AustLII Home | Databases | WorldLII | Search | Feedback

Journal of Law, Information and Science

Journal of Law, Information and Science (JLIS)
You are here:  AustLII >> Databases >> Journal of Law, Information and Science >> 2000 >> [2000] JlLawInfoSci 14

Database Search | Name Search | Recent Articles | Noteup | LawCite | Help

Mendes, Philip --- "On-line Delivery of Education: Copyright Issues in Universities" [2000] JlLawInfoSci 14; (2000-2001) 11(2) Journal of Law, Information and Science 196

On-Line Delivery of Education: Copyright Issues in Universities

PHILIP MENDES[*]

Abstract

This article examines the legal environment within which this dilemma has to be resolved.

It then assesses the appropriateness of a university claiming or asserting ownership of copyright in teaching materials. Finally, the author offers a model that might provide a solution to the dilemma, that is consistent with the legal environment, consistent with the interests of academic staff, and which provides a framework that facilitates universities achieving their objective of on line delivery of courses.

1. Introduction

In a climate of diminishing sources of public funds for education and research,[1] universities have been challenged to be entrepreneurial, and to resourcefully explore new and innovative ways of generating revenue.[2]

While once universities were not as conscious of their intellectual property assets, in more recent times there is a more sophisticated awareness of the value of those assets. Commercialising intellectual property has increasingly become an objective of universities. Many have established technology transfer offices dedicated to commercialising the university’s intellectual property, and there are many examples of outstanding successes in doing do.

Increasingly, universities are drawing their attention to the on line delivery of courses. This is not just an opportunity for commercialisation for the sake of revenue raising,[3] but equally is driven by the motivation to deliver and structure higher education taking advantage of technology that is now available, and to be responsive and proactive in seeking out new markets which are possible to service with on line delivery.[4]

Indeed, the on line delivery of higher education has been described as having as profound an implication as the invention of writing, and the invention of the printing press,[5] creating, as it does, the “virtual campus”:[6]

“Why should three hundred students all be required to sit in a lecture theatre being taught the same material at the same time and at the same place when they can tap into technology and learn at their own pace and in their own time.”[7]

The resources for the on line delivery of courses are:

1. existing teaching materials, such as lecture notes, overheads, power point presentations, tables, drawings, photographs, papers, tutorial and assignment problems, and examination questions, etc, already prepared by a university’s academic staff; and

2. new teaching materials prepared specifically for courses intended for on line delivery.

In pursuing the objective of on line course delivery, universities face a dilemma, and that is how to reconcile their need to have ownership or rights in teaching materials, with the traditional academic view that academic staff are the owners of the copyright subsisting in their teaching materials.

Having the capability to deliver on line courses, by having ownership or rights in relation to teaching materials, is not the only motivation behind universities assessing the need to assert ownership in teaching materials and other copyright works produced by their academic staff. The fees paid by Australian universities to Copyright Agency Limited for the photocopying of copyright works can be substantial, and universities understandably question why the fee should be paid in relation to the photocopying of works produced by their own staff.[8]

This article:

1. examines the legal environment within which this dilemma has to be resolved

2. assesses the appropriateness of a university claiming or asserting ownership of copyright in teaching materials, and

3. suggests a model that might provide a solution to the dilemma, that is consistent with the legal environment, consistent with the interests of academic staff, and which provides a framework that facilitates universities achieving their objective of on line delivery of courses.

2. Legal Environment

Provisions in each intellectual property statute, including the Copyright Act 1968, specifically make provision for intellectual property developed by an employee in the course of employment, to be owned by the employer.[9] This is with the exception of the Patents Act 1990 and the Trade Marks Act 1995, neither of which contain a comparable provision. However, the common law clearly is that an invention made by an employee in the course of employment is an invention owned by the employer, with the employer having the right to apply for and to be granted a patent.[10] The same principle extends to confidential information.[11] An employee’s fiduciary obligations to the employer requires the employee not to misuse the confidential information, as would occur if the confidential information, such as a trade mark, was developed in the course of employment, and an employee wrongfully sought to apply for the registration of the trade mark in the employee’s own name.[12]

This being so clearly the law in relation to all forms of intellectual property developed by employees in the course of their employment, it would be expected that copyright in teaching materials developed by academic staff in the course of their teaching duties for a university employer, would be owned by the university employer.

It is clearly the case in relation to patentable inventions made by academic staff. Universities have for a long time claimed ownership of patentable inventions, and been granted patents in respect to those inventions. This was even the case before universities formalised their claim to ownership of inventions in policies and subordinate legislate.[13]

3. Academic Perspective

This long standing practice in relation to patentable inventions does not appear to have been met with any concern or dissension on the part of academic staff. But that is not the case in relation to copyright materials, in respect to which academic staff respond to any assertion that copyright ownership vests with a university employer with indignation and alarm,[14] and sometimes incredulity, since the perception is that a university as the copyright owner, would have the power, intolerably, it is stated ,[15] to prevent publication, or to control the manner of publication.

