When Professors Create Software, Do They Own It, or Do Their Colleges?

Disputes over the issue are likely to arise soon in the courts and contract negotiations

By SCOTT CARLSON

Trotter Hardy moonlights as an Internet entrepreneur. He stays up late every night, reading,

ALSO SEE: Colloquy Live: Join a live discussion with Ray K. Harris, a patent and copyright lawyer, about the debate over who owns faculty-created software on Thursday, July 20 at 1 p.m. Eastern time

fixing, and tapping out new code on a software program that he hopes will make him rich someday.

The College of William and Mary, where Mr. Hardy spends his days as a professor, won't get a cut, he says. He has taken precautions to make sure that DATES!, his World Wide Web-based schedule planner, remains his property alone: He has done all the programming himself. He is careful not to use college resources; he bought his own computer and pays for his own Internet access for the project.

Lastly, Mr. Hardy is a professor of law, not computer science. That, he says, is an important point. Mr. Hardy believes that the software he developed probably wouldn't be considered "work for hire" or "part of the scope of his employment," legal terms for situations in which colleges can sometimes claim rights to what faculty members create.

In the past few years, as the invention of new software has moved from labs to laptops, more professors from various disciplines have been trying their hands at developing potentially salable programs. This trend, along with the information-technology gold rush, has raised urgent new questions about faculty-created software for both professors and technology-transfer officials, who market and license new technology at colleges. Is software traditional scholarly publishing, and thus owned by the professor? Or is it more like an invention, a work for hire, and thus owned by the university?

Similar legal questions have emerged about online course notes over the past few years. Course notes and books are usually owned by faculty members, but software can blur the lines between traditional coursework and new technology. If a professor writes a chemistry manual and puts it on a CD-ROM with audio and video, Internet links, and software that automatically generates test questions, is it more like a textbook or more like a computer program? According to some university policies, the answer to that question can be key to determining who owns it.

Mr. Hardy points out that copyright law says that if a piece of software, an article, or another creative work is part of the scope of employment of a faculty member, it could be considered a work for hire and would then belong to the faculty member's employer. "What's unclear is, what's the scope of your employment?" he says. "Every university needs to write a comprehensive policy."

"We're in a transition period between a time when no faculty member was expected to write software to a time in the future when it's likely that faculty will be expected to produce software in the form of course materials and teaching aids," he adds. "And if it's expected, then it will be more like everything else that professors do.

"Right now, no one expects faculty to write software, but they are beginning to. So it's pretty uncertain, and that makes it all the more important to have a policy."

Mr. Hardy, who was a computer programmer before he went into law, has written some software for the law school at William and Mary. Based on what he learned on those projects, he's writing DATES!, which he'll try to market commercially. "I've done the work by and large at home, although it's hard to separate that sort of thing," he says. "I've kept that pretty clear, because I'm nervous about it. But it's hard to avoid using some university resources. If I get an e-mail about my software and I'm in my office, it comes to me there." He says he's gotten into the practice of deleting those e-mail messages at work and reading them at home.

Ray K. Harris, a lawyer who handles patent and copyright cases that emphasize technology, says, "The issues have migrated from the engineering department, where people are used to looking for invention disclosures and tech-transfer opportunities, into all the departments of the university." He says there is some ambiguity about how software should be treated as intellectual property.

Software is protected in a few different ways, he says, but it is mainly subject to copyright. Colleges almost always assert ownership on patentable software, but patents on software are comparatively rare. To be eligible for a patent, the software "has to be novel and not obvious," Mr. Harris says. It has to do something completely new, and it has to do it in a way that wouldn't be apparent to someone trained in computer programming.

With copyright, on the other hand, works are protected once they are created. Traditionally, scholars have owned the copyrights on their scholarly works, such as books, course notes, and articles.

"Because software is subject to copyright protection, history would say that should belong to the scholar, just like any other literary work," and some scholars have assumed that software they create is theirs, Mr. Harris says. "The economic reality is, these software developments are sometimes extremely valuable." As colleges adopt policies to deal with copyright and patent ownership, he says, some claim ownership on these types of software and some don't. Ultimately, the policy dictates ownership at an institution.

Copyright ownership is also based on authorship. That's tricky when it applies to software, Mr. Harris says. A professor might have a great idea for a program, but if he or she hires a programmer to create the software, ownership could rest with the person who wrote the code. Mr. Hardy says he has seen such cases. "If you think about it and you're smart, you'll set up an agreement ahead of time" that will allow you to retain ownership, he says.

