The Legal Standing of Orphaned Material

John W. Sutherlin, PhDSocial Science Research Lab

University of Louisiana, Monroe

Overview…

Intellectual property issues are complex and orphaned material could make these issues even more difficult to manage.

This presentation will evaluate various types of orphaned material, summarize the Senate’s report and analyze remaining issues which could impact digital libraries or classroom presentations.

Understanding Changing Intellectual Property Laws in the Classroom…

“Professors get an ‘F’ for copyright protection”James M. O’NeillBloomberg News

November 20, 2006

To Copy or Not to Copy…

That is THE question…

We need to go back…

We need to go back…

Way back…

University Relevance…

Major universities (i.e., Cornell, Harvard) have already been sued and have reached settlements regarding the in-class use of copyrighted material.

More than 1,000 colleges and universities are now paying to license copyrighted material (mainly through the Copyright Clearance Center).

Political Relevance…

This issue is at the heart of a Constitutionally ensured First Amendment Right (i.e., Free Speech) and another Right throughout the Constitution (i.e., protection of private property).

The Fair Use Doctrine helps reconcile copyright law with the First Amendment.

Financial Relevance…

The textbook publishing industry sells $3.35 billion/year.

Professors posting free excerpts cost the industry $20 million/year in royalties.

What is intellectual property?

A copyright?

Or a patent?

That is almost like asking ‘what is art’?

What is intellectual property? A copyright? Or, a patent?

Property that can be protected under federal law, including copyrightable works, ideas, discoveries, and

inventions.

Copyright protects “original works of authorship” that are fixed in a tangible form of expression.

The fixation need not be directly perceptible so long as it may be communicated with the aid of a machine

and/or device.

Quick survey…

• How many have produced intellectual property?

• Published article? Book?

• Produced film or documentary?

• Patented invention?

• Receive any royalties?

Quick survey…Part II…

• How many have used copyrighted material?

• Book chapter? Journal article?

• Documentary film?

• How did you secure the right to do so?

• Have you ever paid for IP?

What may be copyrighted?

• literary works • musical works, including any

accompanying words • dramatic works, including any

accompanying music • pantomimes and choreographic

works • pictorial, graphic, and sculptural

works • motion pictures and other

audiovisual works • sound recordings • architectural works

What may NOT be copyrighted?

• Works that have not been fixed in a tangible form of expression (for example, choreographic works that have not been notated or recorded, or improvisational speeches or performances that have not been written or recorded)

• Titles, names, short phrases, and slogans; familiar symbols or designs; mere variations of typographic ornamentation, lettering, or coloring; mere listings of ingredients or contents

• Ideas, procedures, methods, systems, processes, concepts, principles, discoveries, or devices, as distinguished from a description, explanation, or illustration

Clarification of copyright…

• Before 1978, federal copyright was generally secured by the act of publication with notice of copyright, assuming compliance with all other relevant statutory conditions.

• U. S. works in the public domain on January 1, 1978, (for example, works published without satisfying all conditions for securing federal copyright under the Copyright Act of 1909) remain in the public domain under the 1976 Copyright Act. explanation, or illustration.

Some more…• “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 phonorecords 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.

And…

• Copyright is secured automatically when the work is created, and a work is “created” when it is fixed in a copy or phonorecorded for the first time.

• No publication or registration or other action in the Copyright Office is required to secure copyright.

Patents…

Patents grant an inventor the right to exclude others from producing or using the inventor's discovery or invention for a limited period of time.

Constitutional Protection managed by Federal Courts

TRIPs (trade-related aspects of intellectual property rights)

The Fair Use Doctrine

Federal Copyright Law…

• § 107. Limitations on exclusive rights: Fair use

• Notwithstanding the provisions of sections106 and 106A, the fair use of a copyrighted work, including such use by reproduction in copies or phonorecords or by any other means specified by that section, for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright.

Confusing?

The Fair Use Doctrine… 4 part test• Fair use is assessed according to a “rule of reason,” meaning

you should take all the facts and circumstances into account. Although the language of the Copyright Act and court decisions on the subject is complicated, you can boil it down to a few basic questions.

– Did the unlicensed use add significant value to the preexisting material, rather than just exploiting it?

– Was the amount of material taken appropriate in relation to the purpose of the use?

– Was the use made in good faith? – Was it reasonable according in the general opinion of the

field or discipline within which it was made?

• If the answer to these questions is yes, a court is likely to find a use fair. And because that is true, such use is unlikely to be challenged in the first place

The Fair Use Doctrine…another way• Did the unlicensed use “transform”

the material taken from the copyrighted work by using it for a different purpose than the original, or did it just repeat the work for the same intent and value as the original?

• Was the amount and nature of material taken appropriate in light of the nature of the copyrighted work and of the use?

• Inter alia, both questions address whether the use will cause excessive economic harm to the copyright owner.

Federal Copyright Law…II

• In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include—

• the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

• the nature of the copyrighted work; • the amount and substantiality of the

portion used in relation to the copyrighted work as a whole; and

• the effect of the use upon the potential market for or value of the copyrighted work.

