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Managing and Identifying Museum Intellectual Property, Its Uses and UsersRina
Elster Pantalony
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Photographs are considered artistic works under the Berne Convention. This includes works "expressed or produced by analogous processes".4 A negative or plate is not necessary so presumably, digitized images are also protected.5 All member states have domestic copyright legislation that covers photographs and works expressed or produced by analogous processes. The Berne Convention also provides guidelines determining the general duration of protection for copyright works. The rule of thumb is that works protected by copyright retain such protection for the life of the author plus fifty years after death.6 However, the duration of copyright on photographs and in general, the terms of copyright protection and the named copyright holder may be determined by domestic legislation.7 In Canada, The Copyright Act prescribes that copyright in a photograph runs for a period of 50 years from the date the negative was made or the photograph was taken. The life of the photographer is not an issue. An anomaly in copyright law, the copyright holder is the person who owns the negative or photograph, if there is no negative.8 Therefore, unless stipulated by contract, the photographer will not necessarily own copyright in his/her photograph. In The US, by comparison, copyright protects photographs as long as the photograph is fixed an a tangible medium of expression.9 Copyright is held by the author of the work, that is the person who took the photograph. The duration of copyright protection is calculated by determining whether the photograph was taken prior to or after January 1, 1978. If the photograph was taken after January 1, 1978, then copyright subsists in the work for the life of the author plus fifty years after death. If the photograph was taken prior to the above date, the US Copyright Law provides a formula to determine the length of copyright protection. US Copyright law underwent a series of revisions to bring it in line with the Berne Convention. These revisions included extending the term of copyright protection. Transition provisions were enacted for works created prior to January 1, 1978.10 Provisions concerning copyright and photographs in domestic legislation in Europe, such as the Code de la proprieté intellectuelle in France are similar to those of the US. Photographic works are protected by copyright11 and it is assumed that the author holds the copyright unless there is proof to the contrary.12 The length of copyright protection was recently amended due to harmonization Directives of the European Union.13 All members of the European Union now provide copyright protection for literary and artistic works for the life of the author plus seventy years after death.14 Notwithstanding the fairly straightforward approach in legislation, Canadian and American jurisprudence has highlighted several ambiguities, particularly as the law is applied to digital images. The issue is whether a photograph meets originality requirements, essential in obtaining copyright protection. David Vaver, a noted scholar in Canadian, British and Australian copyright law stated recently that fleeting images seen on computer monitors may not qualify as digital images or digitized photographs. He asks questions such as, "What of a photograph that is scanned into a computer and then electronically manipulated so that some or all of its features no longer resemble the original? At some stage, the photograph presumably loses its identity as such and dissolves into a generic artistic work or perhaps an original painting".15 Raymond Nimmer, a noted scholar in US copyright law, indicates that complex problems continue to mark this area of law because the term "photograph" is not defined in US copyright legislation. Such issues include determining where in the work lies the originality necessary for copyright protection. He states further that virtually any photograph entails a result that comes from the photographer's role in creating the photograph and this engagement constitutes originality for the purposes of copyright.16 However, note Peter Walsh's comments, "Contrary to [their] assertions, it is not entirely clear that museum photographs of their own public domain collections are copyrightable....Originality is very important to copyright protection: important court cases have held that copyright law does not protect either direct copies of public domain original works or compilations of facts..... But what of a museum photograph whose sole reason for existence is to record the "facts" of an original work of art....."17 Although it is fairly certain that copyright protects digitized images, the purpose of the photograph, and the nature of the photographer's work may play some role in determining whether the digitized museum photograph is original enough to be "copyrightable". Databases are collections of information. Museum databases are collections of information that may be factual, interpretative or both. Finally, databases may often include digitized images whose sole purposes are to record fact or to add qualitatively to analysis. The law concerning the protection of databases has caused great consternation in the legal community. Initially, databases were categorized as compilations of literary works, therefore qualifying for copyright protection under the Berne Convention18. It is now recognized in certain legal circles that databases are entirely