[Federal Register Volume 60, Number 176 (Tuesday, September 12, 1995)]
[Rules and Regulations]
[Pages 47310-47312]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 95-22573]
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NATIONAL AERONAUTICS AND SPACE ADMINISTRATION
48 CFR Parts 1827 and 1852
[NFS Case 940013]
RIN 2700-AB72
NASA FAR Supplement; Assignment of Copyright in Software
AGENCY: Office of Procurement, National Aeronautics and Space
Administration (NASA).
ACTION: Final rule.
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SUMMARY: This is a revision of the NASA FAR Supplement to allow the
Contracting Officer to direct the contractor to claim copyright in
computer software and assign the copyright to the Government or another
party. Assignment to the Government can only be directed when the
Contractor has not previously been granted permission to claim
copyright on its own behalf. This is needed because existing contract
clauses do not provide this authority for some types of contracts.
EFFECTIVE DATE: October 1, 1995.
FOR FURTHER INFORMATION CONTACT:
Nina Lawrence, (202) 358-2424, or Tom Deback, (202) 358-0431.
SUPPLEMENTARY INFORMATION:
A. Background
NASA published a Proposed Rule on October 13, 1994 (59 FR 51936),
amending the NASA FAR Supplement (NFS) to allow the Contracting Officer
to direct the contractor to claim the copyright in computer software
and assign the copyright to the Government or another party. Assignment
to the Government can only be directed when the contractor has not
previously been granted permission to claim copyright on its own
behalf. NASA is publishing this Final Rule with some changes in the
provisions set forth in the Proposed Rule, which reflect some of the
comments received.
FAR clause 52.227-14, Rights in Data--General, as modified by the
NFS, currently provides that a contractor may establish (assert) claim
to copyright in software developed under the contract provided the
contractor obtains the Contracting Officer's prior written permission.
This revision will not restrict this right. However, if a contractor is
not interested in claiming copyright, or developing the software, and
is unwilling to assign the copyright to NASA or its designee, no
copyright can be claimed for the software. In many, if not most, cases
this does not matter. However, in some situations where further
development of software is needed before the software can be marketed,
the U.S. private sector may be unwilling to invest in developing and
marketing the software without the availability of copyright
protection. This revision will provide authority to acquire assignments
of copyright in such situations.
It is NASA's intent to announce to the public the availability of
licensable software and the criteria which will be utilized in
selecting licensees. Exclusive and partially exclusive licenses will be
granted only after public notice and opportunity to file written
objections.
FAR 27.404(g)(3) authorizes agencies to include contractual
requirements to assign copyright to the Government or another party.
The FAR further directs that any such requirements established by
agencies should be added to clause 52.227-14, Rights in Data--General.
This authority is the same as is presently contained in FAR clause
52.227-17, Rights in Data--Special Works. That clause is specifically
tailored for acquisitions where data is the main deliverable; it lacks
many elements necessary in contracts involving a mix of deliverables.
The proposed revision will result in a clause that more appropriately
addresses NASA's needs in acquisitions involving mixed deliverables.
Further, with the increased emphasis in recent years on promoting U.S.
competitiveness and the commercialization of Government-generated
technology, it is important that steps be taken to protect computer
software that has a significant technology transfer value. The
availability of copyright protection will enable NASA to enhance U.S.
competitiveness and more effectively transfer valuable computer
software technology.
This revision does not apply to or affect contracts for basic or
applied research with a university or college (see NFS 1827.404(e)(1)
or 1827.409(e)).
Comments on the Proposed Rule were received from four
organizations, and a number of comments were duplicative in subject
matter. Several comments related to the rights of contractors. One
organization commented that the contractor assigning the copyright
would not retain a copyright license, and that to avoid potentially
becoming an infringer, the contractor would be motivated to seek the
Contracting Officer's permission to claim the copyright. The authority
to direct assignment of copyright is presently contained in FAR clause
52.227-17, Rights in Data--Special Works, which has been in use for
many years. Contractors have not been motivated to request permission
to claim copyright in order to avoid potential infringement, even
though the clause provides that the contractor may use the data first
produced only for the performance of the contract. Rather, contractors
have requested permission to claim copyright for the purpose of further
developing and/or commercializing the software.
