The following consistutes thef ull text from the slides from Prof Oppenheim's presentation at Facing the Legal Challenges of Providing Internet Access in HEIs, organised by The JISC with support from UKOLN. The text from the slides used is also available.
Brief biography of Prof Oppenheim.
Good morning, ladies and gentlemen. In this talk, I want to cover two major aspects of intellectual property that are relevant to providing Internet access in HEIs - they are copyright and trade marks. I will do this by first describing what these legal concepts involve, and then discussing particular problems that arise in the Internet environment.
A few years ago, I gave a talk on copyright to a group of Vice chancellors. After my talk there was a lively question and answer session, and after some ten minutes of this session another questioner raised his hand. "Professor Oppenheim", he said "Clearly you are not a lawyer". Damn, I thought, obviously this man is a lawyer and I've given an incorrect answer. "Oh yes", I replied in a cheerful voice, but feeling a bit sick inside, "and why do you say that?" Back came the reply "Because you give clear answers to questions". Well, unlike the other speakers at today's conference, I am not a lawyer.
However, it is the intention of all the speakers to give you clear answers to questions, and I hope to set the trend for the rest of the day.
So let's start off with copyright. What I propose to do is to provide you with an outline of copyright law, and then home in on certain issues that arise when you let staff and students loose to both create material for the Internet, and to use the Internet.
Copyright, as its name implies, involves the right to copy items. The owner of copyright materials has no rights as such to reproduce the material as he or she wishes, but rather gets the right to prevent third parties from copying (and doing certain other things) to his or her material without permission.
To acquire copyright, the creator - whether it is an author, a photographer, a painter, a film director, a composer, a poet or whatever, must create something that is new. In UK law, all that this requirement means is that the material must not have been copied from someone else. Imagine two of you stand up right now, and both take photographs at the same instant of me talking. Although the photos will look identical, both of you will have copyright in your pictures because neither of you copied from each other. Thus, you can see it is perfectly possible, and is not uncommon for two apparently identical items to have two separate copyrights.
Besides having to be not copied, the other major criterion for something to be copyright is that it exists in a fixed format. My words, floating in the air, have not been fixed in any way, so are not copyright. When they become fixed, say by a tape recording or my a shorthand typist, they become copyright. Incidentally, the copyright in such fixations of speech usually belongs to the person speaking. However, those of you taking notes from my words are using your skill and judgement to decide what is important and what is not, and you are paraphrasing me - so you own the copyright to your version.
So copyright subsists in some fixed object created by someone who has not copied something else. What sorts of objects are so protected?
They include: literary, dramatic and musical works; sound recordings; films; television broadcasts; cable TV programmes; and the typographical arrangements and layout in printed publications. These different classes of copyright works, alas, have different ground rules regarding their ownership, lifetimes and what can and cannot be done with them. These differences are often quite subtle, and this makes it difficult to make generalisations and provides a nightmare for someone dealing with multimedia, when several different types of copyright work are merged into one.
Copyright, then, is a set of property rights vested in the owner of a protected work. There is copyright protection for these works, but not for ideas. Thus, for example, anyone can write a story about a spy called James Bond, code name 007, an arch enemy called Blofeld and a boss called M - as long as you do not copy the text of one of the existing books. Incidentally, life isn't quite so neat, as there may be trade marks associated with the James Bond genre, but in pure copyright terms, there is no protection for the idea.
Copyright is automatic. Once an original work is created, copyright in it exists without the need to register, pay fees or undergo any bureaucratic procedures. Furthermore, copyright is also simultaneously created automatically in all the major countries of the world, irrespective of where the act of creating the work took place.
So what are these types of works? I will only consider those likely to be met in an Internet environment.
Copyright exists for a limited period only. Virtually all works eventually emerge from copyright protection. There are some minor exceptions to this rule, the most interesting being perhaps J.M. Barrie's Peter Pan. This Dramatic Work, about the boy who never grows up, has a copyright that never grows up either!