new creations that may require either further refinement under the Berne Convention and domestic copyright legislation or an entirely new sort of intellectual property protection, (referred to as sui generis protection). In any event, authors of databases have seen their copyright protection eroded by a number of court decisions. The leading case in both The US and Canada is Feist Publications Inc. V. Rural Telephone Service Co.19 Rural Telephone questioned copyright on the "white pages". Feist claimed copyright on its compilation of factual information of names, addresses and telephone numbers because it arranged, collected and presented the data in a particular format and expended much effort and skill to do so. The US Supreme Court, relying on Article I of the US Constitution, held that requirements for copyright protection necessitate independent creation plus the element of creativity. Since facts are not the result of authorship, they are not original and therefore are not copyrightable. The only substance that appears to attract copyright in a database of factual information is the arrangement of the data itself.20 Raymond Nimmer states, "The copyright policy choice does not suggest that facts, their discovery, collation, or reporting, are unimportant, but that the value inherent in any factual material must be preserved at least in part for the public, rather than given over by copyright to the individual. Indeed, one might describe the policy decision as a judgement that facts (and ideas) are too important to allow a single author to obtain through copyright any exclusivity in the reproduction or distribution of the material."21 Unlike US law, Canadian copyright law is not based upon any premise in our Constitution ensuring the free-flow of information. Given the hybrid nature of Canadian copyright legislation, including both civil law and common law principles, Canadian copyright law seeks to balance the authors’ need to control its works thereby ensuring the ability to derive economic benefit, with the users' needs to access information at reasonable cost. First, 1993 amendments to the Copyright Act redefined compilations to include the selection and arrangement of data expressly within the text of the Act.22 Second, Canadian copyright law had established a different test for originality that determined whether a works is copyrightable. In general, if skill, industry and experience were generated by an author in the creation of a work, then the work met the originality threshold in Canada and the author benefited from copyright protection.23 Creativity was not an element in the test to determine if a work was original enough to obtain copyright protection. Notwithstanding, the Federal Court of Appeal of Canada recently applied the Feist decision in Teledirect (Publications) Inc. V. American Business Information Inc.24. The facts in this case were similar to those in Feist. The above case changed Canadian law substantially so that copyright in the compilation was directly tied to copyright in the information contained within. Furthermore, the Court held that there must be a certain degree of creativity in compiling the work. This distinction is a significant departure in Canadian law. Therefore, If the information contained within a database did not attract copyright (such as an address and phone number) then the database itself could not attract copyright either. Other than the way the information is displayed, a compilation of factual information does not attract copyright. It is understood that this case is on appeal to the Supreme Court of Canada. Law makers and opinion leaders in Europe watched these issues unfold in North America with a great degree of apprehension. Within organizations such as the World Intellectual Property Organization, attempts to conclude addenda and side treaties to the Berne Convention on database protection were not fruitful. In response, The European Union passed a Directive25 creating a two-tiered system of intellectual property protection for databases. First, copyright continues to protect databases. However, in partial response, to the above case law, a certain degree of originality and creativity will be required in creating the database to obtain such copyright protection. The data itself will not be protected by this Directive. The underlying data will have to depend on traditional copyright legislation for copyright protection. However, copyright in the database will not be dependant upon whether the information contained within attracts copyright protection. Finally, the duration of protection mirrors copyright protection. Second sui generis protection covers databases that do not meet the standards in the first part of the Directive. Such databases are afforded a lesser degree of protection with the owner of the database (the company or institution that compiled it) being able to control access, use, extractions of information and telecommunication of the database, subject to certain limitations. The language used, allowing certain extractions based on qualitative and quantitative analysis, is still somewhat ambiguous. The duration of such sui generis protection runs for 15 years after the date of completion to January first of the fifteenth year. Only European Union members can take advantage of such sui generis protection and reciprocity will be offered only if the non-European Union country offers protection in kind.26 Obviously, the levels of protection on databases will depend on what laws apply, and what degree of creativity was used to created the database. Museums