Monday, November 10, 2008

Workshop notes: Legal Issues in Digitization Programs

October 1, 2008

Legal Issues in Digitization Programs

Grant writing: Include section on c. issues & how to deal w/ it in order to get funding—many funders are now requesting this info.

Copyright issues in a couple different areas: grants & contracts
--Contracts: copyright statements on web, deeds of gift, etc.
--Contract issues are of paramount importance online

Lack of mandatory copyright registration has caused problems in determining transfers of copyright & in establishing copyright clearance.

Copyright: can get protection w/out formal action: don’t have to add a copyright statement to have copyright protection

1. Copyright is ubiquitous
2. Exceptions outnumber rights
--Sections 107-122 contain exceptions—we need to know them and how to use them
3. Contracts change everything: in networked environments, contracts are essential
4. Ownership of an item does not provide you with any legal rights to the item. Possession is different from the legal rights. Rightful possession does not equate copyright.

Ex: CD w/ book—can library make copy of CD?
There might be an exception (rule 2), but if there is a statement on the item that prohibits copying, that constitutes a contract (rule 3). You must follow the contract.

Originality + Fixation = Copyright

Federal Intellectual Property: Trademark, Patent, Copyright
State Intellectual Property: Licensing, Trade Secret
--License grants access to info under certain terms & conditions

Copyright & Licensing clash and create issues

DMCA=Digital Millennium Copyright Act--codified in chapter 12
--deals w/ areas not related to originality & fixation

Current copyright act is the 1976 Act.

Public Domain: 1976 Act

--WORKS NOT ELIGIBLE FOR COPYRIGHT: ex.: names, titles, factual info. (may be eligible for other forms of IP), compilation of facts (like telephone books) may not be copyrighted unless something in their arrangement or presentation meets rules of originality & fixation

---who decides what is copyrightable? A person asserts that an item is eligible for c. protection by adding a copyright statement. Only a challenge in federal court can determine the answer to the question. In order to file for c. infringement upon your work, the work must be officially registered to proceed in court.

----It’s all about the level of risk you are willing to take.

Digitization programs issues:
--born-digital items
--international copyright
--historical issues
----different legal regimes
----in US: 3 diff. copyright acts over time
----state c. issues (esp. before 1976 act, when c. became a federal act)

--TERM EXPIRED: many items can have terms extended (life of author + 70 years)
------ex. Mickey Mouse, Gershwin music had term extended with this change to the c. act
2017 is next time term limits will come up for discussion to change
---this is not as viable an area to feed into public domain anymore

-----States, Cities, Towns, may receive c. protection for their work: including statutes, maps, etc. Selling or licensing this information is a revenue stream for these entities.

Database Vendors license agreement makes it difficult to gain access to public domain works (esp. in Lexis Nexis). We could negotiate pricing based on this knowledge.

Something in Public Domain presented in a new way by a vendor may be copyrightable. Is it worth the premium the vendor is charging?

Colleges are risk-adverse. If there isn’t a clear shot of public domain or the items aren’t clearly eligible for digitization activity, some institutions won’t take a risk.

Copyright Analysis Process

Is the work copyrightable?—sections 102, 103, 105
Is the work copyrighted?—300 level sections
Who owns or controls the copyright?—sections 201, 202
What rights does the owner control?—section 106, 106a, 113
What rights are at issue?—section 106
What exceptions apply?—107-122
What is your exposure?---registration pre-requisite – deals with infringement –500 level sections

RIGHTS (#4 & #5 above)
Reproduction: always an issue in digitization
Derivative Works
Public Performance: public perf. VS. non-public perf. is defined
Public Display: esp. inherent w/ digitization
Public Performance: Digital Audio

EXCEPTIONS ANALYSIS (#6 in analysis list)
Libraries exceptions: 108
Schools have separate exceptions

The broader the exception, the more risk is involved. The narrower the exception, the least risk involved. Ex.: Greater risk in using section 107 (fair use).

Library is not defined in the copyright act.

Electronic reserves: falls into gap between sections 108 & 110—it has grown extremely controversial over the past 2 years with the lawsuits between publishers and higher education institutions (Georgia Tech, Syracuse University). Is it a substitute for purchasing another copy? Georgia Tech was not using authentication to access. Policy needs to be customized. Websites on institution servers that contain pdfs of course material are subject to scrutiny. Items within BbVista stand a better chance of being copyright compliant.

Contracts=Deeds of Gift, Wills & Trust, License, Terms of Use

*****While other factors change (technology, risk level, personnel, law), the analysis process never changes

Librarians should not be interpreting the law—that is the job of an attorney. Knowledge of copyright relating to information and knowledge is very specialized. Librarian may be in position to brief an attorney not specializing in this area with reference to the specific appropriate sections that support and contradict the case.

--originally a European concept that is embedded in creative works in US after the 1990 Visual Artists Rights Act
--visual art: has additional coverage in sections 106a and 113—ALSO, in NY and CA
there are state statutes that can be applied
106a only applies during the life of the author—not life + 70 years, and are non-transferable rights. These rights, while non-transferable, may be waived.

Recommended reading for working with works of visual art: Leonard Duboff writes on art law

Good info from Peter Hirtle:

Fact finding: Copyright held under which act? Published—yes or no? If yes, when? Copyright registered? --Answer the questions from the Copyright Analysis Process above.
Digitization for preservation w/out making it available freely on the web…

Kenneth Crews’ book is helpful


Identify relevant rights (CAP #5)
Is clearance necessary?
Not copyrightable (CAP #1)
Public domain
i. Section 302 (CAP 2)
ii. Section 108(h) (CAP 6)
c. Statutory exception (CAP 6)
3. State copyright
4. Identify owner (CAP 3)
--Does same party own or control other rights?
--Right of publicity
5. Negotiate permission

NY State Common Law Copyright applies to sound recordings made before Feb. 15, 1972. In digitizing recordings from this era, take this into account.

Getting copyright permission info by Stim—Nolo Press

Be aware of trademarks appearing in digitized materials—especially if fees are charged.

New York General Business Law—section 360 covers trademarks


Right of Publicity is a subset to the right of privacy—a person’s right to control his or her likeness or name

Rights of Publicity die when person dies (except in Tennessee—thanks to Elvis; and in California—Fred Astaire act)

The 1st Amendment limits (trumps) the right of publicity

Portraits: model releases

If donor is from another state, the state of the donor’s residence may have laws that apply.


Deeds of gift: permanent ownership transfer is best—106 (4) copyright transfer is essential

Trusts: gain possession before the person dies

Licenses: unusual for print material; relevant with multi-media material (software code, e.g.)

Term of Use: important with online display – should we have one for WNY Legacy?
--should match terms & conditions of gift as it relates to access, distribution, reproduction, copyright statement
Google: “terms of use” digitization to get examples

K. Matthew Dames
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