Librarians as Archivists and Defenders of IP Rights

World Affairs Council of New HampshireLibrarians as Archivists and Defenders

of IP RightsJune 29, 2016

Prof. Ashlyn Lembree

Prof. Lembree’s slides are provided for personal, reference use and not for further distribution. Neither Prof. Lembree’s slides nor her presentation are intended as legal representation.

U.S. Copyright Law:Copyright Subject Matter

Exclusive Rights, Term, & DefensesPublication and LicensingOwnership & Registration

Copyright Law: Subject Matter

Understanding Copyrightability

Understanding Copyrightability

• Understanding…• That copyright protects original works of

expression• That works may contain some original

material and some unprotectable material• Identifying protectable material• Identifying unprotectable material

Works (things with copyright protection)

• Sometimes works are 100% original


• Sometimes works are largely comprised of facts…but they also include some original authorship, such as sentence structure, words selected, etc.


Some works are utilitarian in the whole, but yet have a part of them that is original. That part might be physically separable or conceptually separable from the utilitarian piece as a whole.

Copyright protects only “original” expression

Originality does not mean “never been done before”• It means “did not copy from someone else”• Can have 2 identical works that are not copyright

infringementOriginality does not mean “highly creative”• It means “there is a minimum spark of creativity”Examples:• Some types of databases but probably not most

telephone directories • Any novel, whether mass-market paperback or literary

prize-winner

Copyright does not protect facts• Facts include…

• Names and phone numbers• Bibliographic and historic facts• Geographic facts

Feist

Copyright does not protect ideas

Baker v. Selden

Copyright does not protect public domain works

Works published before 1923 are in the public domain. Other than that, it varies and the work should be independently researched.

Copyright does not protect material that is scenes a faire

“Scenes a faire” refers to things that are typical of a genre• Examples (think cliché)• Literary fantasy genre: elves, wizards, wolves• Western film standoff• Brilliant but odd detective• Chickens used in kitchen décor• Sheep used in wool treatments• Bear catching salmon• Mother cat holding kitten

Scenes a faire examples

Copyright does not protect natureRealistic – rather than whimsical – representations of nature have less protectionSatava v. Lowry: thin copyright in jellyfish sculptures

Whimsical is more protected than realistic

Copyright does not protect nature . . .

. . . But it does protect particular expressions of nature.

Copyright protection in works• Not an all-or-nothing proposition• “Thin” copyright can exist in a work (as can

thick)• Some aspects may be copyrightable and

others not

Copyright Law, Copyright Rights, Licensing,

Infringement, Moral Rights

Source of LawThe U.S. Constitution provides that Congress shall protect Authors for the works

• Policy reason: To incentivize production of works

• Congress passed The Copyright Act• The current Copyright Act . . .

• Defines what is copyrightable• Establishes the rights for those works • Establishes the duration of those rights• Establishes a registration process• Provides a way to sue infringers in court• And more…

Copyright Term• Individual Authors

• Works created after 1978• Life plus 70 years

• Corporate Authors (Work for Hire situation)• Works created after 1978

• 120 years after creation; or• 95 years after publication

Multiple Exclusive Rights to the Copyright Owner

• Reproduce• Photocopy, Print, Photograph, Duplicate, Trace

• Distribute• Right to distribute refers to the First Sale only

• There is no infringement for reselling a work first bought from the copyright owner

• The idea is that a creator of a work has the opportunity to recoup his or her adequate compensation by…

• Setting the number of copies to make (and making only that number)

• Setting the price per copy• Distributing (selling) those copies

Multiple Exclusive Rights to the Copyright Owner

• Prepare Derivative Works• Examples:

• Performing a play from a script• Writing a screenplay based on a book• Creating a movie based on a screenplay (or a book)• Performing from sheet music• Creating a sequel • Creating a hooked rug from a design on backing

• Publicly Perform – plays, movie, dance, readings

• Publicly Display• Exhibition of work (e.g. museum)

• Digital audio transmission of a sound recording

Derivative Works

Derivative Works• If the underlying work is not your work and

not in the public domain, you need a license to create the derivative work

• Copyright exists in the derivative work for the new expression you added – and you own it, such as transformation of a pattern to a completed project or transformation of a book into a movie.

