Legal Issues in Museum Administration

ALI-ABA Course of Study Legal Issues in Museum Administration

Co-sponsored by The Smithsonian Institution, with the cooperation of the American Association of Museums

March 19-21, 2012 San Francisco, California

Creating and Managing Brand and Content on the Web (Copyright, Trademark, and Privacy Issues

Karen Frank, Coblenz, Patch, Duffy & Bass LLP Lauryn H. Guttenplan, Associate General Counsel, Smithsonian Institution Nate A. Garhart, Coblentz, Patch, Duffy and Bass LLP Walter G. Lehmann, Lehmann Strobel PC

ONLINE CATALOGUES AND RELATED ISSUES: SOME THOUGHTS ON THE LEGAL ASPECTS OF THE TRANSITION TO ONLINE SCHOLARLY CATALOGUES

Walter G. Lehmann, Lehmann Strobel PC

Summary: This paper explores some of the legal issues posed by online publishing of scholarly catalogues. It provides a brief informal survey of typical intellectual property concerns raised by print and online publishing and explores some of the current issues posed by publication of digital museum catalogues in an online environment. The paper concludes that while the principal legal issues faced by online scholarly catalogues are no different than those of traditional catalogues, the complexity of clearing rights is multiplied in an online environment.

The degree to which restrictions on access and use of content from a wide variety of sources can be minimized will be crucial to realizing the full potential of online scholarly catalogues.

1 Museums are beginning to explore the possibilities presented by online publishing. The

Getty Foundation is among those encouraging this effort. The Getty is currently funding the

Online Scholarly Catalogue Initiative (OSCI), a five-year project designed to explore the potential for scholarly collection catalogues in an online environment.1 Nine museums –

SFMOMA, Art Institute of Chicago, Seattle Art Museum, Tate, Walker Arts Center, the Freer

Sackler Gallery, LACMA, the National Gallery, and the J. Paul Getty Museum – are currently participating in the OSCI. The goal of OSCI is to transform how museums disseminate scholarly information about their permanent collections to make it available through web-based digital formats.2 This represents a paradigm shift, according to Nik Honeysett of the Getty: “The issue of transitioning to an online catalogue is part of the broader issue of museums coming to terms with what it means to be a cultural institution in the 21st Century.”3 The potential of utilizing institution-wide integrated information systems to collect metadata and organize disparate museum collections to create a new database for public use has been recognized for some time, but implementing a scalable approach has been a challenge.4 To address this, the Indianapolis

1 Online Scholarly Catalogue Initiative, available at http://www.getty.edu/foundation/funding/access/current/online_cataloging.html. The roots of the OSCI can be found in the Museum Educational Site Licensing (MESL) Project (1995-1999) which explored the potential of site licensing arrangements between museums and educational museums “to define terms and conditions under which digitized museum images and information can be distributed over campus networks for educational use.” More information about the MESL Project, including the final report, is available at http://cidc.library.cornell.edu/about/mesl.htm. One outcome of the MESL Project was the creation of Artstor’s Images for Academic Publishing (IAP) program which makes high resolution images from collaborating institutions available for use in scholarly publications free of charge via the Artstor website. More information about the IAP program is available at http://www.artstor.org/what-is-artstor/w-html/services-publishing.shtml. 2 Id. 3 Nik Honeysett, “Transitioning to Online Scholarly Catalogues”, Museums and the Web 2011, April 5-9, 2011, Philadelphia Pennsylvania, available at http://www.museumsandtheweb.com/mw2011/programs/the_transition_to_online_scholarly_catalogue 4 For a general discussion of the potential of integrated museum information systems, see Jim Blackaby and Beth Sandore, “Building Integrated Museum Information Systems: Practical Approaches to Data Organization and Access”, Museums and the Web Conference, Los Angeles, March 16-19, 1997, available at http://www.library.illinois.edu/dcc/publications/papers/mweb215.html.

2 Museum of Art is working with the OSCI consortium to create a toolkit of reusable components to support creation of online scholarship for museums.5

Online catalogues can take a variety of forms from merely posting a PDF version of a print catalogue on a website to creating a dynamic electronic document using an integrated information system which takes advantage of the many possibilities of digital online publishing.

