SDSU SENATE POLICY FILE
May 6, 2003

INTELLECTUAL PROPERTY

1.0 The intellectual property policies of the University shall consist of two components: (a) the SDSU Patents policy and (b) the SDSU Copyrights, Trademarks, and Trade Secrets policy. Intellectual property shall include works of authorship, inventions, and discoveries that may be subject to protection by copyrights, trademarks, patents, and trade secrets. (See also Copyrights, Trademarks, and Trade Secrets; and Patents.)

2.0 These intellectual property policies shall foster and encourage the development of creative works and further to protect the rights of all parties involved, namely: San Diego State University, the San Diego State University Foundation, San Diego State University faculty, staff, and students, and external sponsors and contractors. Furthermore, these policies shall serve to educate the University community in the proper use of intellectual property and the application of intellectual property law.
3.0 Members of the University community shall become familiar with the provisions of these policies before engaging in activities covered by these policies. It may be necessary to disclose the creation of intellectual property and to sign a written agreement regarding this work. Inquiries concerning these policies shall be addressed to the Associate Vice President of Research.

PATENTS

1.0 Introduction: San Diego State University shall be committed to the development of ideas and to the broad dissemination of these ideas for the purpose of serving the public interest. The University shall also recognize and strive to protect the legitimate private interests of members of the University community who engage in research. Nothing in this policy shall restrict the rights of faculty or staff acting privately outside their capacities as University employees.

2.0 Definitions

a. “auxiliaries”: official auxiliaries of San Diego State University, namely, Aztec Shops, San Diego State University Foundation, Campanile Foundation, and the Associated Students, and other auxiliaries that may be established by the University.
b. “auxiliary funds”: funds, regardless of the sources, that are administered under the control, responsibility, or authority of the President of the University and the boards of directors of the designated auxiliaries.
c. “contractual agreement”: an enforceable agreement between the University and other persons or parties.
d. “inventor”: one or more persons, singly or as a group, who conceive or reduce to practice an invention.
e. “invention”: (1) any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof or (2) any patentable plant, for which United States patent rights may be obtained.
f. “intramural research”: research conducted by a University employee without the aid of external funding by outside sponsors.
g. “institution”: San Diego State University and its auxiliaries.
h. “institutional support”: support provided by either San Diego State University or its auxiliaries for a project from which an invention results.
i. “owner”: party or parties who own or control rights to an invention, whether patented or not.
j. “patent”: a grant from the U.S. Patent Office or any foreign patent office entitling the patent owner to prevent others from making, using, or selling an invention for a term of years.
k. “patent agreement”: formal written agreement to do all things necessary to comply with the Patent Policy of the University and to comply with the patent requirements of any grant or contract in which the signer participates. The patent agreement shall obligate the inventor (1) to disclose the details of any and all possible patentable inventions related to the project covered by the particular agreement, (2) to assist the SDSU Foundation or an assignee in the preparation and prosecution of any patent applications for inventions arising from the referenced project, and (3) to assign all rights to any such inventions to San Diego State University Foundation by means of a formal assignment document specifying the terms of the assignment including the return of patent rights to the inventor, should the SDSU Foundation decide not to apply for a patent, subject to the rights of any outside sponsors.
l. “SDSU resources”: funds and material resources, regardless of the source, administered under the control, responsibility, or authority of both the President of the University and the State of California.

3.0 Ownership of and Rights Related to Inventions Developed through Intramural Research

3.1 If institutional support in the form of either financial or physical resources is used in the research process from which the invention results, the institution shall have ownership rights in said invention. Moreover, the institution as a public agency shall ensure that inventions are reduced to practice so as to serve the public interest. Discharging this responsibility may involve assisting employees in pursuing patents and marketing products, as well as securing licenses for the use of inventions of value to the institution.

3.2 Institutional support shall refer to both State funds and auxiliary funds. For faculty research support, auxiliary funds shall be disbursed through the San Diego State University Foundation. Nothing herein should be construed as affecting the current legal relationship between San Diego State University and its auxiliaries.

3.3 The assignment of property rights between the institution and its employees shall depend upon the degree of institutional support devoted to the conception, reduction to practice, and development of an invention and products or processes that utilize such an invention. Institutional support for an employee’s project that yields an invention shall be classified under one of two categories:

3.31 Full Commission or Assignment

3.311 An invention shall be commissioned or assigned when there exists between the University, acting through any of its agents or auxiliaries, and the inventor, a contractual agreement to develop that specific invention.

3.312 For commission or assignment the contractual agreement shall specify the terms applying to ownership of the patent and the distribution of royalties between the inventor(s) and the University’s auxiliary.

3.313 For commission or assignment by the University, the terms shall be in accordance with controlling University policy.

3.32 Partial Institutional Support

3.321 An invention shall be considered to have partial institutional support if the institution incurs resource costs associated with the invention. If an invention receives partial institutional support, a contractual agreement defining patent rights and royalty shares shall be made by the institution and the inventor. If State resources are used in the project, the agreement shall provide that the State will be reimbursed for said resource costs from the royalties associated with resulting patents.

3.322 For institutional support, royalties from the product shall be divided according to the following formulation: First, in compliance with existing University policy, the State shall be compensated for its part of the total institutional cost. Second, remaining royalties will be distributed between the inventor(s) and the SDSU Foundation as specified in secs. 3.323–324.