However, in general, all works have a limited copyright. For most copyright works, the lifetime is author's life + 70 years. There are exceptions, however, such as for Crown Copyright works, anonymous works, computer generated works, photographs, published editions, previously unpublished works, sound recordings, broadcasts, and films.
So much for what copyright is and how long it lasts. Let me now move onto the vexed question of.....
In general, the first owner of copyright in a given work is the person who created it. I say "first owner" because the creator may choose to sell or give away his or her copyright to someone else, say a publisher, later on. There are however, exceptions; in the case of literary, dramatic, musical, artistic and film works, material created by an employee in the course of his or her employment will be automatically owned by the employer. Thus, if I am paid by an employer to write press releases, the copyright in those belong to the employer. If am paid to write press releases, but instead write poetry, I own the copyright in that poetry - though of course my employer is entitled to sack me for wasting its time. Incidentally, it makes no difference where or when the material was created. If I am paid to write press releases, but choose to do so on my own home PC in the evenings, my employer still owns the copyright.
All of this raises interesting questions regarding ownership of copyright by freelancers. It is commonly wrongly claimed that if an organisation pays a freelancer to write something for them, then the organisation owns the copyright. It does not. The creator owns the copyright unless as part of the deal - and it must be in writing - the payment is in return for an assignment of copyright.
What do the phrases 'in the course of his employment' and "employee" mean? Employee means the employer pays a wage, is able to control how the work is carried out, deducts income tax, National Insurance, etc. The alternative - freelancing - is where although the employer pays a fee, it has no responsibility towards the other party other than to pay the money.
Some material, specially that prepared by University academics, does not fall neatly into one category or the other. Academic staff typically produce three types of copyright material. The first is lecture notes and other materials for students. The second is published research work, such as monographs, research articles, etc.
The third is multimedia teaching materials and software, both for teaching and for potential commercial exploitation. With TQA, increasing emphasis is being placed on the quality of the teaching materials created by academic staff, so it is arguable that academics are expected to create such materials, and so copyright in teaching materials belongs to the HEI.
The writing of a textbook is not an essential component of the contract of employment of academics. Therefore, copyright in these clearly initially belongs to the academic.
The pressures of the RAE have led to a situation where it is arguable that academics are required to create research publications, whether learned journal articles or monographs, and that failure to produce such articles will adversely influence their chances of promotion or tenure within the HEI. Thus, there is an arguable case that research publications are produced by an academic as part of his or her employee duties, and that a strong case can be made that the HEI owns the copyright in such publications automatically.
Hitherto, HEIs have shown no interest in claiming copyright ownership in such materials, but this may change in the future, especially as academics are often lax about assigning copyright. I know of one case where an academic submitted an article to an Elsevier journal, assigned copyright and when then charged £2,500 for permission to distribute it to his students! Of course, his HEI ended up paying the cost - so you can see why HEIs might be interested in getting a handle on copyright ownership in the future.
As I said earlier, copyright is a negative right. The owner of the copyright has the right to prevent third parties, without permission, from doing a number of acts with the copyright work. For this reason, these acts are known as "restricted acts".
The main restricted acts are as follows: to copy the work; to issue copies of the work to the public; to rent or lend the work to the public - though HEI libraries ARE allowed to do this; to perform, show or play the work to the public; to broadcast the work; to include the work in a cable programme service; and to adapt, or amend the work. If someone carries out one or more these acts on the copyright work without the permission of owner, or authorises someone else to do so, then that person is infringing the copyright in that work.
You can either directly infringe, or can be deemed to have authorised infringement. Authorising infringement is not just telling someone to infringe; it is also running an organisation in such a lax way that infringement occurs routinely and without penalty - the organisation turns a blind eye to what is going on. That is why it is essential for HEIs to have clear rules and procedures for dealing with copyright infringement.