This comparative perspective about the acceptability of universities claiming owners of inventions, and the unacceptability of universities claiming ownership of copyrights works is reinforced by a model intellectual property policy developed by the National Tertiary Education Union, which once became quite active in negotiating the contents of intellectual property policies being formulated by individual universities. The model intellectual property policy developed by the union proposed that academic staff own copyright in all works they produced, but conceded that the university own all other forms of intellectual property, including patentable inventions.[16] In other ways the National Tertiary Education Union has demonstrated itself to be more concerned, on behalf of its members, about copyright, than other forms of intellectual property.[17]

Software is a copyright work. But like patentable inventions, universities have claimed ownership of software, and like patentable inventions, this practice does not appear to have been met with any dissension from academic staff.

4. Academic Environment

The academic environment is one where academic staff have always understood that they personally own the copyright subsisting in their teaching materials, and not their university employer.

Academic staff are mobile, moving from one university employer to another.[18] In doing so, they have always freely taken their teaching materials with them from one university employer to another, and this has been so without impediment from the previous university employer.

Indeed, the Australian Vice-Chancellor’s Committee has observed that “universities traditionally waive rights to ownership in lectures, books and articles.”[19]

When a university considers making an appointment of a new academic member of staff, there is an expectation that that member of staff will bring to the new university employer the prospective employee’s “stock in trade”, that is, their existing teaching materials that equips them to be a valuable addition to the academic staff of the university.

All employees are entitled to use their skills, knowledge and experience to be employable, and to be employed, without restraint. The principle is applied when identifying the blurry boundary between on the one hand an employee’s implied obligation not use a former employer’s trade secrets and confidential information, and on the other hand, an employee’s ability, without restraint, to use the skills, knowledge and experience acquired in the course of working for all former employers, and which is the basis of an employee’s employability.[20]

An attractive argument is that there is a conflict if academic staff are able to use skills and experience and knowledge gained with a previous university employer, but unable to use their teaching material where those skills, experience and knowledge are recorded.[21]

That conflict however was easily resolved by the Court of Appeal in Stephen Jordan and Harrison v. MacDonald and Evans.[22] Lord Evershed concluded that a proposed book by a former employee which recorded the employee’s skills, experience and knowledge, gained during the period of employment, was not subject to any obligation of confidentiality which the former employer could enforce, and that just as the employee’s skills, experience and knowledge were his own in that case, so also was the copyright in the book he proposed to publish.[23]

The long standing practice in the academic community of mobile staff taking with them teaching materials, from university employer to university employer, lends support to the conviction with which academic staff assert ownership of copyright in their teaching materials.

5. Academic publishing

Long standing practices between academic members of staff and the publishing industry support this view as well.

Academic staff have always dealt directly with publishers of textbooks, scholarly papers, and other works. Academic staff personally assign copyright to publishers, or personally grant licenses to publishers. This has always been done without intervention from a university employer, Academic staff do not seek any sanction or approval, or any formal assignment or license from the university employer. Publishers similarly deal directly with the academic staff member, and do not seek any sanction, approval, assignment or license from the university employer.

Publishing by academic staff in this way has always been done with the encouragement and support of universities.

Publishers invariably seek warranties from academic staff members that they own the copyright in work to be published, and that they have the capacity to grant to the publisher a license to publish, or the capacity to assign copyright, as the case might be.

Many universities have their own publishing houses. Just like all other publishers, these university publishing houses procure assignments or licenses of copyright, personally, from the university’s staff, and procure similar warranties.

Publishers of scholarly journals often seek an assignment of copyright from academic staff authors of contributions,[24] and this similarly has been with the encouragement and support of the university employer, and without intervention on their part.

It is often the case that textbooks and scholarly papers are derived from teaching materials.

That being the case, there is further support to the conviction with which academic staff assert ownership of copyright in their teaching materials, and all their publications.

Indeed, if the university employer owned the copyright in the teaching material, and not the academic staff member, the publication by a staff member of a textbook derived from the teaching material, being an adaptation of the teaching material, would amount to an infringement of the university’s copyright.[25]

But of course, university employers do not assert that any such infringement occurs, and indeed, universities, academic authors, and their publishers clearly all conduct themselves on the basis that no such infringement occurs. This also lends support to copyright in teaching materials, and publications, vesting in academic staff members, and not their university employers.

These practices described in relation to academic publishing being so long standing, it is understandable that the position should be asserted to be no different in relation to electronic publishing.

