Speaker: Paul Berman, Esq. (Covington and Burling)

Panel Discussion: Intellectual Properties Issues

I truly feel like an endangered species in this crowd and maybe that's with good reason, we'll find out. I am accustomed to starting all of my presentation with the lawyer's prayer, which goes like this. "Lord, may my words today be sweet for tomorrow I may have to eat them." With that I will begin. I want to talk a little bit about copyrights and patents and patent issues related to this concept of preprints and I'll use the word preprint even though I have problems with it as I will explain later. Just by way of very broad background, the copyright and the patent grants stem from the Constitution of the United States. One of the most remarkable clauses in the Constitution has absolutely no history behind it, here it is. The notion is that in order to promote progress of science and the arts, it says useful arts, Congress has the power to grant to authors and inventors the exclusive right to their respective writings and discoveries. And almost everybody at the time and now continues to think in terms of an exclusive right of some kind or another, a copyright in the written expression form and a patent in the sense of a product, or process, or machine, or an apparatus, or a method. A different kind of exclusive right would be useful to help encourage research and development. I know there are many people who disagree with that as a matter of philosophy and concept. It is not my intention to argue with that today. I just simply want to point out where our current system comes from. With respect to copyrights, copyright gives to the owner of the copyright the exclusive rights to reproduce the copyrighted work, to prepare derivative works, to distribute, and there are certain performance and display rights as well. One of the most recent cases involving computerized bulletin boards, perhaps the Internet, was a case in which a fellow was operating a bulletin board, I think it was in New York, where you had to subscribe, and people could upload files as well as download files and sure enough people had uploaded entire editions of Playboy Magazine. Playboy got upset about that because other subscribers were downloading the magazine and the YSOP of the bulletin board, said . . . Yes?

(Question from the audience) The text or the photos?

(Paul Berman] I'm sorry? There was a big issue in that case over whether the photos alone constituted a substantial component of the publication. I'm very serious about this. That involved the so-called fair use defense. Part of the fair use defense is the substantiality of the amount that has been copied and the court said we recognize that there are some people who do, in fact, read the articles. But the point was that the operator of the bulletin board said, I didn't know this stuff had come up, was uploaded by somebody, and I didn't know that people were downloading it. Now, let's assume for the moment, and the court assumed that he was telling the truth, the court nevertheless found the bulletin board operator liable for the copyright infringement because the fact that he was operating the service for which people could get infringing copies made him liable to Playboy for some amount of damages.

So then, the next question is who owns the copyright. As a general proposition copyright starts out with the author. An interesting question with respect to preprints, or not necessarily just preprints, but any collaborative work is the second sentence which says that the authors of a joint work are co-owners of the copyright and that makes a lot of interesting fun for lawyers to try and figure out who are the joint copyright proprietors. But there is also this works made for hire doctrine, which says that if, in the course of your employment, you are expected to write, that you are not the copyright owner initially, but rather your employer is. The notion here is, and this depends on the particular terms of your employment, a work prepared by an employee within the scope of his or her employment is considered to be a work made for hire. By and large, universities, and I thought that's what the audience would be comprised of, although not exclusively. This is from the University of Virginia, it's one of several I've seen that are all about the same. The second sentence says "faculty members may write and produce materials and they are entitled to the copyrights in those materials." That is not necessarily the case in the commercial environment or with the government. Works made by government employees with government funds are not subject to copyright at all under the copyright statute, but they may be restricted for national security or other reasons. If you are in the commercial environment, or depending on your university, the university may say we own the copyright, this is part of your job. Virginia is, I would say, representative, but certainly not the only way that these policies go. If any of you have ever been involved in a collaborative research agreement where a commercial sponsor pays for research that you might be doing, which may happen more in applied physics as opposed to theoretical physics, you will find provisions like this, which the university or the investigator says, "Look, I want the ability to publish," and the sponsor says, "That's fine with us, so long as we have a chance to take a look at it before hand so that we can know whether to obtain appropriate intellectual property protection." That's also frequently the case.