In particular, it should be made a disciplinary offence for everyone - staff and students - to infringe copyright using University equipment, and the penalty should be severe - expulsion for students and dismissal for staff. What is more, that should not just be a paper exercise; it should really have teeth. Failure to impose such a discipline could mean that Registrars or even Vice Chancellors might find themselves accused of authorising infringement! You wouldn't want that to happen, of course.
In most cases, the penalty for infringement is likely to be damages as a result of a civil court action. In rare cases of blatant piracy or deliberate intent to harm the business of the copyright owner, infringement becomes a criminal matter. The copyright owner may, however, be simply content in obtaining an injunction to prevent any further infringement. If the owner sues for damages, he or she must demonstrate that he or she has suffered financial loss because of the infringement, or that the infringer has gained profits because of the infringement.
Incidentally, to have infringed you must have copied either the entire copyright work, or what is called a substantial part of a copyright work. Substantial part is not measured by volume, so if you hear anyone tell you you can copy 10% but no more, that is simply not true. 0.001% can be a substantial part in some circumstances. The best way to test if what you are copying is substantial is as follows: ask yourself - how annoyed would I be if the part I am copying were missing from the work? Consider a detective story. Hercule Poirot has gathered the suspects into the living room. "Well ladies and gentlemen" he says "I can now tell you who the murderer was. It was ......" and at that point the next two words are missing. So you don't know if it was Colonel Mustard or Miss Scarlett. You would be very annoyed if those two words were missing - they are a substantial part. Yet if the same two words were missing from, say, Chapter one of the same book, you probably wouldn't be bothered. Use that test if you ever want to copy something - I'm sure you'll find that in most cases what you are copying is substantial!
Despite the restricted acts, for certain purposes and within limits, you can copy copyright materials. In effect, these are certain defences against an infringement action. The best known of these concessions, or exceptions to copyright as they are known, is: Fair Dealing. Copyright in literary, dramatic, musical and artistic works and published editions is not infringed if copied for the purposes of criticism or review, reporting current events, or research or private study. Either you copy yourself, or ask someone else to do it for you - both are OK - though librarians who make copies for patrons have special rules that I don't propose to discuss today.
People often think, yes, I am doing this for research or private study, therefore it is fair dealing, therefore I am OK to copy. This is not true. The copying must also be fair - that is, it must not damage the owner's legitimate commercial interests. In deciding whether to copy material without permission by relying on Fair Dealing, you must make a judgement whether, if you were the copyright owner, you would think it 'fair'. If sued for infringement, you must be prepared to demonstrate that not merely was the copying done for one of the approved purposes, but also that it was indeed "fair" to the copyright owner. In my view, most of the copying that people think is fair dealing is in fact not. However, the key question is: does it matter?
The copyright owner is unlikely to sue if the damage you caused is slight. So this is only a worry if the owner is only likely to sue if you damaged its sales significantly.
Incidentally, there is no implication that fair dealing means just making a photocopy. It can apply equally in the electronic environment, so it is perfectly possible to make a copy of part or all of something in machine readable form and to claim it was fair dealing; indeed a JISC/PA Working Party has just developed a set of guidelines of what is agreed would be considered to be fair dealing in electronic materials such as CD ROMs, electronic journals and WWW materials.
As you can see, copyright law is not very helpful to users. That's why HEIs sign up with the Copyright Licensing Agency and similar agencies to copy things more freely, but at present one cannot get CLA licences for copying electronic materials - though I think that will change in the next year or two.
Moral Rights are different from Copyright. There are three. The first is the right for the author of a work to be acknowledged as the author or creator, the so-called paternity right. The second right, which applies whether you have ever created anything or not, is the right to object to your name being attributed to something you did not create. The third is the right not to have your work subjected to "derogatory" treatment, that is to some amendment that impugns your integrity or reputation.
