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VI. Trademarks and Copyrights for the Government Scientist

A. Copyright

A copyright is the exclusive right to control the "copying" of a "work of authorship" that has been "fixed in a tangible medium." ⁵⁴X

17 U.S.C. § 101 (definitions), § 102 (subject matter of copyright), § 103 (compilations & derivative works), and § 106 (core rights of copyright owner).

Formal registration is not a prerequisite to acquiring, licensing, or transferring a copyright, though it does provide additional rights, such as the right to sue in Federal courts for damages and injunctive relief. Also, infringing acts that occur prior to registration nevertheless violate the copyright, and can be stopped once the work has been registered. Regardless of registration, every work should bear the symbol "©", the name of the copyright-owner, and the year in which it was created. This puts people on notice of the claim of ownership, and deters unauthorized copying.

Under U.S. law, ⁵⁸X

17 U.S.C. § 106 (core rights of copyright owner), § 106A (rights of attribution and integrity), and §§ 601- 603 (importation).

Although this collection of rights may seem straightforward, it becomes complicated when applied to the arena of digital information. There is no doubt that copyright applies to software, e-mail, web pages, digitized music, and articles posted on the Internet. The question is, what can the recipient do with such electronic works? First, the wise course is to assume that everything is protected by copyright, unless it is expressly dedicated to the public domain. Second, it is reasonable to assume that trivial copies (such as loading a web page into a computer’s temporary memory, or saving a copy on the hard drive) are either tacitly licensed by the person who put the work on the Internet, or else at least a "fair use." Further distribution, however, should be done only with permission or great caution. For example, the NIH Office of the General Counsel believes that a news-clipping service -- which scans for relevant articles in major news sites that do not charge access fees, and distributes the articles to a restricted group - - probably is fair or, if it is not fair, chances are remote that anyone will be injured enough to care. However, a service that re-posts fee-based articles on Internet bulletin-boards, which can be accessed by an unlimited number of people for free, probably would not be fair.

Certain works of authorship -- specifically, those that were created by employees of the U.S. Government as a part of their official duties -- are not entitled to copyright protection. ⁶¹X

17 U.S.C. § 105. The only twist to this rule is that the Government may accept assignment of a copyright from a private party, but this is rarely done.

Almost all scientific journals are aware of the exception for works by Government employees, but occasionally, upon approving a manuscript for publication, the journal will send the NIH author a request to "assign" the copyright. Obviously, the author has nothing to assign, and the journal probably did not notice the affiliation. If an NIH scientist receives something like this, the scientist should simply call the journal and remind them of the author’s affiliation; the journal will usually send a modified request that does not require assignment. If any confusion remains, the author should contact the Technology Development Coordinator for the author’s Institute, or the NIH Office of the General Counsel.

One copyright-related issue has begun to arise more and more: collaborations to write software. As a rule, when two authors create a single, integral work jointly, each owns a 50% share of the entire work, and when two authors contribute discrete parts that are linked but which can be easily distinguished (such as chapters in a book), the copyright to each discrete portion vests 100% with the author of that portion. If one of the authors is a Government employee and the contribution is within the employee’s official duties, ownership of copyright is apparent only if the contributions of each author are clearly distinguishable. Unfortunately, the law relating to joint works that are integral is not clear. So what about collaborative research projects that involve writing software?

The Federal Circuit Court of Appeals has recently ruled that software can be the subject of a patent, if the inventive idea behind the software otherwise meets the requirements for obtaining a patent. ⁶²X

State Street Bank & Trust Co. v. Signature Financial Gp., Inc., 149 F.3d 1368 (Fed. Cir., 1998), cert. denied, 119 S.Ct. 851 (1999).

One other issue occasionally arises relating to copyright, namely royalties. The Government has no statutory authority to receive royalties for copyrights assigned to it. Consequently, the only significant reason the Government might want to own the copyright in a work is to control the integrity of the work as it is distributed and recast. As for the author, if the author created the work as a part of the author’s official Government duties, receipt of royalties would be an actual conflict of interest (not to mention odd, given that there is no copyright). If the author created a work outside of official duties, ⁶³X

For example, a chapter in a medical textbook that broadly teaches about a region of health might be a legitimate outside activity for an NIH physician, but a chapter on the particular research in which the physician is engaged probably would not be. The Ethics Counselor for each Institute must review such projects.

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