Copyrights and Federal Funding

Last November, we addressed the issue of ownership of any intellectual property that arises under a Federal contract, and specifically focused on the Bayh-Dole Act and its application to patentable technologies.  Today, we’ll explore who owns copyrightable materials created using Federal funds, as we’ve encountered much confusion with this issue in recent months.  When our office is asked “What is taking so long?” with respect to a pending contract, this particular issue is generally at the top of the list, as it has a substantial impact on the research capabilities of JHU.

As most of you know, Federal contracts are generally governed by the Federal Acquisition Regulations (FAR).  As it relates to copyrightable data, the applicable clause is 52.227-14, which states that the Government shall have unlimited rights in “data first produced in the performance of the contract,” whereas the Contractor will only receive a license to such data subject to certain restrictions.  However, the Contractor may assert copyright ownership of “scientific and technical articles based on or containing data first produced in the performance of this contract and published in academic, technical or professional journals, symposia proceedings or similar works.”  For all other materials, the Contractor must receive permission from the Contracting Officer to obtain copyright.  Consequently, the Contractor would own the publications directed to the research, but not the actual results that produced said publications, and, in most cases, the Contractor’s future use of the research results would be dependent on the consent of the sponsor, which is not always a given.

Needless to say, 52.227-14 as constructed is not necessarily conducive to the efforts of a non-profit research institution like JHU.  Fortunately, there is an avenue available for educational institutions, which is the fourth option of alternate language prescribed.  When “Alt 4” is identified as the governing provision for 52.227-14, the Contractor may, with few exceptions, “establish claim to copyright subsisting in any data first produced in the performance of this contract.”  While the Government receives an automatic license to any such copyrighted material for use for Federal purposes, the Contractor ultimately is the sole owner of the data, and thus is free to use it as it pleases.

In many negotiations, the request to include Alt 4 is eventually accepted.  However, the sponsor will occasionally balk at modifying the original language in 52.227-14, and in a subsequent post we’ll discuss a few of the rare circumstances where JHU might acquiesce.