Universities recognise that an assertion by them that they own copyright subsisting in published academic works can be a tenuous one. In 1990 when Copyright Agency Limited claimed payment from universities in relation to the photocopying of academic journals, one of the assertions made by the Australian Vice-Chancellor’s Committee in disputing the claim was that universities as employers owned the copyright subsisting in journal publications written by their employees. It is not without significance that Australian universities abandoned this assertion, and their resistance to the claim, and settled the claim by agreeing to make payment to Copyright Agency Limited for the photocopying of journal articles.[26]

Universities recognise as well that implementing any policy that attempts to achieve copyright vesting in the university will not work. The University of Melbourne attempted unsuccessfully to do so in 1993, only to find that its policy was disregarded by its staff, and so much so, that it soon afterwards abandoned its policy, and replaced it with one that confirmed that its staff were the owners of the copyright works they produced.[27]

In response to recommendations by the Australian Vice-Chancellor’s Committee in 1993 and 1995[28] that universities put in place intellectual property policies, all Australian universities have done so. A recent survey of 33 of those policies concluded that they all recorded an academic staff member’s ownership of copyright in scholarly works.[29]

6. Basis for academic staff copyright ownership

6.1 Section 35(3)

There is a legal basis for academic staff being the owners of copyright subsisting in works they produce.

While section 35(6) of the Copyright Act provides that an employer owns the copyright works created by an employee in the course of the employee’s employment, section 35(3) allows this general rule to be modified by agreement.

The practices described in relation to teaching materials, textbooks, scholarly works and other publications can be regarded as a course of dealing between academic staff members that operates to imply a term into the contract of employment, pursuant to section 35(3), that the general rule in section 35(6) is modified in relation to academic staff members, so that copyright vests with the academic member of staff.

A court can imply a term into a contract to give effect to a custom or usage in an industry, if that custom or usage is not inconsistent with an express term of a contract.[30] The practices described are so long standing that it can be persuasively argued that they are such a custom or usage in the university community, that the employment contract contains an implied term that an academic staff member, contrary to section 35(6), remains the owner of copyright in teachings materials.

The observation by the Australian Vice-Chancellor’s Committee that “universities traditionally waive rights to ownership in lectures, books and articles”[31] provides a strong argument of there being such a custom or usage amongst universities. Indeed, the Australian Vice-Chancellor’s Committee has recognised that universities having allowed academic staff to hold themselves out to the publishing industry as the owners of copyright in works, that it is likely that there is an implied term in the employment contract to the effect that copyright in certainly scholarly works vests with the academic staff member.[32]

In one case, without any technical legal analysis or reasoning, the court unhesitantly remarked that an academic member of staff must own the copyright in works produced, with a tone of incredulity that the situation could be otherwise. In Stephen, Jordan & Harrison v. McDonald and Evans,,[33] Lord Evershed said:

“I should have thought that a man, engaged on terms which include that he is called upon to compose and deliver public lectures .. would … be entitled to the copyright in those lectures… Lectures delivered, for example, by Professor Maitland to students have since become classical in the law. It is inconceivable that because Professor Maitland was in the service of the University of Cambridge that anybody but himself, one would have thought, could have claimed the copyright in those lectures.”[34]

In Noah v. Shuba[35] a consultant epidemiologist was employed by the Public Health Laboratory Service. He wrote a work called “A Guide to Hygienic Skin Piercing” which was published by his employer. Parts were reproduced by the defendant and Dr Noah claimed that copyright was infringed. One of the issues that the court had to address was whether copyright in the work vested with Dr Noah, or his employer. The Court found that it had been the common practice for employees of the Public Health Laboratory Service to retain copyright in works written by them. The Court concluded that notwithstanding the employment relationship, Dr Noah owned the copyright subsisting in the work.[36] The Court also observed that if it had come to a contrary conclusion that the work had been written in the course of employment, it would also have concluded that:

“there was an implied term of his contract of service excluding the operation of the statutory rule… vesting the copyright in the work so made in the employer”.[37]

6.2 Section 35(6)

Another possible basis upon which academic staff might assert that they retain ownership of copyright in their works is that their copyright works are not created in the course of their employment with the university.[38]

According to this argument, copyright vests in an employer when a work is created “in pursuance of the terms of employment”,[39] This suggests that there must be an obligation on the part of the employee to produce the copyright work,[40] but, academic staff members are employed to teach, and are not necessarily employed to produce copyright works. It is possible for example, for an academic staff member to teach relying wholly upon existing commercially published works, without the need to produce additional teaching materials.[41]

This argument however, while able to be made for some teaching courses, cannot be made universally. There are many courses for which there are no commercially available publications, so that it might be said that the preparation of teaching materials for those courses is part of the employment duties, and that the copyright in those materials vests with the employer.

But on this question, Lord Denning had this to say in Stephen, Jordan & Harrison v. McDonald and Evans[42]

“… when.. a master on the staff of a school is employed … to give lectures or lessons orally to students… [i]f for his own convenience, he puts the lectures in writing, then his written work is not done under the contract of service [that is, the employment contract]. It is most useful as an accessory to his contracted work, but it is not really part of it. The copyright is in him and not in his employers.”[43]

However controversial the matter of teaching materials may be, it can be persuasively argued that academic staff are not employed to produce textbooks and scholarly papers. While certainly this is encouraged by university employers, and is a major criterion upon which re-engagement and promotion is assessed,[44] it is not part of the contract of employment that academic staff must produce textbooks and scholarly papers.