Successful examples…

• Commenting critically on substance, style or methods

• Sampling of popular culture to make larger point

• Incidental inclusion

• Use of archived material in a historical sequence

Q&A…

Are there limits to using my own intellectual

property?

It depends…

Your Articles will not be published unless an Exclusive Licence Form has been signed and received by Blackwell Publishing.

Please note: You retain the following rights to re-use the Articles, as long as you do not sell or reproduce the Articles or any part of them for commercial purposes (i.e. for monetary gain on your own account or on that of a third party, or for indirect financial gain by a commercial entity). These rights apply without needing to seek permission from Blackwell Publishing.

It depends…qualifications…Subject to acceptance, you may:

–share print or electronic copies of the Articles with colleagues;–use all or part of the Articles and abstract, without revision or modification, in personal compilations or other publications of your own work; and–use the Articles within your employer’s institution or company for educational or research purposes, including use in course packs.

12 months after publication you may post an electronic version of the Articles on your own personal website, on your employer’s website/repository and on free public servers in your subject area.

Test-Time!!!

Test-Time!!!What is the difference between plagiarism and a copyright infringement?

Does non-profit or non-commercial usage, where there is no clear financial beneficiary violate fair use?

What is the ‘300-word use’ rule? What is its origin?

True or False: As long as I follow ‘fair use’, then I cannot be sued or SLAPPed.

True or False: I can prohibit the use of my IP through a disclaimer regarding public use.

Now…our issue…

‘Orphan works’

Orphan Works…

“Works presumably copyrighted but whose owners cannot be located with

reasonable effort.”

Senate Report, 2006

Relates to Internet, web sites, digital libraries, classroom presentations

Process of inquiry…

– US Copyright Office expressed major concerns

– Bipartisan, Bicameral support in 2005 for further study

– A series of public hearings, including more than 800 letters of inquiry from the public

– Senate Report, January 2006

Major findings…several obstacles1) inadequate identifying information on a copy of the work

itself;

2) inadequate information about copyright ownership because of a change of ownership or a change in the circumstances of the owner;

3) limitations of existing copyright ownership information sources; and

4) difficulties researching copyright information.

Samples…

Other relevant issues…

1) uses by subsequent creators who add some degree of their own expression to existing works to create a derivative work

2) large-scale ‘access’ uses where users primarily wish to bring large quantities of works to the public, usually via the Internet

3) ‘enthusiast’ or hobbyist uses, which usually involve specialized or niche works, and also appear frequently to involve posting works on the Internet

4) private uses among a limited number of people

Senate Report conclusions…

“For purposes of developing a legislative solution we have defined the “orphan works”

situation to be one where the use goes beyond any limitation or exemption to

copyright, such as fair use.”

Senate Report Solutions…

1) Solutions that already exist under current law and practice.

These were usually noted only in passing; commenters (even commenters opposed to any orphan works provision) did not take the position that the existing law is sufficient to

solve the orphan works problem.

Senate Report Solutions…

2) Non-legislative solutions.

An example of a solution in this category is a proposal for improved databases for locating owners of works. These solutions were also usually noted only in passing, and were not advanced as sufficient to fix the problem.

Senate Report Solutions…

3) Legislative solutions that involve a limitation on remedies when a user uses

an orphan work.

The most substantive comments fell into this category, and most of the comments by

professional organizations or academics fell into this category.

Senate Report Solutions…

4) Other legislative solutions.

Examples of proposed solutions in this category are deeming all orphaned works to be in the public

domain, or changing the tax or bankruptcy codes to reduce the factors that cause orphan works to

come into existence in the first place.

Recommended Statutory Language

SECTION 514: LIMITATIONS ON REMEDIES: ORPHAN WORKS(a) Notwithstanding sections 502 through 505, where the infringer:(1) prior to the commencement of the infringement, performed a good faith, reasonably diligent search to locate the owner of the infringed copyright and the infringer did not locate that owner, and(2) throughout the course of the infringement, provided attribution to the author and copyright owner of the work, if possible and as appropriate under the circumstances, the remedies for the infringement shall be limited as set forth in subsection (b).

(b) LIMITATIONS ON REMEDIES(1) MONETARY RELIEF

(A) no award for monetary damages (including actual damages, statutory damages, costs or attorney’s fees) shall be made other than an order requiring the infringer to pay reasonable compensation for the use of the infringed work; provided, however, that where the infringement is performed without any purpose of direct or indirect commercial advantage, such as through the sale of copies or phonorecords of the infringed work, and the infringer ceases the infringement expeditiously after receiving notice of the claim for infringement, no award of monetary relief shall be made.

There will be more to come here…

Conclusion…

No part of this presentation may be used in whole or part without the prior, expressed written consent of the presenter and/or his authorized agent.

© 2007 John W. Sutherlin, PhD

FYI…

Library of CongressCopyright Office

101 Independence Avenue, SEWashington, DC 20559-6000

www.copyright.govwww.uspto.gov

www.centerforsocialmedia.org

www.copyright.iupui.edu/checklist.htm