Michael
Lean [HREF 1], Division of
Information and Academic Services, Queensland University of
Technology, GPO Box 2434 Brisbane 4001 Australia. m.lean@qut.edu.au
This paper describes a range of legal considerations which need to be taken into account when migrating various kinds of intellectual property to the Web. It also looks at need for communications policies, and suggests outlines.
The World Wide Web is now capable of receiving, transporting and delivering content in a bewildering and increasing range of formats, including plain text, audio files, motion pictures, photographs, .pdf files and others. The ability to digitise existing collections of works held by individuals and institutions has inspired many of them to make their holdings available via the World Wide Web, a practice which brings in its train a number of issues relating to ownership, permissions, privacy, copyright, contracts, implied and express licensing and the rights of owners of intellectual property generally. In addition, further legal issues are raised when an institution uses the Web for marketing and advertising. It is becoming increasingly important to develop an awareness of, and ensure compliance with a growing list of items if we are to preserve the ability to move through this tangled web without infringing the rights of others or breaking the law.
The intention of this article is threefold, firstly to describe the situations and legal issues which may confront an institution as it plans to move material onto the Web, and to touch on the complications raised by the trans-jurisdictional (border-crossing) nature of the Web; secondly to provide, from the author's experience, a guide to resources available on the web which will enable the location of rightsowners in a timely and efficient manner, so that permissions can be negotiated as quickly as possible; and thirdly to raise awareness of, and discuss the need for institutional policy in these areas, at the same time providing some suggested checklists for the guidance of Webmasters and administrators.
Institutions and organisations will have acquired various collections of materials under a wide range of circumstances; for example: donations of personal papers, audio or video recordings of annual events such as memorial lectures, bequests of personal libraries and artifact collections, research accumulations, years of theses submitted in particular subject areas, film or video recordings of significant events, material produced by the institutionís film and television unit, collections of written articles by guest authors in institutional publications such as law review journals, accumulations of negatives and photographs, files of the institution's own newspapers, newsletters and student publications, a variety of teaching material, works produced by artists in residence, art collections including works on paper or canvas as well as three dimensional works ñ the list is endless.
In addition, educational institutions will have accumulated a variety of teaching materials which have been obtained in various ways: television and radio broadcasts copied under licence, written materials produced by staff current and past, computer software, data collections and information in other formats which forms part of the teaching process.
Regardless of what the material is, or how it has been obtained, institutions are increasingly wishing to use the World Wide Web as a means of making their various holdings available . The reasons will range from a relatively straightforward need to deliver courseware to students in remote locations, to contributing to research by making historical collections available on the Web, or addressing a need to enhance the institutionís prestige by making available the texts of past speeches from famous guests or alumni ñ there will be a variety of reasons, and many institutions are already making a great deal of material available.
Unfortunately, while universities and other organisations hold rich collections of cultural and educational material, most of it was acquired at a time when the notion of delivery via the World Wide Web was something that belonged in the realm of William Gibsonís characters, and permissions for such activities were never contemplated, let alone negotiated. It is also unfortunate that many administrators are unaware of the limitations upon their institutionís ownership of the material they are delivering via the Web, and already there is infringement of various ownerís rights occurring.
The copyright legislation of most countries confers a similar bundle of rights on copyright owners: the right to reproduce, the right to publish, the right to broadcast, the right to adapt, and the right to deliver via a diffusion service. Making a photocopy of a copyright work may infringe one of those rights, i.e. the right to reproduce, but it is interesting to note that placing a copy of the same work on the Web may actually infringe all of those rights at once, surely something of a technological achievement (Simonson and Daniels, 1998). Whilst that phenomenon may be amusing for students of the law, it provides a serious problem for those who wish to place on the Web material to which they do not have clear title.
When dealing with material in the possession of an institution, it must not be assumed that mere physical ownership of the article in question confers all rights to deal with the article. Unless it can be clearly established that either:
copyright is owned by the institution,
copyright permission has been given to the institution,
or that copyright in the article or work has expired.
