Intellectual Property Policy
Intellectual Property Policy
Spalding University is committed to providing an environment that supports the learning, teaching, scholarship, and creative activity of its faculty, students, and staff. Within this context, the Intellectual Property Rights Policy is intended to:
• Encourage excellence and innovation in teaching, scholarship, and creative activities by identifying and protecting the intellectual property rights of faculty, staff, students and the University;
• Encourage the notion that creative and scholarly works produced at Spalding University should advance the state of knowledge and contribute to the public good;
• Acknowledge and preserve the traditional property rights of scholars with respect to products of their intellectual endeavors (e.g., books, articles, manuscripts, plays, writings, and works of art); and,
• Guide policy and process for commercial uses of intellectual property other than the traditional products of scholarly work.
This Policy governs the intellectual property rights of faculty, students, and staff in the work product created at or in connection with Spalding University.
The University owns the rights to all works, inventions, developments and discoveries (herein referred to as “work” or “works”) created by faculty, staff and students within the scope of their employment or whose creation involves the substantial use of University equipment, services, or resources. This includes any patentable invention, computer-related software, databases, web-based learning, and related materials, but will not be applied to traditional Scholarly Works. Scholarly Works include books, articles, dissertations, theses, syllabi, lesson plans, manuscripts, plays, writings, and works of art (“Scholarly Works”).
The “work-for-hire” rule in the Copyright Act gives the University ownership of the copyright to copyrightable works produced by any employee within the scope of his/her employment. (See "I. Who owns intellectual property?" and II. "What is meant by 'within the scope of employment'" below for discussion of this issue ). Works produced by students as part of a class, or in any other capacity, except that of working for the University, will not be deemed “work-for-hire,” unless they are produced under a specific contract with the University for the production of that particular work. Additionally, in the case of Scholarly Works, the University cedes copyright ownership to the author/creator(s). It is not the intent of this Policy to change the relationship between author/creator and the University that has existed through the years in relation to copyright ownership of Scholarly Works.
Other than Scholarly Works of faculty, staff and students, intellectual property created by University employees shall be owed by the University if said intellectual property was created within the scope of their employment or is governed by written agreement with the University.
As noted previously, the University owns rights to intellectual property when the creation of such property involves the substantial use of University facilities. The use of University equipment, services or resources is “substantial” when it entails a kind or level of use not ordinarily available to all, or virtually all, faculty, staff or students. (See “III. What is meant by 'substantial use'?") Where question arises as to whether a particular work involves “substantial use” or falls within the “scope of employment,” the matter shall be referred to an ad-hoc committee comprised of two members of the Leadership Team selected by the author/creator, the Provost or designee, and the Dean of that department or designee.
When employee-created intellectual property results from third-party grants, contracts, or awards made to the University, the intellectual property is owned by the University unless a written agreement involving the University, the employee, and the sponsor establishes an alternative ownership arrangement. No such agreement shall be entered into without the review and approval of the Provost.
A “compilation” is another type of intellectual property. A compilation is a work formed by the collection and assembly of University-owned and individually-owned intellectual property in such a way that the resulting work as a whole constitutes an original work. If a work is a compilation, each contributor shall retain all ownership interests in his/her intellectual property; but, by allowing the work to become part of the compilation, the contributor(s) grants a non-exclusive, royalty-free license to the University for use of his/her contribution. While the University shall own rights to the compilation, it shall own no rights to the underlying work beyond said license and will share any net proceeds from the compilation as described below.
If an employee creates intellectual property other than a scholarly work which may lead to commercial development, then the employee is expected to notify immediately his/her department chair and the Provost in order to provide them with sufficient information to permit the University to evaluate the work, both its ownership and its commercial potential, and, if appropriate, to take steps to protect the University’s intellectual property rights. If ownership rests with the University, but the University elects not to exercise its ownership rights, then ownership rights and responsibilities related to patenting, copyrighting and licensing shall revert to the author(s). In such a case, the University retains a nonexclusive, royalty-free right to use the work for non-commercial purposes.
In the case of employee-owned intellectual property, the author/creator may petition the University to accept assignment of ownership rights and the attendant control of and responsibility for development. The University, however, is under no obligation to accept this assignment and would do so only when independent evaluation indicates that accepting the assignment would further the mission and work of the University.
The University wishes to encourage excellence and innovation in teaching, scholarship and creative activities and to support the notion that works produced at Spalding University should be used for the greatest possible public benefit. In the context of these aims, the University endorses the legitimate expectation of employee author/creators to share in any net revenues produced by licensing or other development of intellectual property. Accordingly, for any work in which the University asserts ownership interest under this Policy, the University and the author/creator(s) will share any annual net revenue (revenues less recovery of all legal and other costs involved in protecting the intellectual property rights of the work, licensing costs, and other directly related administrative costs) in the following percentages, unless different contractual agreements have been reached in relation to particular works:
Net Revenue Author/Creator(s) Spalding University
<$5,000 100% 0%
$5,000-$25,000 75% 25%
$25,000-$100,000 60% 40%
>$100,000 50% 50%
If a work involves more than one employee as author/creator, the author/creators will divide their share equally unless they provide the University with an alternative revenue distribution agreed upon by them. Use of net revenues received by the University under this Policy shall be restricted to the support of scholarly, research, or creative activity on the part of faculty, staff and students.
