Librarians as Archivists and Defenders of IP Rights was originally presented to the World Affairs Council of New Hampshire delegation of librarians and archivists from the Carribean. It was provided to NHCUC library directors by Jon Cavicchi in September 2016

1. World Affairs Council of New
Hampshire
Librarians as Archivists and
Defenders of IP Rights
June 29, 2016
Prof. Ashlyn Lembree

2. Prof. Lembree’s slides are provided for personal, reference use
and not for further distribution. Neither Prof. Lembree’s slides
nor her presentation are intended as legal representation.

3. U.S. Copyright Law:
Copyright Subject Matter
Exclusive Rights, Term, & Defenses
Publication and Licensing
Ownership & Registration

4. Copyright Law: Subject Matter

5. Understanding
Copyrightability

6. Understanding Copyrightability
• Understanding…
• That copyright protects original works of
expression
• That works may contain some original material and
some unprotectable material
• Identifying protectable material
• Identifying unprotectable material

7. Works (things with copyright
protection)
• Sometimes works are 100% original

8. Works (things with copyright
protection)
• Sometimes works are largely comprised of
facts…but they also include some original
authorship, such as sentence structure, words
selected, etc.

9. Works (things with copyright
protection)
Some works are utilitarian in the whole, but yet
have a part of them that is original. That part
might be physically separable or conceptually
separable from the utilitarian piece as a whole.

10. Copyright protects only “original” expression
Originality does not mean “never been done before”
• It means “did not copy from someone else”
• Can have 2 identical works that are not copyright
infringement
Originality does not mean “highly creative”
• It means “there is a minimum spark of creativity”
Examples:
• Some types of databases but probably not most telephone
directories
• Any novel, whether mass-market paperback or literary prize-
winner

11. Copyright does not protect facts
• Facts include…
• Names and phone numbers
• Bibliographic and historic facts
• Geographic facts
Feist

12. Copyright does not protect ideas
Baker v. Selden

13. Copyright does not protect public
domain works
Works published before 1923 are in the public domain.
Other than that, it varies and the work should be
independently researched.

14. Copyright does not protect material
that is scenes a faire
“Scenes a faire” refers to things that are typical of
a genre
• Examples (think cliché)
• Literary fantasy genre: elves, wizards, wolves
• Western film standoff
• Brilliant but odd detective
• Chickens used in kitchen décor
• Sheep used in wool treatments
• Bear catching salmon
• Mother cat holding kitten

15. Scenes a faire examples

16. Copyright does not protect nature
Realistic – rather than whimsical – representations
of nature have less protection
Satava v. Lowry: thin copyright
in jellyfish sculptures

17. Whimsical is more protected than
realistic

18. Copyright does not protect nature . . .
. . . But it does protect particular expressions of
nature.

19. Copyright protection in works
• Not an all-or-nothing proposition
• “Thin” copyright can exist in a work (as can thick)
• Some aspects may be copyrightable and others
not

20. Copyright Law, Copyright Rights,
Licensing, Infringement, Moral
Rights

21. Source of Law
The U.S. Constitution provides that Congress shall
protect Authors for the works
• Policy reason: To incentivize production of works
• Congress passed The Copyright Act
• The current Copyright Act . . .
• Defines what is copyrightable
• Establishes the rights for those works
• Establishes the duration of those rights
• Establishes a registration process
• Provides a way to sue infringers in court
• And more…

22. Copyright Term
• Individual Authors
• Works created after 1978
• Life plus 70 years
• Corporate Authors (Work for Hire situation)
• Works created after 1978
• 120 years after creation; or
• 95 years after publication

23. Multiple Exclusive Rights to the
Copyright Owner
• Reproduce
• Photocopy, Print, Photograph, Duplicate, Trace
• Distribute
• Right to distribute refers to the First Sale only
• There is no infringement for reselling a work first bought from
the copyright owner
• The idea is that a creator of a work has the
opportunity to recoup his or her adequate
compensation by…
• Setting the number of copies to make (and making only that
number)
• Setting the price per copy
• Distributing (selling) those copies

24. Multiple Exclusive Rights to the
Copyright Owner
• Prepare Derivative Works
• Examples:
• Performing a play from a script
• Writing a screenplay based on a book
• Creating a movie based on a screenplay (or a book)
• Performing from sheet music
• Creating a sequel
• Creating a hooked rug from a design on backing
• Publicly Perform – plays, movie, dance,
readings
• Publicly Display
• Exhibition of work (e.g. museum)
• Digital audio transmission of a sound recording

25. Derivative Works

26. Derivative Works

27. Derivative Works
• If the underlying work is not your work and not in
the public domain, you need a license to create
the derivative work
• Copyright exists in the derivative work for the
new expression you added – and you own it,
such as transformation of a pattern to a
completed project or transformation of a book
into a movie.