Among the possibilities identified by the OSCI are the ability to easily update research and add to the catalogue over time; provide links to a wide range of primary and secondary sources

(including archival and conservation records and audio and video interviews); and to make greater use of comparative images.6 As these possibilities are realized, online scholarly catalogues have the potential to greatly enhance the museum’s brand and to further its public mission by creating new ways of disseminating information to achieve the core goal of greater knowledge.

The possibilities presented by online publishing pose a variety of legal issues. Some of these legal issues are common to all publishing projects regardless of whether they are print or online. Although these traditional publishing legal issues are generally well understood, their complexity – and the time and expense required to properly address them -- may be increased exponentially in an online environment. Central to traditional publishing are legal issues regarding rights clearances, primarily copyright in text and images, and in some cases the use of trademarks. Third party rights including privacy, publicity and defamation may also require consideration in certain circumstances and with regard to certain content.

5 Selected Digital Initiatives – Summary, “Are We Living App-ly Ever After? Digital Museum Initiatives, Apps, Gaming, Social Media and Cutting Edge Legal Issues”, ALI-ABA Legal Issues in Museum Administration, March 19- 21, 2012. 6 Honeysett, supra.

3 Traditional print catalogue copyright considerations include an analysis of whether a work falls within the scope of copyright, whether it has entered the public domain, and whether the contemplated use can be considered “fair use” under applicable copyright laws. With regard to scholarly publications, it is worth noting that US copyright law currently draws a distinction between making “multiple copies for classroom use” – which is expressly a “fair use” under

Section 107 – and other scholarly uses which may or may not satisfy the four factor fair use test set forth in Section 107.7 Course packets, for example, have been found subject to copyright.8 In a closely watched copyright infringement case brought against Georgia State University Library, the application of the scholarly/classroom distinction in a digital context is under consideration.

In the Georgia case the plaintiffs, a group of publishers, are objecting to dissemination of scholarly materials through “e-reserves” and online course websites. The outcome of this case may have wide-ranging implications for fair use as it relates to the publication of digital works, including online scholarly catalogues.9

Rights in images of copyrighted works require a second level of copyright consideration.

While it is generally accepted under US law that the Bridgeman court’s finding of no independent copyright applies to high quality photographic reproductions of two-dimensional works of art,10 the application of Bridgeman to three-dimensional works, and it’s application in a digital context remains open to debate. Bridgeman’s application under foreign copyright regimes also remains an open question.11 While use of a museum’s own images will not

7 17 USC §107, available at http://www.law.cornell.edu/uscode/html/uscode17/usc_sec_17_00000107---- 000-.html. 8 Basic Books, Inc. v. Kinko’s Graphics Corp. 758 F. Supp, 1522 (1991). 9 Chronicle of Higher Education, “What is at Stake in the Georgia Library Case”, May 30, 2011, available at http://chronicle.com/article/Whats-at-Stake-in-the-Georgia/127718/. 10 The Bridgeman Art Library, Ltd., v. Corel Corporation, 36 F. Supp. 2d 191 (S.D.N.Y. 1999). 11 “Digitally altered photograph can qualify for copyright protection, UK court rules” available at http://www.out-law.com/en/articles/2012/january-/digitally-altered-photographs-can-qualify-for-copyright- protection-uk-court-rules/.

4 normally pose clearance problems, the copyright status of comparative images created by other institutions or derived from other sources is often unclear. In light of these uncertainties, best practice generally requires clearance of comparative images for use in scholarly catalogues.

The use of text in scholarly catalogues also poses well-known copyright concerns. In traditional scholarly catalogues, it is not unusual for text to be commissioned from authors who are not employees of the museum. It bears repeating that when an author is hired as independent contractor, absent a written agreement containing an express “work for hire” provision all rights to the text, including copyright, are retained by the author.12 In some publishing contexts, an implied license to use the text for a limited purpose may be inferred. However, even if a text is subject to either an express or implied license, reuse of that text in an online context may require an additional license specifically permitting the online use.13 Another closely watched case,

Harper Collins v. Open Road14, in which plaintiffs are alleging copyright infringement resulting from publication of an unauthorized e-book version of one of their titles, may shed more light on dealing with electronic publishing rights.