In this last instance, one must be very careful, as the term of protection differs around the world, and given the transjurisdictional nature of the Web, it may be possible to legally place a work on a server in Australia, where the term of protection is 50 years, and infringe copyright when the site is downloaded in Europe, where the term is 75 years) then the copyright owner must be identified and permission obtained before the material is made available to anyone via a webserver. Commonly held misapprehensions include:
copyright in assignments, theses, and other works created by students belongs to the university (they belong to the author, except in exceptional circumstances)
copyright in works created by staff belongs to the institution (this will depend on contracts of employment and the circumstances under which the work was created)
copyright in artworks comes with the purchase of the artwork (it doesnít, unless it was negotiated at that time)
current photocopying licences such as the CAL licence in Australia covers the migration of material to the Web (currently they donít)
verbal permission from someone makes it permissible (most jurisdictions require assignment or permission in writing)
Once it has been established that the institution does not own copyright, and that the proposed activity is not covered by any form of licence, then it will be necessary to locate the copyright owner and negotiate a permission.
In a previous article, (Lean 1998), I have suggested that locating owners of works can be a very time-consuming and frustrating operation.
For print material, itís usual to assume that the publisher holds the copyright, or in the event that copyright has reverted to the author (which sometimes happens when books go out of print), the publisher will know how to contact the author. Locating publishers themselves can be a frustrating task - this writer tracked one publisher through five amalgamations, takeovers and name changes, only to discover that the copyright in question had reverted to the author. However, a good starting point is The Australian Publishersí Association [HREF 2]. The website provides a membership list, and extensive links to overseas publisher organisations. Not all publishers belong to the Association, however, and another resource will be your library, where you can consult "Books in Print" for publisher addresses, name changes, and the like. "Books in Print" is now available on a CD called "Global Books in Print", which can facilitate searching. The Australian Society of Authors [HREF 3] is another organisation which will help in the location of authors, and there is also an website, Ozlit, [HREF 4] devoted to Australian Literature, which provides contact addresses for some living Australian writers, as well as other valuable information.
Other sources of information on print copyright owners are The Copyright Agency Limited, [HREF 5] which is also now operating a transactional permissions service - as yet limited in what it can offer - and, for more obscure searches, the National Library [HREF 6] may be able to help. Alternatively, you can search for overseas authors and publishers by visiting the Reed-Elsevier /Bowker /Saur/ Cahners mega-conglomerate website, and looking at Publishers' International ISBN Directory 1997/98 (24th Edition) [HREF 7] Compiled and Edited by the International ISBN Agency, Berlin.
Another fruitful avenue of research is the use of search engines such as AltaVista [HREF 8], HotBot [HREF 9] or Yahoo [HREF 10] to locate information, as well as the many individual publisher web pages on the net. Remember also that email is probably the most efficient way to make contact, as it provides a written record as well as rapid communication.
Web developers will also need to be aware that the copyright in works of deceased authors will pass to their heirs (for a period of 50 years from the year of their death), and you may need to locate these people by consulting the Office of the Registrar of Probates in the appropriate state, to examine the will. Alternatively, the Web now provides some excellent address location services, including access to such things as the United States Social Security Death Index. The writer was recently able to obtain information on a deceased author within minutes using this index. The above remarks also apply to unpublished works, in which copyright does not begin to run its term of protection until a work is published, thus a collection of diaries or letters may be several hundreds of years old, but still protected by copyright, and locating the heirs will be difficult. Motion Picture and Video clearances can also take a lot of time.
Whilst the job of locating owners can be difficult, it has also been the writerís experience that owners take a long time to reply, and it is probably worth instituting a regular followup programme to ensure a speedy reply. Probably the best source of information on film and video ownership is Screenrights [HREF 11]- formerly the AudioVisual Copyright Society, in Sydney (email: info@screen.org), which maintains a large database of its members, both national and international.
Music clearances can also be time-consuming. If it is a situation where you must use a particular piece of music, then you will need to contact the publisher, or the recording company. AMCOS, APRA and ARIA can all be approached in Australia for assistance in locating record companies and music publishers, and in the United States, organisations such as BMI and ASCAP perform similar functions. AMCOS and APRA [HREF 12] share a website. APRA is very helpful in the matter of arranging licences and locating copyright owners in the music field.
VI$COPY - Visual Artists' Copyright Collection Society
PO Box 60
Potts Point NSW 2011
Phone: 02 368 1900
If an artist is not registered with Vi$copy, you will probably need to deal directly with the artist or their heirs. Art galleries such as the National Gallery can also be helpful in locating artists. Overseas countries have their own visual artistsí collecting societies such as DACS in Europe and the UK and Vis*arts in Canada.
Do not assume that Aboriginal works are not protected by copyright law. There are several recent court cases involving people who failed to secure licences to use aboriginal works.
Aboriginal copyright owners may be difficult to locate and negotiations may be slow, but there are now quite a few artistsí cooperatives located at the principal Aboriginal settlements, and these will provide some assistance. Aboriginal ideas about ownership differ significantly from Western ideas, so tread carefully and politely in your negotiations.