Copyright Infringement• The Copyright Act allows owners of works to

sue for infringement• Registration prior to bringing suit is required• Infringement is a violation of any one or more of

those copyright rights• Damages vary depending on when the work was

registered• Injunctions (orders to stop) may be obtained

• Some Defenses against copyright infringement• Permission from owner• Fair use• Not protectable

Copyright Infringement1. Plaintiff owns a protectable work2. Defendant copied the work without permission

A. Proof of direct copying; orB. Circumstantial Evidence

1) Access to the Plaintiff’s work2) Substantial similarity between the Plaintiff’s work and Defendant’s work

3. No Defense

Substantial Similarity – Infringement FoundBouchat v. Baltimore Ravens

Substantial Similarity – Infringement FoundRogers v. Koons

Substantial Similarity – Nature and Scenes a Faire Elements Removed = No InfringementSatava v. Lowry

Substantial Similarity – Scenes a Faire, Ideas Unprotectable = No InfringementKerr v. New Yorker Magazine

Reece v. Island Treasures Art Gallery (D. Haw. 2006)

Plaintiff filed a Motion for Preliminary Injunction

Plaintiff’s Work Defendant’s Work

Kregos v. Assoc’d Press (2d Cir. 1991)Trial court granted Defendant’s M4SJ. P appealed.

Aff’d or Rev’d?

Plaintiff’s Work Defendant’s Work

Fair Use• Defense to Copyright Infringement• Policy: Infringement should not stifle creativity• Multi-factor test

• Nature and character of infringer’s use (transformative)• Teaching, criticism, comment, newsworthy• Whether infringer’s use is commercial

• Nature of the work infringed• The portion and substantiality taken of the infringed

work• Portion is a percentage• Substantiality goes to whether it was an important aspect of

work• Effect of infringement on the marketability of the

infringed work

Copyright Law Primarily for Public Benefit – Author’s Rights Yield to Public Welfare• “[T]he Constitution empowered Congress to authorize copyrights in order ‘To Promote the Progress of

Science and Useful Arts.’ Thus, the Copyright Act is said to have been enacted not primarily for the benefit of the author, but instead primarily for the benefit of the public, its primary purpose having been to advance or promote the progress of science and the useful arts. The granting of certain exclusive rights to authors for a limited time was a means of achieving this end. Giving authors the reward due them for their contribution to society and compensating them for their labors was deemed to be only an important secondary purpose of copyright.

• “Where the interest of the copyright owner in exploiting the market for his work has come into conflict with

the public interest in stimulating the creation and dissemination of intellectual works and thereby promoting the progress of science and the useful arts, the courts in some cases have been of the view that the copyright owner's interest should yield to the public welfare, and consequently, in passing upon particular claims of infringement, have, by application of the ‘fair use’ principle, subordinated the copyright owner's ‘interest in a maximum financial return to the greater public interest in the development of art, science and industry.’

C. T. Drechsler, “Extent of Doctrine of Fair Use Under Federal Copyright Act,” 23 A.L.R.3d 139, §4[b] (Originally published in 1969).

Fair Use? – Shepard Fairey v. Associated Press

Fair Use Examples• Nunez v. Caribbean Intern. News Corp., 235 F.3d 18 (1st Cir. 2000)

(transformative use for public purpose)

• The Authors Guild v. Google, Inc., 804 F.3d 202 (2d Cir. 2015), cert. den’d 136 S.Ct. 1658 (2016) (public benefit of expansion of public knowledge and understanding is ultimate goal of copyright; held that fair use defense applied for the transformative use of digitizing copyrighted works and allowing public to search and read book segments).

17 USC 108• Libraries and Archives may make one copy of published works without

liability• And three copies of unpublished works• Subject to conditions in statute, such as..