3.323 These relative shares of remaining royalties (sec. 3.322) shall be negotiated and determined by mutual agreement of the inventor and the University or the San Diego State University Foundation if such an agreement can be reached prior to the acceptance of partial institutional support by the inventor.

3.324 If the parties have not reached an agreement prior to acceptance of institutional support, the issue shall be referred to the University Copyrights and Patents Committee (UCPC). The UCPC shall recommend to the Associate Vice President for Research a determination of the ownership of patent rights and the division of royalties. This recommendation shall reflect the following general principles:

a. The royalty interests in the invention shall be divided in accord with the relative value of the inventor’s contribution and the State or non-State institutional support channeled through the University or the San Diego State University Foundation.
b. In computing these values, the inventor’s contribution shall include direct costs incurred by the inventor (including patent application costs) and a reasonable value placed on the inventor’s time (unless compensated by the institution).
c. Institutional support shall include only (1) those costs which would not have been incurred by the institution in the absence of the development of the invention (including patent application costs) and (2) those other costs associated with the significant use of institutional equipment, supplies, facilities, employee time, or other institutional resources.
d. If the difference in the relative contributions of the inventor and the institution is not significant, net income derived from commercialization of the invention shall be divided 50 percent to the inventor and 50 percent to the San Diego State University Foundation. The share distributed to the inventor shall be the personal income of the inventor.
e. Unless otherwise covered by a prior agreement with the inventor (sec. 3.323) or with an outside sponsor (sec. 4.0), or unless the UCPC determines that the contribution of the institution is not significant, ownership of rights to inventions, trademarks, and other tangible research property conceived, reduced to practice, or developed with partial institutional support shall be assigned to the San Diego State University Foundation even though the Foundation shall share some of the net royalties with the inventor, as specified above.

3.325 If a patent management corporation is used to assist with the commercialization of an invention, the provisions of this section shall govern only that part of the royalties in excess of the portion retained by the management corporation.

3.326 The UCPC, after consultation with the Vice President for Business and Financial Affairs, may recommend that pursuing a patent would not be in the best interest of the University. In this case, the Associate Vice President for Research may determine that patent rights associated with the invention shall belong to the inventor, and the inventor shall be so notified in writing.

3.327 Each commercial license or assignment of an invention shall include the reserved right for the University to use the invention for research or educational purposes free of royalty.

3.4 Wherein persons or organizations other than University employees intend to use University resources or facilities in connection with an invention, exclusive of libraries, an agreement shall be executed in advance setting forth the understanding regarding the use of said resources and facilities, ownership rights, and financial arrangements.

3.5 Inventors disclosing inventions conceived, reduced to practice, or developed without institutional support or independent of their employment at the University may at their option refer their inventions to the University Copyrights and Patents Committee for patent prosecution or other disposition. If the UCPC recommends such disposition upon disclosure by the inventor, the inventor shall on the approval of the Associate Vice President for Research execute a Patent Agreement and an Assignment of Rights with the San Diego State University Foundation. Any royalties (after deduction for expenses, including the costs of a patent management corporation, if applicable) shall be shared by the inventor and the Foundation according to the terms specified in the Patent Agreement as agreed to by both parties.

4.0 Ownership of Patent Rights on Sponsored Grants and Contracts

4.1 If an outside agency provides support for a scientific research project, which may result in the conception, reduction to practice, or development of an invention, it may be necessary for the San Diego State University Foundation to enter into an agreement with that agency governing the ownership of patent rights and the distribution of royalties. In such cases, the Foundation may have to have a written patent agreement with the inventor on file in order to legally execute contractual documents, which agree to dispose of inventions of the faculty.

4.2 Faculty engaged in research on sponsored projects that stipulate assignment of patent rights to the San Diego State University Foundation or the sponsor shall (a) execute a written patent agreement with the San Diego State University Foundation at the time the grant or contract is accepted by the Foundation, (b) execute an Assignment of Patent rights either to the San Diego State University Foundation or to the sponsor as the circumstances may require, and (c) promptly disclose any inventions to the University Copyrights and Patents Committee by means of a Patent Disclosure form.

4.3 The San Diego State University Foundation shall notify the sponsor of any inventions and shall take the necessary further action.

5.0 A University Copyrights and Patents Committee shall be established.

6.0 Patent Agreements

6.1 The Associate Vice President for Research, acting for the President of the University, shall be designated as the institutional officer responsible for matters involving intellectual property. The Associate Vice President may designate other managers or directors of auxiliaries or units of the institution to act on his or her behalf. After consultation with the University Copyrights and Patents Committee, the Associate Vice President or designee may approve agreements with respect to (a) ownership and other rights related to inventions, (b) obtaining patents, and (c) granting licenses in the name of the institution for all inventions.

6.2 Pursuant to the Operating Agreement between Trustees of The California State University and San Diego State University Foundation, the San Diego State University Foundation shall be designated as the University agent for securing and executing agreements for the University with respect to patents and inventions, in matters other than the award of compensation for University (i.e., State) expenses. The Foundation shall also establish a Technology Transfer Office for the development, management, and commercialization of University-owned technologies and shall maintain a central file for patents secured in the name of the University and licenses granted by or to the University.