Moral Rights, unlike copyrights, are not transferable and therefore always remain with the creator, even if the creator has chosen to assign his or her copyright in the material. Creators also must choose to assert the first of the Moral Rights, the paternity right (in other words, that right is not automatic as copyright is).
It is also worth noting that in some circumstances, Moral Rights can never exist, for example if you are an employee who is paid to create copyright material in the course of your employment, you have no Moral Rights to that material. Oddly, some Moral Rights also do not apply to journal articles.
There are several ways that Moral Rights issues might arise in an electronic environment, and it is important not to trivialise or ignore the issue. An action that may be legal from a copyright point of view may nonetheless infringe Moral Rights.
A few examples will show the importance of Moral Rights:
Note that if you take a small portion of an item to be sure it is not infringement, you may be caught out by the fact that such a small piece is derogatory as it does not give the whole picture of what the creator was trying to say.
Remember, because Moral Rights can never be assigned, it is quite irrelevant what copyright clearances you have obtained from the copyright owner.
Copyright law is subject to international treaties, the most important of which is the Berne Convention. This gives reciprocal protection for nationals from different countries, so that, for example, a US citizen enjoys the same protection in UK copyright law as if he was a UK citizen. Therefore, for example, once a copyright work is created in the UK, it automatically has copyright protection in all other countries that are signatories to the Conventions - in practice, all the major countries of the world. The Convention also means what is crucial is not where the material was created, but where the alleged infringing act took place.
For example, if I download in the UK some data held on a computer in the USA, then it is UK law that applies, not US. This raises particularly awkward problems in an internationally networked environment. What if I, in the UK, send instructions to a computer in the USA to copy a large body of machine readable data over to a computer in Saudi Arabia?
The data neither starts, nor ends in the UK. Only my instructions came from the UK. There is considerable debate, and no agreement, as to whose law would apply.
So much for the copyright basics. Let me now move on to Internet copyright.
"Electronic copyright" is a convenient heading to embrace copyright in machine readable materials. Thus use of software, the Internet, offline electronic databases such as those on diskette or CD-ROM, and online databases are covered by the term. Why is this subject important? Because of a number of factors. The first is the ease of copying materials in machine readable form, or of converting print documents into electronic form (so-called electrocopying); the second is the fact that such copies are typically of high quality, in contrast, say, to the poor quality of photocopies compared to an original printed document; the third issue is the ease with which people can place machine readable items on the Internet, and thereby pass them to potentially millions of individuals, many of whom may not respect copyright; the fourth issue is that such copying or transmission can be undertaken at little or no cost; the next issue is the difficulty in policing such actions; and finally there is the problem that different countries have different rules and traditions regarding such actions, and yet such copying often is carried out across national boundaries.
The first thing to recognise is that electronic mail messages, material loaded onto ftp sites or WWW servers, and anything else put up on the Internet is copyright. Just because it is widely available free of charge does not change the situation. There is not necessarily an implied licence to copy. Therefore you should be careful about copying such material, for example forwarding it to someone else. However, such copying is only a real problem if the person who owns the copyright loses income as a result of your infringement, or if you gain income as a result of the infringement. Individual Internet URLs, e mail addresses and so on, however, are facts, and can be copied. Compilations of URLs or e mail addresses are protected by copyright, just as are Internet indexes such as those created by Yahoo, Alta Vista, etc. FAQs (Frequently Asked Question) collections on Usenet newsgroups and WWW pages are all copyright.
Downloading someone's World Wide Web Home Page and to use it as the basis of your Home Page is clearly copyright infringement. There may be trade mark infringement as well if the original page had a trade mark. My advice is: create your WWW pages from scratch, and do not download someone else's. Amending someone's copyright material is "adaption" in copyright law, one of the restricted acts, and if done without permission is infringement.
Remember that you do not have to make any statement at all to get copyright - that is automatic under UK law. Therefore anything you create and put up on the Internet is automatically your copyright, assuming it is not copied.
