INTELLECTUAL PROPERTY REVIEW FOR EDUCATIONAL INSTITUTIONS: AN OVERVIEW OF AREAS FOR COMPLIANCE IN THE DIGITAL AGE
Intellectual property (“IP”) consists of artists and innovator’s rights in their copyrights (expression), patents (ideas), trade secrets (ideas), publicity rights, and trademarks. The IP owner has the exclusive right to benefit from the exploitation. The right to license or sell those types of intellectual property is the vehicle for the owner to transfer their property through contract.
Educational Institutions need be proactive in respecting third party property rights. To this end faculty and staff must understand the need to comply with changes in digital management that respect those property rights. Management of the changing content through various changing mediums is the central concern of the staff and the IT Departments in dealing with the duties of managing content.
Compliance with Copyright Law and content management is the major focus of most institutions Intellectual Property concerns. In the digital age copyright compliance and proper dissemination of policy is central to legal compliance. Dissemination of the obligations of the institutional community is a role that online service providers must fulfill in order to comply with more recent provisions of amendments to the copyright act known as the Digital Millennium Act and the Teach Act. By having policies and a program to disseminate those policies the institution receives a degree of limitations and immunity in the event of infringement by third party users.
Copyright protects creative expression. The authors work is Copyrighted when it is expressed in a tangible means of expression. Publication under the last major revision of the copyright act in 1976 is not required, although publication and registration of rights enhance the author’s claims and potential damages, if infringed. Copyright law allows only the copyright holder the right to copy, display, duplicate or perform their protected work. The licensing of those works or the permission of the holder affords the public at large to use the author’s work. That license is only as broad as the grant and scope of the licensing agreement.
In a non-profit educational institution those rights are in constant use in a wide variety of settings by all those seeking to read library materials, download software, transmit course content, project video, broadcast events, reproduce any creative works, display art or photographic works, reproduce architectural plans, photocopy course content and other uses of content. Authors rights are always balanced against public interest. In copyright there is a delicate balance between new technologies and the protection of the owners intellectual property.
WHAT IS COPYRIGHT PROTECTION ?
The courts and the Congress have long recognized that a rigid application of US Copyright Laws might stifle the very creativity that it was designed to foster. Therefore, certain limited circumstances exist that make limited copying permissible. It is the necessary for educational institutions to comprehend that limitation so as not to exceed it. The balance of interests between an Author and the knowledge needs of students, faculty and staff is a delicate one. The priority must always be to properly use all copyrighted materials in deference to the rights of each author.
COPYRIGHT OWNERS HAVE SIX (6) EXCLUSIVE RIGHTS
- TO REPRODUCE THE COPYRIGHTED WORK ;
- TO PREPARE DERIVATICE WORKS BASED ON THE WORK;
- TO DISTRIBUTE COPIES OF PHONORECORDS OF THE COPYRIGHTED WORK TO THE PUBLIC BY SALE OR OTHER TRANSFER OF OWNERSHIP, OR BY RENTAL, LEASE, OR LENDING;
- IN THE CASE OF LITERARY, MUSICAL, DRAMATIC, AND CHOREOGRAPHIC WORKS, PANTOMINES, AND MOTIONS PICTURES AND OTHER AUDIOVISUAL WORKS, TO PERFORM THE COPYRIGHTED WORK PUBLICLY; AND
- IN THE CASE OF LITERARY, MUSICAL, DRAMATIC, AND CHOREOGRAPHIC WORKS, PANTOMINES, AND MOTIONS PICTURES, GRAPHIC, OR SCULPTURAL WORKS, INCLUDING THE INDIVIDUAL IMAGES OF A MOTION PICTURE OR OTHER AUDIOVISUAL WORK, TO DISPLAY THE COPYRIGHTED WORK PUBLICLY; and
- IN THE CASE OF SOUND RECORDINGS, TO PERFORM THE COPYRIGHTED WORKS PUBLICLY BY MEANS OF A DIGITAL AUDIO TRANSMISSION.
Copyright infringement occurs when any one of the five exclusive rights are violated, unless the use is allowed by permissions from the Author or the use falls within a narrowly recognized permissible use as an affirmative defense sanctioned by Congress and/or the courts.