6.3 Wherein University (i.e., State) resources have been used in the development of an invention, agreements upon the reimbursement of State expenses shall be executed. The Vice President for Business and Financial Affairs shall prepare such agreements and shall represent the interests of the State in negotiating proper agreements with the Foundation and the inventor. These agreements shall be prepared and executed prior to the initiation of the patent search. If possible, wherein the use of University (i.e., State) resources is likely to be substantial, the agreement on reimbursement shall be made before the use of these resources.

7.0 Appeals: Inventors may appeal a decision of the Associate Vice President for Research or the Vice President for Business and Financial Affairs with respect to the disposition of patent rights and royalties. Appeals shall be directed to the President of the University, who may, after examining the required evidence, request additional review or modification of the patent agreement.

8.0 Obligations of University Employees and Other Included Parties

8.1 San Diego State University faculty and staff, as a condition of their employment, shall comply with the terms of this policy. Students involved in research, as a condition of their education or employment at San Diego State University, shall also comply with the terms of this policy.

8.11 To protect the inventor’s interests and to establish the inventor’s ownership rights to inventions conceived before employment at San Diego State University, each inventor shall disclose to the University Patent Officer at the time of employment, inventions conceived, reduced to practice, developed, or being developed by the inventor.

8.12 In order to determine the rights of the inventor and the University, inventors shall promptly report to the University Patent Officer potentially patentable inventions conceived, reduced to practice, or developed while employed or enrolled at the University. Such disclosures shall be made in writing as soon as possible but no later than the 30 days before the date of first publication of the invention.

8.13 Inventors shall inform other persons who may have rights to the invention (including co-inventors, collaborators, and research assistants) of the terms of this policy.

8.14 Inventors shall assign to the Foundation the rights in and to an invention in which the University has an interest as determined by the University Patents and Copyrights Committee and in accordance with this policy.

8.15 Inventors shall cooperate with the Foundation in pursuing patents or licenses or otherwise commercializing inventions assigned to the University.

8.2 The foregoing obligations shall also apply to those who wish to refer inventions or discoveries developed independently of the institution for patent prosecution or other disposition by the University.

9.0 Use of Funds Received from Inventions: Funds received by the San Diego State University Foundation through royalties or licenses or other consideration for inventions shall be distributed in accordance with the Distribution of Royalties Guidelines developed by the University Copyrights and Patents Committee, recommended by the Associate Vice President for Research, and approved by the President. Such funds shall be used to support scholarly activities at the University with these exceptions:

9.1 Funds generated by a unit of the University (e.g., an academic department) in the performance of a specific ongoing function may be used to defray the actual expenses of that function. Specific letters of agreement may be entered into between the University and units involved in such functions.

9.2 Royalty income allocated to the inventor(s) in accordance with a Patent Agreement (sec. 6.0) between the inventor and the SDSU Foundation shall be unconstrained by the stipulations of this section.

9.3 The disposition of funds accruing to the Associated Students shall be unconstrained by the stipulations of this section.

10.0 Amendments: Changes in or exceptions to this policy shall be recommended by the University Research Council and the Associate Vice President for Research for approval by the Senate and the President.

COPYRIGHTS, TRADEMARKS, AND TRADE SECRETS

1.0 Introduction: Copyrights are used to protect the rights of creators of a diverse group of products ranging from traditional literary, musical, artistic, and dramatic works to lecture notes, multimedia classroom productions, and computer software. This policy shall be flexible and adaptable.

