ALI-ABA Course of Study
Legal Issues in Museum Administration
Co-sponsored by The Smithsonian Institution,
with the cooperation of the American Association of Museums
March 19-21, 2012
San Francisco, California
Creating and Managing Brand and Content on the Web (Copyright, Trademark, and Privacy
Issues
Karen Frank, Coblenz, Patch, Duffy & Bass LLP
Lauryn H. Guttenplan, Associate General Counsel, Smithsonian Institution
Nate A. Garhart, Coblentz, Patch, Duffy and Bass LLP
Walter G. Lehmann, Lehmann Strobel PC
ONLINE CATALOGUES AND RELATED ISSUES: SOME THOUGHTS ON THE
LEGAL ASPECTS OF THE TRANSITION TO ONLINE SCHOLARLY CATALOGUES
Walter G. Lehmann, Lehmann Strobel PC
Summary: This paper explores some of the legal issues posed by online publishing of scholarly
catalogues. It provides a brief informal survey of typical intellectual property concerns raised by
print and online publishing and explores some of the current issues posed by publication of
digital museum catalogues in an online environment. The paper concludes that while the
principal legal issues faced by online scholarly catalogues are no different than those of
traditional catalogues, the complexity of clearing rights is multiplied in an online environment.
The degree to which restrictions on access and use of content from a wide variety of sources can
be minimized will be crucial to realizing the full potential of online scholarly catalogues.
1
Museums are beginning to explore the possibilities presented by online publishing. The
Getty Foundation is among those encouraging this effort. The Getty is currently funding the
Online Scholarly Catalogue Initiative (OSCI), a five-year project designed to explore the
potential for scholarly collection catalogues in an online environment.1 Nine museums –
SFMOMA, Art Institute of Chicago, Seattle Art Museum, Tate, Walker Arts Center, the Freer
Sackler Gallery, LACMA, the National Gallery, and the J. Paul Getty Museum – are currently
participating in the OSCI. The goal of OSCI is to transform how museums disseminate scholarly
information about their permanent collections to make it available through web-based digital
formats.2 This represents a paradigm shift, according to Nik Honeysett of the Getty: “The issue
of transitioning to an online catalogue is part of the broader issue of museums coming to terms
with what it means to be a cultural institution in the 21st Century.”3 The potential of utilizing
institution-wide integrated information systems to collect metadata and organize disparate
museum collections to create a new database for public use has been recognized for some time,
but implementing a scalable approach has been a challenge.4 To address this, the Indianapolis
1
Online Scholarly Catalogue Initiative, available at
http://www.getty.edu/foundation/funding/access/current/online_cataloging.html. The roots of the OSCI can be
found in the Museum Educational Site Licensing (MESL) Project (1995-1999) which explored the potential of site
licensing arrangements between museums and educational museums “to define terms and conditions under which
digitized museum images and information can be distributed over campus networks for educational use.” More
information about the MESL Project, including the final report, is available at
http://cidc.library.cornell.edu/about/mesl.htm. One outcome of the MESL Project was the creation of Artstor’s
Images for Academic Publishing (IAP) program which makes high resolution images from collaborating institutions
available for use in scholarly publications free of charge via the Artstor website. More information about the IAP
program is available at http://www.artstor.org/what-is-artstor/w-html/services-publishing.shtml.
2
Id.
3
Nik Honeysett, “Transitioning to Online Scholarly Catalogues”, Museums and the Web 2011, April 5-9, 2011,
Philadelphia Pennsylvania, available at
http://www.museumsandtheweb.com/mw2011/programs/the_transition_to_online_scholarly_catalogue
4
For a general discussion of the potential of integrated museum information systems, see Jim Blackaby and Beth
Sandore, “Building Integrated Museum Information Systems: Practical Approaches to Data Organization and
Access”, Museums and the Web Conference, Los Angeles, March 16-19, 1997, available at
http://www.library.illinois.edu/dcc/publications/papers/mweb215.html.
2
Museum of Art is working with the OSCI consortium to create a toolkit of reusable components
to support creation of online scholarship for museums.5
Online catalogues can take a variety of forms from merely posting a PDF version of a
print catalogue on a website to creating a dynamic electronic document using an integrated
information system which takes advantage of the many possibilities of digital online publishing.