• Library open to the public• Nature of use• Copyright notice

Freedom of Speech - Parody

Moral Rights• They are rights concerning attribution of

authorship & that protect the integrity of your work

• More limited under US law than European copyright – only certain “works of visual art” are specifically protected

• Visual art – original or 200 limited edition (or less), signed and numbered

Moral Rights• Moral rights do not attach to works for hire• But, if an individual is an Author and then

Assigns the copyrights to an entity, Moral Rights will hold, because this is not a Work for Hire situation

• Duration of Moral Rights generally for the life of the Author

• Moral Rights may be waived in a contract

Spectrum of Licenses

Copy

Left

Lice

nses

(e

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PL)

Free

Non

-Com

mer

cial

Use

Li

cens

e (e

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reat

ive

Com

mon

s)

Roy

alty

-Bas

ed &

Exc

lusi

on-

Bas

ed ©

Lic

ense

s

Copyright Licensing• Grant clause

• Licensor hereby grants Licensee an exclusive, worldwide, unlimited, sublicensable, royalty-based license to reproduce, prepare derivative works, distribute, publicly perform and publicly display the Work for the duration of the copyright of the Work, together with the right to sue for infringement of the copyrights in the Work.

• Waive Moral Rights

Termination Interest• Authors of works (excluding Works for Hire), or their heirs, may

terminate pre-1978 license grants of their copyrights 56 years after registration and post-1977 grants 35 years after the grant. 5 year window to do so.

• Objective is to allow negotiating leverage for renegotiating the license on songs, etc. that have been very profitable to the Licensor at the expense of the Licensee.

Termination Interest• Two teenagers granted an

assignment to Detective Comics for Superman in 1939 for $130.

• Heirs later exercised their termination interest.

Copyright Ownership and Transfer

Claimant, Ownership, Author• Ownership originally vests in author(s). 17

USC 201(a).• Joint works

• Work for Hire Doctrine• Work for Hire Employer/Commissioning Party =

Author• Author = Owner

• Ownership Transfer• Assignment• Bequeathed

Joint Works• When two or more authors create an inseparable or

interdependent work and the intent to create a joint work is present, then a joint work is created.

• In the absence of an agreement to the contrary, each joint author may independently exploit the work without the other’s permission. However, the exploiting author must account to the other author for profits.

Work for Hire• 2 ways to make a Work for Hire

• Employee (the Creator) creating a work within the scope of his or her employment

• Independent Contractor (the Creator) creating a work for the Commissioning Party only if

• Written agreement that it is a Work for Hire• Within 9 types of works: contribution to a collective work, as a

part of a motion picture or other audiovisual work, as a translation, as a supplementary work, as a compilation, as an instructional text, as a test, as answer material for a test, or as an atlas

Work for Hire• The Creator of the Work has no ownership at any point• The Employer is the Author• The Commissioning Party is the Author• The Author is the First Owner

Work for Hire• Work for Hire works are permanently tainted from some rights under

the Copyright Act:• Moral Rights• Termination Rights

Debunking Some Myths

(Myth): If there’s no © notice, it’s not copyrighted

WRONG …• There is no legal requirement to register a

copyright (although that’s probably a good idea)

• It’s also not true that “if it’s not registered, then it’s not copyrighted”

(Myth): If it’s freely available online, it’s okay to use it

WRONG …• A copyright owner’s exclusive legal rights include

the right to make copies and to distribute them• Downloading or copying text, artwork, clip art,

movies, sound clips etc. from websites or blogs is still copying

• “Publicly available” does not mean “public domain”

• Read all terms & conditions• Don’t assume the person who uploaded the

content necessarily has the legal rights to give you permission to use it

(Myth): If I attribute my source or use its © notice, it’s fair use

WRONG …• Whether something is fair use or not is highly

dependent on the actual facts & circumstances (i.e. there is no automatic dividing line)

• But most parodies are likely to be fair use as a court will consider them “highly transformative”

• There are some guidelines for classroom use of books & certain media materials, but no “magic figure”- the 10% rule does not exist

(Myth): If I make a different work out of someone else’s work, that new work belongs to me

NOT NECESSARILY … THOUGH THAT’S MOSTLY WRONG

• The concept of “derivative works” means that any work you create that is derived from someone else’s – however creative your version – still falls within that copyright owner’s exclusive rights

Examples:• Fan fiction, sequels/prequelsExceptions (possibly):• Fair use (e.g. parodies)

(Myth): I won’t get into trouble if I don’t charge for my work or make money from it

• WRONG …• Remember fair use – commercial value or profits is

only part of the legal picture• Being a non-profit organization or doing something

for charity does not give you legal protection• A copyright owner has the choice whether or not

to litigate

Registration & the Mandatory Deposit

Requirement

Why is copyright registration so important?

If you ever want to sue someone for infringing your work, you must have a copyright registration first.