Some commenters expressed concern that a contractor would not be
given the opportunity to copyright software, or NASA would arbitrarily
refuse to grant the contractor permission to copyright. The purpose of
the revision proposed by NASA is to effect the further
[[Page 47311]]
development and/or commercialization of the software, and if the
contractor has a plan for accomplishing such further development and/or
commercialization, permission to copyright will be granted. NFS
1827.404(e)(2) sets forth guidelines covering when the Contracting
Officer may, in consultation with the installation's patent or
intellectual property counsel, grant the contractor permission to
copyright, publish, or release to others computer software first
produced in the performance of the contract. For example, permission to
copyright will be granted if (i) the contractor has identified an
existing commercial computer software product line, or proposes a new
one, and states a positive intention of incorporating the computer
software first produced under the contract into that line, either
directly itself or through a licensee; or (ii) the contractor has made,
or will be required to make, significant contributions to the
development of the computer software by co-funding or by cost sharing,
or by contributing resources.
Another group of comments related to the question of when copyright
arises and use of the word ``establish'' in the proposed revision.
There is no question that under 17 U.S.C. 102(a) ``copyright protection
subsists * * * in original works of authorship fixed in any tangible
medium of expression * * *'' and that under 17 U.S.C. 201, ownership of
the copyright vest initially in the author or authors. However, it is
also clear from the legislative history of the Copyright Act of 1976
that contract provisions can determine whether a contractor can claim
copyright protection in data first produced under the contract. See the
discussion of Section 105, U.S. Government works, in the legislative
history of the Copyright Act of 1976, i.e., H.R. Report 94-1476, 94th
Congress Second Session, pages 58-59 and S. Report 94-473, 94th
Congress, First Session, pages 56-57. Both reports state: ``As the bill
is written, the Government agency concerned could determine in each
case whether to allow an independent contractor or grantee to secure
copyright in works prepared in whole or in part with the use of
Government funds.''
NASA is aware that use of the word ``establish'' presents
difficulties, and, for the purpose of conformity with the copyright
statute, has construed the word ``establish'' to mean ``assert''. NASA
is taking this opportunity to revise the NFS so that if reflects
copyright law by using ``assert'' in the Final Rule in lieu of
``establish,'' and by requiring in the NFS that a provision be added to
the FAR Rights in Data--General and Special Works clauses which states
that the word ``establish'' in those clauses shall be construed as
meaning ``assert''.
Some comments related to the necessity for the revision, e.g., lack
of evidence that the U.S. private sector is unwilling to invest in the
software without copyright protection; vagueness of Proposed Rule's
goals; and the availability of copyright protection for derivative
works based on public domain software. NASA's goal is to more
effectively transfer valuable computer software technology to the
private sector thereby enhancing commercialization of Government-
generated technology and U.S. competitiveness. Disseminating software
to the public without restriction works well for many computer software
products. However, it has been the experience of Federal agencies that
in situations where further development of software is needed before
the software can be marketed, the U.S. private sector is unwilling to
invest in developing and marketing the software without copyright
protection. The GAO in its June 1992 report, entitled ``Technology
Transfer: Copyright Law Constrains Commercialization of Some Federal
Software'', concluded that although many factors affect a company's
decision whether to invest in Federal software, lack of copyright
protection for that software is a consideration. The principle is well
established with respect to the U.S. general public that technology
which is freely available to everyone is often not of interest to
anyone where considerable risk capital is required to achieve
commercialization.
The Final Rule will provide the flexibility needed to ensure the
transfer and commercialization of valuable computer software in
situations where the contractor is not interested in further
development and commercialization of the software.
B. Executive Order 12866
The Office of Information and Regulatory Affairs has determined
that this rule is significant under E.O. 12866. This regulation is
needed on an urgent and compelling basis because valuable computer
software developed under NASA contracts may become part of the public
domain, and thereby lose its value, if the software is not copyrighted.
Current regulations grant the contractor the right to request
permission to claim copyright, but there is no procedure to force the
contractor to exercise that right or to transfer the copyright to the
Government. The regulation meets the need, i.e., provides protection
for the software's value, by allowing NASA to direct the contractor to
claim copyright and assign the copyright to NASA or another party. The
potential costs for this regulatory action are limited to the nominal
costs involved in claiming and transferring copyright. These costs may
vary, but are estimated to be less than $100 per copyright, and it is
anticipated that less than 10 contractors annually would each be
required to incur this expense one time. Because the contracts under
which valuable software is likely to be developed are usually cost-
reimbursable research and development contracts, the costs for
copyright and transfer would normally be charged to the Government. The
potential benefits are the value of the protected software. This value
cannot be measured, as it depends on future discoveries and
developments. This value cannot be considered to be taken away from
contractors, because it never belonged to them.
