Legal Issues

From European e-Theses

Please note that this page is moderated by: Wilma Mossink (Netherlands)

E-theses: legal issues

Introduction Regarding their legal framework, electronic theses and dissertations (ETDs) do not differ fundamentally from other scholarly publications. The legal issues identified for those documents also need to be considered when a born digital or a converted paper ETD is deposited in an institutional repository and made available.

Specific legal issues for ETD’s

Definition of ETD

Two legal issues only occur with ETDs. The first one is the definition of an e-thesis. I refer to the practise that in some countries a thesis is a document that explains the research or scholarship of a graduate student. In other countries, it is a document for getting a doctoral or PhD degree. Therefore, it must be made clear what kind of document is deposited.

Provisions in educational law

The second issue arises from the fact that an ETD is the basis for a proficiency examination. Most countries will have special educational law provisions that address the procedure, realisation and publication of the document. It is well possible that educational law sets specific requirements for publication.

PhD regulations

More and more PhD regulations contain a provision to the effect that dissertations must be included in an institutional repository and made available to the public as an open access publication. Renger Ritzema of Groningen University in the netherlands conducted a study of enforcement possibilities/obligations for inclusion of dissertations in institutional repositories. The study specifically considers whether it is permissible – and enforceable – for a set of PhD regulations to contain such a provision. The study also considers the possibility and admissibility of an embargo. This study can be found at the end of this page.

Copyright issue

The copyright issue involves three components: Copyright ownership, third party material and making the work available.

Copyright ownership

A national Copyright Act regulates copyright ownership. Imperative for open access is that the creator of the ETD is the copyright owner and retains his/her copyright by not signing it away. A copyright policy of an institution should give clarity and guidance on this.

Regarding ownership of an ETD special attention must be given to multiple author issues, now more and more theses are the result of multiple contributions.

Third party material

Literary, dramatic, musical or artistic works created by an author not being the author of an ETD can be part of the work. Whether third party material can be used depends on the licence attached to it. The author often needs to seek permission for re-use. Strictly speaking: when an author has transferred her/his copyright to a publisher of his own work, the work is third party material. To prevent asking permission to re use her/his article the author better not transfer his copyright and retain the right to re use the work for an ETD.

The use of software could pose a problem. Except when is open source software is used, the use of software is rather limited because of the provisions of the Software Directive and its implementation in national law. The author must consult the underlying licence to find out what kind of use is permitted.

Making available

The author deposits the ETD in the repository of her/his institution. To do so the author grants the institution a licence to make the ETD available for use. This deposit licence should contain provisions about non-exclusivity, possible commercial use, long term archiving and preservation, and accessibility. To be ‘Berlin Declaration compliant’ the author has to grant to all users a free, irrevocable, worldwide, right of access to, and a license to copy, use, distribute, transmit and display the work publicly and to make and distribute derivative works, in any digital medium for any responsible purpose, subject to proper attribution of authorship as well as the right to make small numbers of printed copies for their personal use. Minimum conditions for a deposit licence are the permission to publish the uploaded ETD on the repository and make available to the public for the purposes of education, study and research, permission to forward the ETD to an archiving institution, permission to alter documents technically to secure long-term availability. An exemption from liability should be formulated in a disclaimer. Beside a legal text, the licence is expressed in a form simultaneously suitable for machine archives and worldwide retrieval. Therefore, it is recommended to list rights and privileges in metadata.

Embargo

The authority to archive the ETD or make it accessible is in accord with any access restrictions or embargo periods. Making available the ETD should take place immediately but a maximum period of six month can be agreed on. The Freedom of Information Act gives anyone a right of access to information held by an institution unless an exemption applies regardless the copyright owner. Reasons of restriction of an ETD must be explained in the terms of the Freedom of Information Act.

Sponsored research

Commercial or governmental organisations often sponsor research leading to an ETD. Some of these organisations have an interest in restricting access; others have an explicitly worded policy of making the result of their sponsorship publicly available as soon as possible. The wording of the grant of the contract underlying the funding gives directions on this issue.

Patents

In order for an invention to be patentable, it must be new as defined in the patent law. This novelty requirement states that an invention cannot be patented if certain public disclosures of the invention have been made. If the outcome of the research for a thesis is a patent, confidentiality is needed. There the work must be secured for one calendar year for patent and/or proprietary purposes. In this case open access must be delayed. Parts of the work may also be completely withheld from access.

