1. Basic Copyright Issues for Digital Projects
Speaker/DCPS Intro
Not a lawyer – but I have worked with an all-star panel of experts for a year to develop many tools to assist in continuing education on copyright.
I’ve revised and added to this session quite a bit since the panel at ALA Midwinter
DCPS Education & Planning
Amigos Imaging and Preservation Service experience
INTRODUCE PACKET – review
Participant Introduction:
I want to make all of you a ware of each other’s projects and concerns.
Can you please give a brief introduction, including:
Name
Institution
Digital or Preservation Projects you are planning or working on
Key Copyright Concerns (this exercise has led to collaboration in some classes and conference presentations)

2. Approaches to Copyright
Know the law
Know your issues
Know the status of your intellectual property
Know your rights
David Green, 2004
David Green, formerly of Executive Director of NINCH, suggested that, as both users and stewards of intellectual property, we need to have a proactive relationship with copyright.
Here are four approaches he suggests:
Know the Law – There are rules and regulations to follow. You should know the key resources to help you with an issue: the books and the guides such as those listed in the webliography. You should have some acquaintance with a copyright lawyer (and remember that if you are fortunate enough to have an in-house counsel, he or she will usually not know copyright law very well – unless they are a copyright lawyer).
Know Your Issues – Even though copyright law is written down, there’s no doubt that copyright is a dynamic force. As new technologies develop, new issues unfold and legal cases brew, copyright never ceases to change. It will undoubtedly work better for you if you become engaged. This involves both knowing what the relevant new challenges, cases and legislation are, connecting with your Congressional representative and nonprofit advocate, and also the education and advocacy activities of ALA, the Society of American Archivists, the American Association of Museums and the Electronic Frontier Foundation, for example.
Know the Status of Your IP – As a steward of others’ material, it pays to discover the rights profile of each work. Is it still under copyright? If so, who has which rights and what can you or your institution legally do with the material? Do your part to ensure that your institution conducts a survey or audit of its intellectual property. Also, do your part to ensure your institution has developed an IP Policy to guide you through any difficult cases that come up. And when you publish a work on the web, in a book, on a CD, or in any form, it should be clear what the rights situation is: who can do what with the material.
Know Your Rights – One of the most important points is that copyright comprises a bundle of rights (these include exclusive rights to reproduce a work; to distribute copies to others, either by sale or by lending; to prepare derivative works based on the original copyrighted work; and, in more limited cases, to display or perform a work). As an owner of rights, you can decide what to do with them: if you publish an article, you can decide how many rights to license or contract out to the publisher and decide how many to keep; if you develop an article with a colleague, or a distance education course with a partner or your institution, you should be aware of what the different rights are, and which rights each partner may have the most interest in. If you publish a piece of your own online, you may want to consider which rights you may want to waive, to enable it to be easily re-used.

3. Why Are The Risks Greater?
Ease of digital publishing
Uncertain legal environment
Increased non-profit entrepreneurship
Broad dissemination
Cultural organizations are at greater risk of copyright violation now, for several reasons.
First, the ease of accessing materials or digitizing and publishing on the Internet may cause an organization’s employees, volunteers, freelancers or contractors to believe that there are no restrictions on using the materials. Digitization gives each of us the tools to copy and adapt the materials of third parties for our own use. We also no longer need to go through a middleman, whether it is a publisher, stock photography house, record company, or television or radio station to disseminate information directly to a potentially worldwide audience. The Internet allows each of us to self publish. Thus, unlike a book published through a third party, there may be no external checks and balances on, or reminders about, what content may go into a museum website, for example, other than those that the organization imposes on itself.
Second, in the past, some attorneys commonly advised clients to assume that all “rules” that ordinarily apply to any performance, publication or broadcast of a copyrighted work apply to the reproduction, distribution or adaptation of materials through the newest emerging technology. Digitization and the Internet present very different and, often, more complex legal questions than those presented when radio, television, photocopying, or videotaping were the newest “emerging” technologies. Thus, it is not clear whether such past customary advice applies to digital reproductions and transmissions, particularly as it pertains to the application of the fair use doctrine.
Third, to compensate for dwindling public funding, many non-profits increasingly look to projects that ear revenue. In doing so, some projects risk losing the privileges of being characterized as non-profit for purposes of not only federal tax or postal benefits, but also specific exemptions under the federal copyright statute.
Finally, the dissemination of digital materials through the Internet is incredibly broad. Thus, there is a greater risk of any copyright infringement being detected, though organized industry efforts, like those by the Recording Industry of America or the Motion Picture Association, or by any vigilant copyright owner, or friend or family of the copyright owner.