SUMMARY OF NARROWLY RECOGNIZED EXCEPTIONS
Fair Use (17 USC 107): The fair use of a copyrighted work, including such use by reproduction in copies or phonorecords or by any means specified by that section, for purposes such as criticism, comment, news reporting, teaching (including multiple copies for class room use), scholarship, or research, is not an infringement of copyright.
Library’s special exemption (17 USC 108): It is not an infringement of copyright for a library or archives, or any of its employees acting within the scope of their employment, to reproduce no more than one copy or phonorecord of a work (or three copies to replace a destroyed, damaged or deteriorating, lost or stolen, or if the existing format has become obsolete, if the library or archives has, after a reasonable effort, determined that a replacement cannot be obtained at a fair price; and any such copy that is reproduced is not made available to the public.
First sale doctrine (17 USC 109): The owner of a copy or phonorecord lawfully made is entitled, without the authority of the copyright owner, to sell or otherwise dispose of the possession of that copy or phonerecord.
Educational performances and displays in the classroom (17 USC 110): Allows for the performance or display of copyrighted works in a face-to—face teaching in a classroom setting within a nonprofit educational institution. .
Software backups (17 USC 117): It is not an infringement of copyright for the owner of a copyright program tom to make an additional copy or adaptation of software if such new copy or adaptation is created as an essential step in the utilization of the computer program, or that such new copy or adaptation is for archival purposes and that all archival copies are destroyed in the event that the continuing possession of the computer program should cease to be rightful.
Modifications for blind and disabled (17 USC 121): It is not an infringement of copyright for an authorized entity to reproduce or to distribute copies or phonorecords of a previously published, nondramatic literary work if such copies or phonorecords are reproduced or distributed in specialized formats for use by blind or other persons with disabilities.
These limitations on copyright owners’ rights, and others not mentioned here, are critical to the achievement of copyright’s purpose. They are illustrative of how copyright law protects The author’s rights as the incentive to publish, thereby increasing the knowledge base of our society.
If not within narrowly recognized exceptions: Get a license/permissions or do not use
FURTHER REVIEW OF NARROWLY RECOGNIZED EXCEPTIONS HAVING ADADEMIC EMPHASIS
FAIR USE OF COPYRIGHTED WORKS
Fair Use in Copyright is governed by 17 U.S.C. § 107. Fair use of the copyrighted work is allowed for such purposes as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research. Determination of Fair Use is on a case by case basis under Section 107 and in any particular case four (4) factors are considered;
- 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 a use upon the potential market for or value of the copyrighted work.
Fair Use does not provide a blanket permission to copy by educational institutions. By both Congressional Action and U.S. Supreme Court decisions affirm that the uses are extremely limited. Any analysis that is not clearly within the scope of Section 107 requires permission of the copyright owner before making copies or reproducing in any medium. The institution’s librarian should direct users to permissions services. The Copyright Clearing Center www. copyright.com, is one source for obtaining permissions.
DIGITAL MILLENNIUM ACT: 1998
Online service providers, including colleges and Universities providing network use to the institutions community have an obligation to remove infringing content from the institutions computer Systems under 17 U.S.C. § 512. As a service provider, the institution, upon receiving notice of infringement will immediately notify a user of the alleged infringement and demand removal. If materials, found to be infringing, are not removed forthwith the institution shall exercise its duty to take down the infringing materials and remove the user from its privilege of using the institutions network.
TEACH ACT AND DISTANCE EDUCATION: 2002
Educational institutions must comply with the Teach Act. The Teach Act set forth in 17 U.S.C.§ 110 allows transmissions of snippets of teaching content directly related to an integral part of a class session. The class assignment must be supervised by an instructor and any transmissions must be limited in scope and size. The act allows transmissions for face- to- face teaching activities. Broadcasting copyrighted materials from outside activities into the institution’s community is strictly prohibited. Students may read aloud from copyrighted text materials, act out a drama, play or sing a musical work, perform a motion picture or filmstrip, or display text or pictorial material to the class by means of a projector. Nothing in the Teach Act limits the copyright owner’s rights to make dramatizations, adaptations, or create derivative works under the act. Thus for such events permissions must be obtained. Transmissions of content for teaching and instructional purposes may be transmitted for the session in which the course is being taught. The materials must be removed from the institutions computer system immediately following the term for which they are used. Those materials may be archived offline under the domain of the institution’s library for future classroom use.