Notice and take down procedure

The risk of an ETD infringing one or more laws can never be eliminated. To minimise and manage the risks it is recommended that institutions draw up, implement and publish a ‘notice and takedown’ policy and procedures.

Study (restricted scope) of enforcement possibilities/obligations for inclusion of dissertations in institutional repositories

Introduction

This study deals with the possibilities for enforcing the recommended or utilised provisions of the PhD regulations of the institutions concerned.

The study specifically considers whether it is permissible – and enforceable – for a set of PhD regulations to contain a provision to the effect that dissertations must be included in an institutional repository and made available to the public as an “open access” publication. Enforcement also means that if such a provision can be included in the PhD regulations, it can also be complied with by the university. In this context, we also consider the possibility and admissibility of an embargo.

The aim of the DARE programme, of which Promise of Science forms part, is to provide maximum access to the scientific output of the Netherlands. Open access emphasises the need to make available cultural and scientific/scholarly articles with as few restrictions as possible. Scientific/scholarly education institutions are starting to place the dissertations that their PhD candidates defend in an institutional repository. A number of universities have laid down the obligation for this to be done in their PhD regulations. To do this, however, they require the cooperation of their PhD candidates because it is the latter who hold the copyright. That copyright gives PhD candidates the exclusive right to publish and duplicate their dissertation.

PhD regulations

A PhD dissertation serves to enable the candidate concerned to proceed to his/her doctorate; it is a public document and must be defended in public. One of the conditions for a candidate to proceed to his/her doctorate is compliance with the requirements set out in the relevant PhD regulations (Section 7(18) of the Higher Education and Research Act [Wet op het hoger onderwijs en wetenschappelijk onderzoek, WHW]). The PhD regulations set out the procedure regarding preparations for taking a PhD and the actual ceremony (Section 7(19) of the Act).

A number of institutions have recently included a provision in their PhD regulations obliging the candidate not only to submit a printed version of the complete text of his/her dissertation but also an electronic version. Other institutions make the submission of an electronic version optional.

A few institutions require PhD candidates to sign a licence agreement drawn up by the Executive Board whereby the candidate grants the institution a non-exclusive licence to include the dissertation in an institutional repository. Others make use of a form in which the candidate grants permission for such inclusion. The relevant provisions are frequently as follows: a. non-exclusive consent for electronic distribution of the dissertation worldwide; b. irrevocable consent; c. the provision of consent for inclusion of the dissertation in the repository if other parties hold title to the dissertation (or parts of it), and in that connection also d. the possibility of an embargo.

The Higher Education and Research Act does not impose any restrictions regarding the content of PhD regulations and is therefore not incompatible with an obligation for the dissertation to be distributed worldwide via the institution’s repository. There is, however, another question that needs to be considered, namely whether this obligation infringes rights that are assigned to the PhD candidate under the Copyright Act [Auteurswet]. The traditional obligation to lodge a number – usually dozens – of printed copies of the dissertation in the institution’s library is less onerous than the requirement that it should be provided in electronic form. In the latter case, not only is the distribution area much bigger but the powers that may be granted to users of the repository are much more extensive. It should be noted that this depends on the conditions imposed by the body that manages the repository.

Copyright Act 1912 [Auteurswet 1912, (AW)]

A dissertation is an original work that shows evidence of a certain creativity on the part of the author. Such a work is subject to copyright. The author of the dissertation has the exclusive right to publish and duplicate it (see Section 1 of the Copyright Act). The scientist/scholar therefore holds the copyright in the dissertation. This conclusion is in line with most of the relevant legal literature and the applicable case law (although the latter is scarce). Section 7 of the Copyright Act (copyright held by the employer) does not apply. The copyright forms part of the author’s assets.

An indication that will help us decide whether the author’s copyright takes precedence over the obligation in the PhD regulations that requires the dissertation to be lodged in repository can be found in

Protocol 1 of the European Convention for the Protection of Human Rights and Fundamental Freedoms (ECHR)

Article 1 of Protocol 1 reads (as far as relevant here):

“Every natural or legal person is entitled to the peaceful enjoyment of his possessions. No one shall be deprived of his possessions except in the public interest and subject to the conditions provided for by law and by the general principles of international law.

The preceding provisions shall not, however, in any way impair the right of a State to enforce such laws as it deems necessary to control the use of property in accordance with the general interest or to secure the payment of taxes or other contributions or penalties.”