The use of digital images and text pose additional legal questions which are unique to the online environment. For example, while museums and other content rights holders are generally familiar with licensing rights in traditional print formats, licensing in an online context, where use is not defined by specific print runs but instead by the number of views, requires the development of new licensing models acceptable both to content rights holders and to those wishing to use that content in online scholarly publications. These new licensing models must be

12 Community for Creative Non-Violence v. Reid, 490 U.S. 730 [1989]). 13 See The New York Times v. Tasini, 533 U.S. 483 (2001) (holding that reuse of freelancers’ articles in text-only electronic databases is not authorized by the Copyright Act and therefore constitutes copyright infringement); Random House v. Rosetta Books, 150 F. Supp.2d 613 (S.D.N.Y. 2001) (holding that the right to publish a work “in book form” does not convey the right to publish an electronic book). 14 Harper Collins LLC v. Open Road Integrated Media, 11 Civ. 9499 (S.D.N.Y)(December 2011)

5 both financially viable as well as practical as applied to a dynamic online context. Digital rights management issues are also unique to the online environment. Contextual issues – including implied endorsements, linking, and the like – also present legal issues that are unique to the online world.

In addition to clearing intellectual property rights in images and text, the potential of online scholarly publications to include other types of digital content presents rights clearance issues well beyond those typically encountered in traditional print publishing. The creation of object-specific metadata, the inclusion and audio and visual materials, as well as links to comparative images and other resource materials, including scholarly journals and library databases, all pose potential rights clearance problems. Some of these issues present questions of policy in a world where there currently are no commonly accepted parameters. While basic standards for metadata organization have been established, for example, the nature of and the extent to which information should be made public is still subject to some debate. The ownership of user-generated materials, including additions to metadata, is uncertain. Linking to scholarly journals and library databases pose questions of rights licensing and fair use. Linking to “unscholarly” sources pose questions about authority and accuracy. While most of these clearance problems are not insurmountable, rights clearance in the digital environment requires extensive knowledge of intellectual property laws and a significant investment in time and effort.

As has been noted, some of the uncertainty surrounding legal issues in online publishing also arises from unanswered questions involving the application of traditional legal issues to emerging technology.

The process of clearing third party rights is essentially an exercise in risk assessment.

While there is a certain amount of risk assessment involved in clearing image and text rights in

6 traditional print publication, the complexity of rights clearance in a digital world exponentially increases the difficulty of assessing risk. As Peter Hirtle explains in the context of library digitization projects, “The number of instances where we can know with certainty that we can digitize with impunity is very small. If we limited ourselves to those instances, our digitized collections might consist of nothing but published books issued before 1800.”15 Hirtle points to one innovative approach to aid in assessing risk, called the Risk Management Calculator16 -- a software tool developed in the United Kingdom to assess the risk of using copyrighted materials for educational purposes. The tool asks a series of questions about the material under consideration and how it is intended to be used, and generates a numerical score indicating the level of risk associated with the intended use.17 The Risk Management Calculator is an intriguing concept, although it is not without obvious limitations in both in scope and application which are inherent in such automated tools.

Several legal developments have improved prospects for online scholarly catalogues by reducing restrictions on access and use of source materials. One such development involves the permissible use of thumbnail images. As noted above, while the application of Bridgeman to images of certain types of images and in certain contexts remains subject to dispute, there does appear to be a growing consensus that the use of thumbnails – low resolution images typically used in databases and in search engines – are permissible fair use at least under US copyright law.18 The American Association of Museum Directors has also issued a policy statement on the

15 Peter Hirtle, “New tool: Risk Management Calculator”, LibraryLawBlog, February 18, 2011, available at http://blog.librarylaw.com/librarylaw/digitization_projects/. 16 The Risk Management Calculator is available at http://www.web2rights.com/OERIPRSupport/risk- management-calculator/. 17 Id. 18 See Kelly v. Arriba Soft Corp., 336 F. 3d 811 (9th Cir. 2003)(use of thumbnails in an electronic database is transformative); Perfect 10 v. Google, 416 F. Supp. 2d 828 (C.D. Cal. 2006), aff’d in part, reversed in part, Perfect 10 v. Amazon.com, Inc., 487 F.2d 7010 (9th Cir. 2007) (use of thumbnails in search engine fair use).

7 use of thumbnails which expressly states that the use of thumbnails in online scholarly catalogues is considered fair use.19 Although the law remains unsettled in this area, and the specific use of thumbnails in scholarly catalogues has not been addressed by the Courts, the general consensus of the museum community appears to be that use of thumbnails of comparative images in scholarly catalogues is permissible fair use. If this is indeed the case, the pool of available comparative images is greatly enhanced. However, the use of high resolution images will still require permission from the rights holder.