If an employee develops intellectual property that is subject to the Revenue Sharing provision, he/she must make full and fair disclosure to the University of the sources of all proceeds, the amount of proceeds from each source, each type of cost deduction, and the amount of each type of cost deduction.
Intellectual property that is the subject of a specific agreement between the University and the author/creator thereof shall be owned as provided in said agreement. Such agreements by the University and the authors/creators are encouraged. Except where limited by external sponsorship agreements, authors/creators and the University may negotiate individual agreements to govern ownership of intellectual property regardless of the applicability of any other provision hereof.
Recognizing that this area is complex and rapidly evolving, Spalding University remains open to the possibility of arriving at special agreements as the need may arise in relation to particular projects.
Rights Reserved by the University
Except as otherwise provided in a written agreement with the University, when intellectual property is created by faculty, staff, or students in connection with any University course, program, or other University-related project, with or without substantial use of University facilities, the University shall have the perpetual, non-exclusive, non-transferrable, royalty-free rights to reproduce, display, perform and otherwise use such intellectual property for all its educational, promotional, marketing, and other non-commercial purposes (“Use Rights”). For the sake of clarity, the Use Rights shall not include the right to sell such intellectual property.
Notwithstanding the foregoing, when intellectual property used by faculty in connection with any University course, program, or project, including without limitation any educational courseware, syllabi, or lesson plans, was previously created by such faculty outside of any University course, program, or other University-related project, without substantial use of University facilities, then the University shall have the Use Rights with respect to such intellectual property, but such rights shall not: (a) include the right to sell such Intellectual Property, (b) include the right to perform courseware in whole, without express written consent, or (c) affect any existing open source license applicable to such intellectual property. The University’s rights under this section shall encompass, without limitation, all Scholarly Work.
Use of Trademarks
The University’s trademarks and all other registered or unregistered names or logos (collectively, the “Trademarks”) are the exclusive property of the University. No faculty, staff, or students may use the Trademarks in a manner that states or implies that the University endorses, sponsors, or has an affiliation with any particular goods, services, or individuals without prior written consent. However, faculty, staff, and students may identify their relationship to the University and use the Trademarks for other similar factual purposes, in a manner that does not suggest sponsorship or endorsement by the University of the specific project. All requests for other uses of the Trademarks shall be made in writing to the Marketing and Public Relations Office, with complete details about the proposed use.
I. Who owns intellectual property?
When does the University own employee, or student, created intellectual property?
Any one of these circumstances will result in University ownership:
1. If intellectual property is created (including student employees working within the scope of the Work Study or Graduate Study program) within the scope of employment (including the Work Study or Graduate Study Program); or
2. If intellectual property is created on University time with substantial use of University equipment, services or resources; or
3. If intellectual property is commissioned by the University
o pursuant to a signed contract; or
o if it fits within one of specific categories of works considered works for hire under copyright law.
4. If intellectual property results from research supported by Federal funds or third party sponsorship and no written agreement involving the University, the researcher and the sponsor have established an alternative ownership arrangement
When does an individual own intellectual property?
1. If it is unrelated to the employee’s or student’s job responsibilities and has not made substantial use of University equipment, services or resources; or
2. If it is a work that has been released to the author/creator in accordance with this Policy; or
3. If the intellectual property is embodied in such traditional scholarly works as books, articles, dissertations, theses, manuscripts, plays, writings, and works of art even though such a work may be within the scope of employment and even if significant University resources were used UNLESS the work is:
o created by someone who was specifically hired or required to create it or
o commissioned by the University
In either of these cases, the University, not the creator, will own the intellectual property.
II. What is meant by “within the scope of employment”?
Works related to an individual’s job responsibilities, even if he or she is not specifically requested to create them, will belong to the University as works-for-hire. A copyright work is related to your job responsibilities if it is the kind of work you are employed to do and you do it, at least in part, for your use at work, or for use by fellow employees, your employer or your employer’s clients. The work should be performed substantially at work using work facilities, but your use of personal time or other facilities to create the work will not change its basic nature if it is related to your job as described above. Works that have nothing to do with job duties will remain the property of the employee, so long as he or she makes no more than incidental use of University facilities.
For example, if your job is “Safety Engineer,” a software program that you create on your own initiative to run on each employee’s computer to show a graphic of their nearest fire exits is related to your job duties and will belong to the University, even if no one asked you to create it and you did some of the programming at home on your own computer. A program that you create that does not relate to your job, that neither you nor others use at work, and that you create on your own time would belong to you.
III. What is meant by “substantial use”?
The Intellectual Property Rights Policy uses the phrase “substantial use of University equipment, services, or resources” in determining when the University claims ownership of intellectual property, not including work identified in the Policy as traditional “scholarly works.” The purpose of this appendix is to amplify the intended meaning of “substantial use.”
For purposes of this Policy, “substantial use” is the use of resources other than those “ordinarily available” to most or all faculty, staff, and/or students. At this time, such ordinarily available resources include office space and personal office equipment, office computers, library and other general use information resources. By contrast, utilization of University laboratories or special instrumentation, dedicated assistance by University employees, special financial assistance, or extensive use of shared facilities would constitute substantial use. Additionally, when the author/creator receives support in the form of money in excess of normal teaching salary, reduced teaching load in excess of that customarily given, or other resources from a school, college or any unit of Spalding University would constitute substantial use.
The understanding of “substantial use” may be revised from time to time by the Provost to reflect changes in technological paradigms.