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IV. Rights Management

 

Libraries want to share content; publishers want to sell it. Museums strive to preserve culture, and artists to create it. Musicians compose and perform, but must license and collect. Users want access, regardless of where or how content is held. What all of these stakeholders (and more) share is the need to identify content and its owner, to agree on the terms and conditions of its use and reuse, and to be able to share this information in reliable ways that make it easier to find. (Bearman et. al., 1999)

 

Introduction

Intellectual property rights (IPR) include copyright, trademarks, patents, publicity rights, privacy, and trade secrets, but it is copyright that will mostly concern this audience. Cultural institutions are primarily interested in two of the many issues that surround copyright: how they can legally digitize material in which they may not hold the copyright and how they can ensure that no one else can use the materials they have digitized without their approval (tacit or otherwise).

 

Copyright

Broadly speaking, copyright grants exclusive but limited rights to the creator of an original work to copy, reproduce, perform and distribute it. From its inception, however, copyright law has been as much about the promotion and circulation of knowledge and good ideas as it is about the protection and rewarding of creators. Limitations and exemptions to creators' copyright protection are as important to society as the protection itself. Certainly in the United States, the balance between the rights of creators and the rights of society in general is of key importance.

 

Categories of material

In the United States, "original works of authorship" protected by copyright include:

• literary works, which covers all kinds of literature (software is included in this category);
• dramatic works, including any accompanying music;
• musical works, including any accompanying words;
• artistic works;
• pantomimes and choreographic works;
• pictorial, graphic, and sculptural works;
• motion pictures and other audiovisual works, whatever their medium (film, television, DVD, etc.);
• sound recordings, which covers the spoken word;
• architectural works.

Practice and case law have tended to view these categories in their broadest sense. Maps are protected as ‘pictorial, graphic, and sculptural works’, and computer programs are protected as ‘literary works’. This categorization may affect certain rights; for instance, ideas, facts, short phrases, and blank forms are excluded from copyright protection, which focuses on the particular expression of ideas in a tangible medium.

 

Copyright and Digitization

Before carrying out any digitization, institutions need to establish the copyright status of the source material that will be digitized. If this investigation shows that the institution does not itself hold the copyright in the material, then the institution has three options: (a) abandon plans to digitize the material, (b) secure permission to digitize the material; or, (c) proceed with the project anyway under one of the exemptions to the exclusive rights of the copyright owner found in U.S. copyright law, such as the fair use exemption, but on the understanding that this involves an assessment of the risks of doing so (see Managing IPR Risk section, below). Projects using derivatives, such as photographic reproductions, rather than originals for digitization, need to examine the copyright status of both the derivative and the original. They may find, for instance, that by digitizing a photograph of a work of art they are infringing the rights of both the photographer and the artist who created the original work.

Once the project team establishes the rights status of the original and derivatives they plan to digitize, they should declare this clearly in the metadata associated with the digital resource and/or the relevant web page.

 

 

Duration of protection and public domain

Any digitization project should begin with an analysis of who owns the copyright in the work to be digitized. If your evaluation of the copyright status of the material you hope to digitize reveals that your institution does not own the copyright, it may still be possible to digitize it if the rights in the material have passed into the public domain. For most categories of material, and particularly for literary and artistic works created after 1977, copyright protection generally lasts for seventy years after the death of the author/creator. When this term expires, the work enters the public domain where “all entities, information and creative works are available for use by anyone for any reason without restriction” (Zorich 2000). Note that there can be moral rights issues that exist independently of copyright term under certain foreign laws (see discussion of moral rights below). To avoid moral rights problems, avoid drastic cropping of visual works or other alterations and avoid removing the names of artists and authors of original work you reproduce.

The following chart prepared by Laura Gasaway, Director of the Law Library and Professor of Law at the University of North Carolina, summarizes the relevant terms and duration of protection according to the U.S copyright law, depending on the date when the material was produced or published. The chart makes clear the implications of the new copyright term that came into effect in the U.S. with the 1998 Copyright Term Extension Act. By extending U.S. term from 50 years after the death of the author to 70 years, and altering the special terms for certain published and unpublished works, this Act effectively put a twenty-year moratorium on works entering the public domain (Zorich 2000). For example, works published in 1923 that were next in line to enter into the public domain have been delayed until January 2019 as a result of the Act. Unpublished works (for example, historical documents like letters, diaries and manuscripts) created before 1978 will lose copyright protection in January 2003 unless they are published before that date. Previously unpublished works published between 1978 and 2003 are granted extended protection to December 2047.