2.0 Definitions
a. “assignment of rights”: a transfer of rights under copyright by the owner to the University, a publisher, or any other individual, agency or corporate entity. A transfer of copyright ownership shall not be valid unless it is in writing.
b. “author” or “creator” (synonymous): one who produces a copyrightable work and is the initial owner of the copyright in the work, except a “work made for hire.” Authors of a “joint work” shall be co-owners of the copyright in the work. Unless otherwise assigned, the author of a contribution to a “collective work” shall be the owner of the copyright in the separate contribution as distinguished from the copyright in the collective work.
c. “auxiliary”: The official auxiliaries of San Diego State University shall be Aztec Shops, San Diego State University Foundation, Campanile Foundation, and the Associated Students.
d. “auxiliary resources”: funds and material resources, regardless of the sources, that are administered under the control, responsibility, or authority of the President of San Diego State University and the boards of directors of the designated auxiliaries.
e. “contractual agreement”: an enforceable agreement between the University and individuals or parties.
f. “copyright”: a legal right to protect certain original works of authorship that are fixed in any tangible form of expression from unauthorized reproduction, sale or other transfer, display, performance, or preparation of a derivative work. Copyright protection shall extend to but not be limited to the following works: (1) literary works such as books, textbooks, technical articles, manuscripts and class notes; (2) musical works, including any accompanying music; (3) dramatic works, including any accompanying music; (4) pantomimes and choreographic works; (5) pictorial, graphic, and sculptural works; (6) motion pictures and other audiovisual works, including classroom videos; (7) sound recordings; and (8) computer software, CD ROM systems, and other programs fixed in a tangible medium.
g. “copyright notice”: For visually perceptible copies, the copyright notice should contain (1) the symbol “©” or “copyright” or “copr.,” (2) the year of first publication of the work; and (3) the name of the owner of copyright in the work. The copyright notice for sound recordings should contain (1) the symbol, (2) the year of first publication of the sound recording, and (3) the name of the owner of the copyright. The notice should be affixed to copies of the work in such a manner and location as to give reasonable notice of the copyright claim. Copyright is secured automatically when the work is created. For works published on and after March 1, 1989, use of the copyright notice shall be optional, though highly recommended. Before March 1, 1989, use of the notice was mandatory on all published works, and any work first published before that date shall bear a notice or risk loss of copyright protection.
h. “derivative work”: a work based upon one or more existing works. It is created when one modifies by annotation, editing, translating, or otherwise significantly changing the contents of a work. Only the copyright owner shall have the right to make derivative works. Anyone who creates an unauthorized derivative work, including a user who downloads a copyrighted file, may be liable if the unauthorized derivative work is reproduced, distributed, publicly performed, or publicly displayed.
i. “duration of copyright”: term of copyright registration. For a work created on or after January 1, 1978, it shall be automatically protected from the moment of its creation and shall be terminated 70 years after the death of the author. For a joint work the term lasts for 70 years after the last surviving author’s death. For “works made for hire” and both anonymous and pseudonymous works, the duration of copyright shall be 95 years from publication or 125 years from creation, whichever is shorter.
j. “employee”: University employees shall include full-time and part-time faculty, classified staff, student employees, appointed personnel, graduate assistants and teaching associates, persons with “no salary” appointments, and shall also include visiting faculty and academic professionals who develop intellectual property using University or auxiliary resources and facilities unless there is an agreement providing otherwise. Persons who are not such University or auxiliary employees and who come to the University as guest lecturers or to teach colloquia, seminars, or short courses shall not be considered University employees in their teaching and classroom activities unless an agreement provides otherwise.
k. “fair use”: a use of copyrighted material permitted by law even though no express authorization is granted by the copyright owner as long as the use is for purposes such as criticism, comment, news reporting, teaching, scholarship, or research. Demonstration of such a purpose shall not by itself be sufficient to sustain a claim that the use is “fair.” Fair use shall be deter-mined by the following statutory criteria: “(1) the purpose and character of the use; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for the value of the copyrighted work” (U.S. Copyright Act, 1976, sec. 107).
l. “infringement”: except for fair use and other specifically permitted exceptions, exercise without permission of rights granted by law to the copyright owner; for example, when a material portion of a copyrighted work is copied or is commercially exploited without such permission.
m. “institution” or “University”: San Diego State University and its auxiliaries.
n. “institutional support”: resources associated with the creation, production, or distribution of a copyrighted work provided by either San Diego State University or its auxiliaries.
o. “intellectual property”: ideas, products, processes, and resultant communications that can be protected by law from unauthorized exploitation. This shall encompass copyrights, patents, trademarks, trade secrets, technical data, or know-how.
p. “license”: that which provides for a contractual relationship in which a copyright owner grants permission for use of the copyrighted material. An “exclusive license” shall provide an agreement by the licensor not to license any other person to exploit the licensed intellectual property and also that the licensor or his agents will not exploit the licensed property. A “sole license” shall reserve the right of the licensor to use or sell the licensed property. A “nonexclusive license” shall allow the licensor to grant other licenses to the intellectual property.
q. “material”: all copyrightable works including but not limited to writings, lectures, musical or dramatic compositions, sound recordings, films, videotapes, and other pictorial reproductions, computer programs, listings, flow charts, manuals, codes, instructions, and software.
r. “noncopyrightable works”: works not protected by copyright as follows: (1) ideas, systems, processes, procedures, concepts, or methods; (2) titles of works, names of products or services, even if they are novel or distinctive; (3) names of businesses, organizations, or groups; (4) catch words, slogans, short phrases, and familiar symbols for familiar designs; (5) lists of ingredients, contents, or as a general rule, forms; and (6) information that is in the public domain (common property and property that contains no original authorship) such as standard charts, measuring devices, tables, or lists taken from government public sources.
s. “owner”: the party or parties who own(s) or control(s) rights to copyright-able material.
t. “public domain”: material is said to be in the public domain if it is not protected by common law or statutory copyright and is therefore available for copying without infringement.
u. “publication”: sale, lease, loan, giving away, or otherwise making available to the public the original or tangible copies of a work
v. “San Diego State University resources”: funds and material resources, regardless of the source, administered under the control, responsibility or authority of both the President of the University and the State of California.
w. “trademarks,” “trade names,” and “service marks”: A trademark shall be any word, name, symbol, or device, or combination of these, adopted and used by a manufacturer or merchant to identify its goods and to distinguish them from those manufactured or sold by others. A trade name shall be the name of a business, corporation, company, etc., that distinguishes one business entity from another. If the mark is used to identify a service, it shall be classed a service mark. In general, trademarks appear on products and service marks appear in advertising. The first user of a mark generally shall have the right to exclude subsequent users from adopting a similar mark on similar goods or services.
x. “trade secret”: in California and defined by statute, “information, including a formula, pattern, compilation, program, device, method, technique or process, that derives independent economic value from not being generally known to the public or to other persons who can obtain economic value from its disclosure or use; and is the subject of efforts that are reasonable under the circumstances to maintain its secrecy.” A trade secret shall not be claimed on something that may be readily available by reverse engineering or disassembly. A trade secret shall be kept secret and shall give its owner a competitive advantage over those who do not have access to the secret. Other forms of intellectual property shall be protected via disclosure. Whether particular information constitutes a legally protect-able “trade secret” shall be determined through litigation, and misappropriation of a “trade secret” shall be the basis for civil and criminal action.
y. “work made for hire”: a specifically ordered or commissioned work or a work prepared by an employee within the scope of employment. In such cases, the employer shall be considered the legal author and owns all of the rights in the copyright unless otherwise expressly agreed in writing.