Yet, it is often the case that textbooks and scholarly papers are derived from teaching materials. Indeed, where textbooks are concerned, this will invariably be the case. Universities do not assert ownership of copyright in textbooks or scholarly papers, which is clearly owned by academic staff. It is not a desirable outcome for copyright to vest in academic staff in relation to a textbook, but to vest with the employer in relation to the teaching materials from which it was derived.

The argument that academic staff when producing teaching materials do so outside the course of their employment is therefore not as preposterous as it might at first be considered.

6.3 United States

In the United States, although section 201(b) of the United States Code, Title 17 – Copyrights 1976 is comparable to section 35(6) of the Copyright Act 1968, and allows there to be a variation to the general rule that an employer owns the copyright in works produced by an employee in the course of employment,[45] the law on this issue has taken a different path to that in Australia and the United Kingdom.[46]

The reason for the different pathway is that while the Australian and British legislation permits a variation to the general rule to be implied, the United States provision requires such a variation to the general rule to be in writing.

Contracts of employment between American universities and academic staff members, not unexpectedly, do not deal with the issue, and so there is no written exception to the general rule.

This has led the courts in the United States to be more inventive, one writer observing wryly that “it may be significant that the authors of these [decisions] are former university professors appointed to the federal bench.”[47]

The inventive solution in the United States has simply been to hold that academic members of staff are not regarded as employees, when considering whether copyright vests in their university employers. This is the so called “academic exception” rule,[48] that it “has been the academic tradition since copyright law began,”[49] and that “under the Copyright Act of 1909, courts and commentators regard the work-made-for-hire doctrine [as] largely inapplicable to teachers.”[50] If the situation was otherwise and a university owned the copyright subsisting in an academic employee’s teaching materials “it would impede the ability of staff to move from campus to campus, as it would be necessary for them each time to work up a new set of lecture notes.”[51]

Although the authority for so called “academic exception” rule is scant, it has been remarked that this is not because the exception was in any doubt, but instead because it was simply not questioned than an academic author was entitled to copyright in works produced,[52] it being a “universal assumption,”[53] and the courts have continued to hold accordingly.[54]

7. The case for university ownership or rights

But against this background, the case for a university employer having ownership, or at least, rights, in relation to teaching materials needs to be assessed.

A university might for example make a substantial investment in the development of a new course. Many factors motivate a university doing so, not the least of which is to differentiate itself from other universities, with which it must compete, and as well to achieve a competitive advantage in the competition to attract students.[55]

In such a case, it would indeed be commercially imprudent for a university to allow a staff member, upon commencing employment with another university, to without restriction or impediment, take the specifically developed teaching materials and to use them at another university, with which it must compete.

This is the motivation behind the increasing practice of universities commissioning staff members to write specific teaching materials, often for additional remuneration,[56] upon express contractual terms that copyright in the commissioned work vests with the university.

This interest, which needs to be protected is particularly focused upon new innovative courses, and as well particularly focused upon occasions where a course is intended for on line delivery.

But the matter affects all courses, and not just new ones, nor those intended for on line delivery.

It is a not infrequent occurrence that an academic staff member moves on to another university employer, and takes all teaching material, including assignment and tutorial problems, examinations, course outlines, and all material in any way connected with a particular course, all of which can arguably be teaching materials, when broadly considered. But not only are hardcopies taken. As well, all soft copies are taken, leaving the university without any capability to conduct a course previously undertaken.

This, it can be claimed by a university, is inequitable upon it, since it has the result that the university must either no longer offer the course, or be put to not inconsiderable expense to develop new teaching materials.

As well, it is a legitimate objective of universities to reduce their obligation to make very substantial payments to Copyright Agency Limited in relation to the photocopying of journal articles written by their staff, and former staff.

8. Assessing the vesting of copyright ownership in the university

It is these factors which motivate universities considering making an assertion that they are, or at least should be, the owners of copyright subsisting in works produced by their academic staff. However, if the solution to these issues is that copyright vests in the university employer, the solution may be as unsatisfactory as the problem that it seeks to solve.[57]

Universities may make it an express term of the contract of employment of academic staff that copyright in teaching materials vests with the employer.

But it needs to be assessed whether it is appropriate that universities do so, bearing in mind the Australian Vice-Chancellor’s Committee caution upon universities being “acquisitive or assertive”[58] in relation to this issue.

Relevant as well is that there are constitutional issues to be addressed if universities attempt to assert ownership, or rights, by way of policies, amending the legislation under which they are constituted, or sub-ordinate legislation. The constitutional issue is beyond the scope of this article. Broadly, it is questionable whether universities have the power to introduce policies on these questions that rely for their effectiveness upon university statutes or sub-ordinate legislation, and questionable whether any amendment of a university statute or subordinate legislation would be effective. This is because the Copyright Act “covers the field” in relation to copyright, so that any state legislation, subordinate legislation, and policies that rely upon either, would be inconsistent with the Copyright Act pursuant to section 109 of the Constitution.[59]

8.1 Mobility of academic staff and university ownership

Academic staff are mobile, moving from one university employer to another.

