copyright laws by adopting a policy defining "work for hire" for purposes of its employees, including its professors.

then it quotes the university policy on work for hire, and then it makes a determination based on whether the university IP policy on work for hire can be interpreted to apply to the particular work under consideration:

The University's copyright policy [on work for hire] reads more naturally when applied to administrative duties. Perhaps the University forms a committee to study the appropriate use of small computers and conscripts professors as members. The committee may publish a report, in which the University will claim copyright. We do not say that a broader reading is impossible, but such a reading should be established by evidence about the deliberations underlying the policy and the course of practice

Furthermore, the more recent Bosch v. Ball-Kell refers to a

directive in Weinstein, to look for evidence of intent from the history and deliberations that occurred in implementing the University's policy.

Thus it is not clear to me whether the so-called "teacher exception" to work for hire applies if the university's intellectual property policy or contract asserts ownership of copyright of course materials.

Answer 1

The leading case in this area is Commun. for Non-Violence (CCNV) v. Reid 490 U.S. 730 (1989).¹

There are two routes to employers automatically being the first owner of copyright in a work produced by a hired party: in an employee-employer relationship, or in certain works by independent contractors if an express agreement is made.

CCNV construed the definition of "work made for hire" in 17 USC 101 to split paid work into two categories: work done by "employees" and work done by "independent contractors". Copyright in "employees" are automatically owned by the employer. Copyright in work by independent contractors can also be owned by the employer if it falls under a set of specific categories of work (which course materials are certainly included in) and "parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire".

The term "employee" above takes on a special meaning in this context. The court held that the test is to use common law agency principles:

To determine whether a work is a "work made for hire" within the § 101 definition, a court should first apply general common law of agency principles to ascertain whether the work was prepared by an employee or an independent contractor

The court listed 12 (non-exhaustive) factors to be taken into account when deciding whether a hired party is a an employee under common law agency and thus the work would be automatically considered a "work for hire":

• the hiring party's right to control the manner and means by which the product is accomplished
• the skill required
• the source of the instrumentalities and tools
• the location of the work
• the duration of the relationship between the parties
• whether the hiring party has the right to assign additional projects to the hired party
• the extent of the hired party's discretion over when and how long to work
• the method of payment
• the hired party's role in hiring and paying assistants
• whether the work is part of the regular business of the hiring party
• whether the hiring party is in business
• the provision of employee benefits
• the tax treatment of the hired party

This is a case-by-case judgement, and courts have not made a ruling that applies to all university course materials universally. I'm sure we could all imagine arrangements that would fall squarely on the "employee" side of the test, and thus give the employer first ownership of copyright in course material just as easily as we could imagine arrangements that would fall squarely on "independent-contractor" side.

There are arguments on both sides regarding whether the typical university professor or lecturer relationship would be considered an "employee" relationship for the purpose of the "work made for hire" definition (I'll come back to reference some law journal articles later).

Regardless, even if particular relationship is found to be an "independent-contractor", the employer can still be the first owner of copyright in the works if "parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire" (assuming the work is one of the categories listed in the 17 USC 101 definition of "work made for hire" part (2), and course material certainly is).

Last, even for independently contracted work that doesn't fall under one of the special categories in "work made for hire" (2), parties could agree to a contract requiring assignment of copyright. In this case, the employer wouldn't be the initial owner, but they would be due equitable assignment of the copyright by the author.

^{1. There are various reasons why Weinstein (mentioned in the question) is not relevant. Weinstein doesn't hold that the author of course material is automatically the copyright owner. Weinstein is pre-CCNV. Weinstein was a Seventh Circuit opinion; CCNV is a Supreme Court opinion. The test that was being used at the time by the Seventh Circuit (an "actual control of the work" test) was rejected by the Supreme Court in CCNV.}