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>> Copyright >> 2002
TOWN MEETING: Toronto, Canada, September 7, 2002
Creating Museum IP Policy in a Digital World
Museum Computer Network Conference
co-hosted by Canadian Heritage Information Network
Laura Gasaway, Drafting Copyright Policies: The University
Rina Pantalony, Why Museums Need an IP Policy
Christopher Hale, Institutional IP Policy from an
Maria Pallante, From IP Audit to Valuation and Management
Brian Porter, Putting Together a Museum's IP Policy:
Renaissance ROM as a Case Study
Rachelle Browne, Constructing Values: What to Put
into a Policy
Open Forum 1 | Open
Forum 2 | Resources
| Speakers' Biographical
WELCOME AND INTRODUCTIONS
Len Steinbach, President of the Museum Computer Network (MCN),
welcomed the audience and expressed his delight that MCN could host
this Town Meeting. He discussed NINCH's role as an institutional
membership organization that hosts, in addition to the Town Meetings,
forums where leaders in the cultural heritage community can convene
to discuss the future of networking cultural information, what policies
are needed, how to support promising initiatives, and how to help
navigate the direction of the cultural industry. He urged the audience
to support NINCH and its programs by having their institutions join
David Green, The Meeting in Context
David Green, Executive Director of NINCH, thanked the President
and Board of MCN for their support, and the planning committee (Amalyah
Keshet, Rina Pantalony, Len Steinbach and Diane Zorich) for their
assistance in developing the nineteenth NINCH Copyright Town Meeting.
He introduced NINCH as an advocacy and leadership organization comprised
of a diverse coalition of member institutions drawn from around
the cultural community.
Green gave a brief history of the Town Meetings, noting that they
were rooted in the Conference on Fair Use (CONFU). The CONFU meetings
were convened by the United States government in the 1990s, and
brought together IP stakeholders to create practical guideline for
the implementation of fair use. CONFU failed, but the process revealed
a lack of understanding within the cultural community about the
facts of copyright, fair use, and how the Internet might change
their work. With the College Art Association (CAA) and the American
Council of Learned Societies (ACLS), NINCH organized a series of
Town Meetings around the country to help rectify this situation.
When the Town Meetings began in 1997-1998, a series of events (i.e.,
the failure of CONFU, the passage of the Digital Millennium Copyright
Act (DMCA) and the Sonny Bono Copyright Term Extension Act, and
other restricting legislative efforts) left the community struggling
to keep fair use and other copyright exceptions alive in the digital
The focus of the Town Meetings moved on from these issues to address
new arenas. In the 2000 series, meetings were held on the public
domain, on distance education and faculty ownership of material,
and on community guidelines and resources. In 2001, the Town Meetings
examined the interaction between copyright and the public domain,
and copyright and new economic models. The meetings examined emerging
licensing ventures such as AMICO,
ArtSTOR, and the Research
Libraries Group's Cultural Materials Program. The meetings also
began to address the "how to's" of intellectual property,
such as how to seek permission for materials, and how to make and
change institutional IP policy in a university environment. This
last subject led directly to this Town Meeting on developing IP
policies in museums. Green noted that there is a great need for
such policies in museums to "mesh the needs of individuals
and institutions, owners and users, in a statement that articulates
values, mission, and the economic reality of institutions."
THE IMPORTANCE OF INSTITUTIONAL INTELLECTUAL PROPERTY POLICY
Drafting Copyright Policies: The University Experience
-See the Presentation Slides (as Powerpoint
; as PDF)
Laura Gasaway spoke about her most recent experience in developing
campus IP policy at the University of North Carolina (UNC), Chapel
Hill, and her appointment as Co-Chair of a UNC system task force
that drafted a system-wide ownership policy for over 16 campuses.
She noted that there are two aspects to copyright policies on campus:
the ownership and management of copyright, and the use of copyrighted
works. Universities have focused on the ownership issues rather
than the use issues because the latter are more complicated, especially
when dealing with slides and other images.