A second positive legal development is the increase in open access to online scholarly materials. Restrictions on access and use are perhaps some of the biggest impediments to realizing the full potential of on-line scholarly catalogues. However, there does appear to be a trend among museums and other cultural institutions towards making more materials freely available, at least for educational and scholarly purposes. There is a continuum in the extent to which such materials are being made available by copyright holders for use online – while some are available without restriction, others require registration, some are available by subscription, and some are available only for internal institutional use. One aspect of this trend is the increase in the number of museums and other institutions which are abandoning traditional image rights licensing regimes and experimenting with proactive open access licensing schemes of one form or another.20 These open access approaches to rights management generally take one of three forms. The collaborative approach is exemplified by the cooperative arrangement between the

Metropolitan and Artstor which has resulted in the Images for Academic Publishing (IAP).21

19 AAMD Policy on the use of Thumbnail Images in Online Initiatives, January 2011, available at: http://aamd.org/papers/documents/AAMDFairUseGuidelinesHLP1-10-11_2_.pdf. 20 For an analysis of changing museum image rights management practices, see Nancy Allen, “Art Museum Images in Scholarly Publishing” (date unknown), available at http://cnx.org/content/col10728/latest/. 21 See Artstor, Images for Academic Publishing, available at http://www.artstor.org/what-is-artstor/w- html/services-publishing.shtml.

8 Other museums, such as the Victorian and Albert museum, have instated their own proactive rights licensing policies.22 A third approach involves utilization of third party proactive licensing schemes. The Walters Art Museum, for example, has adopted a Creative Commons licensing scheme for use in connection with all of its images,23 while the Smithsonian has used Flicker to disseminate many of its images.24 Another important aspect of this trend towards open access to scholarly materials is the movement towards freely available online scholarship – scientific and scholarly literature which is made available free of charge on the internet.25 The trend towards more unrestricted access bodes well for the future of online scholarly catalogues.

However, the potential of online scholarly catalogues may also be limited by developments in intellectual property laws which increase restrictions on access to and use of source materials. The trend towards copyright term extensions continues. For example, the

European Union recently amended its Directive on the term of copyright to increase the term of copyright on performance rights in recorded materials from 50 to 70 years.26 Copyright term extensions postpone the date when copyright expires and works enter the public domain and are freely available for use in scholarly online catalogues. In addition to term extensions, certain works are being removed from the public domain by operation of law. In Golan v. Holder27 the

US Supreme Court recently ruled that in meeting its obligations under the Berne Convention, the

US Congress acted appropriately in enacting legislation which effectively reinstated copyright

22 For an analysis of the Victoria and Albert Museums rights licensing program, see “V&A Images: Images licenses at a Cultural Heritage Institution”, available at: http://www.ithaka.org/ithaka-s-r/research/ithaka-case-studies-in- sustainability/case-studies/SCA_BMS_CaseStudy_V-AImages.pdf. 23 Walters Art Museum, Terms of Use, available at: http://thewalters.org/rights-reproductions.aspx. 24 Flicker: Smithsonian Institution’s photostream, available at: http://www.flickr.com/photos/smithsonian/. 25 See Sam Vaknin, “Copyright Law and Free Online Scholarship: an Interview with Peter Suber”, United Press International (date unknown), available at http://samvak.tripod.com/busiweb26.html. 26 European Union Directive 2011/77/EU, available at http://eur-lex.europa.eu/LexUriServ/LexUriServ.do? uri=OJ:L:2011:265:0001:0005:EN:PDF 27 10-545, US Supreme Court, Term OY-2011, Jan 18, 2012

9 protection on millions of works that previously had be treated as being in the public domain under US copyright law. The result is that many of these works will no longer be freely available for use in connection with online scholarly catalogues. While these developments do not prohibit the use of source materials in online catalogues per se they dramatically increase the complexity and cost of complying with clearance obligations which may have the same effect in many cases.

