1. The Intellectual Property Policy in The General Rules (Article III) is sufficient to cover the ownership, license rights and income distribution policies that are applicable to the development and distribution of web tools and course materials.
2. Although adequate policies exist, creators and their Academic Unit Head (or responsible executive officer for a non-academic unit) involved in the funding and development of web tools and course materials need guidance in understanding the policies and the issues that must be considered. The criteria for making determinations for electronic media are no different than for other types of copyrighted work. However, in many cases the University is providing substantial institutional subvention and support for web tool and course material development by allocating resources that are over and above those usually and customarily provided (i.e., grant funds, released time, hardware, software) and the use of professional support staff and other employees to work on the projects. Because each development situation is unique, determinations regarding ownership and license rights must be evaluated in accordance with the following principles (as described in The General Rules).
The University claims ownership of web tools and course materials (1) if created with grant or contract support, or (2) if commissioned in writing, or (3) if created as a specific requirement of employment or an assigned University duty, and (4) that are also patentable, or (5) that are original records (including software) of an investigation for a graduate thesis or dissertation. Otherwise, creators own traditional academic copyrightable works (including web tools and course materials) that are created independently and at their initiative, using only University resources that are usually and customarily provided. Such works need not be licensed to the University.
If creators use University resources over and above those usually and customarily provided, such works are owned by the creators but the University retains, as a minimum, a license to use such works in its internally administered programs of teaching, research and public service on a non-exclusive, royalty-free basis. The University can claim more than minimum license rights when justified by the circumstances of development.
3. Agreements between creators and their Academic Unit Head (or executive officer for a non-academic unit) should be reduced to writing at the beginning of the development process. A menu of options and a sample agreement are provided as a framework for such discussions and decisions (see attachment). Such written agreements may range from a simple letter between the creator and Academic Unit Head (or executive officer for a non-academic unit), signed by both parties, to a more formal agreement executed between the creator and The Board of Trustees.
4. Where the University has an interest in web tools and course materials as provided by The General Rules (i.e., by virtue of its investment of resources or contractual agreements), the Academic Unit Head (or executive officer for a non-academic unit) is encouraged to claim the "minimum rights" needed to serve the interests of the University and the public, and to balance the University's needs with the concerns of the creators. Options the Unit Head may consider include the right to use the courseware for the University’s internally administered programs of teaching, research and public service, without further financial obligation, and to maintain continuity beyond the original creator by creating derivative works.
5. The University and Department/Unit will normally share 40% and 20%, respectively, of net income received from marketing University-owned copyrighted works with the creators. Other distributions may be justified in unusual circumstances or by written agreement with the creators, subject to the approval at the campus level. For example, Departments/Units employing creators of "work for hire" materials may elect not to share income with individual employees, in which case the "creator's share" is retained by the Department/Unit with justification.
6. Creators are responsible for identifying all non-original material used in their web tools and course materials, and for securing an appropriate permission or license agreement from the owner of such intellectual property. Some software is provided to the University by creators or third parties under a license that limits its use to the University's internally administered programs. Such software may not be distributed to off-campus users or incorporated into commercial products without an appropriate license from the creator or third party that owns it. For other intellectual property that is owned by the University, it is permissible for a creator to use it, royalty-free, for University purposes. However, University-owned intellectual property can not be distributed to off-campus users or incorporated into commercial products without an appropriate license from the University, secured through the campus technology transfer office.
7. Although the attached menu of options and sample agreement provide a structure for discussions and decisions, it is expected that different Units will adopt a range of policies (that remain within the context of The General Rules) for courseware ownership, license rights and income distribution. To promote fairness and equity, the technology transfer office on each campus should establish and distribute additional default standards.
8. The technology required for Internet-based teaching and learning initiatives, and its acceptance by and availability to end users, continues to change rapidly. The Office of the Vice President for Academic Affairs should perform periodic global reviews, with input from faculty and other creators, Academic Unit Heads, and the executive officers for other units providing support for web tool and course material development projects, to determine whether the University's policies and procedures are working without undue problems, and to address the concerns of those involved in the process.
