Intellectual Property


Intellectual property includes literary or artistic works, inventions, business methods, industrial processes, logos, and product designs. Nearly every activity engaged in by students, staff, and faculty in colleges and universities involves the production or use of intellectual property. Among the activities involving intellectual property are research projects, books, journal articles, musical compositions, lesson plans, student assignments, speeches and lectures, videos, university Web sites, newspapers, reports, concerts, and plays. Most items used in education are legally protected intellectual property, often owned by someone other than the user. All members of university communities are permitted to use protected intellectual property, but they must engage in “fair use” or get advanced permission of the owners. Accordingly, faculty, staff, and students must be careful not to use intellectual property unlawfully, or they risk having to pay damages, fines, and court costs. Items that are in the public domain are, of course, free to use without cost to the users or consent of the owners. This entry examines the variety of legal issues associated with the topic of intellectual property.
Legal issues relating to intellectual property in education involve both the creation and use of intellectual works. Intellectual property law balances the rights of individuals to make, own, distribute, and profit from their creations with the rights of the public to make use of knowledge and inventions. Examples of the law of intellectual property in education include copyright and patent protection for the products of teaching and scholarship, copyright and patent infringement for improper use of protected works, and trademark licensing and protection of names, logos, symbols, and pictures used to identify colleges and universities. Readers are strongly encouraged to consult intellectual property policies enacted by individual colleges and universities for details on how particular institutions work with copyrights, patents, and trademarks.

Copyright


Copyrights are intangible rights granted through the federal Copyright Act to authors or creators of original artistic or literary works that can be fixed in tangible means of expression such as hard copies, electronic files, videos, or audio recordings. Copyright law protects literary, musical, dramatic, choreographic, pictorial, sculptural, and architectural works as well as motion pictures and sound recordings. Each copyrightable work has a variety of “copyrights,” including the exclusive rights to make copies of the work, distribute the work, prepare “derivative works,” and perform or display the work publicly.
With some important exceptions, two of which are highlighted here, teachers and students may not use the copyrighted works of others without permission of the copyright holders. The first exception, fair use, is the most important and most often cited. Under the Copyright Act, the fair use of a copyrighted work, “for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright.” If a use is a fair use, then the user need not obtain advance consent of the copyright holder. Evaluating whether a use is fair requires the application of four factors: purpose and character of the use; nature of the copyrighted work; amount and substantiality of the portion used in relation to the work as a whole; and effect of the use on the potential market for or value of the work. The second exception is also fairly common in educational institutions: It is not an infringement for faculty members and students to perform or display copyrighted works in the course of face-to-face or online/distance education teaching activities. For electronic displays or performances, institutions must comply with additional requirements.
Initially, ownership in a work’s copyrights vests in the authors or creators of the work. However, educational institutions may deal with “works for hire” that are created by employees within the scope of their employment. In such instances, employers become the copyright holders. Daniel and Pauken (2005, 2008) maintain that there is a solid legal argument for a “teacher exception” to the work-for-hire doctrine. Under this exception, it can be argued that because college and university administrative officials do not directly supervise their faculty in the preparation of academic books and articles and teaching materials, these faculty members’ work does not fall within the definition of work for hire under this principle.
Remedies available to successful copyright infringement claims include injunctive relief, impoundment or disposal of infringing works, monetary damages in the form of actual damages and lost profits, statutory damages as provided by the Copyright Act and decided by the courts, and attorney fees.
Copyrightable works created today are protected from the time that works are fixed in a tangible medium of expression until 70 years after the death of the author/creator. Once a copyright term expires, the work goes into the public domain.

Patents


Under federal patent law, patents for “novel, useful, and nonobvious” inventions are granted for a nonrenewable 20-year term, granting inventors the right to exclude others from making, using, or selling their inventions during that time. At the expiration of the terms, inventions enter the public domain.
In applications for patents, applicants must provide a “specification” describing how the invention works and offer “claims” stating what is new, useful, and nonobvious that makes their inventions patentable. When multiple applications, including recently granted patents, make identical or nearly identical claims, staff at the U.S. Patent Office must conduct investigations to determine which applicants first conceived and reduced the patents to practice. Effectively, a patent can be thought of as belonging to the winner of a race, the one who first brings the invention from conception to patent application and then to practice.
Patentees have the right, just as they would with any personal property, to assign property rights to other persons or entities, including the rights to make, sell, and use patented articles. Assigning these rights, in whole or in part, is popular in colleges and universities as educational institutions draft and enforce intellectual property policies. For example, a university policy may require the taking of 50% of the net income from the invention of a faculty researcher or may adopt a sliding scale where the university takes various percentages of the income depending on the dollar amount.
Patent litigation in higher education often involves the relationships between faculty members, student researchers, and their institutions. An important lesson to be learned here is that all faculty members, and student employees who engage in the production of intellectual property as part of their employment, sign on to their universities’ intellectual property policies when they sign their contracts. In a case involving alleged violations of university patent policy, a faculty member sued Yale University for conversion, theft, tortious interference with business relationships, and violation of Connecticut unfair trade laws (Fenn v. Yale University, 2006). Yale counterclaimed with an action for breach of contract. The suit stemmed from an invention developed while the faculty member worked at Yale. Under Yale policy, all researchers were required to notify Yale first of any invention. Yale then worked with the University’s Office of Cooperative Research to carry out the patent and commercialization processes. Pursuant to university policy, unless otherwise agreed between the parties, Yale gained ownership of the inventions, the Office of Cooperative Research received the titles to the patents, and the inventors were able to share in the licensing royalties.
When the faculty member developed his invention in mass spectrometry, he did not give the university first notice. Instead, he presented it in a paper at a national convention. Further, the faculty member discouraged university officials from pursuing the patent and significantly downplayed the commercial value of the invention. All the while, the faculty member applied for and received the patent with the support of private companies with whom he was to license the invention. After the federal trial court in Connecticut rejected the faculty member’s claims, ruling in favor of Yale on its breach of contract counterclaim, the Second Circuit affirmed that the university, not the plaintiff, owned the patent.
Under Section 154 of the Patent Act, patentees have “the right to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States.” In patent infringement cases, defendants may argue that plaintiffs’ patents were unwarranted for such reasons as they failed to meet the novelty, utility, or nonobviousness requirements. Further, there is no defense for good faith or ignorance of the patent. Patent owners are required to mark the product with a notice of patent or provide actual notice of the patent to the infringer. Still, defendants may produce evidence that, acting in good faith, they put the products or process into practice at least one year in advance of the patent owner’s application.