Gasaway identified five reasons why one should have a copyright
ownership policy at a university:
- it protects the university (copyright issues can be costly for
- it protects the faculty, who create the majority of the works
at a university;
- it clarifies the rights of staff;
- it clarifies the rights of students; and
- it addresses issues before disputes arise.
In the university world, the ideal process for developing an ownership
policy is to involve all portions of the academic community, i.e.,
faculty, staff, students, librarians, administrators, legal counsel,
those involved in technology transfer, etc. Policy should not be
drafted solely by legal counsel or administration. (Gasaway noted
that faculty would be highly suspicious of a policy drafted by either
of these groups.) Fortunately, many universities have law faculty
who are viewed as faculty first and foremost, and thus are treated
as a more trusted partner in policy development by the larger faculty
community than is university counsel.
Gasaway identified some of the important issues in copyright ownership
for universities. First and foremost is the issue of faculty creations.
In the university environment, there is a tradition of faculty ownership
of copyright in works they produce. This tradition is often referred
to as the "faculty exception" in the work-for-hire doctrine.
It is a judicial exception; it is not written into the copyright
statute. This tradition has come under sudden challenges because
of the digital environment and the fact that some of these faculty-created
digital works may be highly lucrative. The definition of a work-for-hire within US law is a work prepared by an employee within
the scope of employment. (It also includes work specially ordered
or commissioned for use as a contribution to a collective work.)
Does a faculty member's contract create an employment situation?
In some senses it does - the university pays taxes and benefits
for the faculty member; in other senses it does not - the employing
institution seldom states what must be produced, only that one must
produce. Generally, because of the assumed faculty exemption to
the work-for-hire doctrine, faculty works normally are not considered
work-for-hire. This is not the case for staff works, which are usually
produced within the scope of their employment. Student works on
the other hand, are certainly not a work-for-hire.
Gasaway noted other complicating issues of ownership in a university
environment. Who owns copyright in works resulting from grant-funded
research? If there are ownership terms in a grant then they will
prevail, but often there are no such terms or, if the work results
from a government grant, there is no copyright (i.e., the work is
in the public domain.) What about faculty-student collaborations?
These come in many guises. And what do you do when you have many
collaborators on a project (such as a lab manual developed within
a chemistry department)? It is often hard to assign individual authorship
in these cases and copyright is more likely to be owned by the university.
There are many ways to address copyright ownership issues in universities.
Faculty can agree to reimburse the university for substantial investment
made by the university for creation of their work. Faculty also
can give the university a "shop right" (a patent right
whereby an employer permits an employee to own copyright in the
work although the work technically is a work-for-hire, in exchange
for a grant to the employer to use the work in the "shop.")
Or the university can own the work. Joint ownership is another possibility,
but it is not the easiest answer. A joint copyright owner can do
anything with the work -- their sole responsibility is to account
to the other party. Thus if a university sells a work in which it
jointly owns copyright, it can do so without the knowledge of the
co-owning faculty member, as long as the university shares the proceeds
with that faculty member.
Gasaway next addressed the "use side" of copyright policy.
Why should an institution have a use policy as part of its copyright
policy?" First, a university wants to encourage its faculty
to be creative in their use of copyrighted works in their teaching
and research, and wants to establish norms for faculty behavior.
The university also wants to guide students, faculty and staff,
and encourage full exploitation of fair use or fair dealing privileges.
A use policy also helps the university protect itself and educate
its community about copyright, and helps regularize the process
for seeking permission.
The development of use policies has led many universities to create
a position called "copyright officer" -- often an attorney
or librarian -- who works with the faculty on their IP issues. It
is important that this person represents the creators of copyrighted
works. A university's corporate counsel represents the university,
not the creators in the university.
Use policy is rife with legal issues, so legal counsel is critical
when creating them. (Ownership policy issues are less about legal
issues and more about policy choices - i.e., who should own.) But
in working with university legal counsel, Gasaway advised discovering
their position on fair use and fair dealing, and to ensure they
are not so risk averse that they refuse to use these hard-fought
exemptions. You also have to make certain the legal counsel working
with you has copyright experience. Many attorneys in universities
do not have this experience; they usually specialize in other areas
of law that are needed in a university setting.