Now, how does all of this play out in the electronic preprint scenario? I have very little doubt that putting something on an electronic bulletin board, let me use that term. I know there's been a lot of names used for the various papers that I've read, but making something widely available to members of the scientific community essentially on a for free or readily accessible basis, almost certainly constitutes publication. There is very little doubt about that. People may argue back and forth, but I think the trend is fairly clear that that's what you can expect. So, while you may have thought when you did a paper preprint and you sent it to your friends, or colleagues, for purposes of their review that you were not publishing, you were probably right. Sending it in to a preprint server, which is readily accessible to a wide variety of people, indeed automatically notifies people who are interested in the topic that the paper has been made available, almost surely from a legal perspective will constitute publication, and this is something just as a matter of free legal advise you're getting today, you ought to be thinking about, in the context of distributing these papers. I know that you are very interested in and I applaud your interest in the rapid dissemination of the fruits of your labor, but when you do that you may have triggered some legal consequences that you ought to be aware of. Conversely, there is also little question in my mind at least, others I'm sure will disagree more on this, that the people who operate, Dr. Ginsparg and others who operate electronic preprint servers, are in fact functioning as publishers. So we've met the enemy and it's us. This is just something to keep in mind, and with that comes certain potential responsibilities. In the copyright area, to me it's more than an interesting academic exercise in the context of the American Physical Society and other Societies with respect to their journals, ownership of copyright and knowing who owns the copyright is an important, very important, administrative tool. Because once you know where it is, you know how to handle it and what to do with it. The difficulties arise, and I've seen them in many, many, many transactions, where you're not sure who owns the intellectual property rights and to try and track it down can be very, very time consuming and expensive. So it is worthwhile thinking about making sure that the person who is actually managing the dissemination in fact knows full well what his/her legal rights are to engage in that dissemination. My guess is that there has been very little said or written about who's got the right to do what with respect to these electronic preprint servers. That's just a guess, I may be wrong. And that there is sort of an unwritten expectation that when you submit a paper to one of these things that it's going to become widely available on the worldwide web and all of these sorts of things. And that seems to have operated pretty well for the time being. But somebody, sometime is going to say, "Well wait a second. I gave that to you and I really wanted it only distributed in this way, in that manner." It's a potential for dispute and those are the kind of disputes that make people unhappy about lawyers, because we come in sort of after the parade sweeping up what's left. These are things that ought to be thought about.

In the patent context, it's much more draconian, frankly. Those of you who are familiar with it, again I don't know the extent of the applicability of these concepts in theoretical physics, but it says a person shall be entitled to a patent unless the invention was known or used by others in this country, that's the United States, or patented or described in a printed publication in this or a foreign country before the inventor invented it. You sort of have to be the first to invent. And in the United States if it's published you've got a year. See, but this word here "printed publication" is not what it means. What printed publication means is published in the common sense sense of the word. If it is readily available to members of the community to which it is destined, it is considered to be published. There was a case in which someone submitted a paper to a referee committee comprised of nine members. It went to court and the court held that submitting to nine members on a referee basis did not constitute publication, but if there had been more, and more could be ten I suppose, it might have constituted publication. And in the United States it's not a real big deal. You have to keep track of it, but you know that if it's published you've got a year to file your patent application. But there are other countries in which you don't have a year. As a matter of fact, only in the United States do you have a year. The rest of most of the world operates on what is called the first to file patent system, not a first to invent, and there is this funny thing called absolute novelty. The deal that you make with the patent authorities is that you get a limited monopoly, seventeen years in the United States, maybe fifteen or twenty in other countries, in exchange for making your invention public. They are always published in some manner or fashion, patents are readily available. And the notion is that if it's already been made public, why should we give you a monopoly? In the United States you have the grace period of a year. In most countries, you don't. They is a first to file system and whoever files first gets it and if it's published before it is filed, you're out. There are some exceptions. You can try and recover patent rights in certain circumstances. They are expensive, they involve lawyers. The best approach is to file first. You can file first in the United States and get priorities in other countries, but the point is publication is an important triggering event in the patent context. Once again, we come back to what does publication mean. Maybe people call them preprints, yes it's before they're printed, but maybe nothing is going to be printed anymore. If there is a thought that putting an article on an electronic preprint server, available on the Internet, is not publication let me erase that from your minds now. There is very little question, especially if there's going to be pointers and notices published in various libraries, today's abstracts of the paper, what twenty-four hours, it's amazing. As a practical matter, that constitutes publication from a legal perspective. Somebody may disagree with me, somebody may not disagree with me. You don't want to get into that kind of fight.

(Question from the audience) Excuse me. Is that any different from the use when our departments mail out 300 copies of the papers all over the world...?

(Paul Berman) I would prefer to be on the side of the case arguing that sending an article out to 300 people in advance of a printed publication in a journaldoes not constitute publication, as opposed to putting in on a server that is available to anybody everywhere, yes. It's not a happy argument to make, but I'd rather be making that one than be saying, gee whiz, when you put it up on some server available on the Internet with notices around, that did not constitute publication. Sending out to 300 probably somebody could argue, and probably will or has argued, that that did constitute publication. And hopefully in that context, the department or whoever has made sure that the technology transfer office knew about this before they started sending it out. My bet is that they didn't. There are some clouds on some rights. Is it the right thing to do? 300 is a lot, 25 would be more comfortable. You start engaging in some line drawing games that are not very happy in the result.

(Statement from the audience) [INAUDIBLE]...electronically that we've been doing this for years.

(Paul Berman) You have changed . . . the electronic availability has changed the accessibility. That's from my perspective, has changed its availability upon going on the Internet, or the World Wide Web, or whatever. I guess if you said, if it's 1,000 Berman, come on that's public. And I would say yeah, that's right. We're engaging in a question of when does something become accessible to members of the public. Does 300 members of the public constitute accessibility? I don't know the answer to that question. But I do know that electronic accessibility to everybody surely does. Yes?

(Statement from the audience) Yet the announcement on the SLAC preprint service of years past would also constitute publication.