If copyright in teaching materials written during the course of employment with a university vested with that university, this would cause hardship upon all universities.

In relation to most university courses there will not be any competitive advantage considerations that might operate to suggest that universities should retain strong control over the teaching materials.

Universities rely upon new members of staff to bring with them, when employment commences, their capability to teach. An integral part of this capability is their teaching material. It would be impractical, and a burden upon academic staff, if they were obliged to generate new, replacement teaching material each time a member of staff joined a new university employer.[60] It would also be an unreasonable financial burden, and a burden upon resources, for a university to have to generate new, replacement teaching material each time a member of staff joins a new university employer.

These burdens would operate in relation to all universities.

By allowing academic staff to use teaching materials at a new university employer, all universities benefit by not being burdened in these ways.

It is therefore impractical to assert that universities should own copyright subsisting in teaching materials.

8.2 Fragmentation of ownership

A way of addressing the matter that is consistent with a university owning copyright in teaching materials created by their staff, may be that universities license their staff, and subsequent university employers, upon terms that allow those staff, and the subsequent university employer, to use the teaching materials.

But this gives rise to the ownership of copyright in a work over time becoming fragmented, and the consequences of this need to be assessed.

Copyright in a specific work, over a period of say 10 years, during which an academic staff member has been employed by say, three different universities, and during which time the work has been refined, altered, and adapted, will be owned by each of those three universities.

The consequence is that there may be three owners of the copyright in parts of the same work. Yet, no owner, and the staff member, will be able to unequivocally identify which parts of the single work are owned by each owner. Conceivably, one university may not own any part, since over time, all alterations and adaptations made during the period of employment with that university may have been removed.

This will pose challenges to the staff member, and to the university, when seeking to put the teaching materials to some other use, such as publication as a textbook, or on line delivery. The challenges will be not only in relation to the warranties to a publisher, but as well whether, and to what extent, consent from multiple university owners can be obtained, and how royalties should accrue to each. More fundamentally, one university might be in a position to prevent publication, in book form, or on line, and this would be intolerable.[61]

The consequences of fragmentation of copyright ownership demonstrate that administering any form of university ownership of teaching materials will be problematic and inefficient without satisfactorily dealing with the needs of all concerned.

8.3 Commissioned works

A good case can however be made out that universities own copyright in works specifically commissioned by it, since this would allow it to control the use of the commissioned work by the academic staff member, in such a way as promoted, and did not put at risk, the university’s investment in the commissioned work, and the maintenance of the competitive advantage that it sought by having made the investment.

However, the practically of this needs to be assessed.

It is not the case that all commissioned works need to be protected in this way. Not all commissioned works are commissioned with the objective of securing a competitive advantage.

Often, if not invariably, commissioned works are derived, at least in part, from existing teaching materials. That being the case, it is not desirable that copyright vest in academic staff in relation to the teaching material, but vest with the university in relation to the commissioned work version derived from the teaching material.

The impact of past and existing university practices of indiscriminately requiring all commissioned authors to assign copyright need to be assessed.

The result is that copyright in commissioned works is owned by the university, including those parts which are derived from or reproduced from existing teaching materials. Notwithstanding the assignment, academic staff members continue to use those teaching materials. While the staff member continues to be employed by the university to which copyright was assigned, no infringement issue arises.

However, immediately upon the staff member using those teaching materials with a later university employer, both the staff member, and the later university employer are infringing the copyright that vests in the prior university employer, to which copyright had been assigned.

Infringement occurs when the teaching materials are performed in public, that is, by giving a lecture,[62] and occurs as well when notes, tutorial problems etc are copied and distributed to students.[63] This continues with each later university employer.

While it is the case that these infringements are occurring, and that no prior university employer which secured an assignment at the time of commissioning a work appears to be taking action in relation to the infringement, it is unsatisfactory that the state of affairs, by these practices occurring, is that numerous academic members of staff are acting contrary to the Copyright Act, and participating in infringing conduct, as well as most if not all universities.

8.4 Morale

Academic staff have been accustomed for many years to the ownership of copyright in teaching materials residing with them. As described above, there is a legal basis for this being the case.

The consequences upon staff morale of changing this needs to be considered. Academic staff may, not unexpectedly, feel exploited as a result of such a paradigm change in the academic environment and their working conditions.[64] Indeed, the Australian Vice-Chancellors’ Committee postulated that this might cause “debilitating dissatisfaction” amongst university staff.[65]

Such a deterioration in morale will impact adversely upon a university employer.

As well, a university that asserts ownership of copyright in teaching materials may find that it ceases to be a preferred employer, experiencing difficulty in attracting and retaining staff.[66]

8.5 Enforceability and unconscionability

A university employer could require express terms to be included in the employment contracts of its academic staff by which it asserted ownership of copyright in teaching material, and other works in which academics have traditionally understood that they own copyright. Or, a university could draw a policy to similar effect that is incorporated by reference into the employment contract.