If the college doesn't have an intellectual-property policy, or if the policy doesn't deal with software specifically, the default is the U.S. Copyright Act, which gives ownership to employers if the work is within the scope of a professor's employment.

"If a professor creates a piece of software that helps him run his VCR at home more efficiently, that's probably not going to be owned by the university. But if the same professor invents something that helps him grade his papers, which is part of his job obligations, then there's a different argument about whether that is owned by the university," Mr. Harris says.

"There's nothing out there that says whether or not that scholarly-works exception would apply to software." If a professor develops software that falls within his or her scope of employment, the institution might claim it under the work-for-hire doctrine; the professor might say it should be subject to the scholarly-works exception.

"That's where you run into disputes, so that's why you hope the policy itself is clear," Mr. Harris says.

The college might also have a claim on the software if it was created with the help of college-owned equipment, if it was an assigned project, or if it was produced with the help of a grant that was awarded through the college.

The grant provision tripped up Kent E. Portney, a political-science professor at Tufts University. Mr. Portney developed a courtroom-simulation program with a $200,000 grant that was processed through the university. Because of the grant, administrators at Tufts have said the university should own the project, he says. Over the past four years, he has had "ongoing discussions" with university officials about the issue.

"My argument was that it's perfectly analogous to what I would do with a book," he says. "Just by virtue of the fact that it takes electronic form or takes advantage of digital media doesn't mean that the university should be able to assert copyright."

His main concern is that the university would not develop the software in the best interests of the business. "The university would siphon off many of the revenues -- revenues that I would like to see put into the enterprise."

For now, he says he has an "unwritten promise" that the university won't assert copyright on the program. "But if the university decided to do so, I don't think there's much I could do about it."

The experience has taught him how to protect his projects in the future. "I would work outside of the university," he says.

Mr. Portney says that officials who were most involved in the negotiations have left the university. Tufts officials who handle technology issues say they have not analyzed the case closely.

Policies can vary widely from college to college. Some, including the University of Washington and Stanford University, assert ownership of patentable software, but they don't touch copyrightable software unless it was produced through a grant-funded research program, assigned to the professor, or produced through substantial use of university resources, to name a few scenarios. In most cases, the universities get some rights to software if they help professors market the product.

At Carnegie Mellon University, a professor who develops copyrightable software with the help of university facilities owns the software only if it is "educational courseware." The university has certain rights to the software in other situations.

James A. Severson, who handles technology-transfer issues at Cornell University and is president of the Association of University Technology Managers, says he doesn't know of many colleges that are revising their intellectual-property policies to cover software. "But because software is handled differently and marketed differently, it does put strains on our current policies," he says, adding that software development wasn't a major consideration when many existing policies were drafted. "Some policies don't mention software at all. Others only mention it in passing."

The American Association of University Professors has also weighed in. Except in cases where a university has assigned the work or provided extraordinary assistance, "our basic position is that the faculty should be presumed to own the copyright of the work they create," says Mark F. Smith, the group's associate director of government relations.

"I think a lot of universities are revisiting their policies," says Mr. Smith, who is a member of the association's special committee on distance education and intellectual property. He says that this summer, several association members are reviewing policy revisions or are trying to influence ownership issues in union contracts at their respective colleges.

"It's a very hot issue," he says.

The College of William and Mary is revising its intellectual-property policy this summer, and the final form will mention software explicitly, says James R. Golden, director of economic development and corporate relations. Mr. Golden says the revision was a response to the rise of technology development at the college, which has traditionally been strongest in the liberal arts. Under the current policy, professors own their intellectual property unless it was specifically requested by the university or unless it was produced with significant help from the university.

Undoubtedly, one of the first interested readers of the new policy will be Mr. Hardy, who helped draft versions of the old policy. He expects software ownership to be a growing issue at William and Mary.

He doesn't know of any disputes at William and Mary right now, "but we're in an early stage. The college isn't asking people to develop materials, but there are informal pressures to look up to date and modern, and to show that you're at least looking at distance-learning possibilities."

He's told the provost at William and Mary about DATES!, his software, but he hasn't heard anything in return. "There's no money in it now," he says, "but I don't know what they'd do if I started making a million dollars."

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