(Paul Berman) The announcement, or the availability of it?

(Statement from the audience) Once it's announced, you know it's available and you can request it, either from SLAC or the original author.

(Paul Berman) It could well be, I don't know what people have done with that. It could well be. I don't know of any cases involving that. Yes?

(Statement from the audience) Well, being from SLAC and under some DOE regulations, I am a physicist I'm not a lawyer, so I'm going to give a nontechnical opinion here.

(Paul Berman) Wait, no I'm the one who gives the non-technical opinion here.

(Statement from the audience) As employee of the Stanford Linear Accelerator Center, one of the things we sign away is our patent rights to inventions that we create under DOE contract. And the opinion that I've been told by our lawyer is that whenever we submit a preprint, even in the days before we were submitting them electronically, when we print a preprint that must in advance be vetted by someone who will see whether there are patentable rights. And if there are such, it has to be held.

(Paul Berman) That's the right advice.

(Statement from the audience) And that's the way we've been doing it as long as I've been there.

(Paul Berman) So the answer to you question is . . .

(Statement from the audience) Patent it, that's the copyright.

(Paul Berman) Well, but it also involves . . . Copyright is a whole different question. Copyright in the United States and in most countries no longer depends on publication. It used to. There are different rights that attach once something is published. But whoever it was, back here, who said earlier something is copyrighted when you write it out or type it up is exactly true. That's right. It doesn't happen when you say something, however.

(Statement from the audience) Yeah, that's a good point. Because most of the people here do this kind of work [INAUDIBLE]. I work for the Department of Energy and there if you put something out you have to file a patent disclosure form when you send in your preprint [INAUDIBLE] prior to even the preprint you have to go through the publication office.

(Paul Berman) Right. There are, in most places there ought to be those kinds of vetting or prechecking processes with the technology transfer office or some such to make sure that patent rights and in appropriate cases copyrights are not given away. But this is something that you need to be aware of. That doesn't minimize the issue of knowing who owns the copyright for administrative and also legal purposes in managing the publication process. Yes?

(Statement/question from the audience) I don't think you touched upon this yet, but there's another copyright issue which has to do with publishing the paper on a bulletin board. You've now told us by posting it on an electronic bulletin board it's publishing it, and publishing it in a print journal, and the paper existing on the bulletin board after it exists in the print journal. So there's a possible copyright problem there. Is that one that's more easily rectified by when, say, the author submits the paper to the print journal saying the print journal allowing that it be posted on the bulletin board, or the journal saying you can have it on the bulletin board until six months after it appears in print? Is that something that is more rectifiable, is that a conflict also?

(Paul Berman) No, it's not necessarily a conflict in the sense that the owner of a copyright can license any one of the rights that I put up there for somebody to do for a period of time, for a limited geography, those rights are infinitely divisible.

(Statement from the audience) So that's just paper; to work out that conflict is just some paper work.

(Paul Berman) It's more than paper work. It's an important allocation of risks and responsibilities as well. There is also what I call the toothpaste out of the tube problem, which was alluded to earlier. If something is on an electronic preprint server that is available widely, people are making copies of it all over the place, and then the copyright is transferred to somebody else, be it a journal, be it anybody else. The value of the copyright, and the valued added that can be achieved through the journal will be diminished because there are all of these copies that are out there. And then you get into the authentication problem. What if something changes between preprint and journal, who keeps track of all of that? These are very difficult, nonlegal problems, but they have legal ramifications. Harry?

(Statement from the audience) I only want to say, I know this group has questions but... [INAUDIBLE].

(Statement from the audience) Yeah, and I think, you know, a great deal of this will really be taken care of in the rest.

(Statement/question from the audience) Let me just understand, because it's a very important point, what you said in answer to these questions. If an author posts something on an eprint that is a publication, and he or she has the copyright, because it's the author. But then, at any other time, the author can transfer the copyright to whomever he or she wishes, including a journal of the American Physical Society. Right?

(Paul Berman) Yes.

(Statement/question from the audience) Very quickly, there is a notion at Brookhaven that if you slightly alter the version of a manuscript it becomes a different document. Can you speak to that a little bit?

(Paul Berman) This is metaphysics, not regular physics. At some point, and I don't know when it is. I mean, the intellectual property laws are filled with all of these interesting conundrums that people have been debating about for centuries. When does a change to something make it into a derivative work? I don't know the answer to that question. It is perfectly clear, however, that the original copyright owner, or the person to whom the copyright is transferred, has the exclusive right to authorize the creation of derivative works. Okay, that's the first point. The second point is copyright only covers - I'm going to say something and then I'm going to tell you it's not exactly true, but it's close enough. I was in applied mathematics and close enough is close enough. Copyright covers the expression of an idea, it doesn't cover the idea itself. So if you read a news story you can paraphrase it and write an article with the facts involved in it. So if somebody makes a correction to the facts in an article, it was reported in such and such that somebody did this, but it really ought to be this way. That's perfectly okay. That's not an infringement of copyright.