At the time of writing, (March 1999), negotiations continue in the Australian Parliament on the issue of Moral Rights. It is asserted by the Attorney-General that Australia will soon have Moral Rights legislation to protect authorsí and creatorsí rights. Basically this will mean that the work of any author used on your website must be acknowledged by name (right of attribution), and the work must not be altered or mutilated any way that will bring the authorís reputation into disrepute (right of integrity). As this legislation is imminent, and already extant in many countries overseas, it is probably best to follow these guidelines from the outset.
Do not forget that all the material on the Internet is owned by someone - copyright applies in cyberspace, too. This is where owners should be easy to locate, and email will be the best way of contacting them. As mentioned previously, a permission given by email is acceptable, but should be filed carefully.
Having located the copyright owner of the material you wish to incorporate into your website, the next task will be to negotiate a licence or permission. In order to make the decision process as simple as possible for the copyright owner, he or she must be provided with as much information as possible as to how and where the material is proposed to be used. It should also be borne in mind that many people are as yet unfamiliar with the World Wide web, and a store of patience may be required in providing a simple explanation as to what it is that you propose to do. Note also that when non-digital material migrates to the WWW, for copyright purposes a new product is created, and there may be some difficulty in determining exactly what rights are need to be licensed. If the currently proposed reforms to the Australian Copyright Act are eventually drafted, Australia will have a technologically-neutral act in many ways, and the rights to be sought will be in the order of the right to make available to the public, and the right to reproduce which will simplify things, but at present, it is most likely that a licence will be needed which specifies exactly what it is that the webmaster wants to do. A general outline of the kind of information that should be provided to the copyright owner is available from the QUT Copyright Guide. [HREF 13]
If it is anticipated that there will be a charge involved, be well
aware of your budget constraints before you begin negotiations, and
be sure of your walk-away figure. Never, never commit material to a
project unless a licence has been obtained, as a failure to obtain
permission, or too high a licence fee can be ruinously expensive, and
derail a whole project. It is best, where possible, to have an
alternative always in mind. For a very clear explanation of licences
clause by clause, see the Web document produced by the European
Copyright User Platform, Licensing
Digital Resources: How to avoid the legal pitfalls?
[HREF 14] This article also makes the
useful distinction between copyright in the paper environment and the
need for licensing in the digital environment.
Whilst copyright ownership may be the main issue that will be negotiated in situations as described above, universities, as well as corporate institutions and government agencies need to be aware of other constraints as well. Not the least of these is the transjurisdictional nature of the Web itself, which may mean that in attempting to define the audience for a particular website, one may only be able to say "the world at large". If the website is offering a business transaction to citizens of another state or country, then such transactions may come under the notice of the law of that country, e.g. in the United States, there have already been a number of cases where a state judiciary has determined that an interstate website has, in doing business in that state, contravened state law, and there has been a case to answer. There has yet to be a prosecution that has crossed international boundaries, but, given the increased concentration of media ownership, such an event is not impossible and it is probably only a matter of time before an action involving some type of intellectual property infringement, trade practice contravention, or a related issue becomes international. Indeed the Broxtowe case, a little over a year ago, resulted in legal action being taken by the British against mirror sites in other countries which were allegedly making available material which was deemed by a British court to be copyright to a British borough council. Several of the overseas Webmasters were sufficiently intimidated by the correspondence to comply with the cease and desist orders, although it is unclear as to whether at that time the orders could have been enforced. The growth of web use though, must inevitably lead to international agreements which will make such actions possible. Tthe full details of the Broxtowe Case [HREF 15] make very interesting reading, as there are a lot of issues involved.
As another example, and perhaps of more immediate concern is the fact that the period of copyright protection in Australia is 50 years from the death of the author (for most classes of works), while in European Union countries and the United States, that period is 75 years or more. Thus it is possible that what is public domain in Australia may still attract protection overseas, and a document legally placed on an Australian website and accessed in Australia may infringe when the site is accessed and displayed in the United Kingdom. This is obviously a point to watch when making works available on the Web.
Whilst the issues so far discussed have as their substance various
aspect of intellectual property ownership, institutions should also
be aware of other challenges when they set out to do business on the
Web. For instance, if a university is offering courses online and
targeting students in a particular country, it will need to be aware
of any particular laws in that country which may be transgressed by
the website. How this is best achieved is debatable, but recourse to
a firm of ënet-aware lawyers in the client country would seem to
be a reasonable first step.