However, doing so raises the issue of whether such a contract will be unconscionable.

Section 51AB of the Trade Practices Act 1974, and complementing state and territory legislation,[67] prohibits a corporation engaging in conduct in trade or commerce which is unconscionable. The employment of an employee is conduct which amounts to engaging in trade or commerce.[68] In deciding whether conduct is unconscionable, a court will have regard to all the circumstances, but section 51AB(2) lists a number of matters which the Act identifies might be considered, and the first is “the relative strengths of the bargaining positions of the corporation” and the other person.

While many academic staff will have a strong bargaining position in relation to their contracts of employment, this will not be the case for most, who will be expected to sign a standard form employment contract, without any negotiation of its substantive terms.

The ownership of copyright in academic staff having been the custom and usage for so long, both universities and academic staff having acted upon this being the case for so long, and there being unequal bargaining positions between an academic staff member and a university in relation to the terms of an employment contract, a persuasive case, it is thought, could be made out that such an express term in an employment contract, or such a policy incorporated by reference, is liable to be held to be unconscionable.

A court coming to that conclusion can impose fines, order the payment of damages, and make remedial orders,[69] including declaring that such a provision in the contract is void.[70]

Proceeding to claim copyright in works created by academic staff in express terms in an employment contract, or in a policy incorporated by reference, might therefore be a perilous endeavour on the part of universities.

9. Solving the dilemma

The dilemma however needs to solved, and the solution needs to be an uncomplicated one.

The solution needs also to properly balance the interests of all concerned.

Universities should be able to:

1. publish teaching materials on line

2. use teaching materials developed by a staff member, including after that staff member ceases to be employed

3. maintain their competitive advantage in relation to teaching materials when they are specifically commissioned with that objective in mind

4. reduce their fee obligations to Copyright Agency Limited in relation to the photocopying of works produced by their own employees and former employees.

At the same time, academic staff members:

1. should continue to be able to publish teaching materials in the form of textbooks, without hindrance

2. should be able to publish scholarly papers, again without hindrance

3. should be able to use teaching materials with subsequent university employers, without impediment, but not necessarily when they have been commissioned with the achievement of a competitive advantage in mind.

A model that could arguably work is one reflected in section 35(4) of the Copyright Act 1968 in relation to journalists. Where an employed journalist writes a work, copyright for certain uses vests in the employer, and copyright in relation to other uses vests with the journalist.

In such a model, a university might have copyright vested in it for its own educational use, and an academic staff member can have copyright vested in the staff member for other uses, such as publication.

But this model can be problematic. Over time, this model suffers from the same fragmentation of ownership consequences described above.

What this model does demonstrate however, is that any model by which copyright vests with a university, will be bound to suffer from the same fragmentation of ownership consequences described above.

A model that achieves all of the required objectives, and which of necessity avoids copyright vesting in a university, is one whereby:

1. academic staff continue to own the copyright subsisting in teaching materials, and as a result are able to publish, and to use the materials with subsequent employers

2. each university employer is granted a non exclusive license to use teaching materials:

(a) brought with the academic staff member upon employment commencing, and

(b) developed during employment, during the period of employment, and indefinitely, after employment ceases

3. commissioned works, where there is no competitive advantage objective to be met, would be treated in the same way as any other teaching materials, and

4. commissioned works, where there is a competitive advantage objective to be met, for example, in relation to on line delivery of courses, may be subject to assignment to the university, or an exclusive license in relation to the particular use to which the commissioned work is to be put, in that way achieving the competitive advantage objective.

10. Conclusion

The resolution of this dilemma about the ownership of copyright in teaching materials at universities is increasingly becoming pressing.

Resolving the dilemma by statutory intervention, and amending the Copyright Act 1968 is attractive. However, that process might take too long. That is not to say however that this solution should not be sought.

But a more immediate solution for universities is required.

An immediate solution might be for all universities to ensure that the terms of their academic staff employment contracts are framed in such a way as implements the same practical, uncomplicated solution proposed here, to do so uniformly and consistently, but leaving commissioned works, where competitive advantage is sought to be achieved, to be dealt with separately, in the contract commissioning the work.

As universities increasingly seek to minimise their obligations to Copyright Agency Limited, and more and more are looking to on line modes of delivery of courses, the lack of resolution of this dilemma will operate to impede them, and that is not in interests of anyone in the academic community, universities, their academic staff, and their students.


[*] Biographical note: Philip Mendes is a lawyer in Brisbane, Australia. He specialises in technology law and technology transactions. His clients include the technology transfer offices and companies of five Australian universities. Email: p.mendes@jeeves.com.au

[1] Australian Vice-Chancellor’s Committee “University Research: Some Issues” (1996) p 1.

[2] Australian Copyright Council “Teachers & Academics as Creators: Current Issues” (November 1996), Bulletin 91 at para 3.2.

[3] L Wiseman “Copyright in Universities” (1999) Occasional Paper Series 99E, Higher Education Division, Department of Education, Training and Youth Affairs, para 3.1.