will have to be especially prudent in understanding the risks associated with making certain databases available to the public. Finally, museums should avail themselves of other mechanisms of protection, whether technological or legal, such as contract law, to assist in ensuring that they control how and when their data collected is used. The traditional users of museum images and databases are in the educational community. For years, museums have allowed access on a one-to-one basis. Museums responded to requests for slides and reproductions from educational institutions. In many cases, museums requested only nominal payment, thereby, fulfilling their educational and public service missions. Times have changed and overhead costs, administration costs and costs associated with digitization have often forced museums to charge even educational users with a licensing fee. Technological advancements bringing new ways of sharing information have given rise to multiple-point users, thereby necessitating the "site-licensing" agreement. In any event, any use of museum intellectual property necessitates a licensing agreement of sorts. In order for museums to continue to operate efficiently it is helpful if the museum understands not only the type of intellectual property available for licensing but the needs of the educational user in this new technologically fuelled environment. Here are a few helpful tips. Uses typically requested by the educational community: classroom use, use for private study, ability to reproduce images for multiple use in a classroom or study at home or in a campus library, ability to view and/or download entire images or extractions of data. Ability to exhibit reproductions in connection with exhibits in university libraries, archives or galleries. Uses sometimes requested by the educational community: for use in a for-profit publication or multimedia production, such as a CD-ROM, for use in promotional material, for use in alumni material. Users identified by the educational community: The educational institution and its students, faculty, staff, employees, scholars, fellows, and in many cases, alumni and family members. The educational institution may be a single administration or broken up into several administrations in several locations. Educational institutions may also have students enrolled in distance learning programs that they wish to accommodate. Exceptions to Copyright for the Educational User, Fair Use and Fair Dealing Although the above mentioned uses are frequently requested, there are a number of circumstances where permission for use is not required due to exceptions in the law. The Berne Convention allows member states to make exceptions to the rights of authors in their respective copyright legislation so long as the exception does not conflict with the normal exploitation of the author's work.27 European Union members, with the exception of Great Britain, do not have any major exceptions to copyright in their law. Copyright protection in civil law jurisdictions is based upon fundamental rights and therefore, the Berne Convention is interpreted strictly within their respective jurisdictions. In Canada and The US there are a number of exceptions for educational users including fair use and fair dealing. Fair Dealing is only mildly analogous to The US exception, Fair Use. The fair dealing provisions in the Canadian Copyright Act state that any fair dealing with any work for the purposes of private study, research, criticism, review or newspaper summary is not a violation of copyright.28 Once a user establishes that their purpose of using a work falls into one of the above categories, the user must also determine if the proposed use of a work is fair. The test is based upon whether a substantial part of the work is being used and if so, then whether copying such a substantial part of the work would in any way diminish the quality of the work or increase the quantity of the work in circulation so as to diminish the return to the author. There is little case law surrounding the concept of fair dealing and it has been argued that the lack of case law proves that the provision operates well. However, it has also been criticized as being ambiguous and forcing educational users to make subjective decisions, often based on gut reaction. Fair dealing with respect to the Internet and digitized information has sparked much controversy. The Report of the Copyright Subcommittee of the Information Highway Advisory Council considered the application of fair dealing in the digital world. First, it confirmed that fair dealing is not an exception but a defense to be used where a user is accused of reproducing copyright works without prior authorization. For this reason, the SubCommittee concluded that the provision should remain ambiguous because exceptions require precision and clarity, defenses necessitate ambiguity.29 The SubCommittee concluded that clarifying fair dealing would not assist in determining the full application of the defense where works are reproduced in the digital environment.30 Therefore, although it is understood that fair dealing applies to the Internet and digital information, the extent of its application is unclear. Other Exceptions in Canadian Law Recent amendments to the Canadian Copyright Act also provide for exceptions for educational institutions for the use of works inside a classroom or in an examination setting. The use of works inside a classroom on an overhead projector (presumably incorporating the use of slides) is also specified as an excepted use. Museums, libraries and archives are also afforded exceptions to maintain and manage their respective collections. Certain exceptions can only be taken advantage of if the work in question is not commercially available. Commercially available is defined to include that a work is licensed by a collective association. Libraries, archives and museums that form part of educational institutions may also avail themselves of educational exceptions. It is also clear from the uses specified that the educational exceptions do not apply to digital works.31 Fair use is a provision in US copyright legislation that provides criteria when users may use works protected by copyright without prior authorization. The criteria are given in a non-exhaustive list. They are:
