THE VALIDITY OF SCHOOL POLICIES

IVAN HOFFMAN, B.A., J.D.



        Given the huge rise in interest in both corporate training and distance education, schools and their faculty are beginning to dust off what often amounts to decades old “policies” about who owns what rights to course work.  Indeed, many schools probably do not even have any policies at all, at least none written, and thus the issues related to rights and revenue derived from those rights may have simply never been addressed.  Since corporate training materials are often based on academic curricula, the issues presented by these questions apply to both distanced learning and corporate training repurposed materials.

        Let me then address the fundamental legal issues regarding these policies.

Copyright Law Issues

        The foundational issues relate to questions that concern the nature of the relationship between school and faculty.  I have written about these issues extensively in “Online Education Rights: Relationships Between Faculty And Institution” and “Who Owns the Rights to the Material?” and you should read the full articles.  However, let me summarize these issues so that the within article can be more integrated.

        If the faculty is a bona fide employee and the work created by that faculty is within the course and scope of his or her employment, then the presumption is that the school owns all rights to that material including all rights to fully exploit it.  This is because the work has been created as a “work made for hire,” as that term is defined in the United States copyright law.  School policies, on the other hand, can vary the legal relationship provided that the policies are implemented in a legally effective way, meaning that any change in the work made for hire rules are embodied in a writing and signed by the parties.  See the definitions below.

        On the other hand, if the faculty is not a bona fide employee, say for example the faculty is adjunct or part time and none of the qualifying requirements for employee status are present, then the presumption is that the faculty has created that work as an independent contractor and not as a work made for hire, whether or not there is a school policy in place.

        The United States copyright law provides as follows:

Ҥ 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 co-owner 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.”

        Under section 101 of that same law, this is the definition of a “work made for hire”:
A “work made for hire” is —

(1) a work prepared by an employee within the scope of his or her employment; or

(2) a work specially ordered or commissioned for use as a contribution to a collective work, as a part of a motion picture or other audiovisual work, as a translation, as a supplementary work, as a compilation, as an instructional text, as a test, as answer material for a test, or as an atlas, if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire. For the purpose of the foregoing sentence, a “supplementary work” is a work prepared for publication as a secondary adjunct to a work by another author for the purpose of introducing, concluding, illustrating, explaining, revising, commenting upon, or assisting in the use of the other work, such as forewords, afterwords, pictorial illustrations, maps, charts, tables, editorial notes, musical arrangements, answer material for tests, bibliographies, appendixes, and indexes, and an “instructional text” is a literary, pictorial, or graphic work prepared for publication and with the purpose of use in systematic instructional activities. [emphasis added.  See the section below “Timing of the Transfer.”]

        The copyright law then goes on to say:
Ҥ 201 (d) Transfer of Ownership.-

(1) The ownership of a copyright may be transferred in whole or in part by any means of conveyance or by operation of law, and may be bequeathed by will or pass as personal property by the applicable laws of intestate succession.”

        And:
Ҥ 204. Execution of transfers of copyright ownership

          (a) A transfer of copyright ownership, other than by operation of law, is not valid unless an instrument of conveyance, or a note or memorandum of the transfer, is in writing and signed by the owner of the rights conveyed or such owner's duly authorized agent.”

        The legal effect of all this is that if the initial ownership of the work belongs to the independent contractor faculty, the only way that a transfer of exclusive rights to the school can be accomplished is through the means of a written and signed agreement transferring some or all of those rights to the school.

        Thus, without more, the mere existence of a school policy proclaiming the status of rights ownership would not be legally sufficient to transfer rights to the school.  There must be some legally effective writing that accomplishes this transfer.  Whether or not a separately signed memorandum whereby faculty agrees to the terms of the school policy is legally sufficient to achieve this end is unclear but would be dependent upon how a court interpreted the phrase “instrument of conveyance, or a note or memorandum of the transfer.” See the discussion below.

        And clearly if there is no school policy in effect, at least none in writing, then the school is essentially locked out of the rights questions except for some perhaps elusive, non-exclusive rights to use the course work but probably only as part of the course itself in a classroom setting.  The school would likely have no rights to license that content for other purposes.

Timing of the Transfer

        Here is a further wrinkle.  Example: a school adopts an “after the fact” policy to cover not only future material developed by independent contractor faculty but past materials as well.  What is the legal validity of this kind of retroactive adoption?

        Despite the fact that this situation probably arises quite frequently, there is a scant body of law in response to these questions.  And what law there is is in conflict and the United States Supreme Court has yet to hear a case to resolve that conflict.

        Let me use much of the article “Playboy and the Work Made For Hire Agreement” from my site.