Trademarks


Under the federal Lanham Act, a “trademark” includes “any word, name, symbol, or device, or any combination thereof used . . . to identify and distinguish [a person’s] goods . . . from those manufactured or sold by others and to indicate the source of the goods” (15 U.S.C. § 1127). Trademarks are also protected under state law. The intent of trademark law is to make
actionable the deceptive and misleading use of marks in commerce; to protect persons engaged in such commerce against unfair competition; [and] to prevent fraud and deception in such commerce by the use of reproductions, copies, counterfeits, or colorable imitations of registered marks.
The primary requirement for trademarks is distinctiveness, to identify the goods and services and avoid confusion or deception. Trademark law protects trademark owners from losing their markets. Key factors are analyzed in trademark infringement claims: the degree of similarity between the two marks, the strength of the owner’s mark, evidence of actual confusion, the length of time the defendant has used the alleged similar mark without evidence of actual confusion, intent of the alleged infringer, the degree to which the two marks and associated goods and services are in the same competitive market, and the similarity of the goods and services in the minds of the public. The more similar to one another the competing marks are, the more likely that there will be findings of confusion and infringement. In addition, the more distinctive and recognizable a registered mark is in the market (i.e., identifiable as a particular good or service), the more likely there will be findings of infringement in cases involving a competing mark. There is likely no trademark infringement when later use of similar marks is established in different geographical markets where the second users have no notice of the first mark, they acted in good faith, and there is no confusion or other deception.
Collegiate trademarking and licensing of goods and services is a booming business. Without trademark protection for its words, symbols, and slogans, this business would not be nearly as lucrative for higher education institutions. With such protection, this business, like any in a similar competitive arena, remains rather litigious. There are, generally, four types of marks: generic, descriptive, suggestive, and arbitrary or fanciful. Suggestive and arbitrary marks are the easiest to register and protect, because they are typically the most distinctive. For example, in Board of Trustees of the University of Arkansas v. Razorback Sports and Physical Therapy Clinic (1995), university officials sued the clinic alleging trademark infringement, unfair competition, and dilution of trademark. In finding for the university, a federal trial court held, in part, that the term “Razorback” was not a geographic term. In fact, the court was of the opinion the term “Razorback” was “arbitrary” for trademark purposes in the sense that it was not directly descriptive of the goods and services provided, giving the term more strength as a trademark.
The law more often provides trademark protection for “fanciful or arbitrary” words or phrases that, in words alone, are distinctive than it does for words or phrase common to everyday language such as the word “Columbia” (Trustees of Columbia University v. Columbia/HCA Healthcare Corporation, 1997). Of course, marks that are similar in sound, design, appearance, or impression may not be infringing when the goods or services offered are not at all similar. The real test is whether marks will confuse relevant consumers.
Protection of trademarks and service marks used by colleges and universities has recently moved into cyberspace. In 1999, Congress passed the Anti-Cybersquatting Consumer Protection Act (ACPA). The ACPA amended the Lanham Act to protect registered domain names as part of an electronic address on the Internet. Under the ACPA, persons who register domain names that are identical or substantially and confusingly similar to the name of other living persons, without the consent of those persons, and with the specific intent to profit from such names, are liable in civil actions. There is an exception for persons who register the names as part of copyrighted work protected under copyright law.
Patrick D. Pauken

See also Digital Millennium Copyright Act
Further Readings
Daniel, P. T. K., & Pauken, P. D. (2005). Intellectual property. In J. Beckham & D. Dagley (Eds.), Contemporary issues in higher education law (pp. 347–393). Dayton, OH: Education Law Association.
Daniel, P. T. K., & Pauken, P. D. (2008). Copyright laws in the age of technology and their applicability to the K–12 environment. In K. E. Lane, J. F. Mead, M. A. Gooden, S. Eckes, & P. D. Pauken (Eds.), The principal’s legal handbook (4th ed., pp. 507–519). Dayton, OH: Education Law Association.
Sperry, D. J., Daniel, P. T. K., Huefner, D. S., & Gee, E. G. (1998). Copyright law. In Education law and the public schools: A compendium (pp. 191–203). Norwood, MA: Christopher-Gordon.
Legal Citations
Anti-Cybersquatting Consumer Protection Act, 15 U.S.C. § 1129.
Board of Trustees of the University of Arkansas v. Razorback Sports and Physical Therapy Clinic, 873 F. Supp. 1280 (1995).
Copyright Act, 17 U.S.C. §§ 101 et seq.
Fenn v. Yale University, 184 Fed. App’x. 21 (2d Cir. 2006).
Lanham Act, 15 U.S.C. §§ 1051 et seq.
Patent Act, 35 U.S.C. §§ 1 et seq.
Trustees of Columbia University v. Columbia/HCA Healthcare Corporation, 964 F. Supp. 733 (S.D.N.Y. 1997).