28. Copyright Infringement
• The Copyright Act allows owners of works to sue
for infringement
• Registration prior to bringing suit is required
• Infringement is a violation of any one or more of those
copyright rights
• Damages vary depending on when the work was
registered
• Injunctions (orders to stop) may be obtained
• Some Defenses against copyright infringement
• Permission from owner
• Fair use

29. Copyright Infringement
1. Plaintiff owns a protectable work
2. Defendant copied the work without permission
A. Proof of direct copying; or
B. Circumstantial Evidence
1) Access to the Plaintiff’s work
2) Substantial similarity between the Plaintiff’s work and Defendant’s work
3. No Defense

30. Substantial Similarity – Infringement Found
Bouchat v. Baltimore Ravens

31. Substantial Similarity – Infringement Found
Rogers v. Koons

32. Substantial Similarity – Nature
and Scenes a Faire Elements
Removed = No Infringement
Satava v. Lowry

33. Substantial Similarity – Scenes
a Faire, Ideas Unprotectable =
No Infringement
Kerr v. New Yorker Magazine

34. Reece v. Island Treasures Art Gallery
(D. Haw. 2006)
Plaintiff filed a Motion for Preliminary Injunction
Plaintiff’s Work Defendant’s Work

36. Kregos v. Assoc’d Press (2d Cir. 1991)
Trial court granted Defendant’s M4SJ. P appealed.
Aff’d or Rev’d?
Plaintiff’s Work Defendant’s Work

38. Fair Use
• Defense to Copyright Infringement
• Policy: Infringement should not stifle creativity
• Multi-factor test
• Nature and character of infringer’s use
(transformative)
• Teaching, criticism, comment, newsworthy
• Whether infringer’s use is commercial
• Nature of the work infringed
• The portion and substantiality taken of the infringed
work
• Portion is a percentage
• Substantiality goes to whether it was an important aspect of
work
• Effect of infringement on the marketability of the

39. Copyright Law Primarily for Public Benefit –
Author’s Rights Yield to Public Welfare
• “[T]he Constitution empowered Congress to authorize copyrights in order ‘To Promote the
Progress of Science and Useful Arts.’ Thus, the Copyright Act is said to have been enacted not
primarily for the benefit of the author, but instead primarily for the benefit of the public, its
primary purpose having been to advance or promote the progress of science and the useful arts.
The granting of certain exclusive rights to authors for a limited time was a means of achieving this
end. Giving authors the reward due them for their contribution to society and compensating
them for their labors was deemed to be only an important secondary purpose of copyright.
• “Where the interest of the copyright owner in exploiting the market for his work has come into
conflict with the public interest in stimulating the creation and dissemination of intellectual works
and thereby promoting the progress of science and the useful arts, the courts in some cases have
been of the view that the copyright owner's interest should yield to the public welfare, and
consequently, in passing upon particular claims of infringement, have, by application of the ‘fair
use’ principle, subordinated the copyright owner's ‘interest in a maximum financial return to the
greater public interest in the development of art, science and industry.’
C. T. Drechsler, “Extent of Doctrine of Fair Use Under Federal Copyright Act,” 23 A.L.R.3d 139, §4[b]
(Originally published in 1969).

40. Fair Use? – Shepard Fairey v. Associated Press

41. Fair Use Examples
• Nunez v. Caribbean Intern. News Corp., 235 F.3d 18 (1st Cir. 2000)
(transformative use for public purpose)
• The Authors Guild v. Google, Inc., 804 F.3d 202 (2d Cir. 2015), cert.
den’d 136 S.Ct. 1658 (2016) (public benefit of expansion of public
knowledge and understanding is ultimate goal of copyright; held that
fair use defense applied for the transformative use of digitizing
copyrighted works and allowing public to search and read book
segments).

42. 17 USC 108
• Libraries and Archives may make one copy of published works
without liability
• And three copies of unpublished works
• Subject to conditions in statute, such as..
• Library open to the public
• Nature of use
• Copyright notice

43. Freedom of Speech - Parody

44. Moral Rights
• They are rights concerning attribution of
authorship & that protect the integrity of your
work
• More limited under US law than European
copyright – only certain “works of visual art” are
specifically protected
• Visual art – original or 200 limited edition (or less),
signed and numbered

45. Moral Rights
• Moral rights do not attach to works for hire
• But, if an individual is an Author and then Assigns
the copyrights to an entity, Moral Rights will hold,
because this is not a Work for Hire situation
• Duration of Moral Rights generally for the life of
the Author
• Moral Rights may be waived in a contract