The purposes for which fair use may be invoked are:
It is often stated by the educational community in Canada that fair use provides a greater amount of leverage for the educational user than fair dealing and therefore operates to the benefit of the greater public good. However, the application of fair use has caused a great deal of litigation and sometimes confusion. In particular, the courts have often been divided on the interpretation of the non-exhaustive list of criteria to be applied when determining the legitimacy of a claim of fair use. Furthermore, Guidelines33 are provided to section 107 of the US Copyright Law, which provide further specificity on the purposes for which fair use may be invoked. These are guidelines for classroom copying of books and periodicals. These guidelines are also taken into account when copyright holders determine the parameters in which they can negotiate licensing agreements. The application of fair use to the digital environment has caused a great deal of debate as witnessed by the Conference on Fair Use and its CONFU Guidelines. The Guidelines that have been been published recently were not supported by a majority of participants.34 Notwithstanding, these Guidelines provide some answers concerning the use of digital works and images in an educational setting including guidelines on use of such works by students enrolled in distant learning programs. It remains to be seen how these guidelines will be adopted, whether educational users and copyright holders will, indeed, consider them and how the courts will treat the application of fair use in the digital environment.35 The US Copyright Law also provides for specific exceptions for the reproduction of works in archives and libraries. The exceptions apply to publicly accessible institutions only and provide for the maintenance and management of collections and other provisions, including limited liability for copyright infringement by patrons. However, these exceptions cannot be applied so as to limit fair use.36 The exceptions in Canadian and US law and in particular the application of fair use and fair dealing in the digital environment are as yet unresolved issues. Only time, use and experience will permit a better understanding. In the meantime, many copyright holders are taking advantage of the level of confusion evidenced in these areas by restricting the application of fair use and fair dealing in licensing agreements. Contract law is, in many cases, replacing copyright law as a means of protecting intellectual property. Museums may find themselves in the same situation when negotiating licensing agreements for their own intellectual property. The User in the Commercial Sector The needs of the commercial sector are not as well known. Commercial markets for museum intellectual property are only now emerging and it may take some time to determine the needs of this particular group of users. Nevertheless, commercial users of museum intellectual property are "fair game" and cannot avail themselves of any exceptions to copyright. It will be up to the museum's discretion and policy to determine how to treat educational users creating a for-profit product and wishing to license museum intellectual property. Nevertheless, museums should negotiate licensing agreements to their advantage as much as possible, since the ultimate objective of the user is to profit from the project. From accounts of museums in recent years, museum intellectual property, if properly marketed, could become a valuable commercial asset.37 Management of Intellectual Property Throughout this discussion, it is assumed that museums are negotiating and managing their intellectual property directly with their users. This requires the museum to not only become expert at managing maintaining their intellectual property but it also requires the museum professional to become expert at negotiating licensing agreements. For some museums, well versed in such areas with established licensing procedures, this is not an issue. Ultimately, direct licensing provides the museum with complete control over the use of their intellectual property and the licensing fees they can charge. On the other hand, for the inexperienced or smaller museum, licensing issues and associated overhead costs create administrative burdens that may have the ultimate effect of hindering accessibility to museum information. By impeding access, the museum becomes counterproductive, working against its own public service and educational missions. Therefore, direct licensing will work for only some of the participants, some of the time. Collective Administration of Copyright In Canada, the US and in Europe, collective administration of copyright has become well established. Traditional to the music industry, copyright holders often join forces, based genre of work and