4. How Does Infringement Occur?
Unauthorized use of copyright owner’s exclusive rights
“Bundle of rights”
Display or perform publicly
Reproduction
Distribution
Derivative
How would an organization infringe a copyright owner’s rights?
To briefly review, the most important principle of copyright law is that, except as limited in the copyright act, an owner of a copyrighted work has and controls that bundle of exclusive rights to display, perform, reproduce, distribute, or adapt the work. These rights apply to materials “published” on the web, the Internet and other electronic media.
The rights are divisible and may be infringed as follows:
Scanning and digitizing a copyrighted image constitutes a reproduction of that copyrighted material;
Uploading copyrighted work to a web site is considered not only reproduction, but also distribution of the material;
Transferring copyrighted material to a larger group by way of electronic mail constitutes distribution, even in the absence of reproduction;
Adapting electronic materials may constitute not only reproduction and distribution, but a derivative use as well.

5. How Does Infringement Occur Digitally?
Literary Infringement
Visual Work Infringement
Digital Alteration
The infringements that owners take action on are often:
Wholesale copying of textual published works that are protected by copyright;
Infringing use of a visual work, usually as a part of a new work (and we’ll have some examples);
Alteration or copying of a work digitally.

6. What Are the Risks? Litigation or threat of litigation Goodwill
Managerial efficiency
What are the risks in infringing a copyright owner’s rights?
The most obvious risk flowing from the unauthorized use of copyrighted material is the risk of litigation or the threat of litigation. Beyond the risk of defending and/or losing a lawsuit, however, are the risks to an organization’s reputation and effectiveness in managing its internal resources. We’ll talk about each of these some more.

7. What Are the Risks to Goodwill?
Copyright owners
Potential collaborators
Funders
Employees
What are the risks to an organization’s goodwill?
Your organization should not overlook the effect of being publicly identified as an infringer on the organization’s reputation and goodwill with:
Artists, freelance writers or other copyright owners with whom the organization has or desires relationships;
Potential collaborators who may be wary of providing their own or others’ copyrighted materials to a reputed or alleged infringer (at the least, negotiating the indemnification, warranties and representation provisions or insurance requirements in the loan or collaboration agreement would be interesting);
The organization’s public or private funders for general operating expenses or specific projects that may construe the infringing activity as reflecting lax management or insensitivity to prevailing legal requirements; and
Employee morale.

8. What Are the Risks to Management Efficiency?
Unrecoverable sunk costs
Unplanned for licensing expense
Diversion of staff resources
Disruption of operations
What are the risks of infringing activity on managerial efficiencies?
Suing for an alleged copyright infringement, like any other lawsuit, is costly to both parties. For this reason, alternatively or prior to bringing a lawsuit, a copyright owner, upon detecting an alleged infringement, commonly will send a “cease and desist” letter requesting that the infringing activity stop. Removal of the infringing materials may not be an option because of their widespread dissemination prior to the organization’s being notified of the alleged infringement. The letter may demand that the organization pay a licensing fee for any past or continued use.
After weighing the pros and cons of defending any threatened lawsuit and responding to any adverse publicity, the organization may decide to suspend the infringing activity or retrieve the infringing materials. The library will incur then unrecoverable sunk costs, in terms of staff time or the expense of digitization, as a result of use of the infringing materials.
Regardless of which option the organization chooses, it may incur additional costs, divert limited staff resources and disrupt other activities to comply voluntarily with the copyright owner’s requests.