The Internet can raise some novel copyright issues. One of the most interesting areas is the use of WWW links to connect third party material. In the Shetland Times case, a newspaper that also owned a Web site sued another newspaper that was on the WWW only to prevent the latter from displaying headlines from the former on the latter's Web site. The key question is whether the use of hypertext links and someone else's headlines constitute copyright infringement. The judge so far has passed an interim injunction preventing the Web only service from reproducing the headlines or providing WWW links to the competitor site. There has, in my view, been excessive hype over this case; this was a preliminary interim judgement; the full case comes to a hearing later this year.
A similar US case, the TotalNews case found, in practice, that to take someone else's WWW material and to enclose it in your frame so it appears to have bee generated by you is an offence. US law and UK law are very different and it is difficult to know if a similar judgement would be made in an equivalent UK case; it is more likely one would win such an action on the basis of a "passing off" action - which I will discuss in a few minutes, rather than as just copyright infringement.
The key questions raised by these cases are: whether references to third party material in hypertext links represent copyright works in their own right; and whether they infringe third party's copyright?
There are also Moral Rights issues raised by hypertext links, as I mentioned earlier. There are also questions whether any implied licences based on the way hypertext works and the prevalent practices by Web users exist. Contrary to my earlier statement, I regret I cannot give you any clear answers on these questions!
My conclusions are clear, however: if you are a creator and you are worried about people ripping you off on the Internet, do not put the material up on the Internet. The problems of policing the Internet, identifying infringements and then prosecuting offenders are enormous. If, on the other hand, you wish to use material that is currently on the Internet, my advice would be to approach the copyright owners to request permission if what you end up with is going to be sold commercially, but if it is for your own private research, go ahead and copy.
Merely browsing is technically also copying in the law, but I really would not worry about such activities. If you download WWW material, e mails, etc. onto your hard disc, you are technically infringing, but you are unlikely to be sued if your purpose is research or private study.
If you redisemminate the material to others by e mail or if you load it on your Web site, however, I would always advise asking for permission, as such actions are infringement, just as copying a free newspaper without permission is infringement. I repeat: there is no implied licence to copy material that is on the Internet. And don't forget the risks of infringing Moral Rights - in my view a more serious threat than copyright on the Internet.
Incidentally, it is not just the staff or student who is liable; it is senior figures in the HEI, the network operator and others could be pulled in. There are serious issues connected with the liability of network operators such as JANET, but which we will probably cover later.
So much for copyright. Let me finish off with a brief description of trade marks, trade names and passing off.
There are two types of trade marks: Registered Trade Marks, and unregistered Trade Marks, often known as trade names.
A Registered Trade Mark involves the formal registration of a name or mark that is used to identify a particular product or service. Anyone else who uses the Registered Trademark is liable to legal proceedings for trademark infringement. A Registered Trademark is usually identified by the circled R symbol.
Unlike copyright, where you recall there is no formality or cost, obtaining a Registered Trademark is a relatively long and expensive process, made worse by the fact that little international agreement exists to recognise trademarks registered in another country. Therefore you are advised to register in all countries in which you want to protect your trademark. The full process of registering a trademark takes around two years and costs approximately £1,000 for a UK registration and perhaps £1,500 for each overseas registration.
The cost can is multiplied if you wish to register the trademark for more than one "class" of goods or services. For example, class 9 is computing and class 16 is paper and printed materials. The protection you obtain only relates to the class of product or service that you have registered the name for. You also have to pay renewal fees from time to time to keep the Registered Trade Mark in force. You must also keep USING the Mark to keep it in force.
There are many rules and regulations about what can, or cannot be registered that I won't go into detail here. A Registered Trade Mark can be a word, a picture or some combination of the two. You should use such marks for key bits of identification, such as your University's name, its logo, and perhaps for the name of one or two particularly successful services or products, but for expense reasons, I would not advise its use for more routine products or services.