other common objectives, such as policy or economics, and form associations to which they assign their copyright to be licensed. These associations, known as collective societies, become responsible for licensing the works assigned, collecting the royalties and redistributing them according to accepted formulae. By comparison, The US system of collective administration is less regulated than its Canadian counterpart. In The US, collectives may operate so long as they do not violate anti-trust laws. In Canada, by contrast, anti-competition laws are not applicable so long as collective societies attorn to the jurisdiction of the Copyright Board, a quasi-judicial body holding vast powers. Such powers include the ability to arbitrate licensing fees at the request of either party, set tariffs (licensing fees) for performing rights societies as a matter of law without the request of either party and impose decisions concerning provisions of licensing agreements that affect the royalty fees associated with the authorized uses of copyright material.38 Notwithstanding the jurisdictional differences, collective societies provide copyright holders and may indeed provide museums, with certain benefits. First, such societies take over the licensing process so that museums are not burdened with the high overhead and administration concerns associated with direct licensing. Second, collective societies create economies of scale so that licensing fees become more reasonable, and therefore, museum intellectual property becomes more accessible. Finally, collective societies operate on the premise that their members share the objectives of the collective society both monetary and non-monetary. Collective administration of museum copyright has been contemplated since the early 1990s and museum collective societies have been and are in the process of being formed. However, before museums join collective societies, it may be beneficial for them to consider the following factors:
Museum administrators and professionals are being subjected to a volatile legal system trying to play catch-up to advances in technology. The law concerning the protection of digital information, including digitized images and databases is in a state of flux. Only time will determine the extent of protection afforded to such types of intellectual property. In the meantime, museums are faced with using other technological mechanisms or contract law to try and protect their intellectual property from being illicitly copied. In order to maintain a working relationship with their users in such a disconcerting environment, museums should try and understand the requirements of their users. Notably educational users hold particular requirements that must be addressed in their licensing agreements. This environment requires that museum professionals dealing with licensing issues on a regular basis keep abreast of the changes in teaching techniques and technology so that their users' needs are appropriately understood and taken into account. Exceptions to copyright, fair use and fair dealing also impact upon the parameters of the licensing agreement. It remains unclear to what extent fair use and fair dealing apply to digitized information. Therefore, museum professionals are faced with subjective decision making while trying to interpret fair use and fair dealing. Finally, legal systems may provide for a more streamlined approach to licensing museum intellectual property. The advent of collective administration of copyright may hold some respite from the administrative burdens associated with licensing intellectual property. Museums may want to undertake cost benefit analyses before joining a collective society. Several other factors should be considered as well, including the objectives of the collective society, the overall benefits of membership and the relationship the collective society has with its members. Notes 1. Peter Walsh, "Art Museums and Copyright:
A Hidden Dilemma", Visual Resources An International Journal
of Documentation, Vol XII, No.3-4, Gordon and Breach Publishers, The
Netherlands, 1997, p.361 at p.362 2. For the purposes of this paper, discussion
will be confined to copyright. For a discussion of moral rights, see
Rina Elster Pantalony, Barbara Lang Rottenberg, "Moral Rights
and Exhibition Rights: A Canadian Museum's Perspective, Visual Resources
An International Journal of Documentation, Vol XII, No.3-4, Gordon
and Breach Publishers, The Netherlands, 1997, p.409 3. Sam Ricketson, The Berne Convention for
the Protection of Literary and Artistic Work: 1886-1986, Queen
Mary College, University of London Centre for Commercial Law Studies,
London, 1987, p.p. 231,930 4. Article 2 of the Berne Convention lists photographs
as artistic works. 5. David Vaver, Intellectual Property Law
Copyright Patents Trademarks; Irwin Law; Toronto; 1997; p.32 6. Ibid, endnote 3, p.324, and article 7 of the
Berne Convention. 7. Ibid, endnote 3 8. Copyright Act, RSC 1985, C-42, as amended,
section 10 9. US Copyright Law 17 USC s.102 10. Ibid, s.302 11. Code de la proprieté intellectuelle, Premiere
partie: La propriété litteraire et artistique, article L-112-2.9 12. Ibid, article L-113-1 13. EC Directive 93/98/CEE 14. Ibid, endnote 10, article L-123-1 15. Ibid, endnote 5, p.33 16. Raymond T. Nimmer, Information Law,
Warren, Gorham and Lamont, Boston, 1996, para 6.03[1] 17. Ibid, endnote 1, p.367 18. Ibid, endnote 3 p.298. Compilations of literary
works are considered worthy of copyright protection under the Berne
Convention. The Convention itself is silent concerning databases.
