Electronic Textual Editing: Rights and Permissions in an Electronic Edition [Mary Case (Office of Scholarly Communication, Association of Research Libraries) and David Green (National Initiative of Networked Cultural Heritage)]

A Brief Review of Copyright Law

Copyright is a principle embedded in the Constitution of the United States. In Article I, Section 8, the Constitution grants Congress the power “To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.” The framers of the Constitution recognized the importance of new knowledge to the health and vitality of the Nation and believed that discoveries are based on the prior research and scholarship of others. To achieve these goals, the Constitution gives Congress the authority to create incentives for authors and inventors by granting them a monopoly on their works at the same time limiting that monopoly so that other authors and inventors will have the right to use and build on those works. Congress has implemented this limited monopoly through the granting of a set of exclusive rights and the establishment of specific limitations on those rights. These exclusive rights and limitations as applied to authors are embedded in Copyright Law which is contained in Title 17 of the United States Code.

Copyright is a bundle of exclusive rights that automatically apply “in original works of authorship fixed in any tangible medium of expression, . . .” (Section 102(a)). As soon as the original expression of a creator is fixed in any medium, it is protected by copyright. Works covered by copyright include literary works, musical works, dramatic works, pantomimes and choreographic works, pictorial, graphic, and sculptural works, motion pictures and other audiovisual works, sound recordings, and architectural works (Section 102(a)). Copyright protection does not extend to facts, ideas, concepts, procedures, etc. (Section 102(b)) or to works of the Government of the United States (Section 105). Unpublished works, no matter where in the world they are created, are covered, as are published works created in the U.S. or in nations or states of a treaty partner (Section 104).

An important point to remember is that these rights belong initially to the original creator of the work. These rights, however, can be transferred (or “assigned”) in whole or in part to another party, usually through a contract (Section 201). (Hence, the use in copyright law of the phrase “copyright owner” or “rights holder” as distinct from the author or creator.) In the academic environment, some publishers require the exclusive and entire transfer of copyright as a condition of publication. But since these rights are divisible, an author can choose to retain and transfer rights in a variety of exclusive and non-exclusive arrangements. For example, an academic author could grant a publisher exclusive print reproduction and distribution rights and non-exclusive rights to reproduce, distribute, and display a digital version of the work. The management of copyrights is critical for authors to consider from the very beginning of a project. We will address this issue in more detail later.

In quoting from the works of others or reproducing pages of a manuscript, an author must determine whether the use is a fair use or whether permission is required from the copyright owner.

Another important limitation on the exclusive rights of copyright owners is the term of copyright protection. Starting out at just 14 years, copyright term has been extended many times by Congress, the most recent with the passage in 1998 of the Sonny Bono Copyright Term Extension Act, which added 20 years of protection. ¹ In general, for works published from 1978 on, copyright protection now lasts for the life of the author plus 70 years (Section 302(a)). In the case of works made for hire, and anonymous and pseudonymous works, the copyright term lasts for 95 years from first publication or 120 years from creation, whichever expires first (Section 302(c)). Works published in the U.S. from 1923 to 1977 with a formal notice of copyright ² and still under copyright in 1978 have also had their terms extended to as much as 95 years (Section 303). Foreign works published during this time period may also still be under copyright even if the works do not include a formal notice of copyright. A review of the Copyright Office information circulars ³ and a search of its registration records may be necessary to determine the copyright status of any works published between 1923 and 1977. Copyright term has expired for works published in and before 1922, which means they are now in the public domain. The publication date of a work and its copyright status are critical to knowing what uses an author can make of the work without having to seek permission. ⁴

Authors working on scholarly editions may also need to consult and reproduce unpublished manuscripts, diaries, and letters. These works are also protected by copyright. In the case of works created after January 1, 1978, copyright term is the same as that for published works, life of the author plus 70 years. Prior to 1978, unpublished works were granted “common-law” privileges that lasted in perpetuity or until the work was published, at which time it became covered by federal copyright law. Congress ended this common-law privilege with the Copyright Act of 1976, which brought the copyright term for unpublished works in line with published works. To help smooth the transition to this new term, Congress gave copyright owners until December 31, 2002 to publish their works thereby extending the copyright term, or copyright would expire (Section 303). In January 2003, the first of the unpublished works of American authors deceased for 70 years or more will enter the public domain.

In October 1998, Congress updated Copyright Law to take into account the digital environment. The Digital Millennium Copyright Act (DMCA) allows copyright owners to control access to copyrighted works through the use of technological protection measures, such as passwords and encryption (Section 1201). With very narrow exceptions, circumventing these measures without permission of the copyright holder is a federal offense. The law also includes a provision that makes it illegal to purposely remove, alter, or falsify any copyright management information that is associated with the work (Section 1202). This information can include the copyright statement, title, author, terms of use, etc., included in the work. The new law also limits the liability of online service providers under certain circumstances for infringing activity by users of their systems (Section 512).