• Section 411(a) of the Copyright ActIf anyone ever challenges your ownership of copyrights,

registration provides proof that your rights are valid.• If registration is made no later than 5 years after the

work is published.• Section 410(c) of the Copyright Act• Mailing yourself a copy of your work has no where near

the effectiveness as registration has in terms of proof of validity.

Why is copyright registration so important?

If infringement commences after registration, you can obtain statutory damages.

If your work is published and you register your work within 3 months of publication, you can obtain “statutory damages” against an infringer who commences infringement prior to registration.

Statutory Damages can be significant:• Strict liability – the wrongdoer has to pay damages even if she did not

intend to infringe• However, if the infringement was “innocent,” the wrongdoer is liable

for less money • If the infringement was “willful,” more money• The range of statutory damages is $750 to $150,000• Attorneys’ fees may also be awarded if you win.• A plaintiff’s regular damages may be too small to file suit

Minimum Requirements• Application

• Deposit

• Filing Fee

Filing FeeCopyright registration is inexpensive

• $35 electronic filing – single author, same claimant, single work, not work for hire

• $55 all other eCO filings• $85 snail mail filing• $140 pre-registration (pre-registration is for unfinished

works)Low barrier of entry . . . • But other fees at the Copyright Office are astronomicalUnpublished works may be able to be registered as a

“collection” which allows authors to combine multiple works under one registration.

Deposit• It is not money• It is the work itself – or a copy of it – or

“identifying material” of the work• Best Edition (e.g. hardcover book, if so

published; CD of record, rather than audio tape; DVD over VHS tape, etc.)

• They get destroyed!!!• It is advisable to use a copyright notice on

the deposit

Application: Concepts to Understand• Publication

• Mandatory Deposit• Single Work Rule• Group Registrations• Types of Works• Material Included/Material Excluded• Claimant/Author/Correspondent/Rights &

Permissions

Publication• 17 U.S.C. 101• “Publication” is the distribution of copies or

phonorecords of a work to the public by sale or other transfer of ownership, or by rental, lease, or lending. The offering to distribute copies or phonorecrods to a group of persons for purposes of further distribution, public performance, or public display, constitutes publication.

• A public performance or display of a work does not of itself constitute publication.

Publication is Important• It governs the rule on statutory damages in

Section 412• It determines how you register your work –

Published or Unpublished• It is relevant for the life of the copyright

term for corporate authors• It starts the clock ticking for when you gain

the presumption of validity found in Section 410

Section 407• Mandatory Deposit

• The Library of Congress wants your published works

• Published works = send in 2 deposits

• Unpublished works = send in 1 deposit

Single Work Rule37 CFR 202.3(b)(11)

• One application per work per claimant

• Exception: Can register unpublished, then later published

• Exception: Group Registrations…• Exception: Unpublished collections• Exception: Multiple Authors – each can

have own claim filed with his/her own registration

Group Registrations• Photographs – all photos taken in one

calendar year – Rule 202.3(b)(10)• Serials• If all works first published in a catalog. Kay

Berry• Unpublished “collections” Rule 202.3(b)(4)

(i)(B)• See Rule 202.3

Types of Works (most used)Pick the one most like the entirety of the published work• TX – Text/Literary• VA – Visual Arts

• “works of visual arts” under VARA are a subset of VA works

• PA – Performing Arts• SR – Sound Recording• SE – Serial• Motion Pictures

Material Included/Excluded• Nature of Authorship

• E.g. Text and Illustrations• Material Included

• E.g. Other: Text and Illustrations• Material Excluded

• E.g. Other: Likeness of Shakespeare• Pre-existing works

Claimant, Ownership, Author• Ownership originally vests in author(s). 17

USC 201(a).• Joint works

• Work for Hire Doctrine• Work for Hire Employer/Commissioning Party =

Author• Author = Owner

• Ownership Transfer• Assignment• Bequeathed

• Omitting non-claimant author is not fraud

Correspondent, Rights/Permissions• Correspondent generally is the attorney• Rights/Permissions

• Generally the Claimant or an artists rights society or other entity handling requests to use the work

• Email addresses and phone numbers for this person are public record

Thank [email protected]

UNH School of LawIntellectual Property & Transaction Clinic

mailto:[email protected]

Librarians as Archivists and Defenders of IP Rights

Law

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