This, in part is the ongoing debate at the World Intellectual Property
Organization and its attempt to arrive at a Database Treaty. 19. The case law that has developed in the US
since the decision in Feist is voluminous and beyond the scope of
this paper. For a thorough discussion, see Raymond T. Nimmer, Information
Law, Endnote 16, chapter 3 20. The case law that has developed in the US
since the decision in Feist is voluminous and beyond the scope of
this paper. For a thorough discussion, see Raymond T. Nimmer, Information
Law, Endnote 16, chapter 3 21. Ibid, endnote 16, para 3.02 22. Ibid, endnote 8, s.2, definition of "compilation".
23. Bayliner Marine Corp. v. Doral
Boats Ltd. [1986] 3 FC 346 at 365, reversed on other grounds 10
CPR (3d) 289 (FCA); also Ibid, endnote 6. See also Harris, Ibid, endnote
4, p.74; U&R Tax Services Ltd v H&R Block Canada
Inc., Ibid endnote 6 at p.p.264-265). 24. Teledirect (Publications) Inc. v American
Business Information Inc. (Heard at Montreal, October 6,7, 1997;
judgement delivered at Ottawa October 27, 1997) as yet unreported;
(FCCA); On appeal to the Supreme Court of Canada. 25. Directive 96/9/EC of the European Parliament
and of the Council of 11 March 1996 on the legal protection of databases.
26. To date, a number of member states of the
European Union have enacted domestic legislation in line with the
Directive. There remain a number of member states who have drafted
domestic legsilation that still has to be enacted. For example see,
Project de loi, portant transposition dansl le code de la proprieté
intellectuelle de la directive 96/9/CE du Parlement européen et du
Conseil, en date du 11 mars 1996, concernant lar protection juridique
des bases de données; http://law.house.gov/198.htm 27. Ibid, endnote 3, p.934, at article 9 28. Lesley Ellen Harris, Canadian Copyright Law,
McGraw Hill Ryerson, Toronto, 1995, p.124 29. Final Report of the Copyright SubCommittee,
Information Highway Advisory Council, Copyright and the Information
Highway, Government of Canada; 1995; p.27 30. Ibid, p.31 31. Copyright Act, 1997 S.C. c.-42 32. Ibid, endnote 29, p.28 33. Ibid, endnote 9, s.107 and associated guidelines
of H.R. 2223 34. For a full text of the final report, see
http://www.uspto.gov/web/offices/dcom/olia/confu/conclutoc.html 35. For a full discussion of fair use as it applies
to information, see Raymond T. Nimmer, Information Law, endnote
16, para 3.08. 36. Ibid, endnote9, s.108 37. Comments of various speakers at MCN ‘97,
St. Louis Mo. See also price list Museum of Fine Arts at Boston, presented
at MCN ‘97 Conference. 38. Roger T. Hughs et. al., Hughs on Copyright
and Industrial Design; Butterworths, Toronto, 1997, p.p. 491-500
39. Lucie Guibault, Agreements Between Authors
or Performers and Collective Rights Societies: A Comparative Study
of Some Provisions, ALAI CANADA, 1997, Montreal, p.11 and p. 52
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