In addition, digital piracy prevention laws, including the Digital Millennium Copyright

Act (DCMA),28 and recent legislative initiatives to combat piracy both in the United States and in other countries, may also affect the availability of materials for use in online scholarly catalogues. While intended to prevent unauthorized use of copyrighted materials, critics of the

DCMA argue that it stifles free speech and undermines the concept of fair use.29 The proliferation of digital rights management software, the circumvention of which is expressly prohibited by the DCMA, restricts movement between formats and poses conservation and preservation problems, which may impact the availability of source materials for use in online scholarly catalogues. Recent legislative initiatives aimed at combating online piracy may also affect the availability of source materials available for use in connection with online scholarly catalogues. Spain recently enacted an online anti-piracy law which established a government agency authorized to require internet service providers to block access to websites posting pirated materials.30 Similar new anti-piracy legislative proposals aimed at preventing the unauthorized distribution of copyrighted materials through foreign websites – the Stop Online

28 Pub. L. No. 105-304, 112 Stat. 2860 (Oct. 28, 1998). 29 See, e.g. Electronic Frontier Foundation, “Unintended Consequences: Twelve Years under the DCMA” March 3, 2010, available at https://www.eff.org/wp/unintended-consequences-under-dmca. 30 Sinde law text in Spanish available at http://www.elpais.com/elpaismedia/ultimahora/media/201201/02/cultura/20120102elpepucul_1_Pes_PDF.pdf

10 Piracy Act (SOPA) and its Senate counterpart, the Protect Intellectual Property Act (PIPA)31 – have met with stiff opposition in the United States. These legislative proposals have been criticized on a variety of grounds, including that they undermine the safe harbor provisions of the

DCMA and will restriction freedom of speech.

The proliferation of source materials in digital formats may also undermine some of the traditional copyright principals embedded in our copyright laws. The application of the “display right” and of the “first sale” doctrine in an online environment may have implications which are only beginning to be understood. The “display right” provides an exception from copyright permission for the owner of a lawfully made tangible copy of a work for the limited purposes of displaying that copy to the public.32 In a digital world where there are no tangible copies, the

“display right” may no longer have any relevance. The “first sale” doctrine33 allows the purchaser of a lawfully made copy of a copyrighted work to transfer it without permission from the copyright holder. Source materials in digital formats are increasingly provided through licensing agreements which include limited terms. As a result, like the “display right”, the “first sale” doctrine may no longer have relevance in an online environment where ownership of digital copies is never transferred to the online user. The application of other intellectual property concepts – including rights of privacy, publicity, defamation – in a digital environment may also have implications on the availability of source materials for use in scholarly catalogues.

There are a number of enduring issues posed by the migration of scholarly catalogues to an online format. The enforcement of intellectual property rights in an online environment can exceedingly challenging. While the use of proactive licensing schemes such as the Creative

Commons enables materials to be used for education and scholarly purposes, enforcing

31 H.R. 3261 and S.968 (2011). 32 17 U.S.C. § 106(5) 33 17 U.S.C. § 109

11 restrictions against commercial use may not be feasible in many cases. Changing economics also present challenges to the development of online publication of scholarly catalogues. As noted, the complexity and cost of clearing rights in a digital environment can be daunting. The role of legal counsel in assisting with the development of online scholarly catalogues may of necessity be increased. Rather than signing off on a fixed print catalogue, legal counsel will need to continue to have a proactive, ongoing review of online scholarly catalogues as material is added and changed.

While costs associated with the creation of online publications is falling, costs associated with creating, licensing and administering content may increase. In addition, the costs associated with commissioning authors, designers, and support staff will still need to be borne by the institution. Different types of content have different revenue models. For example, music rights are licensed in very different ways from film clips or still photographs. Navigating these different revenue models may pose additional administrative challenges for the development of online scholarly catalogues. Financing the costs associated with the creation of online scholarly catalogues may also pose challenges to realizing their full potential. Determining which business models for the distribution of online scholarly catalogues are viable may affect how readily they may be made available to the public. Some possible business models include pay-per-view, subscriptions, or donor-support. Ultimately the mission, values and goals of each particular institution differ and will require different strategies for supporting the creation and distribution of online scholarly catalogues.

While the principal legal issues faced by online scholarly catalogues are fundamentally no different than those of traditional print catalogues, the complexity of clearing rights is greatly multiplied in an online environment. The proliferation of open access source material presents

12 opportunities for online scholarly catalogues. However, recent trends in enhanced copyright protections may increase the complexity and limit the source materials available for use in online scholarly catalogues. The degree to which restrictions on access and use of content from a wide variety of sources can be minimized will be crucial to realizing the full potential of online scholarly catalogues.