In theory, the DMCA did not alter any of the aspects of copyright law discussed above, such as fair use and copyright term. These should apply to digital works as well as to printed works. However, with the ease of copying and distribution of digital works, copyright owners may be hesitant to grant permission for use of their works in a digital product. Or they may decide to charge a fee to make up for possible losses. Publishers of a digital work may be more conservative than they are in print, requiring permission for uses that would ordinarily be considered fair use. Similarly, college and university legal counsels are likely to urge authors not to use materials for which the copyright owner cannot be found and permission obtained.

Implications for Scholarly Editions

One of the first things the editor of a scholarly edition will need to do is determine whether the work that forms the basis of the effort is still under copyright. It is generally safe to assume that anything published in the U.S. before 1923 is in the public domain–that is, the exclusive rights granted to the copyright owner cease. Anyone in the U.S. may now use the work without any legal restrictions.

For works published between 1923 and 1978, as suggested above, the rules become more complex. But it is the case that many more of these works are actually in the public domain than one may think. Unfortunately, there is not yet a convenient way to make this determination. At the very least, if the work was published in the U.S. during this time frame and does not carry a formal copyright designation, it is likely in the public domain. For works with the formal copyright designation, a search of the registration and renewal records of the Copyright Office is required. If the editor or a research assistant cannot make the trip to Washington to search the files, the Copyright Office will provide such services for a fee. The Copyright Office will not, however, offer a legal opinion as to whether the work is in the public domain. A legal review is then necessary.

For works published outside the U.S., legal advice may be a wise investment. While use of a printed work, no matter where it is published, is generally governed by the copyright laws of the country within which it is being used, the digital environment may add complications. Given the variation in copyright laws around the world, a work that may be in the public domain in one country, may still be under protection in another. If your project were to include making a work that you believed to be in the public domain publicly available on the Web, you could be sued by the copyright owner under the laws of another country where the work was viewed or downloaded for such infractions as copyright infringement (public display) or contributory infringement (if a user in that country makes an infringing use of the work you made available). This is a very unsettled area of law in the digital era and the advice of an attorney is essential.

If it is determined that the work is in the public domain, the editor may proceed to use the work, including digitizing it, displaying it on the Web, and publishing it, without seeking permission and without having to pay a fee. However, you may find that many institutions holding public domain material will still charge a use fee (separate from any rights fees) to help defray their costs in preserving and making the material available. If the work is still under copyright, permission must be sought. In the permission process, it is important to anticipate the various uses that are to be made of the work so one does not need to go back to the copyright owner multiple times. As with many issues related to copyright, determining the copyright owner to begin with is not always a straightforward task; we will address that process in the next section of this chapter.

In addition to the basic literary work, compiling the scholarly edition will likely involve using the works of other authors: previous editions of the literary author’s work, critical essays, reviews, original manuscripts, letters, diaries, and perhaps even interviews with the author and screen plays. If any of these works are in the public domain, they may be quoted from or copied freely. If they are still under copyright, however, the editor must determine if the use of the material would be considered fair use. This requires an analysis of the four fair use factors outlined above. Fair use applies to unpublished as well as to published works.

While fair use should apply in the digital world, there is still great uncertainty about its application (see the “Checklist for Fair Use,” compiled by the Copyright Management Center at Indiana University http://www.iupui.edu/~copyinfo/fuchecklist.html ). Publishing a scholarly edition in an electronic format provides an opportunity for enhancing the work with features not possible in print: for example, a brief audio clip of an interview with the author or a film clip of the work as a screenplay. While limited quoting from these works for a printed scholarly edition would likely be considered fair use, a publisher may require the editor to obtain permission before being willing to incorporate such media clips into the electronic product. With copyright owners now using technological means to search the web to find unauthorized uses of their content, a publisher may be unwilling to expose itself to the cost of responding to potential claims, whether it believes the use is a fair use or not.

With fair use a matter of judgment, reasonable people may come to different conclusions on any individual use. Most publishers and attorneys will tend to err on the side of conservatism and suggest that if there is any doubt that a use is a fair use, permission should be sought. As noted above, it is likely that in the unsettled digital environment, they will be even more conservative and advise permission for obvious fair uses. There are those in the educational community who believe that if users do not invoke the fair use limitation provided for in the Copyright Law, there is a very good chance of losing it altogether. The author of a work has the responsibility both legally and financially to ensure that the work does not infringe the copyrights of another. If the author determines through a reasonable fair use analysis that a particular use, such as the incorporation of a brief audio piece or a digitized copy of a few pages of a diary, is a fair use, the author should not be required to seek permission.