Among the possibilities identified by the OSCI are the ability to easily update research and add
to the catalogue over time; provide links to a wide range of primary and secondary sources
(including archival and conservation records and audio and video interviews); and to make
greater use of comparative images.6 As these possibilities are realized, online scholarly
catalogues have the potential to greatly enhance the museum’s brand and to further its public
mission by creating new ways of disseminating information to achieve the core goal of greater
knowledge.
The possibilities presented by online publishing pose a variety of legal issues. Some of
these legal issues are common to all publishing projects regardless of whether they are print or
online. Although these traditional publishing legal issues are generally well understood, their
complexity – and the time and expense required to properly address them -- may be increased
exponentially in an online environment. Central to traditional publishing are legal issues
regarding rights clearances, primarily copyright in text and images, and in some cases the use of
trademarks. Third party rights including privacy, publicity and defamation may also require
consideration in certain circumstances and with regard to certain content.
5
Selected Digital Initiatives – Summary, “Are We Living App-ly Ever After? Digital Museum Initiatives, Apps,
Gaming, Social Media and Cutting Edge Legal Issues”, ALI-ABA Legal Issues in Museum Administration, March 1921, 2012.
6
Honeysett, supra.
3
Traditional print catalogue copyright considerations include an analysis of whether a
work falls within the scope of copyright, whether it has entered the public domain, and whether
the contemplated use can be considered “fair use” under applicable copyright laws. With regard
to scholarly publications, it is worth noting that US copyright law currently draws a distinction
between making “multiple copies for classroom use” – which is expressly a “fair use” under
Section 107 – and other scholarly uses which may or may not satisfy the four factor fair use test
set forth in Section 107.7 Course packets, for example, have been found subject to copyright.8
In a closely watched copyright infringement case brought against Georgia State University
Library, the application of the scholarly/classroom distinction in a digital context is under
consideration. In the Georgia case the plaintiffs, a group of publishers, are objecting to
dissemination of scholarly materials through “e-reserves” and online course websites. The
outcome of this case may have wide-ranging implications for fair use as it relates to the
publication of digital works, including online scholarly catalogues.9
Rights in images of copyrighted works require a second level of copyright consideration.
While it is generally accepted under US law that the Bridgeman court’s finding of no
independent copyright applies to high quality photographic reproductions of two-dimensional
works of art,10 the application of Bridgeman to three-dimensional works, and it’s application in a
digital context remains open to debate. Bridgeman’s application under foreign copyright
regimes also remains an open question.11 While use of a museum’s own images will not
7
17 USC §107, available at http://www.law.cornell.edu/uscode/html/uscode17/usc_sec_17_00000107----000.html.
8
Basic Books, Inc. v. Kinko’s Graphics Corp. 758 F. Supp, 1522 (1991).
9
Chronicle of Higher Education, “What is at Stake in the Georgia Library Case”, May 30, 2011, available at
http://chronicle.com/article/Whats-at-Stake-in-the-Georgia/127718/.
10
The Bridgeman Art Library, Ltd., v. Corel Corporation, 36 F. Supp. 2d 191 (S.D.N.Y. 1999).
11
“Digitally altered photograph can qualify for copyright protection, UK court rules” available at http://www.outlaw.com/en/articles/2012/january-/digitally-altered-photographs-can-qualify-for-copyright-protection-uk-courtrules/.
4
normally pose clearance problems, the copyright status of comparative images created by other
institutions or derived from other sources is often unclear. In light of these uncertainties, best
practice generally requires clearance of comparative images for use in scholarly catalogues.
The use of text in scholarly catalogues also poses well-known copyright concerns. In
traditional scholarly catalogues, it is not unusual for text to be commissioned from authors who
are not employees of the museum. It bears repeating that when an author is hired as independent
contractor, absent a written agreement containing an express “work for hire” provision all rights
to the text, including copyright, are retained by the author.12 In some publishing contexts, an
implied license to use the text for a limited purpose may be inferred. However, even if a text is
subject to either an express or implied license, reuse of that text in an online context may require
an additional license specifically permitting the online use.13 Another closely watched case,
Harper Collins v. Open Road14, in which plaintiffs are alleging copyright infringement resulting
from publication of an unauthorized e-book version of one of their titles, may shed more light on
dealing with electronic publishing rights.
The use of digital images and text pose additional legal questions which are unique to the
online environment. For example, while museums and other content rights holders are generally
familiar with licensing rights in traditional print formats, licensing in an online context, where
use is not defined by specific print runs but instead by the number of views, requires the
development of new licensing models acceptable both to content rights holders and to those
wishing to use that content in online scholarly publications. These new licensing models must be
12
Community for Creative Non-Violence v. Reid, 490 U.S. 730
[1989]).