[4] Australian Vice-Chancellors’ Committee “Exploiting Information Technology in Higher Education: An Issues Paper” (1996).

[5] Australian Vice-Chancellors’ Committee “Exploiting Information Technology in Higher Education: An Issues Paper” (1996) at para 115.

[6] Australian Vice-Chancellors’ Committee “Exploiting Information Technology in Higher Education: An Issues Paper” (1996) at para 141.

[7] Professor Gus Guthrie, Vice Chancellor of the University of Technology, Sydney, in the editorial “Virtual Unis” Sydney Morning Herald 18 September 1995, p 12, quoted in Australian Copyright Council “Teachers & Academics as Creators: Current Issues” (November 1996), Bulletin 91 at para 3.6.

[8] L Wiseman “Trade in Education: The role of Copyright” (1998) 16 Prometheus 331.

[9] Section 35(6) Copyright Act 1968 (Cth); s.19(3) Designs Act 1906 (Cth); s.3(1)(c) Plant Breeders Rights Act 1994 (Cth); s.16(2) Circuit Layouts Act 1989 (Cth).

[10] Sterling Engineering Co Ltd v. Patchet [1955] AC 534.

[11] S Ricketson “The Law of Intellectual Property” The Law Book Company Limited, 1984, para 43.21f.

[12] S Ricketson “The Law of Intellectual Property” The Law Book Company Limited, 1984, para 32.11.

[13] A Monotti “Allocating the Rights in Intellectual Property in Australian Universities: An Overview of Current Practices” (1999) 27 FLR * at * *[1].

[14] “Professors, it is suspected, would uniformly react with indignation that a university might assert copyright ownership over their creations” W A Rome “Scholarly Writings in the University Setting: Changes in the Works and on the Books” (1985) 35 Copyright Law Symposium 41 at f 76, quoted in Australian Copyright Council “Teachers & Academics as Creators: Current Issues” (November 1996), Bulletin 91 at para 6.

[15] W R Cornish “Rights in University Innovations: The Herschel Smith Lecture for 1991” [1992] 1 EIPR 13 at 15.

[16] A Monotti “Who Owns My research and Teaching Materials – My University or Me ? [1997] SydLawRw 24; (1997) 19 Syd LR 425 at 426.

[17] J Wells “University Staff & Moral Rights” (1994) Copyright Reporter Vol 12 No 1.

[18] In Williams v. Weisser 78 Cal. Rptr 542, 163 USPQ (BNA) 42 (Cal. Ct. App., 2d Dist 1969) at p.546 the court remarked that “professors are a peripatetic lot, moving from campus to campus” as one justification for the rule that academic staff own copyright in their work, and not their university employer, quoted in M Meyer “To Promote the Progress of Science and Useful Arts: The Protection of and Rights in Scientific Research” (1998) 39 IDEA: J.L. & Tech 1 at p 8.

[19] Australian Vice Chancellor’s Committee “Ownership of Intellectual Property in Universities – A Discussion Paper” (1993), paragraph 3.2.

[20] Herbert Morris Ltd v. Saxelby [1916] AC 688; Bacchus Marsh Concentrated Milk Co Ltd v. Joseph Nathan & Co Lts [1919] HCA 18; (1919) 26 CLR 410; Ansell Rubber Co Pty Limited v. Allied Rubber Industries Pty Limited [1967] VicRp 7; [1967] VR 37

[21] A Monotti “Ownership of Copyright in Traditional Literary Works within Universities” (1994) 22 FLR 340 at 354.

[22] [1952] 1 TLR 101.

[23] [1952] 1 TLR 101 at 104-105.

[24] This is in itself a contentious issue, since publishers of scholarly journals insist upon assignment of all copyright rights, including the right to publish in multimedia format, or otherwise electronically, when only publication in book form has traditionally been the case. See L N Gasaway “Scholarly Publication and Copyright in Networked Electronic Publishing” (1995) Library Trends Spring 1995, 679 at 683f.

[25] Section 31(1)(a)(vi) Copyright Act 1968.

[26] A Monotti “Ownership of Copyright in Traditional Literary Works within Universities” (1994) 22 FLR 340 at 341.

[27] J McCalman “Melbourne university and Copyright” (1996) 12:1 Liberty 55.

[28] Australian Vice Chancellor’s Committee “Ownership of Intellectual Property in Universities – A Discussion Paper” (1993); and Australian Vice Chancellor’s Committee “Ownership of Intellectual Property in Universities – A Discussion Paper” (1995).

[29] A Monotti “Allocating the Rights in Intellectual Property in Australian Universities: An Overview of Current Practices” (1999) 27 FLR * at * *[2].

[30] Les Affreteurs Reunis Societe Anonyme v. Walford [1919] AC 801.

[31] Australian Vice Chancellor’s Committee “Ownership of Intellectual Property in Universities – A Discussion Paper” (1993), paragraph 3.2.

[32] Australian Vice Chancellor’s Committee “Ownership of Intellectual Property in Universities – A Discussion Paper” (1995), p.23.