9. Besides Copyright, What Are Other Risks?
Trademark
Patent
Moral rights
Rights of publicity
Rights of privacy
Libel, misrepresentation, obscenity
Breach of contract
Besides copyright, are there other risks in using existing materials without permission?
A copyrighted work may embody other property or personal rights or interest of third parties. Such rights include trademarks, patent, moral rights, rights of publicity and privacy. Other risks may flow from materials raising claims of: libel, defamation or slander; misrepresentation or negligent misstatements; pornography, obscenity or indecency; or breach of contract.

10. How Can Risks Be Minimized?
Confirm copyright status
Adopt policy
Exercise due diligence
Document due diligence
Obtain written licenses
Control end users
Check insurance
Know law and when to ask questions
Now that we know some of the risks, what other steps can be taken to minimize risk of copyright infringement?
Among the steps that should be taken to minimize the risk of being sued, or threatened with suit, for copyright infringement when using materials whose copyright status is unclear or unknown are the following:
Do not copy or scan materials for digital use without confirming the copyright status
Adopt and circulate a policy on the use of materials in digital format
Exercise due diligence in planning and developing projects
Document due diligence efforts
Use and obtain written assignments, exclusive or nonexclusive licenses, and releases
Control unauthorized use by end-users through affirmative disclosures or technological means
Check the organization’s insurance policies for coverage of multimedia liability risks
Be familiar with the law or know enough to ask questions
--BREAK--

11. Why Have A Copyright Ownership Policy?
To protect the institution
To clarify the rights of staff
To protect the rights of student assistants, volunteers, etc.
To deal with issues before a dispute arises
There are a number of reasons to develop an institutional I.P. policy.

12. Complicated Issues
Grant funded research that produces a copyrighted work
Ownership terms of grant prevail
Usually specifies public domain
Or institutional ownership
Faculty/student or curator/staff collaborations
Principal investigator on grants
Many collaborators – institutional ownership likely
No matter what the setting – university, museum, public library, archive, or historical society – there are some difficult issues on funded or collaborative projects.
(Read all)

13. Implementing Copyright Policy
Establish an effective date
Will need some lead time post approval
Use time to educate staff
On-going dispute mechanism
Review policy every 3 years
Once you have drafted your policy, provide lead time to publicize and educate your community. Use it as a tool for dispute resolution and update the policy at least every three years to take into account legal and procedural changes in copyright.

14. Why Should an Institution Conduct an IP Audit?
To manage risk with knowledge
To create an IP policy that accurately reflects institutional assets and needs
To highlight existing IP practices and make adjustments accordingly
For the sheer joy of inventory:
What do you have?
Where did it come from?
To trigger and facilitate creative projects using found “assets”
To monitor compliance (for your use of third party IP and vice versa)
The reasons to do such a project echo the reasoning behind institutional IP policy development we discussed this morning.
(READ)

15. When Should an Institution Conduct an IP Audit?
Regularly
Prior to entering into a business deal or starting a new project,e.g. prior to digitizing the collection
With introduction of a new rights or permissions employee
As result of a lawsuit
I’ve heard one lawyer call an IP Audit “an exercise in crisis management while the book is on the way to the publisher!”
That is not what you want to do. You need to do these audits every one to three years or at the other times mentioned here.

16. How to Start an IP Audit?
Set priorities based on institutional needs and perceived value of IP assets
Establish a realistic schedule
Often best to conduct department-specific audits, followed by larger inter-departmental reports
You are auditing specific materials – not everything you own – and you must set priorities to first audit the most important assets you own.