C. Paperwork Reduction Act
The Paperwork Reduction Act does not apply because the proposed
changes to the NASA FAR Supplement do not impose any recordkeeping or
information collection requirements, or collections of information from
offerors, contractors, or members of the public which require the
approval of the Office of Management and Budget under 44 U.S.C. 3501,
et seq.
D. Regulatory Flexibility Act
NASA certifies that this regulation will not have a significant
economic impact on a substantial number of small entities under the
Regulatory Flexibility Act (5 U.S.C. 601 et seq.).
List of Subjects in 48 CFR Parts 1827 and 1852
Government procurement.
Tom Luedtke,
Deputy Associate Administrator for Procurement.
Accordingly, 48 CFR Parts 1827 and 1852 are amended as follows.
1. The authority citation for 48 CFR Parts 1827 and 1852 continues
to read as follows:
Authority: 42 U.S.C. 2473(c)(1).
PART 1827--PATENTS, DATA, AND COPYRIGHTS
2. In section 1827.404, paragraphs (d)(1) and (e)(1) are revised
and paragraphs (e)(4) and (e)(5) are added to read as follows:
1827.404 Basic rights in data clause.
* * * * *
[[Page 47312]]
(d) * * *
(1) The Contracting Officer shall consult with the installation's
Patent or Intellectual Property Counsel before granting in accordance
with FAR 27.404(f)(1)(ii) permission for a contractor to claim
copyright subsisting in data, other than computer software, first
produced under the contract. For copyright of computer software first
produced under the contract, see paragraph (e) of this section.
(e) * * *
(1) Paragraph (3) (see 1827.409(e) and 1852.227-14) is to be added
to paragraph (d) of the clause at FAR 52.227-14, Rights in Data--
General, whenever that clause is used in any contract other than one
for basic or applied research with a university or college. Paragraph
(d)(3)(i) of the clause provides that the contractor may not assert
claim to copyright, publish, or release to others computer software
first produced in the performance of a contract without the contracting
officer's prior written permission. This is in accordance with NASA
policy and procedures for the distribution of computer software
developed by NASA and its contractors.
* * * * *
(4) If the contractor has not been granted permission to copyright
in accordance with paragraphs (e)(1) and (e)(2) of this section,
paragraph (d)(3)(ii) of the clause at FAR 52.227-14, Rights in Data--
General (as modified by 1852.227-14), enables NASA to direct the
contractor to assert claim to copyright in computer software first
produced under the contract and to assign, or obtain the assignment of,
such copyright to the Government or its designee. The Contracting
Officer may, in consultation with the installation patent or
intellectual property counsel, so direct the contractor in situations
where copyright protection is considered necessary in furtherance of
agency mission objectives, needed to support specific agency programs,
or necessary to meet statutory requirements.
(5) In order to insure consistency with copyright law, paragraph
(d)(3)(iii) clarifies that the word ``establish'' in FAR 52.227-14,
Rights in Data--General shall be construed as ``assert'' when used with
reference to a claim to copyright.
* * * * *
3. In section 1827.405, paragraph (c) is added to read as follows:
1827.405 Other data rights provisions.
* * * * *
(c) Production of special works. Paragraph (f) of the clause at
1852.227-15 is to be added to the clause at FAR 52.227-17, Rights in
Data--Special Works, whenever that clause is used in any NASA contract.
PART 1852--SOLICITATION PROVISIONS AND CONTRACT CLAUSES
4. In section 1852.227-14, paragraph (3) of the addition to the FAR
clause is redesignated as paragraph (3)(i) and new paragraphs (3)(ii)
and (iii) are added as follows:
1852.227-14 Rights in Data--General.
* * * * *
(3)(i) * * *
(ii) If the Government desires to obtain copyright in computer
software first produced in the performance of this contract and
permission has not been granted as set forth in paragraph (d)(3)(i)
of this clause, the Contracting Officer may direct the contractor to
assert, or authorize the assertion of, claim to copyright in such
data and to assign, or obtain the assignment of, such copyright to
the Government or its designated assignee.
(iii) Whenever the word ``establish'' is used in this clause,
with reference to a claim to copyright, it shall be construed to
mean ``assert''.
(End of addition)
5. Section 1852.227-15 is added to Part 1852 to read as follows:
1852.227-15 Rights in Data--Special Works
As prescribed in 1827.405(c), add the following paragraph (f) to
the basic clause at FAR 52.227-17:
(f) Whenever the words ``establish'' and ``establishment'' are
used in this clause, with reference to a claim to copyright, they
shall be construed to mean ``assert'' and ``assertion'',
respectively.
(End of addition)
[FR Doc. 95-22573 Filed 9-11-95; 8:45 am]
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