 

 

Work for hire

Although in some countries only an individual can be recognized as the author of a work, in some countries, such as in the U.S. and the UK, the author can also be an organization. Unless otherwise specified by contract, copyright in any material (whether literary, graphical or photographic) created by staff at universities, as part of their normal duties will belong automatically to the university as the employer. In addition to copyrights created by employees, employers can also own copyrights created by independent contractors when the work falls into one of the narrow categories of work defined by the copyright law as a “work for hire” and when there is a written agreement between the parties that the work will constitute a “work for hire.” It is likely, therefore, that if your institution were to commission a photographer to take a photograph of an original artwork, the copyright in the photograph would reside with the photographer unless specific actions are taken to transfer the copyright to the institution. For this reason, it is important to clarify these issues from the outset and include appropriate transfers of copyright in all relevant contracts. For works commissioned before digitization became a common practice, the current rights position must be considered, and in some cases re-negotiation may be necessary. If you are outsourcing digitization work, make sure that the contract specifies that you hold any rights resulting from the digital files created by the contractor.

 

Fair use

Cultural institutions may wish to digitize materials that are not in the public domain, whose copyright they do not own. In this case, they should examine whether the material and the way they plan to use it may be covered by ‘fair use’. ‘Fair use’ is an exemption under U.S. copyright law that allows one to legally use copyrighted material without the explicit permission of the copyright owner. Fair use is named differently by different national legislations. Different nations also vary on what can be covered by fair use, but these usually include non-profit educational use and private research and study. In the U.S., fair use is one of a set of exceptions to exclusive rights and is framed by four key factors:

1. the purpose and character of the use (e.g. whether such use is of a commercial nature or is for not-for-profit educational purposes; whether the use is transformative);
2. the nature of the copyrighted work (e.g. whether it is based on facts or is an imaginative work);
3. the amount and substantiality of the portion used in relation to the copyrighted work as a whole (a portion of a book rather than the whole, for example);
4. the effect of the use upon the potential market for the copyrighted work.[1]

In an effort to address the interpretation of these four factors, the Clinton Administration established the Conference on Fair Use (CONFU) in 1994. CONFU brought together intellectual property owners and users to negotiate new guidelines for the fair use of digital material in nonprofit, educational contexts. The Conference set up several working groups to investigate the issues, but when CONFU concluded in 1998, none of the groups had produced guidelines acceptable to all parties. Most major educational and cultural organizations were critical of the draft guidelines that had been prepared and opted not to endorse them. In some cases, it was felt that the Guidelines asked the right questions, but provided the wrong answers.

Some institutions decided to review and adjust the Guidelines or design new ones of their own to meet their needs and fulfill a wider strategy of IPR management. One example is the Visual Resource Association’s Image Collection Guidelines: The Acquisition and Use of Images in Non-Profit Educational Visual Resources Collections, a guide that was developed as a result of VRA’s involvement in preparing the CONFU Digital Images Guidelines. Another example, adapted from the CONFU guidelines, are the short and clear “Rules of Thumb” for interpreting the fair use of copyrighted materials devised by Georgia Harper for the University of Texas System. Finally, a third example of an alternative to the CONFU Guidelines is the following “Checklist for Fair Use,” prepared by the Indiana University Copyright Management Center (Indiana University-Purdue University Indianapolis).

 

 

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Checklist for Fair Use

Please complete and retain a copy of this form
in connection with each possible "fair use" of a copyrighted work for your project.