3.0 Ownership of and Rights Related to Copyrightable Material

3.1 Those who engage in scholarship and creative activity shall have specific privileges and responsibilities associated with the products of such work. San Diego State University shall subscribe to the general principle that the results of scholarship and creative work shall be the property of those who originate them and who therefore have the right of copyright or final disposition of their work. Such property rights, however, shall be defined in relation to all of the resources contributed by persons, institutions, and agencies involved in the scholarship and development of the creative work.

3.2 Institutional support shall refer to both state and auxiliary resources. In institutional support for scholarship and creative activities, auxiliary resources shall be disbursed through the San Diego State University Foundation. Nothing in this policy should be construed as affecting the current legal relationship between San Diego State University and its auxiliaries as set forth in the Operating Agreement Between Trustees of The California State University and San Diego State University Foundation.

3.3 The University shall facilitate creative activities among its faculty and students and shall make its facilities available for such purposes. Where use of University resources has been made in the creation of copyright-able works, the University may exercise its right to participate in the management, protection, and marketing of such works. The assignment of property rights between the institution and its employees shall depend upon the nature and degree of institutional support devoted to the creation of the copyrightable work. Institutional support for an employee’s project yielding copyrightable results shall be classified under one of four categories: (a) commissioned or assigned works, (b) institutional works, (c) partial institutional support, and (d) no institutional support, as defined and specified below.

3.31 Commissioned or Assigned Works

3.311 A product shall be commissioned or assigned when there exists between the University, acting through any of its agents or auxiliaries, and the author a contractual agreement to develop that specific product.

3.312 In a commission or assignment, the contractual agreement shall specify the terms applying to the relative rights and ownership of the copyright and the distribution of royalties between the author and the University or its auxiliary.

3.313 In a commission or assignment by the University, the terms of the agreement shall be consistent with University policy.

3.32 Institutional Works (Works Made for Hire)

3.321 A product shall be an institutional work when it is created for the University or its auxiliaries within the scope of the creator’s employment rather than through a specific contract as in sec. 3.31. For instance, as defined by law, work assigned to employees such as writing a manual or computer program shall be a “work made for hire” whether or not there is an express written agreement specifying that work as a “work made for hire.” However, the parties may agree otherwise in a signed written agreement to that effect in accord with the processes outlined in sec. 7.4.

3.322 Unless specifically commissioned or assigned by the University (sec. 3.31), traditional faculty developed academic works (e.g., class notes and syllabi, recorded or broadcast instructional activity, books and articles, works of fiction and nonfiction, poems and dramatic works, musical and choreographic works, pictorial, graphic, and sculptural works, and educational software commonly known as “courseware”) are not considered works made for hire. When such works are created independently and at the faculty member’s own initiative for traditional academic purposes, the faculty member shall retain copyright ownership of the work. This policy shall apply independently of the physical medium in which these “traditional academic works” appear, that is, on paper or in audiovisual or electronic form. However, any such works which involve the use of significant institutional resources must be disclosed to the University by the faculty member in accordance with sec. 3.33, Partial Institutional Support. When the University has invested substantial resources in the production of copyrightable material (fixed media), then the work falls under Partial Institutional Support.

3.323 The University or a designated auxiliary shall be considered the legal author and shall own all rights in the copyright to institutional works.

3.33 Partial Institutional Support

3.331 A product shall be considered to have partial institutional support if the author has made use of institutional resources in the development of the product and if the resource cost to the institution is significant. In computing the total cost of the product, the author’s contribution will include all direct costs incurred by the author and a reasonable value placed on the cost of the author’s time (not all of the author’s time will necessarily be allocated to the author’s credit). Institutional support will include (a) those costs that would not have been incurred by the institution in the absence of the development of the copyrightable work and (b) those other costs associated with the significant use of institutional equipment, supplies, facilities, employee time, or other institutional resources.

3.332 The author’s use of office, library, or personal computer shall not be construed to be “significant” use of institutional resources, and projects limited to such institutional support may not be disclosed to the University. Consequently, authors who produce textbooks or other noncommissioned or unassigned works and use no other University resources, shall not be considered to have made “significant” use of institutional resources, and therefore the provisions of sec. 3.331 shall not apply. If, however, additional and significant use of University resources was made (e.g., additional and significant secretarial time, photographic services, use of recording studios, or specially purchased materials) in the development of the work, the work shall be considered to have been made with significant institutional support, and therefore the provisions of sec. 3.331 shall apply.

3.333 Assigned time for special educational or research projects, or other institutional grants, fellowships, or scholarships shall be considered to be significant University resources when used in conjunction with the development of a copyrightable work. When such resources are accepted as part of a specific commission or assignment that might lead to a copyrightable work, the acceptance constitutes the type of commission or assignment referred to in sec. 3.312, and the terms of secs. 3.331–332 shall apply. When noncommissioned or otherwise unassigned copyright-able works (e.g., textbooks, creative artistic works) are developed in conjunction with the use of such resources award-ed primarily for purposes of faculty professional development (including sabbatical leaves and difference-in-pay leaves), the University shall make no claim of copyright ownership or royalty distribution, and the terms of secs. 3.331–332 shall otherwise apply.