SCOPE OF REVIEW
- Existing Policies or Statements
Most institutions have various disparate copyright provisions circulated throughout the various institutional literature such as the Student Handbook, Employee Handbook, and proposed Ethics Policies. Policies must be reviewed and updated to a comprehensive statement necessary for compliance with the current law. Institutions must designate an agent of the Institution for registration with the copyright office. A “take down” policy should be in place to enforce infringement complaints. Generally the Information Technology staff in conjunction with the Library staff needs to implement a policy to address the concern. Some areas of effective review are:
a) Student handbook.
b) Employee Handbook
c) Ethics Policies
Institutional Departments Engagement
In most institutions the library is the central source for handling inquiries relating to copyright. The library staff handles questions concerning copying, fair use, and permissions requests on a daily basis. Notices as to the act should be listed on the copying machines. The library staff need be trained and knowledgeable as to copyright compliance. The staff’s requests are divergent including handling art works and photographic requests which require handling multi media requests. Both the Teach Act and the Digital Millennium Act should be understood by staff including information relating to software use, fair use in the classroom and distance learning. Policies should exist for information for obtaining permissions and registering copyrights. A simple pamphlet is a good instructional source for dissemination concerning copyright questions and its distribution demonstrates the library staff and copy centers are fulfilling the required education and dissemination requirements necessary to limit liability under both the DMA and Teach Act.
As copyright education and enforcement has traditionally come within the perverse of the library in academia a designee of the library staff would seem best suited to carry out the mandate of 17 U.S.C. as the copyright designee for compliance as a service provider.
In order to comply with the provisions of the Teach Act it is recommended that a repository archive for teaching materials in multi medium formats that incorporate copyrighted fair use materials. Such classroom presentations such as a distance course displaying marketing advertisements or snippets of copyrighted music bare required to be downloaded off network in order to meet fair use limitations under the teach act. A process for archiving said materials should be instituted under the libraries supervision.
- Risk Management
The risk management department or liaison to insurance or counsels’ office should be involved in IP management. Concerns over Intellectual Property and Infringement should be discussed. The cost of an IP Insurance policy should be considered and weighed against risk. The role of the Institution as an online service provider and the necessity of adopting policies in order to shield the Institution from potential liability for third party user infringement should be understood and considered.
- Human Resources
Human resources has a broad range of critical responsibilities including those relating to IP ownership. Included is the collective bargaining agreements, work for hire arrangements, Independent Contractor Agreements (IKA) and joint work agreements.
The IKA should be strongly protective of an institution’s IP including ownership of copyright’s created at the institution. Any works created that relate in any way to the institutions business, products, or services are owned by the institution.
Written copyright policies are beneficial to all users with in the community and should be disseminated with that theme. Other ownership issues include Joint ownership of creations, commercialization of research projects, comprehensive licensing policies that includes rights in patents and inventions.
- Information Technology
The institution’s Information Technology Department plays and integral role in the Intellectual Property arena. They are responsible for the safeguarding of confidential data, oversee site licenses for software, monitor lab environments, oversee a comprehensive lap top program for students, audio visual which is asked to convert works and transmit through multi media is within the IT domain. Any “take down” plan will have to be directed through IT in the event of infringement. The IT department must be knowledgeable as to the scope of the software license and IT delivery. A traditional safeguard is an audit of safeguards and controls.
Educational institution often have athletic
departments, broadcast networks and other activities that are inherent to an educational institution. Rights as diverse as re-broadcast rights, music publishing, pod cast licensing, bookstore trademarks and logos should be reviewed to determine if publication rights and uses are being properly utilized and intellectual property rights for these varying uses understood.
A Trademark is a mark used to show the proper origin of goods or services. The controlling federal law is the Federal Trademark Act of 1946, as amended (the Lanham Act). Rights exist under common law and state law as well. Federal registration provides the owner superior rights and procedural advantages in enforcing its ownership interests in the mark. The law protects owners from unfair competition and the exploitation of their marks in interstate commerce. The mark may also be protected in copyright if it is original expression. Rights arise from the date of first use in interstate commerce.
Most educational institutions have trademark rights in their logos, names, and service marks. Trademarks are registered in appropriate channels of trade.
