APPENDIX H INTELLECTUAL PROPERTY
POLICY
CHARTS AND ILLUSTRATIONS
Examples for Figure 1a:
Following are examples to illustrate the dynamics of how the
first question in Figure 1a is answered:
a) Adams writes a book that is not related in any way
to a research agreement. The work is not within the Scope of
Employment and URI does not assign or commission Adams to write the
book. The copyright of the book belongs to Adams.
b) Stephenson writes a book that is derived from research results
accrued over time as she works on an NIH project under an agreement
between the university and NIH. The book is a compilation of ideas
expressed by Stephenson after her NIH assignment had terminated.
Because the NIH grant had been terminated and because URI did not
assign or commission the work, the copyright of the book is owned by
Stephenson.
c) Nelson is budgeted to create software as part of a project
under an agreement between the university and a private company. As a
result, the software that Nelson creates is within the Scope of his
Employment and is, therefore, work-for-hire for the university.
Therefore, the software is not within the traditional types such as
lecture notes, articles, or books excepted from the definition of
work-for-hire in this policy. The copyright ownership to the software
is owned by URI.
d) Milford creates a translation. The work was not created in the
performance of a project covered by a research agreement between the
University and an outside party. However, the work was commissioned
by URI. There is no agreement declaring the work a work-for-hire nor
is there a written transfer of ownership to URI. Consequently,
Milford has copyright ownership.
e) Anderson is budgeted to create software as part of an NSF
project under an agreement between the university and NSF. As a
result, the software that Anderson creates is within the Scope of his
Employment and is, therefore, work-for-hire. The software is not
within the traditional types such as lecture notes, articles, or
books excepted from the definition of work-for-hire in this policy.
The copyright ownership to the software is owned by URI.
f) Gingras receives a gift through the URI Foundation to support
his program. He writes a monograph on labor relations. There is no
written agreement giving URI the ownership. Gingras owns the
copyright to the monograph.
Scope of Employment and
Work Ordered or Commissioned by URI
The following examples are intended to give the reader insight
into the definition of "Work-for-Hire" These are merely examples for
clarification; they are not to be misconstrued to limit the meaning
of the term or the number of different cases.
(The following examples and guidelines are from Richard L.
Stevens of Samuels, Gauthier, Stevens & Reppert; and from Robert
P. Ciavola, MIT.)
1. Smith, a full-time university professor, teaches three courses
and spends the remainder of her time writing a book. The book was not
specifically ordered or commissioned by URI.
A full time professor is, by job description, expected to do some
publishing. However, the professor is extended a great degree of
freedom at a university. Even though there is a written statement by
URI that the professor is expected to create scholarly work, there is
no written agreement that the professor will create this specific
book. Also, case law in the courts of appeal has demonstrated that it
has been very traditional that the professor owns the copyright in
this case cited above. Consequently, the activity of writing the book
is not work-for-hire.
Smith owns the copyright to the book.
2. DiSprito, a full-time university professor, teaches one course
and spends the remainder of his time writing a book. There is no
written agreement between the professor and the university.
A full time professor is, by job description, expected to do some
publishing. However, the professor is extended a great degree of
freedom at a university. Even though there is a written statement by
URI that the professor is expected to create scholarly work, there is
no written agreement that the professor will create this specific
book. Also, case law in the courts of appeal has demonstrated that it
has been very traditional that the professor owns the copyright in
this case cited above. Consequently, the activity of writing the book
is not work-for-hire.
DiSpirito owns the copyright to the book.
(The university may contract with the writer that the university
could use the book in its classrooms and/or labs free of charge
&emdash; because nine credits worth of time would be used in writing
the book.)
3. Robichaud, a full-time university professor, teaches one
course and spends the remainder of her time writing a book. There is
a written agreement between the professor and the university that
Robichaud will write a specific book for use in a particular course
and that URI will own the book. This is work-for-hire.
URI owns the copyright to the book.
4. Simmonds, an adjunct professor, is hired to teach one course
and spends the remainder of his time writing a book. There is no
written agreement other than the contract for teaching the course.
This is not work-for-hire because the work is not within the job
description of teaching the one course.
Simmonds owns the copyright to the book.
5. Raykovac, a full-time professor, writes CAD-CAM software for
use in a product development course she is teaching. There is written
documentation within the department that Raykovac is assigned to
teach the course. Although the software enhances the teaching
function, it has not been determined that the software is really
necessary. This software is, however, equivalent to lecture notes
and, therefore, it is not work-for-hire.
Raykovac owns the copyright to the software.
6. Jones, a computer buff on the University staff, is frustrated
by what he perceives to be a lack of technical support from the
computer department. He develops an instructional manual explaining
the ins and outs of a complicated new word processing program that
was recently installed on all office computers. Both Jones and the
University understand that it is within Jones' scope of employment to
prepare material that he needs to properly perform in his own
department. Jones writes the manual at the office during normal
working hours and with his boss's permission, but with his own
computer that he brought from home. Jones distributes the manual to
the staff, receiving rave reviews.
Jones was acting "within the scope of his employment" when he
wrote the word processing manual; consequently, the University would
be considered the statutory author of the work, absent a written
agreement to the contrary between Jones and the University.
URI owns the copyright to manual.
7. Yamamoto, a music professor, needs to write a music score in
order to teach properly an assigned course in music. There is written
documentation within the department that Yamamoto is assigned to
teach the course. This is not work-for-hire because Yamamoto is a
professor, and the law has placed professors in a different category
than, for example, Jones in Example 6.
Yamamoto owns the copyright to the music score.
8. Wilson, a lathe operator, spends university time creating new
software that would save several machining steps. This new software
has nothing to do with his assignment. This is not work-for-hire. The
university may have an agreement with the operator that, if such a
creation arises, then the university has the right to use the new
process royalty free within the university. The university cannot,
however, inhibit the lathe operator from collecting royalties through
commercialization of his copyrightable property.
Wilson owns copyright to the software.
9. Mitchell, a professor, is hired (or assigned) primarily to
conduct research in a specific discipline. Both the University and
the professor recognize 'software' will be developed both to continue
the research and possibly to exploit the findings of research. The
University owns the software developed because it is created within
the scope of employment. Publications ancillary to the research are
owned by the professor. No specific written agreement is required.
URI owns copyright to the software.
10. Andrews, a professor, is on sabbatical leave of absence.
While on sabbatical, she spends all of her time writing a book. The
University of Rhode Island pays her salary while on sabbatical. The
book belongs to Andrews, unless there is a specific written agreement
to the contrary, which in this case there was not.
Andrews owns copyright to the book.
It is important to note that if an individual is a full-time
employee, then the criterion is not the degree of supervision but
rather the scope of employment. If the individual is a part time
employee or a consultant, then the degree of supervision comes
strongly into play.