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INTELLECTUAL PROPERTY

Co-author credit after verbal agreement was ignored

Reader Question: Two years ago, I agreed in a conversation with a researcher at another university that I would analyze the composition of some new compounds he created in return for being listed as a co-author of the scientific paper we expected would result. I sent him the results over a year ago, but have heard nothing since, despite my reminders. I was therefore shocked to see in the latest issue of our field’s journal that he has published the paper, including the analysis I made, but I'm not included as co-author nor even mentioned in the acknowledgments. I feel that my team and me deserve formal recognition for our work, as it will help justify the grant money we've spent. Do I have any legal redress? How should I proceed?

Expert comments: This question raises the issue typically referred to as the right of attribution or (more often outside the United States) “moral rights.”

There is no good avenue for legal redress on a national, or federal, level in the United States for this situation. At the U.S. federal level, moral rights were recently provided in the Visual Artists Rights Act of 1990 (VARA), which is part of the U.S. Copyright Law, 17 USC § 106A. The VARA grants rights of attribution and integrity to an author. These rights, however, are limited to works of “visual art,” defined as not including "any book, magazine, newspaper, periodical, database, electronic information service, electronic publication or similar publication” (17 USC § 101). Thus VARA does not cover this situation involving the publication of a technical or scientific paper.

Attempts have been made to enforce a right of attribution (co-authorship) under the U.S. Trademark Act (referred to as the “Lanham Act”) on the theory that use of a work without providing attribution or acknowledging authorship constitutes a false “passing off” or a “misappropriation” of the work as one’s own work in violation of the Lanham Act.

In June 2003, however, the Supreme Court interpreted the Lanham Act to deny false-attribution claims as to the origin of a “communicative product.” (Datastar v. Twentieth Century Fox, 123 S.Ct. 2041, 2003).

Attempts also have been made to claim a right of attribution through the laws of defamation, the rights of privacy and publicity, and a common-law doctrine of misappropriation, all generally without success.

If the chemical analysis you describe involve more than simply obtaining and presenting data obtained through running a scientific apparatus, and included commentary and evaluation of the data presented in word form, a claim might be made instead to copyright infringement for unauthorized use of such a write-up.

It is not clear, however, that the use by the fellow researcher of such a write-up would be “unauthorized” when it was provided to the fellow researcher with the understanding that it would be incorporated into the anticipated paper. Further, even if copyright infringement could be shown, the relief that could be obtained would be directed to monetary damages and/or an injunction against future reproduction and use of the write-up. Such remedies would not address the claim of attribution or correcting authorship.

Outside the United States, legal redress for a violation of a right of attribution or moral rights may be obtainable in countries such as the United Kingdom, Canada, Australia, and New Zealand.

There is another problem concerning this scenario. It may be questionable that, as a practical matter, you should be identified either as co-author or named in the acknowledgments. Questions have been raised in scientific communities concerning the number of authors on papers and who truly qualifies as an author. There appear to be no definitive guidelines for determining whether someone should be listed as an author on a scientific paper.

The International Committee of Medical Journal Editors (ICMJE) has stated that:

“Authorship credits should be based on 1) substantial contributions to conception and design [of the project], or acquisition of data, or analysis and interpretation of data; 2) drafting the article or revising it critically for important intellectual content; and 3) final approval of the version to be published. Authors should meet conditions 1, 2, and 3, is the ICMJE’s present definition (www.icmje.org).” (emphasis added).

See, EMBO Reports, “Who Did What?,” Vol. 5, No. 5, page 446 (2004).

The National Institutes of Health (NIH) in its Guidelines for the Conduct of Research in the Intramural Research Program states that “individuals who have assisted in the research by their encouragement and advice or providing space, financial support, reagents, occasional analyses, or patient materials should be acknowledged in the text, but not be authors.”

Someone providing a bench, microscope, or who donated part of their funds toward the research of others might not automatically be granted co-authorship under such NIH guidelines. Under the scenario presented in your question, an argument can be made that the work involving analyzing the composition of some new compounds created by the fellow researcher does not meet these standards or guidelines for authorship credit.

You state that the agreement with the fellow researcher was made in a conversation, as opposed to writing. It would have been better if this agreement had been reduced to writing, even if in the form of an e-mail, including acceptance by the fellow researcher of the terms that you be included as a co-author in the published paper. Then a written contract could be shown to exist. The failure to name you as co-author might then be shown to be a breach of that written contract. A remedy that is obtainable for breach of a contract is specific performance of the terms and obligations of the contract, which in this case might include being named as a co-author.

But even if a legal remedy were available, as a practical matter it may not be the best remedy. In this case, you might instead consider having your lab director or department head contact the lab director or department head at the fellow researcher’s university to discuss the question in a quiet and friendly manner.

Comments by Todd Deveau, JD, partner, Thomas Kayden Horstemeyer & Risley, LLP, an intellectual property law firm in Atlanta.