The Intellectual Property Subcommittee on Courseware Development and Distribution reviewed a number of questions related to ownership, license rights, and income distribution of courseware (web tools and course materials). The Subcommittee examined the current Intellectual Property Policy in Article III of The General Rules Concerning University Organization and Procedure (General Rules) and heard testimony from several faculty and academic professional staff who are currently involved in the development of instructional software and/or Internet tools. Based on this information, the Subcommittee reached several conclusions and recommendations regarding how resulting intellectual property in software and courses should be handled. The following summarizes the Subcommittee’s discussion and provides recommendations for action.
The principal types of software that will be developed and/or distributed are as follows:
There will be a wide range of software used by creators as the framework upon which courses (or courseware modules) will be built and delivered to end users (referred to generically as "web tools"). Web tools include commercially available software packages, such as Lotus Notes and Lotus LearningSpace, for which the University has site licenses. Web tools also include software already created or under development at the University, such as the authoring/teaching systems MallardTM and CyberProfTM (developed at UIUC), NetLearning PlaceTM, HabaneroTM and JouleTM* (developed at NCSA) [Proprietary trademarks owned by The Board of Trustees of the University of Illinois.], and many others. Web tools are likely to include new software to facilitate Internet-based asynchronous and synchronous communication and learning environments, such as software for managing delivery and use of course materials, server security, user authentication, or records management.
An inventory of web tools created at the University (all campuses) that are either owned by the institution or for which the University has license rights, and those commercial products licensed under University site licenses, that are available for use by developers should be assembled and maintained at a central repository along with restrictions on use (if any). The availability of such web tools for use by University faculty and other software creators should be promoted, and access facilitated to use such tools for purposes of course development. However, users of such web tools should be advised if there are any constraints on such use, for example:
Many web tools are still in the development phase and are far from being standalone, supported products. The original creators of the web tools can not be expected to provide support to other users, unless they have explicitly agreed to do so.
Because web tools have widespread applications, they can be out-licensed, on a non-exclusive basis, for use by others. Some licenses, particularly to other academic collaborators or funding partners, may be royalty-free. Other licenses, particularly to commercial companies, will be royalty bearing. Users of such web tools should be aware that their right to use them for applications intended for distribution outside the University’s programs of teaching, research and public service may be restricted by commercial licensing arrangements.
It is likely that web tools will continue to be modified, improved and enhanced over time, with contributions from a number of different developers and multiple units. The creators of web tools and the Academic Unit Head (or executive officer for a non-academic unit) should consider how the revenue stream from commercially marketing such web tools will be distributed. One option is that net revenue will be shared only with the original creators and/or their units, and all subsequent users (and/or their units, if applicable) who create derivative works and enhancements will be expected to contribute their developments to help strengthen the product, for the benefit of the University and the public. Another option would be to share net revenue not only with the original creators and/or their units, but also with all subsequent users (and/or their units, if applicable) who create derivative works and enhancements. The decision on how income distribution will be handled should be reduced to writing and published at the time the web tools become available for use by others besides the original creators. Regardless of the income distribution arrangements, efforts should be made to give credit/attribution to all creators for their contributions to the web tools, where reasonable and appropriate.
It is anticipated that the range of sophistication embodied in courses and course modules will vary greatly, depending on the intended audience, the technology available (both at the UI and by students/end users), the web tools or authoring system used, the subject matter covered, the degree of interactive communication needed to effectively teach/learn the material, the expertise of the developers, and many other factors. For example, a certification course may be text-based and self-administered, including exams, by the student who enrolled to take it. Other courses may be highly interactive, with live video of the professor giving lectures, interactive chat rooms, support from the professor or teaching assistants for homework or questions submitted by email, etc. It is also anticipated that the quality and technological innovations embodied in courses and course modules will increase over time, as the technology becomes easier to use and faculty gain more experience with such media.
The legal rights and responsibilities related to courseware development and distribution are centered on two types of rights: copyright and moral rights.