13
See The New York Times v. Tasini, 533 U.S. 483 (2001) (holding that reuse of freelancers’ articles in text-only
electronic databases is not authorized by the Copyright Act and therefore constitutes copyright infringement);
Random House v. Rosetta Books, 150 F. Supp.2d 613 (S.D.N.Y. 2001) (holding that the right to publish a work “in
book form” does not convey the right to publish an electronic book).
14
Harper Collins LLC v. Open Road Integrated Media, 11 Civ. 9499 (S.D.N.Y)(December 2011)
5
both financially viable as well as practical as applied to a dynamic online context. Digital rights
management issues are also unique to the online environment. Contextual issues – including
implied endorsements, linking, and the like – also present legal issues that are unique to the
online world.
In addition to clearing intellectual property rights in images and text, the potential of
online scholarly publications to include other types of digital content presents rights clearance
issues well beyond those typically encountered in traditional print publishing. The creation of
object-specific metadata, the inclusion and audio and visual materials, as well as links to
comparative images and other resource materials, including scholarly journals and library
databases, all pose potential rights clearance problems. Some of these issues present questions of
policy in a world where there currently are no commonly accepted parameters. While basic
standards for metadata organization have been established, for example, the nature of and the
extent to which information should be made public is still subject to some debate. The
ownership of user-generated materials, including additions to metadata, is uncertain. Linking to
scholarly journals and library databases pose questions of rights licensing and fair use. Linking
to “unscholarly” sources pose questions about authority and accuracy. While most of these
clearance problems are not insurmountable, rights clearance in the digital environment requires
extensive knowledge of intellectual property laws and a significant investment in time and effort.
As has been noted, some of the uncertainty surrounding legal issues in online publishing also
arises from unanswered questions involving the application of traditional legal issues to
emerging technology.
The process of clearing third party rights is essentially an exercise in risk assessment.
While there is a certain amount of risk assessment involved in clearing image and text rights in
6
traditional print publication, the complexity of rights clearance in a digital world exponentially
increases the difficulty of assessing risk. As Peter Hirtle explains in the context of library
digitization projects, “The number of instances where we can know with certainty that we can
digitize with impunity is very small. If we limited ourselves to those instances, our digitized
collections might consist of nothing but published books issued before 1800.”15 Hirtle points to
one innovative approach to aid in assessing risk, called the Risk Management Calculator16 -- a
software tool developed in the United Kingdom to assess the risk of using copyrighted materials
for educational purposes. The tool asks a series of questions about the material under
consideration and how it is intended to be used, and generates a numerical score indicating the
level of risk associated with the intended use.17 The Risk Management Calculator is an
intriguing concept, although it is not without obvious limitations in both in scope and application
which are inherent in such automated tools.
Several legal developments have improved prospects for online scholarly catalogues by
reducing restrictions on access and use of source materials. One such development involves the
permissible use of thumbnail images. As noted above, while the application of Bridgeman to
images of certain types of images and in certain contexts remains subject to dispute, there does
appear to be a growing consensus that the use of thumbnails – low resolution images typically
used in databases and in search engines – are permissible fair use at least under US copyright
law.18 The American Association of Museum Directors has also issued a policy statement on the
15
Peter Hirtle, “New tool: Risk Management Calculator”, LibraryLawBlog, February 18, 2011, available at
http://blog.librarylaw.com/librarylaw/digitization_projects/.
16
The Risk Management Calculator is available at http://www.web2rights.com/OERIPRSupport/risk-managementcalculator/.
17
Id.
18
See Kelly v. Arriba Soft Corp., 336 F. 3d 811 (9th Cir. 2003)(use of thumbnails in an electronic database is
transformative); Perfect 10 v. Google, 416 F. Supp. 2d 828 (C.D. Cal. 2006), aff’d in part, reversed in part, Perfect 10
v. Amazon.com, Inc., 487 F.2d 7010 (9th Cir. 2007) (use of thumbnails in search engine fair use).
7
use of thumbnails which expressly states that the use of thumbnails in online scholarly
catalogues is considered fair use.19 Although the law remains unsettled in this area, and the
specific use of thumbnails in scholarly catalogues has not been addressed by the Courts, the
general consensus of the museum community appears to be that use of thumbnails of
comparative images in scholarly catalogues is permissible fair use. If this is indeed the case, the
pool of available comparative images is greatly enhanced. However, the use of high resolution
images will still require permission from the rights holder.