[33] [1952] 1 TLR 101.

[34] [1952] 1 TLR 101 at 106-107.

[35] [1991] FSR 14.

[36] [1991] FSR 14 at 26.

[37] [1991] FSR 14 at 27.

[38] A Monotti “Ownership of Copyright in Traditional Literary Works within Universities” (1994) 22 FLR 340 at 347f.

[39] Section 35(6), Copyright Act 1968.

[40] A Monotti “Ownership of Copyright in Traditional Literary Works within Universities” (1994) 22 FLR 340 at 347-348.

[41] A Monotti “Ownership of Copyright in Traditional Literary Works within Universities” (1994) 22 FLR 340 at 349.

[42] [1952] 1 TLR 101 .

[43] [1952] 1 TLR 101 at 111.

[44] L N Gasaway “Scholarly Publication and Copyright in Networked Electronic Publishing” (1995) Library Trends Spring 1995, 679 at 684.

[45] See section 101 of the United States Code, Title 17 – Copyrights 1976 and the definition of “work for hire”.

[46] Section 11(2) Copyright, Designs and Patents Act 1988 (UK).

[47] D L Burk “Ownership of Electronic Course Materials in Higher Education” (1997) Cause/Effect Fall 1997, 13 at p 15.

[48] M Meyer “To Promote the Progress of Science and Useful Arts: The Protection of and Rights in Scientific Research” (1998) 39 IDEA: J.L. & Tech 1 at p 6f.

[49] Weinstein v. University of Illinois [1987] USCA7 195; 811 F.2d 1091, 1094 (7th Cir. 1987).

[50] R C Dreyfys “The Creative Employee and the Copyright Act of 1976” (1987) 54 U. Chi. L. Rev. 590 at 595.

[51] Williams v. Weisser 78 Cal. Rptr 542, (Cal. Ct. App., 2d Dist 1969).

[52] T F Simon “Faculty Writings: Are They ‘Works made for Hire’ under the 1976 Copyright Act? (1982-83) 9 IDEA: J.L. & Tech 485 at 488.

[53] Hays v. Sony Corp. of America, [1988] USCA7 409; 847 F. 2d 412, (7th Cir. 1988) at 416.

[54] Although the matter was well settled in case law based on the US Copyright Act of 1909, there being a dearth of case law based on the US Copyright Act of 1976, the matter is not without controversy: M Meyer “To Promote the Progress of Science and Useful Arts: The Protection of and Rights in Scientific Research” (1998) 39 IDEA: J.L. & Tech 1.

[55] Australian Vice-Chancellors’ Committee “Exploiting Information Technology in Higher Education: An Issues Paper” (1996) para 10.

[56] D L Burk “Ownership of Electronic Course Materials in Higher Education” (1997) Cause/Effect Fall 1997, 13 at p 15.

[57] A Monotti “Ownership of Copyright in Traditional Literary Works within Universities” (1994) 22 FLR 340 at 342.

[58] Australian Vice Chancellor’s Committee “Ownership of Intellectual Property in Universities – A Discussion Paper” (1993), paragraph 3.1.

[59] A Monotti “Who Owns My research and Teaching Materials – My University or Me ? [1997] SydLawRw 24; (1997) 19 Syd LR 425 at 426.

[60] Williams v. Weisser 78 Cal. Rptr 542, 163 USPQ (BNA) 42 (Cal. Ct. App., 2d Dist 1969) at p.546.

[61] W R Cornish “Rights in University Innovations: The Herschel Smith Lecture for 1991” [1992] 1 EIPR 13 at 15.

[62] Section 31(1)(a)(iii) Copyright Act 1968, subject to section 45 of the Copyright Act which places limitations upon the exclusive right to perform.

[63] Section 31(1)(a)(i) Copyright Act 1968.

[64] A Monotti “Ownership of Copyright in Traditional Literary Works within Universities” (1994) 22 FLR 340 at 367.

[65] Australian Vice-Chancellors’ Committee “Ownership of Intellectual Property in Universities – A Discussion Paper” (1993) at p8.

[66] A Monotti “Ownership of Copyright in Traditional Literary Works within Universities” (1994) 22 FLR 340 at 374.

[67] Section 43 Fair Trading Act 1987 (NSW); s.8 Fair Trading Act 1999 (Vic); s.39 Fair Trading Act 1989 (Qld); s.57 Fair Trading Act 1987 (SA); s.15 Fair Trading Act 1990 (Tas); s.11 Fair Trading Act 1987 (WA); s.13 Fair Trading Act 1992 (ACT); s.43 Consumer Affairs and Fair Trading Act (NT).

[68] Patrick v. Steel Mains Pty Limited (1987) 77 ALR 133.

[69] Sections 79, 82, and 87(1A) Trade Practices Act 1974.

[70] Section 87(2)(a) Trade Practices Act 1974.


AustLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.austlii.edu.au/au/journals/JlLawInfoSci/2000/14.html