January 13, 2021
Digital Innovations Authorship
By Dinesh Divakaran, Director, Digital Innovations
As digitization, automation, artificial intelligence, and machine learning become more prevalent in research and academic institutions, more innovators are filing invention disclosures relating to software and copyrightable-based innovations.
Seeking patent protection for software-related inventions has always had some drawbacks, namely, patents can take years to obtain and the software could be unrecognizable, or worse obsolete, by the time a patent would issue. These drawbacks have been further compounded by recent SCOTUS decisions in the last decade that have greatly impacted the ability to patent and enforce software innovations.
One alternative to patenting software-related innovations is copyright protection. While patents protect inventions and discoveries, copyright protects original works of authorship. Thus, ideas and discoveries are not protected by copyright law, although the way they are expressed may be.
Software code–including source code, object code, and scripts–is protectable under copyright law. On the other hand, copyright protection is not available for ideas, program logic, algorithms, systems, methods, concepts, or layouts, some of which may be in the scope of patent rights.
Inventorship vs. Authorship
Another difference between patents and copyrights is that patents are associated with inventorship and inventors while copyrights are associated with authorship and authors.
More often than not, academic culture is inclusive. Principal Investigators are encouraged to include all participants in a project as part of a goodwill effort and in gratitude to those who made a project possible. However, when filing invention disclosures on software or other copyrightable material, not all participants should necessarily be included as co-innovators.
In the case of innovations that resulted from software development efforts, only the programmers and any other participants that had direct creative input in the code development should be included as authors on the invention disclosure.
How is software code protected by copyrights?
Another difference between a patent and a copyright is that copyright protection exists at the moment the work is created and fixed in a tangible form that is perceptible either directly of with the aid of a machine or device. Hence, copyright protection is implied for all copyrightable expressions embodied in software code whether in source code, object code or scripts once the software code is fixed in a tangible medium (e.g., storing it on a hard disk, cloud, USB drive, etc.). Once the copyright is fixed, the author of the computer program then has copyright protection over others duplicating a segment of code, but not from others writing code independently to achieve the same or similar result.
Do you need to register your copyright?
In general, registration of the copyright is voluntary. One does, however, need to register the copyright in order to bring a lawsuit for copyright infringement. Registration also provides other benefits as well, such as prima facie evidence of the copyright (if registered within 5 years of publication) and the eligibility for statutory damages and attorney’s fees in successful litigation.
How does copyright authorship work?
In the U.S., copyrights are intrinsically attributed to the creative authors that had an input in the expression of work. Hence, only authors who had direct input in copyrightable work, through directly participating in the work’s production or development, or whose input directly affected the work’s creation process, can be included as co-authors.
How to discern who should be included as software co-authors/co-innovators?
The general rule of thumb for authors of software code is that the author(s) is/are the party(ies) who actually created the computer program.
When filing a software invention disclosure with your technology transfer office, think of the programmers who developed the code or their supervisors or collaborators who had direct creative input on how the code itself was developed.
If a participant in a team did not write code and did not directly have creative input into how the code was written, then that participant should not be included in an invention disclosure form as an author/innovator.
A nice metaphor to put this into context is comparing lines of code as if they were verses in a poem. Only the writer and editor had a direct input of creative expression into the work, and only they should be included as authors/innovators.
Sometimes, the development effort between parties is not equally distributed. In this case, it is encouraged that all authors reach a consensus on the contribution and distribution percentages before filing an invention disclosure.
Why is listing the correct authors on an IDF important?
When OTC licenses software, it distributes the revenues received from the licenses under Policy (link) to the “inventors”, their labs, depts, and colleges. If the IDF includes individuals that did not in fact contribute to the software, then it can result in complications for these distributions.
Who owns the Copyright?
Generally, the author(s) of the original work are the owners of the copyright. There are circumstances where this does not apply. For example, if the work is made for hire, then the employer or other person for whom the work was prepared is the initial owner of the copyright unless there is a separate agreement stating otherwise. Computer programs created by regular employees in the course of their employment are ordinarily presumed to be works for hire that are owned by their employers.
Who owns contracted software development work?
If a third party was contracted by Duke to develop software code for you, Duke would generally own the copyrights and the exploitation rights to that code under the work for hire contractual agreement. Innovators are advised to put work for hire contract agreements in place when working with third parties on software development. In such cases, the contractor would own copyrights in the code.
When are software copyrights jointly owned?
Ownership follows authorship. If programmers employed by more than one employer participated in the development of software code, the ownership rights over the software copyrights would be jointly owned between the employers. Such joint ownership is equal even if the development effort between the programmers is not equally distributed.
Joint ownership in copyright law means that each party can commercialize the work on its own but has a duty to account for the other when commercializing the work (unless otherwise provided for in a separate agreement). In other words, absent an agreement to the contrary, any revenue made by a co-owner must be shared with the other co-owner(s).
Who can help me understand this at Duke?
If you are a Duke University or Duke Health employee, paid student, researcher, or faculty member, Duke OTC’s Digital Innovations team can help you address any questions regarding software copyrights.