3.334 If a project that is likely to lead to the development of a copyrightable work entails partial institutional support as defined above, the author shall disclose the project to the University. A contractual agreement shall then be made by the institution and the author at the written request of either party. If at all possible, this contractual agreement should be drafted and signed before the author accepts institutional support. The contract should specify all terms having to do with the assignment of copyrights and granting of licenses and the distribution of royalties. These terms shall be negotiated and determined by mutual agreement of the author and the University or the San Diego State University Foundation.

3.335 If no such agreement can be reached or no contract is made prior to the creation of the work, the issue shall be referred to the University Copyrights and Patents Committee (UCPC). The UCPC shall recommend how the Associate Vice President for Research might determine the relative ownership of copyrights and the division of royalties. In the absence of a prior contract stipulating otherwise or as otherwise provided in this policy, this recommendation shall reflect the following general principles:

a. In compliance with existing University policy, the State shall be compensated for its part of the total institutional support.
b. The remaining royalties shall be distributed between the author and the San Diego State University Foundation according to the relative values of the author’s contribution and the support contributed by the University and the Foundation. This calculation will be subject to the limitations of sec. 3.331.
c. If the difference in the relative contributions of the author and the institution is not significant, net income derived from licensing, distribution, sale of the work shall be divided 50 percent to the author and 50 percent to the San Diego State University Foundation. The share distributed to the author shall be the personal income of the author.
d. Copyright ownership may vest in whole or in part with either the author or the institution, depending on the relative values of the author’s contribution and the institution’s support.

3.336 Each contractual agreement regarding ownership or assignment of rights to a copyrightable work having partial institutional support shall include the reserved right for the University to use the work for research or educational purposes free of royalties. Similarly, the author shall have a royalty-free right to use the work for personal, noncommercial purposes.

3.337 Whenever persons or organizations other than University employees intend to use University resources or facilities in connection with the creation of a copyright-able work, exclusive of libraries, an agreement shall be executed in advance setting forth the understanding regarding the use of said resources and facilities, ownership rights, and financial arrangements.

3.338 If intended or used for commercial purposes, otherwise noncommissioned or nonassigned fixed media reproductions (e.g., films, phonorecords, or magnetic and other electronic recordings) of “real time” performance events occurring in San Diego State University venues, including classroom lectures, laboratory demonstrations or related instructional activities shall be disclosed to the University, and all rights in the copyright to such works shall be determined in accordance with sec. 3.33. The University or its auxiliaries shall not make, distribute, or sell any such works without prior written agreement of the author involved.

3.34 No Institutional Support

3.341 A project shall be considered to have received no institutional support if the author has not caused the institution to incur any cost over and above the normal costs of supporting instructional activities.

3.342 Lacking institutional support, the author of a copyright-able product shall hold all rights and shall receive all royalties. (Cf. secs. 7.66–67.)

3.343 Authors disclosing copyrightable works created without institutional support or independent of their employment at the University may refer their works to the University Copyrights and Patents Committee for copyright assignment or other disposition. If the University Copyrights and Patents Committee recommends such disposition upon disclosure by the author, the author shall, on the approval of the Vice President for Research, execute a Copyright Agreement and an Assignment of Rights with the San Diego State University Foundation. Royalties less deduction for expenses shall be shared by the author and the San Diego State University Foundation according to the terms specified in the Copyright Agreement as agreed to by both parties.

3.4 Works of intellectual property created at San Diego State University that are both copyrightable and patentable shall be governed by the terms of the San Diego State University Patent Policy.

3.5 Intellectual property developed by students as a result of classwork is ordinarily owned by the students with following exceptions: (a) unless significant institutional resources have been used in the development of the work, in which case ownership shall be determined in accordance with secs. 3.33 and 3.4; or (b) unless the student has entered an agreement with the instructor specifying alternative terms of copyright ownership; or (c) unless the work was completed under the terms of a contract with the University or its auxiliaries, in which case ownership shall be determined in accordance with sec. 3.31.

3.6 Ordinarily the author of a thesis or dissertation completed at San Diego State University shall hold the copyright to the manuscript, but that right shall not automatically extend to the data used in developing the manuscript or to subsequent publications based on that data.

4.0 Use of the Copyrighted Works of Others

4.1 The University shall protect and shall not infringe on the copyrights of others within or without the University community. Use of copyrighted works without permission of the owner may subject the user and the University to liability from an infringement action or other possible causes of action. Administration, faculty, staff, and students shall restrict their use of copyrighted materials according to University policies, University guidelines, applicable statutes, and relevant court decisions.

4.2 Neither shall the rights of copyright owners be exclusive, nor shall permission be necessary for every use. Exceptions to the exclusive rights of copyright owners shall include inter alia (a) “Fair Use” of copyrighted works; (b) limited copying of computer programs; (c) certain “Library Exemptions”; (d) application of the “First-Sale Doctrine,” which shall allow the display and resale of purchased copyrighted work but shall not apply to sound recordings, computer programs, or distribution through a computer network.