Name: ______________________________________	Date: _______________________________________
Institution: ____________________________________	Project: _____________________________________

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PURPOSE
Favoring Fair Use				Opposing Fair Use
		Teaching (including multiple copies for classroom use)				Commercial activity
		Research				Profiting from the use
		Scholarship				Entertainment
		Nonprofit Educational institution				Bad-faith behavior
		Criticism				Denying credit to original author
		Comment
		News reporting
		Transformative or Productive use (changes the work for new utility)
		Restricted access (to students or other appropriate group)
		Parody
NATURE
Favoring Fair Use				Opposing Fair Use
		Published work				Unpublished work
		Factual or nonfiction based				Highly creative work (art, music, novels, films, plays)
		Important to favored educational objectives				Fiction
AMOUNT
Favoring fair use				Opposing fair use
		Small quantity				Large portion or whole work used
		Portion used is not central or significant to entire work				Portion used is central to work or "heart of the work"
		Amount is appropriate for favored educational purpose
EFFECT
Favoring Fair Use				Opposing Fair Use
		User owns lawfully acquired or purchased copy of original work				Could replace sale of copyrighted work
		One or few copies made				Significantly impairs market or potential market for copyrighted work or derivative
		No significant effect on the market or potential market for copyrighted work				Reasonably available licensing mechanism for use of the copyrighted work
		No similar product marketed by the copyright holder				Affordable permission available for using work
		Lack of licensing mechanism				Numerous copies made
						You made it accessible on Web or in other public forum
						Repeated or long term use

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Prepared as a service of the
Copyright Management Center at Indiana University
located on the campus of IUPUI
http://www.iupui.edu/~copyinfo/
rev. 3.99

Created: 26 July 1999, ARK       Last Updated: 25 January 2001, LDB

Comments: copyinfo@iupui.edu URL: http://www.iupui.edu/~copyinfo/fuchecklist.html

Copyright 1995-2001. The Trustees of Indiana University

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Institutional guidelines can help project managers make consistent decisions on what can be considered ‘fair use’ in their everyday work. However, it is important to remember that it is ultimately a court of law that determines whether a particular use, when challenged, is ‘fair use’ or not, according to the particular circumstances of each case. Some uses which may seem as if they are clearly ‘fair use’ might be challenged.

 

 

Moral rights

Even when a cultural institution or publisher owns the copyright in a piece of literature or art, in many countries the creator (e.g. the artist or author) retains the moral right (droit moral) to be identified as the creator of the work and is granted protection against derogatory treatment of his or her work. For cultural institutions this means, for example, that it is essential to ensure that the original artist’s name be linked with his or her creation (and the use of appropriate metadata is very useful in this direction), that works be normally used in their entirety, and that they not be amended (e.g. digital copies should not be cropped or edited). These issues should be covered by institutional policy in clear guidelines for use. In the U.S., moral rights are limited to the 1990 Visual Artists Rights Act, which recognizes visual art authors’ right of attribution, their right of integrity, and their right to prevent the destruction of copies of the work[2]. However, not all moral rights fall within copyright laws as in the U.S., and not all moral rights terms are finite. In some instances, as in France, moral rights may survive the expiration of copyright. Thus one must be careful not to alter or denigrate a reproduction beyond recognition or in a context that may be objectionable to the artist or artist’s estate.

 

Seeking permission to use copyrighted material

In order to legally use material that is not in the public domain and is not covered by ‘fair use’ or otherwise exempt from liability for infringement, you must acquire permission from the rights holder(s) (unless the material has been licensed for your use and the permissions have been assigned as a part of the license). Depending on the nature of the work or the country of origin of the author or artist, there are numerous collective rights organizations that can help you to clear these rights. The Copyright Clearance Center (CCC) (http://www.copyright.com) for parts of books or journals is one such example.

 

 

When you do not know who the rights owners are and colleagues cannot offer any additional information, you can contact the U.S. Copyright Office (http://www.loc.gov/copyright/), which provides online searching of some of its records on registration and copyright ownership documents. It also carries out professional searches for a fee. Once you know who the rights owner is, you can contact them directly to ask for permission to use the material. Apart from your contact details, you should describe clearly:

• the work you want to use (with a copy if possible);
• the scope of the project;
• where and how you intend to use the work (e.g. names of key contributors, approximate size of the project, URL, anticipated life of the project, how it is going to be distributed);
• any future use you envision (e.g. if you are preparing a CD-ROM for educational use, you might want to consider web delivery too);
• the specific rights you seek (e.g., for use in all classes you teach, or your department teaches; for all editions and future revisions of the published CD-ROM; for USA, North American, or world rights; for English-language specific languages, or all languages; for print, performance, display, or electronic rights).