46. Spectrum of Licenses
CopyLeftLicenses
(e.g.GPL)
FreeNon-CommercialUse
License(e.g.Creative
Commons)
Royalty-Based&Exclusion-
Based©Licenses

47. Copyright Licensing
• Grant clause
• Licensor hereby grants Licensee an exclusive, worldwide, unlimited,
sublicensable, royalty-based license to reproduce, prepare derivative works,
distribute, publicly perform and publicly display the Work for the duration of
the copyright of the Work, together with the right to sue for infringement of
the copyrights in the Work.
• Waive Moral Rights

48. Termination Interest
• Authors of works (excluding Works for Hire), or their heirs, may
terminate pre-1978 license grants of their copyrights 56 years after
registration and post-1977 grants 35 years after the grant. 5 year
window to do so.
• Objective is to allow negotiating leverage for renegotiating the license
on songs, etc. that have been very profitable to the Licensor at the
expense of the Licensee.

49. Termination Interest
• Two teenagers granted an
assignment to Detective Comics
for Superman in 1939 for $130.
• Heirs later exercised their
termination interest.

50. Copyright Ownership and
Transfer

51. Claimant, Ownership, Author
• Ownership originally vests in author(s). 17 USC
201(a).
• Joint works
• Work for Hire Doctrine
• Work for Hire Employer/Commissioning Party = Author
• Author = Owner
• Ownership Transfer
• Assignment
• Bequeathed

52. Joint Works
• When two or more authors create an inseparable or
interdependent work and the intent to create a joint
work is present, then a joint work is created.
• In the absence of an agreement to the contrary, each
joint author may independently exploit the work
without the other’s permission. However, the
exploiting author must account to the other author
for profits.

53. Work for Hire
• 2 ways to make a Work for Hire
• Employee (the Creator) creating a work within the scope of
his or her employment
• Independent Contractor (the Creator) creating a work for
the Commissioning Party only if
• Written agreement that it is a Work for Hire
• Within 9 types of works: contribution to a collective work, as a
part of a motion picture or other audiovisual work, as a
translation, as a supplementary work, as a compilation, as an
instructional text, as a test, as answer material for a test, or as an
atlas

54. Work for Hire
• The Creator of the Work has no ownership at any point
• The Employer is the Author
• The Commissioning Party is the Author
• The Author is the First Owner

55. Work for Hire
• Work for Hire works are permanently tainted from some rights under
the Copyright Act:
• Moral Rights
• Termination Rights

56. Debunking Some Myths

57. (Myth): If there’s no © notice, it’s not copyrighted
WRONG …
• There is no legal requirement to register a
copyright (although that’s probably a good idea)
• It’s also not true that “if it’s not registered, then
it’s not copyrighted”

58. (Myth): If it’s freely available online, it’s okay to use it
WRONG …
• A copyright owner’s exclusive legal rights include the
right to make copies and to distribute them
• Downloading or copying text, artwork, clip art, movies,
sound clips etc. from websites or blogs is still copying
• “Publicly available” does not mean “public domain”
• Read all terms & conditions
• Don’t assume the person who uploaded the content
necessarily has the legal rights to give you
permission to use it

59. (Myth): If I attribute my source or use its © notice, it’s fair
use
WRONG …
• Whether something is fair use or not is highly
dependent on the actual facts & circumstances
(i.e. there is no automatic dividing line)
• But most parodies are likely to be fair use as a
court will consider them “highly transformative”
• There are some guidelines for classroom use of
books & certain media materials, but no “magic
figure”
- the 10% rule does not exist

60. (Myth): If I make a different work
out of someone else’s work, that
new work belongs to me
NOT NECESSARILY … THOUGH THAT’S MOSTLY
WRONG
• The concept of “derivative works” means that any work
you create that is derived from someone else’s –
however creative your version – still falls within that
copyright owner’s exclusive rights
Examples:
• Fan fiction, sequels/prequels
Exceptions (possibly):
• Fair use (e.g. parodies)

61. (Myth): I won’t get into trouble if I don’t charge for my
work or make money from it
• WRONG …
• Remember fair use – commercial value or profits is only
part of the legal picture
• Being a non-profit organization or doing something for
charity does not give you legal protection
• A copyright owner has the choice whether or not to litigate

62. Registration & the
Mandatory Deposit
Requirement

63. Why is copyright registration so important?
If you ever want to sue someone for infringing your
work, you must have a copyright registration first.
• Section 411(a) of the Copyright Act
If anyone ever challenges your ownership of
copyrights, registration provides proof that your
rights are valid.
• If registration is made no later than 5 years after the
work is published.
• Section 410(c) of the Copyright Act
• Mailing yourself a copy of your work has no where
near the effectiveness as registration has in terms of
proof of validity.