In general, copyright does not protect ideas, but only the specific expression of an idea in tangible form. Copyright is a form of protection provided by the laws of the United States (Title 17, U.S. Code) to the authors of "original works of authorship" including literary, dramatic, musical, artistic, and certain other intellectual works. Section 106 of the Copyright Act generally gives the owner of the copyright the exclusive right to do and authorize others to do the following:
Copyright protection subsists from the time the work is created in fixed form; that is, it is an incident of the process of authorship. The copyright in the work of authorship immediately becomes the property of the author who created it. Only the author or those deriving their rights through the author can rightfully claim copyright.
In the case of works made for hire, the employer and not the employee is presumptively considered the author. Section 101 of the copyright statute defines a "work made for hire" as:
In addition to copyright, creators expressed concern that they be able to maintain "quality control" of the content, presentation and use of courseware that they develop, particularly for derivative works. Such concerns generally fall under the "doctrine of moral right", which is covered by several federal and state doctrines that protect authors against reputational affronts arising from the use of their works. Thus for whatever policies are put in place by the University and the Units regarding course materials, it is important in general to respect the wishes of the original creators in the University’s use of their work (particularly when the University has no ownership in the work). The "moral rights" issues are also very important when considering the University’s right to make derivative works without the original author’s participation.
Ownership and license rights in copyrightable works created by University faculty, staff and students is specified in Article III, Section 4, of the University’s Intellectual Property Policy
in the General Rules, and citations will refer to the current policy.
Article III, Section 4(a) of the General Rules specifies the conditions under which the University can claim an ownership interest in copyrightable works as follows:
(a) Ownership. Ownership in copyrightable works produced by authors who are University staff members or students shall remain with the authors except in the following situations where such rights of ownership as it may require shall vest with the University:
- (1) Works created pursuant to the terms of a university agreement with an external party, or
- (2) Works created as a specific requirement of employment or as an assigned university duty that may be specified, for example, in a written job description or an employment agreement. Such specification may define the full scope or content of the employee's university employment duties comprehensively or may be limited to terms applicable to a single copyrightable work. Absent such prior written specification, ownership will vest with the University in those cases where the University provides the motivation for the preparation of the work, the topic or content of which is determined by the creator's employment duties and/or when the work is prepared at the university's expense.[see end note]
- (3) Works specifically commissioned by the University. The term "commissioned work" is hereafter used to describe a copyrightable work prepared under a written agreement between the University and the creator when (1) the creator is not a university employee or (2) the creator is a university employee but the work to be performed falls outside the normal scope of the creator's university employment. Contracts covering commissioned works shall specify that the author convey by assignment, if necessary, such rights as are required by the University.
- (4) Works that are also patentable. The University reserves the right to pursue multiple forms of legal protection concomitantly if available. Computer software, for example, can be protected by copyright, patent, trade secret and trademark.
Under University policy as it applies to all creators, the University does not claim ownership of traditional academic copyrightable works that are created independently and at the creator's initiative, for traditional academic purposes. Examples include class notes, books, theses and dissertations, educational software (also known as courseware or lessonware), articles, pictorial or graphic works that are not created as an institutional initiative.
In accordance with Article III, Section 4(a) above, the University does claim ownership of copyrightable works created by academic professional staff, graduate assistants, or other employees when such works are "created as a specific requirement of employment or as an assigned University duty" and are considered to be "work for hire" by the employee for the University. However, the University's position has been that faculty are hired to do teaching, research and public service -- and creating copyrighted works as "work for hire" for the University is not a specific employment obligation for faculty.
This does not mean that a faculty member (or any other creator) cannot agree to produce specific copyrightable works, including software, under circumstances where the work would be considered to be a "commissioned work" or a "work for hire", and the University would have ownership (or a co-ownership interest) in such work. However, such understandings should be covered in a written agreement between the participating creator and Academic Unit Head (or executive officer for a non-academic unit) that clearly establishes ownership and license rights of the parties, before work on the project begins.
There should also be written agreements between the responsible creators and their Academic Unit Head (or executive officer for a non-academic unit) that specifies ownership and license rights in pre-existing materials. It is the responsibility of the creator to identify any materials included in their work that are owned by third parties, and to obtain written permissions or licenses from such third party owners, sufficient to cover the University’s use (and greater rights if needed for distribution outside the University). For example, some creators have traditional textbook publishing agreements with commercial publishers, and have assigned their copyright to the publisher. Also, some publishers are now claiming all electronic rights in textbooks, whether or not they have any intention to do electronic delivery.