A trademark audit provides a good review of existing marks and use over time. The use of a trademark “Watching Service” can make an institution aware of other trademark applicants which may confuse or dilute the institutions mark. A trademark usage policy, library of marks and necessary compliance issues as well as registration of certain logos are often recommended to enhance the institutions brand.
Patents are legal mechanisms which allow an inventor or holder the protection of its investment in time, money, effort, and resources to create a new contribution to technology. As such the invention is the property of the patent owner. The legal system for the protection of the owner is the patent system. A patent provides exclusive rights to make use and sell patentable subject matter. Most educational institutions patent reviews are limited to large research colleges and universities. However every institution should be aware that in the course of Digital Content Management recommendations are made to insure that all vendor contracts have indemnification clauses to protect against third party Intellectual Property violations.
Policy to specify who owns all rights to patentable inventions arising from the institutions research. Also dissemination of who owns what IP rights can arise when there exist both patent and copyrighted works. By example concerns a copyright may exist in certain aspects of software development such as the code or screenshots while a patent may exist for the invention. Defining ownership of Intellectual Property developed within the institution might best be served through the joint development of an institutional licensing program before ownership issues become a disputed issue.
D. CONFIDENTIAL INFORMATION
Confidential Information includes all information not generally known to others and is not to be disclosed to others. Confidential information includes information received by the University from its customers, clients, or others with the understanding that the information will not be disclosed. Confidential “works” means all inventions, original works of authorship, concepts, ideas, patentable works, trade secrets (see “Trade Secrets” below), during the term of an agreement to hold confidential, which relate to activities, business or products of the University.
Recently institutions have been dealing with complex issues relating to Information Technology as it relates to security issues. Proper review will enhance IP concerns for both security and IP. It is necessary for staff to treat confidential IP as valuable property requiring segregation and protection as private data within the secure infrastructure of the institutional systems.
Institutions should be aware of the need to place trade secrets, original works, research creations, patentable projects, confidential information received by the University in electronic medium, within a private data network.
Institutional policies that address issues such as password access, if left unaltered, avoid a recipe for wholesale infringement. Authentication and encryption policies need to be specified and enforced.
E. TRADE SECRETS
Trade secret law protects the “how to” of innovation. It is the innovator’s secret. It may be a process such as a food recipe or a complex methodology or formula for operating technology. The secret exists only as long as it is kept. It begins as the development of an idea and are as lasting as the secret is maintained. In order to maintain the secret with employees and others involved in product development confidentiality agreements are required. Once the secret is divulged the protection is lost. There is no bureaucratic means or delays such as the patent office or registration as with copyright or trademark rights. It is a right arising from the common law.
Institutions and their innovative faculty may have formulas, secrets, and other confidential processes or materials that are being developed independently or jointly with the institution. A breach or unwanted dissemination or publication of those secrets such be protected by both confidentiality agreement and secure storage in a private data location. Anyone having access to such secrets who is not an employee of the institution must sign a confidentiality agreement. Otherwise the secret is published to a third party and lost. Independent Contractor Agreement must be signed.
F. PUBLICITY RIGHTS
Publicity rights are common law right arising out of the right to privacy wherein a public figure has a right to appropriate his/her name, image and likeness. When high profile public figures speak and appear at institutional events the right to disseminate the dignitaries likeness in word, sound, photographs, and to display that likeness in different institutional medium should be secured prior to the engagement.
G. LICENSE RIGHTS
A key ingredient to the proper use of software and other copyrighted works is the license. Proper license Employed through the license grant allows users access to the IP. The IT department monitors its software licenses and has employed software to monitor the same. Nonetheless laptop policies, password deficiencies, generic log in have may leave an institution in open season for license violations. An “Acceptable Use Policy” adopted by the institution should speak directly to downloading unlicensed software and should indicate that access to the system or use of any systems including student laptops may be revoked upon the users exceeding the scope of the license through downloading and other means.
At most educational institutions each department has control over its budget and flexibility as to purchasing. Software, manuals, books, guides, video, software, and hardware are purchased throughout the institution. The scope of the available license should be negotiated on these purchases to the broadest possible limits providing users the right to transform the purchased works purchased into different mediums. The purchasing department should educate managers as to the license grants.
An educational institution, whether engaged in research or simply a teaching institution is subject to concerns for the use of Intellectual Property in the Digital Age. To insure the protection of the institution and its community periodic review of policies and procedures is essential.
Copyright John J. Flanagan 2017