64. Why is copyright registration so important?
If infringement commences after registration, you can obtain
statutory damages.
If your work is published and you register your work within 3 months
of publication, you can obtain “statutory damages” against an
infringer who commences infringement prior to registration.
Statutory Damages can be significant:
• Strict liability – the wrongdoer has to pay damages even if she did
not intend to infringe
• However, if the infringement was “innocent,” the wrongdoer is liable
for less money
• If the infringement was “willful,” more money
• The range of statutory damages is $750 to $150,000
• Attorneys’ fees may also be awarded if you win.
• A plaintiff’s regular damages may be too small to file suit

65. Minimum Requirements
• Application
• Deposit
• Filing Fee

66. Filing Fee
Copyright registration is inexpensive
• $35 electronic filing – single author, same claimant,
single work, not work for hire
• $55 all other eCO filings
• $85 snail mail filing
• $140 pre-registration (pre-registration is for unfinished
works)
Low barrier of entry . . .
• But other fees at the Copyright Office are astronomical
Unpublished works may be able to be registered as a
“collection” which allows authors to combine multiple
works under one registration.

67. Deposit
• It is not money
• It is the work itself – or a copy of it – or
“identifying material” of the work
• Best Edition (e.g. hardcover book, if so
published; CD of record, rather than audio tape;
DVD over VHS tape, etc.)
• They get destroyed!!!
• It is advisable to use a copyright notice on the
deposit

68. Copyright Notice
• Sample:
© 2015 Ashlyn Lembree
• Elements:
© symbol year of publication copyright owner
• All Rights Reserved
• Unpublished Work Sample:
Unpublished work © 2015 Ashlyn Lembree

69. Application: Concepts to Understand
• Publication
• Mandatory Deposit
• Single Work Rule
• Group Registrations
• Types of Works
• Material Included/Material Excluded
• Claimant/Author/Correspondent/Rights &
Permissions

70. Publication
• 17 U.S.C. 101
• “Publication” is the distribution of copies or
phonorecords of a work to the public by sale or
other transfer of ownership, or by rental, lease, or
lending. The offering to distribute copies or
phonorecrods to a group of persons for purposes
of further distribution, public performance, or
public display, constitutes publication.
• A public performance or display of a work does
not of itself constitute publication.

71. Publication is Important
• It governs the rule on statutory damages in
Section 412
• It determines how you register your work –
Published or Unpublished
• It is relevant for the life of the copyright term for
corporate authors
• It starts the clock ticking for when you gain the
presumption of validity found in Section 410

72. Section 407
• Mandatory Deposit
• The Library of Congress wants your published
works
• Published works = send in 2 deposits
• Unpublished works = send in 1 deposit

73. Single Work Rule
37 CFR 202.3(b)(11)
• One application per work per claimant
• Exception: Can register unpublished, then later
published
• Exception: Group Registrations…
• Exception: Unpublished collections
• Exception: Multiple Authors – each can have
own claim filed with his/her own registration

74. Group Registrations
• Photographs – all photos taken in one calendar
year – Rule 202.3(b)(10)
• Serials
• If all works first published in a catalog. Kay Berry
• Unpublished “collections” Rule 202.3(b)(4)(i)(B)
• See Rule 202.3

75. Types of Works (most
used)
Pick the one most like the entirety
of the published work
• TX – Text/Literary
• VA – Visual Arts
• “works of visual arts” under VARA are a subset of VA
works
• PA – Performing Arts
• SR – Sound Recording
• SE – Serial
• Motion Pictures

76. Material Included/Excluded
• Nature of Authorship
• E.g. Text and Illustrations
• Material Included
• E.g. Other: Text and Illustrations
• Material Excluded
• E.g. Other: Likeness of Shakespeare
• Pre-existing works

77. Claimant, Ownership, Author
• Ownership originally vests in author(s). 17 USC
201(a).
• Joint works
• Work for Hire Doctrine
• Work for Hire Employer/Commissioning Party = Author
• Author = Owner
• Ownership Transfer
• Assignment
• Bequeathed
• Omitting non-claimant author is not fraud

78. Correspondent, Rights/Permissions
• Correspondent generally is the attorney
• Rights/Permissions
• Generally the Claimant or an artists rights society or
other entity handling requests to use the work
• Email addresses and phone numbers for this person
are public record

79. Thank you!
Ashlyn.Lembree@Law.UNH.edu
UNH School of Law
Intellectual Property & Transaction Clinic