Copyright Principles in Action

APPENDIX A

HYPOTHETICAL SITUATIONS

Bootleg software, infringement consequences

Digitized Images, use of

Multimedia products, ownership of IP; risks of infringing

Software, creation of and intellectual property (IP) rights in

Alice, a University Computing Services salaried programmer wrote an application program (software) for accounting. Her husband, Bill, is an amateur programmer and graduate student. He was employed by the University only as a GTF in History. On his own time, Bill co-wrote the code with Alice for the program. Charlie, a temporarily unemployed friend of Alice and Bill’s, debugged it for them, but merely discovered and identified their programming errors so that Alice and Bill could rewrite the source code properly. Dana, a contractor for Computing Services, wrote the user manual for the software. Edward, a University Publications employee, edited the manual for grammar, punctuation, syntax, and occasionally for organization or clarity at his home over his vacation. Fred, another University Publications employee, designed the graphic art for the CD-ROM cover as an assigned task during work time. Part of Alice and Bill’s program was a mathematical algorithm. Their program was essentially an upgrade and expansion of a program written by an employee of M.I.T. Who has copyrights and to what?

The University and Bill will jointly have the copyright to the software. Charlie probably will not be an "author" under the copyright statute because he did not actually reduce any of his ideas to a fixed expression (Alice and Charlie rewrote the code). Dana might possibly have the copyright to the User Manual unless her contract with the University called for her to assign the copyright to it (and she fulfilled that obligation). However, there is a fairly good chance that the manual can be construed as a "supplementary work" to the program or as an "instructional text" in which case the University would have that copyright. Edward probably would not have copyrights in the Manual (even though he did the work at home on his own time) since his effort appears to have been purely editorial. Even though he may have rewritten a few sentences for clarity or repositioned some paragraphs for better organization, he does not appear to have contributed more than de minimus creative expression to the Manual. Had he been doing work on University time, he might have fared better under the Internal Management Directives so that he could share in the net royalties even though he was not legally an "author". Fred’s work would ordinarily earn him a copyright for the CD-ROM cover, but since he was an employee assigned to do that, this becomes "work for hire" and the University will have that copyright.

The portion of the program that is (or embodies) the algorithm is not copyrightable since it is, essentially, a statement of natural fact or an instance of unchangeable mathematical logic. That is, it is more like an idea than any one person’s creative expression. The University and Bill will have to get a license from M.I.T. since the new program appears to be a derivative work based on M.I.T.’s original program. M.I.T. will very likely insist on a grant-back of the right for it to use (but not to market) the improved version in addition to extracting royalties from the University/Bill.

While Bill could attempt to market the program independently of the University (and account to the University for its fair proportion of the net royalties), he will probably decide to assign his rights to the University and let UO Technology Transfer market the software in return for his fair proportion of net royalties. Or, if the University wants to use the software itself but sees no external market for the program, it would possibly agree to pay some kind of a royalty to Bill for its use.

To read a further discussion of software IP ownership issues in the main text, click on software ownership.

Hypothetical No. 2 (Multi-media development; IP ownership and fair use of third-party material)

Grant, a Geography professor at the University has used a mixture of student employees and students in his "Political Economy" class to develop information and write (along with Grant himself) the text and voice script for a CD-ROM on the "Political Economy of the Former Soviet Union." He went to the New Media Center (NMC) for its help in producing this multimedia product. The NMC had one of its staff cartoonists do some animation and contracted with a graduate student in music to compose some background music. Grant found some fascinating scenes in a Public-Broadcasting-produced documentary hour-long telecast which he had originally taped six months earlier on his home VCR to watch after he returned from an overseas trip. He decided to include seven minutes from that program in his CD-ROM. Grant did most of his work on University time. His neighbor, who had a particularly well-modulated voice, offered to do the narration (audio). The technical staff at NMC wrote the necessary software to navigate through the multi-media materials and for the user to take an interactive multiple-choice test on the material and to then see the graded results. Who has copyrights and to what?

The material appears to be educational and Grant was clearly using several University resources so the State Board will hold the copyright. Grant (and others discussed below) will share with the University in the net royalties. The student employees, to the extent that they actually wrote more than de minimus portions of the text or script, will also share proportionally in the net royalties. "Net" means after the University has recovered its costs of production, promotion, and marketing. The unpaid students (again to the extent that they wrote significant portions) will also have copyright. They may well decide to assign their rights to the Board (in the belief that University’s Office of Technology Transfer will be in the best position to market this product) in return for a proportional share of the net royalties. The NMC staff cartoonist and the staff programmers were doing work-for-hire and the University will have the copyrights to the animation and the navigation/test-taking software. The student composer will probably not have copyright to the music since his contract called for his effort to be a contribution to a collective work (the multi-media product). In any case, the NMC will probably have required, in negotiating his contract, that he assign any copyrights he might have to the Board. Of course, the composer may have been able to negotiate a higher fee as a result. The NMC will likely have obtained Grant’s neighbor’s written consent that his voice be digitally recorded by the University and used in its "Political Economy…" CD-ROM.

While Grant’s original taping of the Public Broadcasting program was lawful, his incorporating the seven minutes in this potentially commercial product was not for his personal viewing convenience and may well be infringing unless it could be qualified as a fair use. Given the commercial potential of selling the CD-ROM (especially to non-UO students) the use might or might not be deemed "educational". Seven minutes out of sixty is about 12% which is a little high. The PBS work may have been partly factual (helpful to the University) but certainly had lots of directorial discretion and creative scripting (not helpful). The market impact may depend on whether the producing station (or PBS) has a licensing program. If the fair-use analysis does not suggest an exemption, the University must seek permission from the copyright holder of the broadcast.