17. What are You Looking For? Immediate Goals of the IP Audit
Documents and other written evidence that rights are owned by the institution or some other 3rd party
Identity of copyright owner(s)/claimants
Evidence that the rights have expired
Evidence that claimed ownership is invalid
Evidence the work is in the public domain
From most difficult to least difficult situations in your audits you are looking for:
Written evidence your institution owns copyright to the material, or finding out who does
The other types of evidence here are even easier ways to determine you can own the copyright

18. Where are the Answers?
Rights information will be found in the institution’s records
employee agreements
acquisition documents
licenses
loan forms
gift correspondence
subscriptions
exhibition contracts
volunteer policies
inventory slips
invoices
purchase orders
releases
shrink wrap and click wrap agreements
prior copyright searches
Here are some of the sources where you’ll find the answers. Make sure you have good records in these areas.
(READ)

19. Where are the Answers?
Relevant documents may be found in various departments in whole or in parts:
Curatorial
Registrars
Development/Major Gifts
Education
Information Technology
Press/Communications
Publications
Photography
Archives
Licensing
Director’s Office
Museum Store
There are also particular departments to look in for evidence.

20. What Does it All Mean?
Recognizing Relevant Language in Relevant Documents
Work-for-hire
Assignments
Exclusive licenses
Non-exclusive licenses (including oral and implied)
Scope of rights including the right to sublicense
Media
Territory
Duration
Conditions or restrictions
You will see terms in these documents to help determine copyright ownership status.
We already spoke about work-for-hire
Many people dealing with copyright say assignments of copyright (from one person or party to another) are the bane of an audit because they are often poorly documented
Oral or implied licenses are difficult to document
Also look at the scope of rights, media, territories, timespan, and condition of the rights

21. Double-checking the Conclusions
Is the copyright expired?
Has the work been published?
Has the copyright been forfeited for failure to observe legal rules?
Is the content in question copyrightable expression?
Is the copyright valid in one country but not all countries?
If the copyright is subject to restoration, has the owner fulfilled its notice requirements?
Using all of the tools and questions we’ve discussed during the day, you’ll review your materials with all of these questions in mind:
(READ)

22. Double-checking the Conclusions
Is there more than one copyright, e.g. in a photo of an artwork?
Are there compilation copyrights, e.g. in a website of otherwise non-copyrightable facts?
Are there layers of copyright, e.g. in the collective layout of a newspaper and in individual contributions?
Are there contractual restrictions that may make copyright findings unhelpful, e.g. no photography of an artwork on loan?
We covered many of these scenarios in our risk-management discussion.

23. Possible Findings Copyright is clearly in the public domain
Copyright is valid and clearly owned by the institution
Copyright is valid and clearly owned by someone else who is identifiable; co-owners
Copyright is valid and seemingly owned by an unidentified party
The institution has partial copyright or specific usage rights; note restrictions and conditions
A third party purports to own the copyright but further analysis may be beneficial to determine public domain, additional heirs, implied licenses and so forth
(PROBLEM WITH THIS SLIDE!! – goes off the top of the page)
My view a few minutes ago may have been too simplistic – there are actually a number of categories or “piles” for your materials.
(READ)

24. The Next Step Managing Intellectual Property Assets Well and
Assessing Value
Review employment, independent contractor and volunteer agreements
Polish forms and routine documents to clarify rights ownership
Implement IP policies, including fair use
Assess value: Does the IP asset have market value or does it offerother value to the institution’s mission?
Keep good records: Create staff Intranet, databases and info systems for tracking rights ownership and related facts; paper files are good, too.
Once you determine the status of key materials through your IP audit, it may scare you as to the lack of other policies you have. Consider developing policies and resources to address these issues:
(READ)

25. The IP Audit Summary: Five Important Rules
Knowledge Comes from Experience
Practice Makes Audits Easier
Clear Answers are Not Possible for All Situations
Due Diligence is Important
There is No “Safe Harbor” for Copyright Infringement
Keep Good Records
Those who have done this activity once – or hundreds of times – have some feedback on the process, especially directed to library staff taking part on the team.