Courseware will vary greatly in their degree of sophistication, from simple text-based offerings with web links and email, to highly interactive software that includes video, audio, and real-time collaborations. Because it is the campuses that have an interest in how courses are used and/or distributed and/or marketed, the Academic Unit Head (or executive officer for a non-academic unit) accountable for overall development and approval of the course offering should be responsible for sorting out the issues with the creators, and determining what makes sense for their particular courses, and reducing such understandings to a written agreement. The agreement should specify ownership and license rights (including distribution restrictions, if any) in the resulting software. An example agreement is attached.
The University’s license rights in copyrightable works created by University staff or students that are not owned by the University are specified in Article III, Section 4(b) of the General Rules:
As specified in the policy, the University can claim more than minimum license rights when justified by the circumstances of development. In those cases where significant institutional subvention and support are being provided to promote development of course materials for use in the University’s programs, the Unit Executive Officer needs to consider whether the University should retain more than minimum license rights in the resulting work, in order to meet the present and future needs of the University’s academic programs. An example of options for more than minimum license rights that might be claimed by the University, if applicable, follows:
The right to maintain continuity beyond the original creator by creating derivative works, to the extent necessary to correct errors, to keep the content current and relevant, and to maintain the usefulness and quality of the course material as a University instructional offering, with certain exceptions: For example, if the course is highly interactive and requires active participation by the faculty member who created it, it may not be feasible or practical for the University to offer the course if the faculty member is no longer willing or able to participate.
As noted above, for course materials, the University needs the right to maintain continuity beyond the original creator by creating derivative works, to the extent necessary to correct errors, keep the content current and relevant, and to maintain the usefulness and quality of the course material as a University instructional offering. Faculty representatives expressed concern about granting such rights to the University for a number of reasons, and prefer to maintain "quality control" for any instructional materials associated with their names, both for the content and its presentation (i.e., the "moral rights" issues discussed above). If the faculty member moves to another institution, for some course material--particularly that which is highly interactive and/or largely based on original material produced by the faculty member as part of his/her research program, it may not be practical or feasible for the course to be administered by another faculty member serving in the creator’s stead. In other situations, the course will become an integral part of an instructional offering or degree program, and the University will need to continue offering it even if the original creator leaves the University. The Academic Unit Head (or executive officer for a non-academic unit) must consider long-term use needs of the course materials, and work out mutually agreeable terms with the creator. Options include, but are not limited to, discontinuing use of the course material immediately, negotiating transition arrangements such as retaining the right to use it for some specified period of time while working out agreements with other faculty to take over the course and develop new material, or perhaps hiring the creator as a consultant to provide support under contract.
Thus, the Academic Unit Head (or executive officer for a non-academic unit) and creator need to address, up front, how derivative works will be handled: (1) while the faculty member is at the University, and (2) if the faculty member leaves the University. In some cases, the course material may be somewhat routine, and the creator(s) will not care if the Academic Unit Head (or executive officer for a non-academic unit) hires other faculty (or other employees) to update it. In some cases, the Academic Unit Head (or executive officer for a non-academic unit) might offer the original creator the first opportunity to make derivative works, under terms to be negotiated. In some cases, the creator might not object to others making derivative works as long as they get approval rights. Many options exist.
1 The creator's obligation to assign rights to the University is subject to the provisions of the Illinois Employee Patent Act, which provides in part:
A provision in an employment agreement which provides that an employee shall assign or offer to assign any of the employee's rights in an invention to the employer does not apply to an invention for which no equipment, supplies, facilities, or trade secret information of the employer was used and which was developed entirely on the employee's own time unless (a) the invention relates (i) to the business of the employer, or (ii) to the employer's actual or demonstrably anticipated research or development, or (b) the invention results from any work performed by the employee for the employer. Any provision which purports to apply to such an invention is to that extent against the public policy of the state and is to that extent void and unenforceable. The employee shall bear the burden of proof in establishing that his invention qualifies under this subsection.