You should ask for instruction on the wording of the credit line, the copyright notice related to their material, any other conditions they might have, and the fees that might apply. You should also ask for confirmation that they have authority to grant permission and if not, you should request that they direct you to the appropriate rights-holders. You may request them to warrant that your use will not, to their knowledge, infringe the rights of any other third party.

Make sure to document all your efforts to trace the rights-holders, since if they prove to be untraceable or unresponsive and you decide to go ahead with the project, such documentation could help to prove “good faith best efforts,” or “due diligence” if original rights-holders were to initiate legal proceedings at a later date. Such evidence might enable you to argue that the economic impact was limited as the owner(s) made it difficult to license the information.

 

Licensing schemes

Given the considerable effort and resources that cultural organizations expend in creating digital assets, issues of information control, licensing structures, and royalties deserve careful attention. Strict security measures can constrain and frustrate legitimate users, while rights management tools currently require a significant investment. Additionally, even the best technology-enabled protection schemes can be defeated by persistent hackers. And, while such hacking is illegal under the DMCA, pursuing infringers in court is costly and time consuming.

After considering these issues, organizations normally conclude that it is more sensible to develop an effective business model for the use of digital collections. Many of these business models depend upon licensing, which can be helpful either in obtaining permission to digitize material or in distributing it to others. Site licensing is one model for managing rights in and access to digital resources. Organizations have been experimenting with different licensing schemes for several decades. These schemes usually take into account the number of users and the types of institutions, for example by offering special educational licenses to universities. Licensing provides one fairly secure way of protecting rights and ensures that the holders (or their distributor) can track the users. Another effective mechanism may be to join rights-holders’ consortia, as was mentioned in the IPR Management section of Section III: Selecting Materials, which also discusses briefly the issues that consortia raise.

 

 

International perspective

Although cultural organizations operate in an age of instant, global communications, copyright law is still largely earth-bound, the creature of national legislation. In general, countries establish their own copyright laws and enforce those rules within their territories. For example, Country A might provide for a copyright term of life of the author plus 70 years, while Country B may set the term at life of the author plus 50 years. Within this framework of national laws, a number of international treaties (such as the Berne Convention and the Universal Copyright Convention) establish certain universal “minimum standards,” harmonize many of the disparate aspects of national copyright laws, and ensure that protection is available across national borders on a non-discriminatory basis.

Nonetheless, cultural organizations may encounter complex legal issues when infringement occurs across national borders. Suppose that a cultural organization located in Country B digitizes (without permission of the author) a copyrighted book written by a citizen of Country A. Since both Country A and Country B are members of the Berne Union, the author from Country A will be entitled to the same rights (and subject to the same limitations) as Country B extends to its own authors.

In general, the law of the country where the infringement took place (and where relief is sought) will govern. Thus, to continue the example, if the law of Country B excuses the infringement under a broad fair use provision, the author may be out of luck even though the law of Country A contains no similar defense. Moreover, in an electronic environment, where material is transmitted from one country to another with the press of a button, determining the place of infringement (and applicable law) itself may be difficult. In analyzing situations involving possible transnational infringements, cultural organizations should begin by posing the following questions:

• in what countries does the institution seek protection?
• what protection is available under that country's national intellectual property laws?
• what treaty provisions may provide protection or facilitate obtaining intellectual property rights in the absence of or as a supplement to local laws? (Shapiro & Miller 1999)

 

 

Managing IPR risk

Protecting and managing intellectual property rights, and avoiding their infringement in the cultural sector, all involve risk management. When cultural institutions design digital collections, they may well select material in which they do not hold copyright. It is easy to imagine a situation where material an institution would like to use has not entered the public domain, the kind of use it would like to make of the material is not covered by ‘fair use’, and it has not been able to obtain permission to use the material. For example, a local history museum is creating a new CD-ROM for sale and wants to include digital images of a series of landscapes which were discovered in the attic of the local arts college. These were created after 1980, judging by the buildings that some of them portray, by an artist whose identity is not known to the museum. Despite showing the material to college staff and searching relevant records and making best endeavors (all diligently documented) to contact students who attended the college at that time, the museum does not succeed in identifying the artist and tracing the copyright holder(s). In this case, the staff would have to assess the risk of proceeding and balance the benefits to be derived from using these particular materials for the project, against risks such as negative publicity, costs of litigation, financial penalties that might be awarded, costs of lost human resources (e.g., administrative time), or financial loss to be incurred by having to withdraw the digital resource. In some cases, the staff might conclude that there are important considerations favoring limited use of the material that would counterbalance the risk of infringing the legal rights of the unidentified copyright owner.