Anyone who uses your mark, or something very similar, for goods and services you are protected for can be sued for infringement. There are certain defences against such an action, but they are limited in scope. Damages can be very high. For this reason, if you copy anything from the Internet and then re-disseminate it, make sure no trade mark or logo is included in what you re-disseminate.
An alternative, or precursor, to registration is to simply highlight that you regard the name of your product as being a trade name. This involves no formal registration or fees; indeed many trade names would be rejected if a formal application for trademark registration was filed. The advantage is that it gives you some rights to prevent any other person registering the name later, if you can prove you used it first (the normal method of establishing the use of a name is an advertisement published in a magazine or journal, but these days regular use on WWW pages would be an equivalent). It also gives you a case if you sue for damages under "passing off".
Let me explain what passing off involves. This does not provide as strong protection as Registered Trademarks, but is sufficient in many cases. Passing off means passing off your goods and services as someone else's. It is under this heading that the Shetland Times case should have been argued, in my view. To succeed in a passing off action, you must show your trade name enjoys some reputation, that you suffered some damage, and you must show that the copying of it by the defendant was deliberate.
Passing off and Registered Trade Mark infringement actions will become increasingly common in the Internet environment, and all staff and students should be made aware of the risks of copying materials onto their pages to make it look as if they created it themselves. You also need to keep an eye open to ensure your logo or other symbol is not being misused by someone else.
Having said that, though, the most interest in trade marks on the Internet right now is in the field of domain names. Increasingly all sorts of organisations have put up home pages to advertise themselves and their services, and these include most of the blue chip companies of the world. All these WWW pages, as well as e mail addresses, involve domain names.
Trade marks, whether registered or unregistered, are infringed if a third party uses the trade mark in a country where protection exists for it. |Now, it is not uncommon for different companies to use similar or identical trade marks in different countries. In Registered Trade Mark and unregistered trade name law, this is not a problem, for in any given country one of the marks will be the dominant well-known mark, and other one simply cannot be used. But a quite different problem arises when we come to domain names. Let us imagine I own a small shop called Liberty in mid town USA. It was founded many years ago. I certainly could not use that name if I wanted to set up a second shop in London, but what if I decided to create a home page www.liberty.com? And what if the well-known London based shop had its home page, let us say called www.liberty.co.uk? You can imagine the difficulties, as both URLs are available to users in the UK. Thus the cosy coexistence of similar or identical trade marks around the world but each in their geographic compartment where they are dominant is no longer possible due to the global nature of the Internet.
The problem arises because domain names are strings of nonsense numbers that have been converted, for human convenience, into memorable mnemonics. This has led to an international race to acquire and become the unique owner of convenient or prized domain names, not unlike the competition to acquire personalised car registration number plates. In some cases, this race results from several organisations quite legitimately owning or using the same or similar name or brand, and in other cases, some people have opportunistically claimed a valuable name knowing it would mess up a well-known large corporation. On other cases, there have been fan clubs, or disgruntled people who have chosen to use well-known names, for example the disgruntled customer of British Telecom who registered www.britishtelecom.co.uk and uses it to spread negative publicity about BT.
The whole problem is exacerbated by the fact that there is no clear central provider or assignor of such domain names; each country is largely responsible for its activities, and even in one country, you may find competing services offering domain naming.
International bodies, such as the World Intellectual Property Organisation are starting to address the problems, though I have to say I find it difficult to see how an international consensus can be achieved whilst trade marks remain essentially national in character. It is typical of the problems caused to the law by developments in information technology.
My advice on this matter is simple - each HEI should develop its own trade mark strategy; this should include registering appropriate domain names in the major countries of the world and keeping as regular search for any sites that use worryingly similar or identical marks.
So there we have it; I hope I have given you a flavour of some of the copyright and trade mark issues that can arise in the Internet, and look forward to discussion and questions later on today.
Facing the Legal Challenges of
Providing Internet Access in
Organised by The JISC with support from UKOLN