Special Considerations Involving Copyright
In some research agreements, copyrightable intellectual property, which may take various forms, is treated differently than patentable intellectual property. 15
In general, copyrights protect the original expression of ideas in a tangible form, while patents protect original ideas (inventions) that are reduced to practice. Hence, the expression of an original idea may be protected by a copyright, while an invention arising from the idea may also be protected by a patent. For example, consider a new drug XYZ that is a patentable invention. Disclosing the composition of drug XYZ in a patent protects the drug composition. One can write an article or book about the drug, its composition, its uses, or its efficacy without infringing the patent. The author would own a copyright to his or her “literary work” on drug XYZ, and others would be prohibited from copying this article or book. However, one author’s ownership of a copyright does not mean that another author cannot write a different article or book on the same subject.
A. Forms of copyright
In industry-sponsored university research, copyright issues arise over information and data; articles, dissertations, theses, and books; research reports; software; and other copyrightable works generated during the sponsored project. Each of these categories of material may require special contract language in the research agreement.
1) Information and data
Original expression of information and data developed in the performance of sponsored research, such as a report or manuscript, may be copyrightable, but alternative forms of expression or use of the information and data by other parties may not be protected by the copyright. Sponsors and universities both may have concerns about how information and data are used and how to protect potentially commercially valuable ideas they contain. In some universities, determining who owns the copyright will depend on whether the information and data are “deliverables” of the sponsored project. Many universities and sponsors have found that it is easier to deal with rights to information and data if the discussion centers on use rather than ownership.
Contract language for “Information and data”—The Sponsor may use all information and data developed by the University under the research agreement, except as otherwise specified, that is obtained by Sponsor, in any manner without further license from or payment to the University.
2) Articles, dissertations, theses, and books
In general, copyrights to articles, dissertations, theses, and books are not intellectual property to which the sponsor has rights under the research agreement. Many university intellectual property policies do not claim these “scholarly
works” as works for hire, nor do they require employees or students to assign these works to the university. However, these materials may be subject to review by the sponsor under the publication clause of the agreement, and the sponsor may use any information and data described in the materials.
3) Research reports
Research reports are usually required under the research agreement. Universities, on behalf of the authors of the reports, may assign copyright to the report delivered to the sponsor. The university, however, will explicitly reserve the right to continue to use data and information contained in the report. If the report is published by the sponsor, the university may require acknowledgment of the university’s contribution.
Contract language for “Research reports”—University hereby assigns its copyright to the Research Report to Sponsor. Notwithstanding the foregoing,University reserves the right to reproduce and use any portion of the Report for non-commercial purposes.
Pharmaceutical companies that rely on clinical trials carried out by universities customarily claim ownership of the case-report forms. This claim is made in an effort to ease compliance with requirements of the Food and Drug Administration. However, the university may retain ownership of the copyright to the final report provided to the sponsor, and grant to the sponsor the right to use the data and information contained in the report. Clinical trials represent a special case for copyrights in research agreements, but this point is also relevant to other situations.
Distinctions may be made between object code and source code, although both forms are copyrightable. While universities prefer to retain ownership of both types of code, some institutions may be willing to assign to the sponsor the object code specifically developed for the sponsor. It is generally assumed that the sponsor’s application of the object code is not readily useful to other potential licensees. Universities, however, will generally not assign title or give an exclusive license to the source code, if this would impede their ability to use such code for other research or to make derivative works, or to use it to create and license out object code for applications other than the sponsor’s.
5) Other copyrightable works
Materials that fall into this category include films, videotapes, music compositions, posters, and artwork. Such works generally are owned by the author, with the rights and acknowledgments negotiated in the research agreement.
Such works may sometimes be assigned to the sponsor, if they are considered deliverables under the research agreement. Deliverables can be treated as research reports or as intellectual property.
B. Software issues
Two issues that are of special consideration for software are derivative works and improvements.
1) Derivative works
The right to make derivative works resides solely with the copyright owner. However, the copyright owner may authorize others to make derivative works. In the case of licenses to copyrightable material, therefore, a licensee would need specific authorization from the copyright owner to develop derivative works. Generally, the university will retain the non-exclusive right to make derivative works for its own purposes, even if it grants the sponsor an exclusive license to the software and to derivative works.
Contract language for “Derivative works”—In the event that Sponsor acquires a license to copyrightable University Intellectual Property, such license specifically includes the right of the Sponsor to make Derivative Works, subject to the definition of University Intellectual Property agreed to by the parties.
If the sponsor has a license to make commercially available derivative works, it may expect to pay a royalty based on those works. In order to fairly assign royalties, it may be necessary to distinguish among enhancements, improvements, modifications, and derivative works, although these terms are not mutually exclusive.
Both parties should determine whether software used in the research incorporates software owned by others, because this software owned by others may become incorporated into new software arising from the research.
Rights to improvements in software made by the university may be included in the rights granted under a