If a work is still under copyright and the use the author wishes to make of it is not a fair use, then the author must seek permission from the copyright owner. There is, however, no guarantee that the owner will be found. If the owner is found, there is no guarantee that permission will be granted. And, if permission is granted but a fee is charged, there is no guarantee that the author will be willing or able to pay it. In the electronic environment in particular, copyright owners may be extremely hesitant to allow their works to be digitized and incorporated into an electronic product for fear of losing control of the content. An author must be prepared for the possibility that key works may not be usable beyond fair use.

The editor of a scholarly edition may also wish to include in the final product copies of the original manuscript or letters or diaries or photographs of the literary author. While digitizing and publishing a single page might be considered fair use, extensive reproduction, display, and distribution of these works will require permission. It is useful to note here that the owner of the manuscript or letters or photographs (which could be a library or archives or individual) may not own the copyright and may not be able to grant permission for use. Copyright law (Section 202) provides for the distinction between ownership of the material object and ownership of the copyright. The transfer of ownership of the object does not convey ownership of the copyright unless it is explicitly transferred as a part of the agreement.

Editors and Contracts

We have addressed thus far how copyright determines the uses of copyrighted works an editor can make in creating a scholarly edition. Let us turn for the moment to the editor’s rights as the creator of a new work and how contracts are used to manage those rights. To begin with, if the underlying text is in the public domain, the publication of the scholarly edition will not create a new copyright in the work. If the underlying text is still under copyright, copyright remains with the copyright owner and the copyright term is not extended. But the editor of a scholarly edition does bring much original work to the project, including the introduction, textual emendations, historical and critical essays, and in the digital world, perhaps even programming for display and interactive tools. As soon as the work is “fixed in a tangible medium,” it is protected by copyright. The author owns the copyright, which, as noted above, includes a bundle of rights that can be transferred or licensed in whole or in part to another party. This transfer usually takes the form of a contract, whether it is called a publishing agreement or a license of rights.

Publishers of scholarly works tend to request the exclusive and complete transfer of copyright, but there is no legal reason that an author has to accept this condition. Authors should think carefully about the uses they would like to make of their own work before signing any contracts. For example, the editor of a scholarly edition may be envisioning multiple versions of a work—a printed volume and a CD-ROM produced and distributed by a publisher, and an openly available Web site hosted and managed by the editor's institution. In addition to ensuring that permissions have been acquired for these various uses, the editor must ensure that any contract negotiated with a publisher does not inadvertently restrict the editor's rights to use the work as planned. An editor would be well-advised to consult an attorney when negotiating a contract with a publisher.

Contracts are used in turn by publishers in making electronic works available to users, whether to individuals or to libraries. Generally referred to as licenses, these agreements lay out who can access a product under what conditions and what uses they can make of it. From the user and library's perspective, these licenses are often restrictive, prohibiting uses that would be allowable as fair use or another exemption under copyright law. Since the courts are unsettled about whether licenses can pre-empt copyright law, libraries have actively negotiated with publishers to modify licenses to allow fair uses that would support education and research. As a scholar and teacher, you should think about what uses you would want to make of your product. Then, as an editor, you should investigate a publisher's licensing practices before agreeing to publishing with them and insist that the license agreement that accompanies your electronic work allows for fair use and the uses you would expect.

Identifying the Copyright Owner

Once it has been established that permission must be sought (because the material the editor wants to use is not in the public domain or its use cannot be considered fair use) or that the publisher insists that permission be obtained, the editor needs to establish not simply who the copyright owner is, but in many cases who the owner is of the rights for the kind of use planned for the material—as rights can be assigned or transferred to others. This can be a long and involved process, so it should not be left until the end of a project as it otherwise might unduly delay publication.

Secondary Rights

Be aware from the outset that many copyrighted works themselves contain other copyrighted material for which separate permissions must be sought for further publication or distribution.

Repositories

The repository that archives the material an editor is working on should be the first stop in the process of discovering the copyright owner. Sometimes the owner assigns copyright along with ownership of material when it is donated. However, often the owner of the material and sometimes the archive may not understand that the ownership of the work and of copyright are separate. So it is important to ensure that the archive itself knows whether copyright was assigned or not. If it was assigned it pays to investigate whether the person who assigned copyright was in fact authorized to do so. Did the creator of the work assign rights to a publisher, distributor or other body? In motion pictures and some other properties, rights are often assigned or sold and tracking them down can be quite difficult.