4.3 The University shall encourage use of copyrighted materials either through acquiring the permission of the copyright owner or under one of the legitimate exceptions outlined in sec. 4.2. (See also “Fair Use of Copyrighted Works: A Crucial Element in Educating America,” The Trustees of The California State University [1995].)

5.0 San Diego State University Trademarks, Trade Names, and Service Marks

5.1 Trade or service marks relating to goods or services distributed by the University and its auxiliaries shall be owned by the University or the auxiliary. Examples include names, symbols, logos, seal, mascot, or other logos used with University activities and events.

5.2 It shall be inappropriate to use without permission the name of the University or any of its auxiliaries with any activity not sponsored or authorized by the University.

5.3 Requests to license University trademarks should be addressed to the Vice President for Business and Financial Affairs. Requests to license trademarks owned or affiliated with any of the University’s auxiliaries should be addressed to the General Manager’s office of the auxiliary.

6.0 Trade Secrets: Certain technologies may be licensable to industry as trade secrets. Use of trade secret protection may be approved by the University but should be used rarely. However, if public disclosure will inhibit a company’s willingness to invest the necessary funds for product development and commercialization, the University, in consultation with the employee, may license the subject intellectual property as a trade secret.

6.1 Knowledge formalized as a trade secret cannot be disclosed in any open scientific forum as long as it maintains legal trade secret status.

6.2 Intellectual property falling within this category shall be treated with regard to licensing and income sharing as are other patented technologies and copyrighted works.

7.0 Administration of Policies and Procedures

7.1 Authorized Contracting Officer: The Associate Vice President for Research, acting for the President of the University, shall be designated the institutional officer responsible for matters involving intellectual property. The officer may designate other managers or directors of auxiliaries or units of the institution to act on his or her behalf. After consultation with the University Copyrights and Patents Committee and the college dean involved, the Associate Vice President or designee (a) may approve agreements with respect to ownership and other rights related to intellectual property, (b) may register copyrights and obtain patents, and (c) may grant licenses in the name of the institution for all intellectual property.
7.2 Pursuant to the Operating Agreement between the Trustees of the California State University and the San Diego State University Foundation, the San Diego State University Foundation shall be designated as the University’s agent for securing and executing agreements with external entities on behalf of the University with respect to intellectual property, in matters other than the award of compensation for University (i.e., State) expenses. The San Diego State University Foundation shall also establish and maintain a Technology Transfer Office for the development, management, and commercialization of all intellectual property secured in the name of the University and of all licenses granted by or to the University. The President may designate persons to act as University agents and contracting officers responsible for securing and executing agreements about copyrightable works or trademarks owned by other designated auxiliaries.

7.3 A University Copyrights and Patents Committee shall be appointed (see Committees: Copyrights and Patents Committee).

7.4 Intellectual Property Agreements

7.41 Agreements Involving University-Commissioned or -Assigned Works (Works Made for Hire)

7.411 When employees accept a commission or assignment from the University or one of its auxiliaries to produce a copyright-able work not specifically within the defined scope of their employment, an agreement shall be reached specifying the terms that apply to ownership of the work and to the distribution of royalties between the creator(s) and the San Diego State University Foundation. Unless otherwise specified in the agreement, the University shall be considered the author and owner of such specially assigned or commissioned works.

7.412 Before commencing any such work on institutional matters involving the creation of intellectual property for or on behalf of the University, nonemployees, independent contractors, and outside consultants shall sign an agreement with the University setting forth the understanding of the use of University resources and facilities, ownership rights, and financial arrangements.

7.42 Agreements Involving Works Developed with University Resources: When-ever significant institutional support in the form of either financial or physical resources is used in the creative process from which the intellectual property results, the institution shall have an interest in the work, and a contractual agreement shall be made between the institution and the creators of the work. The contractual agreement shall specify the terms applying to ownership of the work, assignment of copyrights, and the distribution of royalties between the creator(s) and the San Diego State University Foundation. These agreements shall be prepared and executed within a reasonable time, ordinarily not to exceed 60 days from the disclosure of the work to the University. If possible, especially wherein the use of University (i.e., State) resources is likely to be substantial, the agreement shall have been made before the use of these resources.

7.43 Agreements on the Reimbursement of State Resources. Wherein considerable University (i.e., State) resources have been used in the development of intellectual property, agreements upon the reimbursement of State expenses shall be executed. The Vice President for Business and Financial Affairs shall prepare such agreements and shall represent the interests of the State in negotiating proper agreements with the San Diego State University Foundation and the author. These agreements shall be prepared and executed within a reasonable time ordinarily not to exceed 60 days from the disclosure of the work to the University. If possible, wherein the use of University (i.e., State) resources is likely to be substantial, the agreement on reimbursement shall have been made before the use of these resources.

7.44 Agreements with Outside Sponsors

7.441 If an outside agency provides support for an educational or research project that may result in the creation of intellectual property, the San Diego State University Foundation may enter into an agreement with that agency governing the ownership of property rights and the distribution of royalties. In such cases, the Foundation may require a written intellectual property agreement with the author on file in order to legally execute contractual agreements about the disposition of copyright-able works of the faculty.

7.442 Faculty engaged in sponsored projects that stipulate assignment of intellectual property rights to the San Diego State University Foundation or to the sponsor shall (a) execute a written intellectual property agreement with the San Diego State University Foundation at the time the grant or contract is accepted by the San Diego State University Foundation, (b) execute an Assignment of rights either to the Foundation or to the sponsor as the circumstances may require, and (c) promptly disclose intellectual property to the University Copyrights and Patents Committee on an Intellectual Property Disclosure form. The San Diego State University Foundation shall notify the sponsor of any inventions and shall take necessary further action.