The term “property” does not have any strictly restricted significance in the sense of physical goods. A ruling to that effect was rendered by the European Court of Human Rights in the case of Gasus Dosier- und Fördertechnik GmbH versus The Netherlands (15375/89 ECHR, 23 February 1995):

“ The Court recalls that the notion ‘possessions’ in Article 1 of Protocol No.1 has an autonomous meaning which is certainly not limited to ownership of physical goods: certain other rights and interests constituting assets can also regarded as ‘property rights’, and thus as ‘possessions’, for the purposes of this provision…”

As regards the relationship between the second and first sentences of Article 1, the Court (21 February 1986, in the case of James et al. versus the United Kingdom (8793/70)) has found:

“The rule (in the second sentence) subjecting deprivation of possessions to certain conditions concerns a particular category, indeed the most radical kind, of interference with the right to peaceful enjoyment of property…; the second sentence supplements and qualifies the general principle enunciated in the first sentence…”.

Restriction on property in the general sense is therefore permissible. This was decided, for example, in the Zwierzyński versus Poland case which the Court ruled on in June 2001 (34049/96 ECHR, 19 June 2001). “A deprivation of possessions within the meaning of this sentence can only be justified if it is shown to be ‘in the public interest’ and ‘subject to the conditions provided for by law.’ Moreover, any interference with the property must also satisfy the requirement of proportionality…. The Court reiterates that an interference [with the property] must strike a ‘fair balance’ between the demands of general interest of the community and the requirements of the protection of the individual’s fundamental rights…. The requisite balance will be upset if the person concerned bears an individual and excessive burden…”.

No restrictions

Inclusion of a requirement in the PhD regulations for the candidate to allow his/her dissertation to be placed in a repository compels him/her to exercise the exploitation rights that form part of his/her copyright in a particular way. Leaving aside special circumstances, it means that exercising those rights is not illusory, either at law or de facto. After all, the candidate can still distribute his/her dissertation worldwide otherwise than in electronic form via the repository. This is not affected by the fact that his/her power to do so has been devalued, because he/she has granted the institution a non-exclusive licence. He/she is not subject to any unreasonably onerous burden. For example, the work and cost of updating his/her electronic dissertation do not fall to the candidate.

That may be different if the licence to be signed by the candidate provides for all types of commercial use to be made of the electronic version by those who consult the repository. In such a case, it might then be that the candidate is in fact unable to enjoy any benefit from the exploitation rights associated with his/her copyright. In that case, a financial contribution made when the licence is signed may be a way of overcoming that problem.

The pursuit of scientific study is one of the core tasks allocated to universities pursuant to the Higher Education and Research Act. Disseminating the results of research is inherent to that task, and a repository is the best possible way to ensure maximum dissemination of the knowledge that research generates. The obligation that the institution imposes on the PhD candidate to distribute his/her dissertation in electronic form via a repository is directly related to the tasks allocated to the institution by law.

Ensuring maximum distribution of the dissertation is also in the interest of the PhD candidate. That interest must be taken into account when deciding whether an obligation whereby the dissertation is distributed non-exclusively via a repository is a disproportionate reduction in the candidate’s rights to enjoy his/her copyright in the dissertation. It should be noted that in actual practice it is only a few dissertations that are the object of sufficiently widespread interest that their distribution represents a genuine financial interest on the part of the author.

Protocol No. 1 of the ECHR would seem to relate to regulations imposed by the State which reduce the citizen’s entitlement to enjoy rights that he/she possesses. There may be some doubt as to whether the imposition by an institution of an obligation via its PhD regulations can be viewed as the same thing as the imposition of regulations by the State. This does not, however, detract from the fact that Article 1 of the Protocol comprises instructions that an institution may not include obligations in regulations that it imposes pursuant to law that entirely eliminate enjoyment of the rights of the person who is subject to the obligation.

In the light of the above, the question of whether the latter is the case where PhD regulations are concerned that oblige the PhD candidate to grant a non-exclusive licence for distribution of his/her dissertation via a repository must be answered in the negative. Any appeal to Article 1 of Protocol No. 1 of the ECHR with a view to arguing that such an obligation in PhD regulations is inadmissible because it detracts from the candidate’s copyright is therefore groundless.