Copyright Office

Owners of U.S. Copyright works created before 1978 were required to register with the Copyright Office. Since 1978, registration is voluntary, although registration confers certain rights. Pre-1978 registrations can be checked in catalogs at the Library. Post-1978 registrations can be checked using either an older online system (LOCIS http://www.loc.gov/copyright/guide.html or (in 2002) an experimental system ( http://www.copyright.gov/records/ ). If one succeeds in determining the copyright owner for the registration of copyright, one must again determine whether the registrant still owns the rights or assigned or sold them to another party. The LC catalogs do not include entries for assignments or other recorded documents, so cannot be used authoritatively for searches involving the ownership of rights. One can pay a search fee for Library staff to conduct searches. For $65/hour, Copyright Office staff will search the indexes covering the records of assignments and other documents concerning copyright ownership. Search reports will “state the facts shown in the Office’s indexes of the recorded documents but will offer no interpretation of the content of the documents or their legal effect.”

The Library of Congress has issued Circular 22, “How to Investigate the Copyright Status of a Work,” http://www.copyright.gov/circs/circ22.html to assist in this process.

Other Databases

The WATCH File (Writers, Artists, and Their Copyright Holders) is a database containing primarily the names and addresses of copyright holders or contact persons for authors and artists whose archives are housed, in whole or in part, in libraries and archives in North America and the United Kingdom. It is a joint project of the Harry Ransom Humanities Research Center at The University of Texas at Austin and the University of Reading Library, Reading, England http://tyler.hrc.utexas.edu/

Collective Rights Societies

Collective rights societies help to rationalize the permissions process by being licensed by individual copyright owners to deal with permissions. Societies tend to specialize in particular media. Especially if a work is part of a book or journal, the Copyright Clearance Center (CCC) is a good place to begin. If text material is not found at CCC, you could try the Publications Rights Clearinghouse, representing a wide variety of writers groups from the National Writers Union to the Society of Children’s Book Writers and Illustrators.

Visual Images

Although some artists handle their own permissions, many use licensing agencies such as the Artists Rights Society http://www.arsny.com/ or the Visual Artists and Galleries Association (VAGA). Sometimes an organization might own publication rights but will assign digital reproductions to another agency (for example, the Ansel Adams Publishing Rights Trust owns rights to publish Adams photographs, while the commercial company Corbis has digital rights). The Art Museum Image Consortium (AMICO) licenses digital works for its member institutions http://www.amico.org .

Audio

Should permission be required to use audio material, the editor should be aware of the possible need for several layers of permissions. In order to reproduce any music, the editor will need composition rights (for public performance), for which licensing organizations such as ASCAP and BMI act as clearinghouses; recording rights (for the recording to be used), obtained from the recording company (although rights often revert to the performer 35 years after release); and reproduction and distribution rights (for both the composition, handled by the Harry Fox Agency, and the recording, handled by the recording company).

For recordings of the human voice, you must also think through the possible layers of copyright ownership. The sound archives should be the first source of information regarding copyright ownership of material. The individual or individuals whose voice(s) are recorded should be contacted if at all possible. Fair use also applies to sound recordings and some would argue that streaming a sound file (rather than downloading it) would strengthen a fair use argument.

Moving Images

Here there are no collectives, although RightsLine is a new entrant offering permissions software for the studios. Until recently, using movie clips was unrealistic because of limited bandwidth. However, as bandwidth increases, the distribution of movies will be increasingly possible. Currently, studios handle these issues quite differently, one from another. One author has had positive results dealing directly with the director of the film he wanted to use.

Foreign Collectives permission

The UK’s Copyright Licensing Agency offers electronic and non-electronic licenses for print works http://www.cla.co.uk/what_is_CLA/index.html . VERDI is a new European initiative linking existing multimedia rights clearance systems http://www.verdi-project.com/ and could be a useful mechanism in the future.

Seeking Permission

Once you have verified who can give you permission you need to contact them and explain what it is you require permission for.

Your first contact should be to verify that the individual is fully authorized to give you permission for the use you require. Some publishers may require absolute assurance of authority to grant permission.

Beyond this, it is very important to specify in your letter the precise use or uses for which you are seeking permission. Think through possible future uses too. In an attempt to simplify and rationalize the permissions process, some copyright holding organizations are creating their own forms. These are useful to examine for the information any copyright owner is likely to need. See, for example, the sample “Reproduction Request Form” of the Art Museum Image Consortium < http://www.amico.org/use/reproRequest.sample.html . See also the Sample Letter on Georgia Harper’s “Getting Permission” web site: http://www.utsystem.edu/OGC/IntellectualProperty/permmm.htm

You do not have to get permission in writing, but if you get verbal permission, make sure again that you carefully describe exactly what your use of the material will be and document your conversation with the rights holder. It would be advisable for you to send a confirming letter to the owner and ask for an initialed copy in return to ensure it accurately reflects your agreement.