There are other differences which should be taken into account. In any well managed organisation, employees are well aware that there are certain procedures which must be followed when placing the organisationís logo before the public, and these procedures are followed and understood quite readily in the world of print. The digital world presents a challenge to the organisation in that the personnel involved in the transmission to the public are different people and quite possibly unaware of those print procedures, and, with the ability to alter corporate information at a mouse-click, may act on their own initiative. Organisations need to develop policies and procedures which take account of this possibility; instigating copy clearance procedures more like those of a broadcaster, with continuous review and legal checking, rather than the traditional one time review.
As a related point, but not one this paper will discuss in any detail, is the growing body of equity requirements, i.e. making sure that a website is accessible by disabled people. These also may vary from country to country, and your own countryís requirements should provide a starting point for these constraints on web page design. In Australia, a good starting point is the Human Rights and Equal Opportunity Councilís guidelines.[HREF 16]
Australian privacy laws should have little impact on your organisational website unless that site has dealings with personal credit information, or your site is an applicable government agency. The Australian Privacy Act 1988 only regulates the ability of government agencies to collect and disclose information about citizens, and the ability of non-government organisations to collect and disclose information regarding a personís credit status. If the Australian Government is forced by international pressure to reopen the case for more sweeping privacy legislation, Australian operations will need to review their sites in the light of such changes. In any case, it may well be that your organisationís activities will transgress the privacy laws that protect the citizens of other countries. For instance, American law recognises several rights of privacy, with the most likely one to impact on websites being that of the commercial appropriation of a personís likeness. Briefly, this is where, for example, a personís likeness is published in a newspaper as a human interest story, rather than because the person has done something newsworthy ñ journalistic opportunism perhaps, rather than news reporting. Photographs of alumni or students without permission in annual reports would be one example of the infringement of this right. In addition, the United States code also contains rights of publicity, and without going too deeply into detail, an activity such as using the photograph of a famous person who has visited the institution to promote the institution may infringe that right. At the present time, it is risky to assume that because a person has been photographed at a public ceremony, that the institution has an implied right to use that photograph for publicity purposes, particularly on the Web, which amounts to a world wide distribution. Once more, the safest course is to obtain permission.
Applying a consistent policy across a number of university schools or faculties, or indeed across a number of government departments or even branches of the one corporate organisation can be likened to moving a wheelbarrow full of cats ñ not an event that is likely to be crowned with complete and unqualified success. Nevertheless, organisations need to be aware that actions taken by their employees in cyberspace can render the organisations vicariously liable. Possibilities include trade mark infringement, other forms of IP infringement, defamation, racial and religious vilification, invasion of privacy, and contravention of various laws in jurisdictions other than the originating one. In order to minimise such liability, organisations need to develop and introduce an electronic communications policy, covering procedures such as the ongoing review of corporate websites, and methods by which employees should submit text for review by the entityís legal and content experts for accuracy and compliance The policy should also provide concrete examples of prohibited conduct, so that the organisation can avoid that vicarious liability. Such examples, if they are to be effective in overcoming liability, not only need to prohibit conduct by describing it, but also need to emphasize that such conduct is a breach of the contract of employment, and perhaps indicate penalties for contravention.
An effective electronic communications policy will have:
In addition, organisations should conduct regular training
sessions for employees, where they receive instruction on such
issues as defamation, copyright, racial vilification and other
equity and gender issues, privacy, misleading and deceptive
conduct, trade practices requirements, and illegal material. An
informed workforce is much less likely to run the organisation
into legal problems through ignorance or over-enthusiasm.
In addition to developing an electronic communications policy, organisations migrating intellectual property to the world wide web will do well to use a checklist of actions to be taken before new material is placed on the server. Here is a sample of such a checklist, which should form part of the pre-publication review of all such material:
Identify the ownership of all copyright works including
text
graphics
photographs
animations
film
music compositions
sound recordings
software
database material
material from the Internet
other
Has permission been obtained to digitise each work ?
or
Is the work owned by the institution?
or
Is the work in the public domain?
Dan L Burk (Burk 1998) suggests the following checklist for privacy:
Identify the use of any individualís persona including
Has written permission been obtained from the individual for the electronic and online use of his or her persona?
Institutions and organisations following such procedures are likely to steer clear of major problems regarding the legality of their websites.