Embargo

The holder of the copyright can permit another party to duplicate or publish his/her work, or parts of that work, in a certain manner. Inclusion of a dissertation in a repository therefore requires the consent of the PhD candidate or the party that holds title in the dissertation. That consent – a licence – to exercise certain powers (exploitation rights) can be given either orally or in writing. With a view to being able to provide evidence that consent was in fact given, it is preferable for this to be done in writing. Transfer of the copyright as a whole can only be done in writing.

A dissertation, or parts of it, may be subject to the rights of other parties, meaning that the PhD candidate is no longer empowered to grant consent for its distribution via a repository. An example might be a dissertation that consists of a group of articles that have already been published or one of which such articles form part. If the PhD candidate, as the holder of title in the published articles, grants exclusive consent for distribution in digital form, then inclusion of the dissertation in a repository requires the consent of the holder of title in those articles.

In order to comply with the requirement in the PhD regulations that the dissertation should be distributed via a repository, the PhD candidate will need to have received that consent prior to the content and form of the dissertation being approved by his Doctorate Committee. It will not always be possible to get that consent in time. This is why at most institutions the licence agreement or consent statement to be signed by the PhD candidate for distribution via a repository contains an embargo provision to the effect that the dissertation will not be included in the repository if the candidate is not empowered to grant such licence/consent. This gives the candidate the opportunity – and the obligation – to gain the necessary approval of the third party concerned during the period of the embargo. The duration of such an embargo varies. A solution will need to be found if it is not yet possible to lift the embargo by the end of that period.

In its “Licence Agreement for Inclusion of Dissertations in the Institutional Repository of Leiden University”, Leiden University has come up with a reasonable solution to this difficulty. If the arrangements made with the publisher make it desirable for the material to be embargoed for longer than two years, the Doctorate Board, having heard the interested parties, will set a reasonable duration for the embargo.

The obligation imposed on the PhD candidate in the PhD regulations for his/her dissertation to be included in a repository may also conflict with the rights acquired by a third party in respect of distribution of the dissertation (or part of the dissertation). If the third party refuses to grant consent for distribution via the repository, then the PhD candidate cannot comply with the requirement in the PhD regulations without infringing the rights of that third party. He/she cannot be required at law to do that. With this in mind, the PhD regulations must provide for the possibility of digital distribution of the dissertation being embargoed so as to acquire the necessary consent after all.

One can argue against the possibility of an embargo that the dissertation is a public document that is being distributed so that anyone can take note of it and criticise it. However, that argument ignores the fact that the copyright consists of a combination of exploitation rights, for example publication in book form, in one or more countries, use within a closed network, or worldwide distribution via a repository. Although the dissertation may be published as soon as its content and form have been approved by the Doctorate Committee (see note 3), the promotion ceremony is the point at which everyone can actually take note of the book version of the dissertation. The fact that distribution via the most suitable medium – i.e. the repository – has perhaps not taken place at that point makes no difference.

Enforcement

Before the Doctorate Committee allows the candidate to proceed to his/her PhD, all the conditions must have been complied with. The committee decides whether that is in fact the case. The ultimate consequence of this is that non-compliance with the requirement to provide the dissertation for distribution via the repository will necessarily mean that the candidate will not be allowed to proceed to his/her doctorate. If the application of that sanction is not to be disproportionate, there will need to unwillingness on the part of the candidate to grant the consent requested by the institution.

A less far-reaching sanction is included in the PhD regulations imposed by Utrecht University, in which Section 19 provides that the chair of the Doctorate Committee can decide that the formal conferment will take at a point to be determined if the PhD candidate fails to submit the dissertation in accordance with the requirements for its form and with the “Instructions for PhD Candidates”.

Finally, it should be noted that the PhD regulations at a number of institutions provide that in special cases the Doctorate Committee or the Committee of Deans may deviate from the provisions of those regulations.

Conclusions:

1. There are no legal objections to including an obligation in the PhD regulations that dissertations should be provided to the institution for distribution via the repository.

2. In order to prevent any conflict with other obligations to which PhD candidates are subject, there needs to be the possibility of imposing an embargo on distribution via the repository.

3. Enforcement of the provision requiring that consent be given for distribution of dissertations via a repository can be carried out by the Doctorate Committee as a preventive measure when deciding whether the requirements for admission to the formal conferment of the PhD have been complied with.

4. Non-compliance with the obligation to make the dissertation available in digital form can be made subject to the sanction that the promotion ceremony will be postponed.

Groningen, 5 October 2006 Renger Ritzema

wilma mossink

4 January 2007