The discussion of Project Management in the Resources section encourages institutions to produce a risk table as part of good project planning. One large category of risk that would be covered in that table relates to rights issues. Here we repeat the advice in that Section, but focus it more on evaluating issues associated with rights.

• What can go wrong? (e.g., What could be the consequences of using the material without specific permission, pursuing a fair use or mitigation of damages argument?)
• For each risk, what is the likelihood of actual risk for the project? (e.g., Has a thorough search to trace the rights holder been made without any results? How can you demonstrate that this search was conducted in a comprehensive manner? Have these efforts been documented?)
• What can be done to avoid the risk or to minimize its impact? (e.g. Have these efforts been documented?)
• If copyright infringement does occur, what would be the impact on the project/program? (e.g., What would be the impact in terms of scale in time, finance or reputation?)
• How will the institution address the risk if it does occur? (e.g. Will it withdraw the material or negotiate with the right holder? Will the institution be able to afford legal expenses?) [3]

As one expert suggests “the test [we] ought probably to apply, is not ‘is this legal?’, but ‘does this harm any one?’. If an action does not harm the financial interests of another institution or individual, it is probably safe to take it” (Royan 1998). While there may be merit in Royan's argument, especially where your institution can demonstrate that it has acted with due diligence to identify the holder of the rights without success (see above), cultural institutions must be aware of copyright regulations and act prudently to avoid explicitly infringing them. So before investing considerable effort in digitizing your collections, you should address the questions outlined in the following decision tree diagram, where we summarize the questions raised throughout this section:

 

1. REPRODUCTION OF MATERIALS ON WEB SITE

Copyright, Lauryn G. Grant; reproduced with permission

 

2. CONTENT RESTRICTIONS FOR REPRODUCTION OF MATERIALS ON MUSEUM WEB SITE

Copyright, Lauryn G. Grant; reproduced with permission

 

 

Rights of privacy

The massive availability of digital resources has led to the exposure of much previously unpublished material, including personal, commercial or sensitive information. In the selection stage, but also when considering public access to digitized material, the project staff should ensure that the material is handled with responsibility, sensitivity, and care.

Projects that involve the digitization of personal data should be aware of the data protection legislation of the country where the project is based. The different notions of privacy in different nations' laws will continue to have an uncertain impact in the cultural heritage field. Some general key guidelines are:

• Personal data should be obtained lawfully;
• Personal data should be collected, kept, and used for specified purposes;
• Rights of access and of processing personal data should be clearly specified;
• Where users are provided access to personal data, your institutions should maintain an audit trail to track who has accessed the data and how and when they used it.

In the U.S., privacy on the Internet is largely self-regulated. Increasingly, however, companies are shunning sites and associations that do not follow basic privacy safeguards. The Direct Marketing Association has gone so far as to expel members who do not follow basic privacy safeguards, for instance those who do not post privacy statements. The industry is attempting to avoid federal legislation in this area through self-regulation. Although the Federal Trade Commission (FTC) has so far not recommended any Internet privacy legislation except with respect to children, a provider of information — who collects personal information should disclose the following information: why it is being collected; how it will be used; what mechanisms are in place to protect its confidentiality, ensure its quality, and guarantee its integrity; what impact users' decisions to provide or withhold information will have on the services they can access; and, what redress individuals have if inaccurate information is disclosed. If you are a provider of information and collect any information about your users you should have a privacy policy on your website and it should be clearly labeled and easily accessible to users.

Institutional policies can be very useful for navigating this complex area of information privacy. For example, the information privacy policy of the Science Museum of Minnesota ( http://www.sci.mus.mn.us/museum/identity/Privacy.html), covers, among other things, information collected by the Museum and submitted by third parties, personal and other information collected on its website, the use and sharing of information by the Museum (including use of postal addresses, telephone numbers, and emails and how to opt-out), the use of cookies, and children's privacy on the web (with reference to the Children's Online Privacy Protection Act).