Organisations venturing onto the Web will also need to be aware of the requirements of the Trade Practices Act, particularly those sections relating to the provision of misleading information, the law of defamation as it might apply in cyberspace, Corporations Law (for example, companies must display their ACN or ARBN on their website) and relevant Industry Codes of Practice. To enter into detailed discussion of these issues is beyond the scope of this article, suffice it to say that paper-based law translates into cyberspace, and those who wish to conduct business on the web will be constrained by the same laws.
Two helpful articles "Internet Compliance Manual" and "An Internet
Legal Survival Guide" are available at the Gilbert
and Tobin website,[HREF 17] and cover these issues in
some detail.
Institutions or organisations which are using the Web to target foreign markets will also need to familiarise themselves with the cultural norms of the countries with which they hope to do business. This writerís experience as a teacher in foreign countries yielded many examples of strategies which went awry because of inappropriate choice of material. In many cases, well-meaning educators totally discredited their presentations by choosing examples which were culturally offensive, or at the very least, ridiculous in the eyes of the local people. There is every possibility that the same thing could occur on a website, with the use of inappropriate illustrations, language, or examples. Ideally, the website should be checked by a native of the country concerned, before being made accessible. If the site is to be presented in English, consideration ought to also be given to the English language abilities of the intended audience, and the text composed accordingly.
Whilst there has been a spate of cases involving intellectual property claims of various kinds, which include the settlement out of court of the Ticketmaster case, and while endless discussion continues on the legality of linking, and while also there have been a number of interstate actions in the USA, as referred to above, probably the major issues in the past few months have been firstly that involving ISP liability, where a most unusual decision in France has caused a great deal of consternation by making an ISP liable for the content of hosted websites. Details on this decision and reaction to it are at slashdot [HREF 17] A similar decision was made in Germany last year, making the outlook for ISPs in the European Union rather uncertain. Other jurisdictions, such as the Australian and United States have already realised the impossibility of ISPs being able to police their server contents, and have legislated, or are in the process of legislating, to make the website owner responsible for content, with an onus on the ISP to remove infringing material if they are made aware of it.
Secondly there has been the reaction from the recorded music
industry to the MP3 technology, which is set to radically change the
face of music publication and distribution. Whilst music files are
being packeted around the ënet with great abandon, and
accumulations of these files are appearing on websites in many
countries, it is unfortunately true that the vast majority of these
collections represent illegal use of copyrighted music, and those who
maintain such sites are at great risk of prosecution from an
extremely anxious and therefore militant and aggressive music
industry. Some fair dealing or fair use of these files is permissible
for individuals, but this does not include uploading them and making
them available to others. An excellent discussion on the MP3
issues,complete with directions locating and downloading MP3 files,
is at the Webmonkey
[HREF 18] site.
Not surprisingly, many legal issues have migrated to the World Wide Web along with the many and varied types of information that is to be found there. Business has discovered the Web, and brings with it the need for control and certainty. Organisations which plan to make use of the web to provide access to their collections of information must become aware of the copyright and other intellectual property constraints which must be overcome before they can use their acquisitions with impunity. As Web publishing and other uses of the Internet come within the ambit of increasing numbers of people, particularly staff at all levels of organisations, so it behooves those organisations to develop workable and understandable policies which will ensure that quality and liability-free content goes onto their Websites.
Burk, D.L. (1998) Ownership Issues in Online Use of Institutional Materials. In Cause/Effect Vol. 21 No 2 1998 United States: Educause.
Lean, M. (1998) Towards Speedier Rights Clearance. In A.Fitzgerald, B.Fitzgerald, P.Cook and C.Cifuentes (Eds.) Going Digital: Legal Issues for Electronic Commerce, Multimedia and the Internet (pp. 38-42). S.Leonards, NSW: Prospect
Simondson, H & Daniels, K (1998) The PAML Pilot Project: A
Case Study in Copyright and Intellectual Property. PowerPoint
presentation at the Conference on Convergence: Culture and Policy in
the Digital Age. Australian Key Centre for Culture and Media
Policy:Brisbane, Australia November 1998
http://slashdot.org/comments.pl?sid=99/02/16/1743244&pid=5"
Michael Lean, © 1999. The author assigns to Southern Cross University and other educational and non-profit institutions a non-exclusive licence to use this document for personal use and in courses of instruction provided that the article is used in full and this copyright statement is reproduced. The author also grants a non-exclusive licence to Southern Cross University to publish this document in full on the World Wide Web and on CD-ROM and in printed form with the conference papers and for the document to be published on mirrors on the World Wide Web.