        On the one hand, there is the case of Playboy vs. Dumas, 53 F.3rd 549 (2d. Cir. 1995) in which the litigants were fighting over the rights to the work of the artist Nagel.  In that matter, the artist had done many drawings and paintings that were published in the magazine.  This was all done without a formal agreement, the only indication as to the rights transferred being the legends on various checks, all of which were endorsed after the works had been delivered.

        In that case the Court held that:

“We therefore find that the 1976 Act requires that the parties agree before the creation of the work that it will be a work made for hire. We are not convinced, however, that the actual writing memorializing the agreement must be executed before the creation of the work.”
        Applied here, this would seem to indicate that the faculty and the school had to both understand, before the work was commenced, that the work was going to be done as a work made for hire for the school.  However, that Court indicated that the actual execution of the written agreement embodying that understanding did not have to take place until a point after the work was commenced as long as that writing embodied the original understanding.

        But in Schiller & Schmidt, Inc. v. Nordisco Corp., 969 F.2d 410 (7th Cir.1992), that Court held that in order to be a valid work made for hire agreement the parties not only must have agreed before the work was commenced that the transfer of rights would be as a work made for hire but, more importantly, the actual agreement must have been signed by the parties prior to work having been even commenced.

        Thus, in my example above, were the situation to be determined under the law as set forth in the Schiller case, the results might be entirely different than had the Playboy rule been applied.  Which law applies depends primarily on under which law the contract is to be interpreted.

        As I indicated above, the copyright statute (17 USC § 101) specifically requires that “the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire.”  This would seem, from a grammatical standpoint, to  require that this writing be executed before the work was done but as you can see, such is not necessarily the law in the United States.

        Therefore, the issue is presented as to exactly when the agreement defining the work made for hire must be entered into.  If the work has already been commenced before the agreement is signed, in certain parts of the United States the parties run the risk of having the agreement be deemed not a work made for hire but simply some form of license to use the work in a limited capacity.

The Sufficiency Of The Writing

        In Playboy, the court also discussed what is or is not a sufficient “writing” in order to qualify as a work made for hire agreement.

        Often it appears that the law requires that certain “magic words” be used in order to achieve a given result.  The rules regarding work made for hire agreements are just such a situation.  Without the use of the appropriate “incantation,” the agreement runs the risk of failing to achieve its goals and the parties are left with nothing.

        In the Playboy case, there was no formal contract and the only writings that existed relative to the claims of rights ownership were a series of checks that bore various legends at various times.  You can read those legends in the full article.  For the purposes of this article however, the issue is whether the recitation in some separate writing, signed by the faculty, that the faculty accepts the provisions of the school policy, is a valid transfer of rights to the work under these cases and the statute.

        Therefore, we can conclude from the Playboy decision that any writing must specifically mention the words “work made for hire” and reflect the express agreement that the parties intend the writing to be a transfer of rights under the work made for hire doctrine.  In other words, there are 2 issues: what was the intention of the parties at the time the work was commenced and is there a sufficient writing to satisfy the language of the statute.

“Specially Ordered and Commissioned”

        There were other issues covered by the Playboy Court that also are required to determine the validity of the work made for hire agreement.  One of those issues was the meaning of the term “specially ordered and commissioned,” another specific set of magic words that are required by the statute.

        The Court found that that term requires that the party requesting the work, in this instance Playboy or in the instance in terms of this article, the school, had to have expressly asked for the work to be done.  The work had to be done under the direction and supervision of the party requesting the work and the request by that party had to be the “motivating factor” in having the work done.  In other words, would the work have been created except for the request by the commissioning party, in this case the school?  And how often is that the circumstance?

        Thus, you cannot have a valid work made for hire agreement that seeks to acquire a work that had already been fully created before the relationship between the commissioning party and the creator was established.  This, because the work was not created at the specific instance and request of the commissioning party.

        These are all questions of fact that can only be resolved on a case by case basis.

Conclusion

        Because this area of distance education and corporate training is very new, there are and will likely remain significant legal issues that must be addressed by both school and faculty.  It is best that neither party rely on antiquated policies and that it is in the best interest of both parties to enter into valid and legally sufficient written agreements so that both parties may clarify their rights and in turn be in a position to profit from the exploitation of the material.  Playing “ostrich” is simply not a viable approach.

Copyright © 2000 Ivan Hoffman.  All Rights Reserved.

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This article is not legal advice and is not intended as legal advice.  This article is intended to provide only general, non-specific legal information.  This article is not intended to cover all the issues related to the topic discussed.  The specific facts that apply to your matter may make the outcome different than would be anticipated by you.  This article is based on United States law.  You should consult with an attorney familiar with the issues and the laws of your country.  This article does not create any attorney client relationship and is not a solicitation.

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No portion of this article may be copied, retransmitted, reposted, duplicated or otherwise used without the express written approval of the author.


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