To read a further discussion of the IP ownership issue, including the infringement point, see multimedia products and multimedia infringement in the main text.

Hypothetical No. 3 ( Digitized images: copyright protection and fair use)

Harriet, an Architectural History professor used a digital camera while traveling through the United States to photograph works of art displayed in museums and various interesting buildings she passed on the street. Some of the museums she visited had "no photography" signs posted. Harriet did not ask for permission. She just ignored the signs and, when the guards were not looking, took her pictures. Other museums either gave her permission or had no posted prohibitions. Upon her return to campus, she organized the pictures on an intranet web site and added her own text about each work of art or building. The web is on a server that only networks with sixteen computers in Architecture Computer Lab but all 250 architecture students have key-cards allowing them to get into the lab and use the computers. Assume all the works of art photographed by Harriet and the architectural plans to the buildings are still under copyright.

Were any infringing copies made? Was any of this fair use? Will the museums inevitably be the copyright holders of the works of art they possess?

An initial problem may be whether Harriet’s very act of taking the picture was making an infringing copy. This can be enigmatic. Copy-stand photography (like xerography and making multiple prints) is generally considered copying whereas free-standing photography is usually considered creative enough to support copyright itself (probably even if the subject is a human-made creative work). Of course, in some of these instances Harriet was not authorized to take (indeed was prohibited from taking) the picture. This may raise some issues of trespass, but it also looks to be the making of an infringing copy. This is so because even photographers who do gain copyrights to their photos are basically creating a "derivative" work and need a license or permission from the holder of the copyright to the underlying work (the subject of the photo).

Sometimes the owner of the painting or sculpture (the museums in this hypothetical) will also own the copyright (by assignment from the artist or the artist’s assignee). But this is not always the case, especially where the provenance of the piece is difficult to unravel or the artist had the bargaining power to retain the copyright (or sold it to a print publisher in return for royalties). In those cases, Harriet will have had to locate the copyright holder and seek permission. Of course, the work of art may be old enough that it is now in the public domain in which case there would be no copyright issue in taking the photographs.

When Harriet loaded the digital information onto the hard drive of her computer and then again onto the laboratory server, she made further copies. And when the image was seen by the students, it was publicly displayed and when (and if) the students downloaded the image, another copy was made. So, even if Harriet did get permission from the copyright holder to take the picture, was the permission/license broad enough to cover these other acts of copying, public display, and distribution? If the mounting on the Architecture Department’s server is found to be infringing, the University would likely be liable (especially if the Department Head knew from where the images came) even though Harriet took the pictures originally on her summer vacation.

Could her use be a "fair use"? The educational purpose is a positive factor in her favor. The amount used was 100% (negative for her – no pun intended!). The type of work was highly creative being fine art (negative for her). The impact on the market of the copyright holder is uncertain. If the Museum owned the copyright and sold slides or pictures of its holdings, there would be an impact and this factor would turn negative for Harriet. It will help that the web site was on an intranet and not available to a wider public over the Internet. It would have been better still if the material had been password-accessible only to the students in Harriet’s current class and not to all 250 architecture students.

The pictures of buildings are a different story. Since she took the pictures herself (as opposed to copy-stand photography from some published book), and took them from a public sidewalk, she should be protected under Section 120(a) of the Copyright Act.

This Hypothetical No.3 fact situation was adapted from one originally conceived by Marcie Hall, Barbara Hoffman, and Christine Sundt and used with their permission. See digitized images for further discussion of the fair use of images in the main text.

Hypothetical No. 4 (Bootleg software on a web site)

Ivan, a student employee in the Sociology Department’s computer lab, obtained a bootleg copy of an expensive but very productive application program. He mounted it on a server accessible by a network of twelve student work-stations. As a result, forty different Sociology students used the program over the course of several months as they worked on their class research projects. Ivan also mounted the software on his own web page and advertised its availability in several chat rooms on the Internet. As a result, 293 copies of the program were downloaded from his web site.

Have any infringing acts occurred? If so, who will be liable?

Since it was a "bootleg" copy, a license was not purchased and the copy Ivan obtained was, itself, an infringing copy. When it was loaded on the Departmental server, another infringing copy was made. Since Ivan was an employee working in the scope of his employment and the program was used in the instructional activity of the University, the University will probably be vicariously liable for this infringement. This will likely be so even though University policy prohibits the loading of bootleg software on University computers. There is almost no chance this will be seen as fair use.

As for Ivan’s distributing the program on the Internet from his personal web site, he will be personally liable. Assuming the University (through any of its employees responsible for administration or computer services) was not on notice of Ivan’s doing this, it should not be liable even though Ivan’s web site is connected to the Internet through the University’s gate-way (ISP). Under the Digital Millennium Copyright Act (DMCA), the University should be seen as a Internet Service Provider (ISP), and could avail itself of the agent-notify-disable defense if it was told of the presence of the infringing copy by the copyright holder. If it was not so told (or opted not to use the DMCA procedure), it would likely still be protected under the DMCA’s "conduit activity" and "user-directed storage" defenses.

To read more about illegal copies of software on the web in the main text, see "bootleg software".