 

 

Other intellectual property concerns

The bulk of this section has dealt with copyright, although as we have just seen privacy concerns are important as well. Even when a work you plan to use is not protected by copyright law or does not have privacy issues associated with it, other intellectual property rights may come into play. The material may be protected by other laws, such as publicity, patent, trademark, and trade secret laws.

 

Databases

The availability of information is of paramount importance to maximizing the potential of the Internet. Legal protection of databases is therefore an important and timely issue. In some countries, databases are protected by copyright as original compilations of information, where their creation has involved effort. Until the ruling in the U.S. case of FEIST PUBLICATIONS, INC. v. RURAL TELEPHONE SERVICE CO., (499 U.S. 340)[4] in 1991 that only original creations were afforded copyright protection, some had assumed that creations which depended solely upon ‘the sweat of the brow’ were afforded protection. In this instance the Court held that as a telephone directory was simply an alphabetic listing it did not contain sufficient creative expression to be eligible for copyright protection. This judgment has been widely interpreted to imply that in the U.S. there is little copyright protection of databases of facts which exhibit no creative originality. This is in line with most of continental Europe. In order for a database to warrant copyright protection, its author must have made some original effort in the collection, selection, and arrangement of material (e.g. by indexing terms or adding keywords). This protection is irrespective of whether the individual contents of the database are original and therefore copyrightable in themselves or include factual data (where the database protection will not prevent an individual from extracting them, short of copying the selection and arrangement of the database as a whole). Currently in the U.S., if the database is unprotected by copyright law, the contents of the database may be copied unless such acts are prohibited by contract or license. In Europe, however, the Database Directive adopted by the European Parliament in 1996 includes a right that prohibits (for fifteen years from the date of the database’s creation) the extraction or reutilization of any database in which there has been a substantial investment in either obtaining, verifying, or presenting the data contents, without any requirement for creativity or originality. Databases are thereby afforded some element of sui generis legal protection. (See the Copyright office’s 1997 Report on Legal Protection of Databases at http://www.copyright.gov/reports/ for a good discussion of contractual practices for accessing data.)

Watch this space: This is a hotly debated issue at the moment in the United States.

 

Registration

Registration provides a mechanism to strengthen the protection that copyright provides. Even though it is no longer necessary to use the copyright symbol © or print a copyright notice in order for your materials to be afforded copyright protection, doing so will ensure that the court will not accept a defendant's 'innocent infringement defense'. Similarly, while registering your materials with the Copyright Office is no longer a requirement, registration offers several benefits which are otherwise lost. These include the ability to bring an infringement case to court, to prove certain facts in a lawsuit, and to claim statutory damages and attorney's fees. Registration material is available in the U.S. at the Copyright Office, Library of Congress ( http://www.copyright.gov/register/index.html).

The preparation of effective copyright notices depends upon knowledge of legal frameworks not only in the U.S., but in other countries. For example, according to the Buenos Aires Convention, in order for your material to gain copyright protection in Bolivia and Honduras, you must include the phrase “all rights reserved”. While preparation of copyright notices is best done with appropriate legal advice, Benedict O'Mahoney's copyright website includes valuable guidance on how to draft such notices ( http://www.copyrightwebsite.com/info/notice/notice.asp).

 

Technologies for copyright management and protection

Throughout this section we have discussed the need to strike a balance between protecting intellectual property and providing public access to it. In an effort to meet both these objectives there has been an increase in the design of electronic mechanisms which can mark or tag digital cultural assets and trace their usage. In addition to these technical mechanisms, the use of appropriate metadata can play an important role in making users aware of who owns the rights in material, the kinds of uses to which the users are allowed to put the materials, and the conditions that govern different uses (e.g. free to look at on your screen, but you must pay a fee if you wish to forward it to someone else). The encoded metadata might include a description of the object, details of the rights owner, as well as a unique registration number.

 

 

Despite active research, currently available technologies for protecting assets have limited effectiveness and little general acceptance. They all aim to provide a mechanism recording and linking rights information to the digital object that is indelible and unmodifiable but perhaps also updateable and able to 'follow or accompany' the digital object when copied. Research for this Guide showed that most projects have chosen to not provide high quality archival or even medium quality resources online (e.g. Images of England, http://www.imagesofengland.org.uk), while they wait for digital rights protection technologies to become more effective, standardized, widely used, and affordable.

 

 

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