7.45 Model or Property Releases: Model or property releases should be obtained before any videotaping, broadcasting, or other recording or transmission of classroom, laboratory, or other instruction. Those whose names, persons, or likenesses will be shown in whole or in part shall have signed a written release.

7.46 Release of University Rights: Wherein the University has ownership rights to intellectual property and the San Diego State University Foundation determines that commercialization efforts are no longer justified, the University upon request of the author and for good cause may release copyright ownership to the author. Such releases shall generally be subject to a perpetual royalty-free license to the University to use the work for its own purposes. Requests for reassignment of rights to the author should be submitted to the Associate Vice for Research.

7.5 Appeals: An author may appeal a decision of the Associate Vice President for Research or the of Vice President for Business and Financial Affairs regarding the disposition of property rights and royalties. All appeals shall be directed to the President of the University, who after examining necessary evidence may request additional review or modification of the intellectual property agreement.

7.6 Use of the University Name

7.61 Works Owned by the University. All works of authorship owned by the University shall be published as follows: “© [year of publication or creation], San Diego State University. All rights reserved.” Goods owned or distributed by the University or services rendered by the University shall show thereon the University’s trademarks and service marks in packaging and in advertising such goods and services.

7.62 Works Owned by the Author or Creator

7.621 An employee of the University not acting within the scope of employment may make a true and accurate statement of a relationship or connection with or employment by the University in the course of stating experience or qualifications as an author of the intellectual property.

7.622 In those circumstances in which such identification might reasonably be construed as implying the support or endorsement of the work or the advancement or opposition of any political, religious, sociological, or economic movement, activity, or program by the University, the employee shall issue an appropriate disclaimer concurrent with the use of the University name, declaring in substance that the University has not endorsed the work or is not involved in the particular activity or program.

7.7 Responsibilities of University Employees and Other Included Parties

7.71 The University, its employees, faculty, students, staff, independent contractors, and any person or entity deriving any interest pursuant to this policy shall ensure adherence to this policy and any referenced agreement.

7.72 In order to determine the rights of the author and the University, the author of works conceived or developed while employed or enrolled at San Diego State University shall promptly report to the University Copyright and Patent Officer all copyright-able works in which the University may have a right or interest. A written Disclosure of Copyrightable Work and a Declaration of Institutional Support shall be submitted as soon as possible but no later than 30 days from the date of the creation of the work.

7.73 The author shall inform all other persons who may have rights to the copyrightable work (e.g., collaborators, research assistants, students) of the terms and obligations of this policy.

7.74 The author shall assign to the San Diego State University Foundation any and all rights in and to a copyrightable work in which the University has an interest as determined by the University Patents and Copyrights Committee and in accordance with the provisions of this policy.

7.75 The author shall cooperate with the San Diego State University Foundation in pursuing copyrights, obtaining licenses, or otherwise commercializing intellectual property assigned to the San Diego State University Foundation.

7.76 The author shall not enter into any “exclusivity agreements” regarding the licensing of copyrightable works that would conflict with normal university work assignments or the satisfactory performance of all duties of the unit employee.

7.77 Authors who enter independent copyright agreements with publishers should reserve rights with those publishers to reproduce their own materials for their own instructional and research purposes.

7.8 General Advice and Assistance: The Division of Research Administration of the Office of Graduate and Research Affairs shall be providing assistance to faculty, students, and other University employees in complying with this policy. The Technology Transfer Office of the San Diego State University Foundation shall provide assistance to faculty, students, and other University employees in recognizing, securing, and protecting intellectual property rights associated with the products of their research and other scholarly endeavors. The author of copyrightable works should contact the Technology Transfer Office or the Division of Research Administration for current information on intellectual property procedures and to ensure appropriate action in accordance with the San Diego State University Copyright, Trademark, and Trade Secret Policy.

7.9 Income Sharing of Funds Received from Copyrightable Works: Any funds received by the San Diego State University Foundation through royalties or licenses or through other consideration for copyrightable works shall be distributed in accordance with the Distribution of Royalty Guidelines developed by the University Copyrights and Patents Committee, recommended by the Associate Vice President for Research on advice of the college deans and approved by the President. Such funds shall be used to support scholarly activities at San Diego State University with these exceptions:

7.91 Funds generated by a unit of the University (e.g., an academic department) in a specific ongoing function may be used to defray the actual expenses of the function. Specific letters of agreement may be entered into between the University and units involved in such functions.

7.92 Royalty income allocated to the author in accordance with a Copyright Agreement between the author and the San Diego State University Foundation shall be unconstrained by the stipulations of sec. 7.9.

7.93 The disposition of funds accruing to the Associated Students shall be unconstrained by the stipulations of sec. 7.9.

7.94 The disposition of funds accruing to certain other auxiliary organizations and formally organized campus groups may, on approval of the President, also be unconstrained by the stipulations of sec. 7.9.

8.0 Amendments: Any change in the Copyrights, Trademarks, and Trade Secrets policy shall be recommended by the Research Council and the Associate Vice President for Research for approval by the Senate and the President.

Last Updated 9/8/03