A second positive legal development is the increase in open access to online scholarly
materials. Restrictions on access and use are perhaps some of the biggest impediments to
realizing the full potential of on-line scholarly catalogues. However, there does appear to be a
trend among museums and other cultural institutions towards making more materials freely
available, at least for educational and scholarly purposes. There is a continuum in the extent to
which such materials are being made available by copyright holders for use online – while some
are available without restriction, others require registration, some are available by subscription,
and some are available only for internal institutional use. One aspect of this trend is the increase
in the number of museums and other institutions which are abandoning traditional image rights
licensing regimes and experimenting with proactive open access licensing schemes of one form
or another.20 These open access approaches to rights management generally take one of three
forms. The collaborative approach is exemplified by the cooperative arrangement between the
Metropolitan and Artstor which has resulted in the Images for Academic Publishing (IAP).21
19
AAMD Policy on the use of Thumbnail Images in Online Initiatives, January 2011, available at:
http://aamd.org/papers/documents/AAMDFairUseGuidelinesHLP1-10-11_2_.pdf.
20
For an analysis of changing museum image rights management practices, see Nancy Allen, “Art Museum Images
in Scholarly Publishing” (date unknown), available at http://cnx.org/content/col10728/latest/.
21
See Artstor, Images for Academic Publishing, available at http://www.artstor.org/what-is-artstor/whtml/services-publishing.shtml.
8
Other museums, such as the Victorian and Albert museum, have instated their own proactive
rights licensing policies.22 A third approach involves utilization of third party proactive licensing
schemes. The Walters Art Museum, for example, has adopted a Creative Commons licensing
scheme for use in connection with all of its images,23 while the Smithsonian has used Flicker to
disseminate many of its images.24 Another important aspect of this trend towards open access to
scholarly materials is the movement towards freely available online scholarship – scientific and
scholarly literature which is made available free of charge on the internet.25 The trend towards
more unrestricted access bodes well for the future of online scholarly catalogues.
However, the potential of online scholarly catalogues may also be limited by
developments in intellectual property laws which increase restrictions on access to and use of
source materials. The trend towards copyright term extensions continues. For example, the
European Union recently amended its Directive on the term of copyright to increase the term of
copyright on performance rights in recorded materials from 50 to 70 years.26 Copyright term
extensions postpone the date when copyright expires and works enter the public domain and are
freely available for use in scholarly online catalogues. In addition to term extensions, certain
works are being removed from the public domain by operation of law. In Golan v. Holder27 the
US Supreme Court recently ruled that in meeting its obligations under the Berne Convention, the
US Congress acted appropriately in enacting legislation which effectively reinstated copyright
protection on millions of works that previously had be treated as being in the public domain
22
For an analysis of the Victoria and Albert Museums rights licensing program, see “V&A Images: Images licenses
at a Cultural Heritage Institution”, available at: http://www.ithaka.org/ithaka-s-r/research/ithaka-case-studies-insustainability/case-studies/SCA_BMS_CaseStudy_V-AImages.pdf.
23
Walters Art Museum, Terms of Use, available at: http://thewalters.org/rights-reproductions.aspx.
24
Flicker: Smithsonian Institution’s photostream, available at: http://www.flickr.com/photos/smithsonian/.
25
See Sam Vaknin, “Copyright Law and Free Online Scholarship: an Interview with Peter Suber”, United Press
International (date unknown), available at http://samvak.tripod.com/busiweb26.html.
26
European Union Directive 2011/77/EU, available at http://eurlex.europa.eu/LexUriServ/LexUriServ.do?uri=OJ:L:2011:265:0001:0005:EN:PDF
27
10-545, US Supreme Court, Term OY-2011, Jan 18, 2012
9
under US copyright law. The result is that many of these works will no longer be freely
available for use in connection with online scholarly catalogues. While these developments do
not prohibit the use of source materials in online catalogues per se they dramatically increase the
complexity and cost of complying with clearance obligations which may have the same effect in
many cases.
In addition, digital piracy prevention laws, including the Digital Millennium Copyright
Act (DCMA),28 and recent legislative initiatives to combat piracy both in the United States and
in other countries, may also affect the availability of materials for use in online scholarly
catalogues. While intended to prevent unauthorized use of copyrighted materials, critics of the
DCMA argue that it stifles free speech and undermines the concept of fair use.29 The
proliferation of digital rights management software, the circumvention of which is expressly
prohibited by the DCMA, restricts movement between formats and poses conservation and
preservation problems, which may impact the availability of source materials for use in online
scholarly catalogues. Recent legislative initiatives aimed at combating online piracy may also
affect the availability of source materials available for use in connection with online scholarly
catalogues. Spain recently enacted an online anti-piracy law which established a government
agency authorized to require internet service providers to block access to websites posting
pirated materials.30 Similar new anti-piracy legislative proposals aimed at preventing the
unauthorized distribution of copyrighted materials through foreign websites – the Stop Online
Piracy Act (SOPA) and its Senate counterpart, the Protect Intellectual Property Act (PIPA)31 –
28
Pub. L. No. 105-304, 112 Stat. 2860 (Oct. 28, 1998).
See, e.g. Electronic Frontier Foundation, “Unintended Consequences: Twelve Years under the DCMA” March 3,
2010, available at https://www.eff.org/wp/unintended-consequences-under-dmca.
30
Sinde law text in Spanish available at
http://www.elpais.com/elpaismedia/ultimahora/media/201201/02/cultura/20120102elpepucul_1_Pes_PDF.pdf
31
H.R. 3261 and S.968 (2011).
29
10
have met with stiff opposition in the United States. These legislative proposals have been
criticized on a variety of grounds, including that they undermine the safe harbor provisions of the
DCMA and will restriction freedom of speech.
The proliferation of source materials in digital formats may also undermine some of the
traditional copyright principals embedded in our copyright laws. The application of the “display
right” and of the “first sale” doctrine in an online environment may have implications which are
only beginning to be understood. The “display right” provides an exception from copyright
permission for the owner of a lawfully made tangible copy of a work for the limited purposes of
displaying that copy to the public.32 In a digital world where there are no tangible copies, the
“display right” may no longer have any relevance. The “first sale” doctrine33 allows the
purchaser of a lawfully made copy of a copyrighted work to transfer it without permission from
the copyright holder. Source materials in digital formats are increasingly provided through
licensing agreements which include limited terms. As a result, like the “display right”, the “first
sale” doctrine may no longer have relevance in an online environment where ownership of
digital copies is never transferred to the online user. The application of other intellectual
property concepts – including rights of privacy, publicity, defamation – in a digital environment
may also have implications on the availability of source materials for use in scholarly catalogues.
There are a number of enduring issues posed by the migration of scholarly catalogues to
an online format. The enforcement of intellectual property rights in an online environment can
exceedingly challenging. While the use of proactive licensing schemes such as the Creative
Commons enables materials to be used for education and scholarly purposes, enforcing
restrictions against commercial use may not be feasible in many cases. Changing economics
32
33
17 U.S.C. § 106(5)
17 U.S.C. § 109
11
also present challenges to the development of online publication of scholarly catalogues. As
noted, the complexity and cost of clearing rights in a digital environment can be daunting. The
role of legal counsel in assisting with the development of online scholarly catalogues may of
necessity be increased. Rather than signing off on a fixed print catalogue, legal counsel will
need to continue to have a proactive, ongoing review of online scholarly catalogues as material is
added and changed.
While costs associated with the creation of online publications is falling, costs associated
with creating, licensing and administering content may increase. In addition, the costs associated
with commissioning authors, designers, and support staff will still need to be borne by the
institution. Different types of content have different revenue models. For example, music rights
are licensed in very different ways from film clips or still photographs. Navigating these
different revenue models may pose additional administrative challenges for the development of
online scholarly catalogues. Financing the costs associated with the creation of online scholarly
catalogues may also pose challenges to realizing their full potential. Determining which business
models for the distribution of online scholarly catalogues are viable may affect how readily they
may be made available to the public. Some possible business models include pay-per-view,
subscriptions, or donor-support. Ultimately the mission, values and goals of each particular
institution differ and will require different strategies for supporting the creation and distribution
of online scholarly catalogues.
While the principal legal issues faced by online scholarly catalogues are fundamentally
no different than those of traditional print catalogues, the complexity of clearing rights is greatly
multiplied in an online environment. The proliferation of open access source material presents
opportunities for online scholarly catalogues. However, recent trends in enhanced copyright
12
protections may increase the complexity and limit the source materials available for use in online
scholarly catalogues. The degree to which restrictions on access and use of content from a wide
variety of sources can be minimized will be crucial to realizing the full potential of online
scholarly catalogues.
13