In conclusion, Gasaway noted that the overall benefit of policy
drafting is that it helps crystallize thinking about various policy
choices. Policy drafting also focuses attention on the good of the
institution versus individual self-interest. And finally, it is
interesting group exercise. If you involve staff at all levels you
will find it easier to have a policy accepted and embraced by the
Pantalony, Why Museums Need an IP Policy
-See Presentation Slides (as Powerpoint
; as PDF)
Rina Pantalony's presentation compared and contrasted university
and museum IP to highlight the distinctions and the unique IP policy
needs in museums.
Pantalony reviewed Gasaway's discussion of the characteristics of university
IP, emphasizing that the diversity and lucrative nature of university
IP assets calls for policy in areas such as trade secrets and patents,
areas which are not prevalent in museums. She noted that university
IP holds great economic potential and has a high level of private
sector investment that requires universities to manage their assets
and investments prudently. A university needs to understand who
owns what, how much protection it needs as an institution, and how
it can clearly articulate the relationship between the institution,
its faculty, and its students. Pantalony cited MIT's recent policy
to aggressively develop its most financially lucrative IP assets,
and let its less financially promising IP assets go into the public
domain, as an interesting reflection of the importance and impact
of the economic aspects for universities (See MIT's
Open Courseware Initiative).
Turning her discussion to museums, Pantalony identified four broad areas
where IP is found in museums:
- in collections (e.g., objects and images);
- in technology (e.g. collections management database systems, innovative
- in academic activities (e.g., curatorial and scholarly research); and
- in administration (e.g., in institutional policies, statements).
The commercial potential of these IP assets was originally driven by
media interests. A few years ago the Canadian Heritage Information
Network (CHIN) commissioned a commercial market study to determine
where the demand for museum content might be found. The study revealed
that museum assets held interest in the broadcasting, publishing,
advertising and multimedia development industries. Pantalony has
also noticed a growing commercial potential in product licensing
for museums, as seen in retail shops or efforts by institutions
such as the Museum
of Fine Arts, Boston, the Victoria
and Albert Museum, and Colonial
Williamsburg. Another new and interesting area of commercial
potential for museum IP is in the educational community, where it
could feasibly drive R&D investment in areas of content creation
and technology development for distance and lifelong learning opportunities.
Pantalony concluded by offering a non-exhaustive list of reasons why
museums must develop IP policies:
- IP is an asset (like bricks and mortar) and there are legal and fiduciary
obligations for Boards and managers to manage these assets prudently.
A policy is a first good step towards prudent IP management.
- IP increases our direct communication with global audiences. This communication
creates a host of new issues involving jurisdiction, commerce,
etc., and has taken our management requirements and burdens to
a new level.
- IP has commercial potential; this potential requires fiscal management,
and policy can guide and enhance the management.
- The education potential of IP requires a forward-thinking, balanced strategy
between users, the academic side of museums (e.g., curators),
and institutions. Such a strategy must also take into account
educational exceptions such as fair use and fair dealing, making
sure these exceptions are not disregarded because of our current
- Conflicting administrative pressures dictate a need for clarity about
IP and its management.
- Policies provide an opportunity for museums to add their voice to broader
Pantalony cited the TEACH
(Technology, Education and Copyright Harmonization) Act, a new bill
in the US Congress, as an example. (See ALA's April 2002
"Issue Update" on the Act.) This bill is essentially
an exception to copyright for production or use of IP in distance
learning environments. Museums may be not be able to take advantage
of its provisions because they may not be considered accredited
educational institutions within the definitions of the bill. When
Pantalony spoke with individuals involved in the lobbying process
behind this bill, she was asked "Where were the museums? They
weren't there." Pantalony felt that by placing policies on
paper and sharing them, museums begin to add their voice to the
broader discussions and help ensure they are heard on a larger playing
Policy in University Museums
Diane Zorich asked how policy in a university museum might interact
or conflict with its parent university's policy. Gasaway mentioned
that in her experience in the UNC system, which includes galleries
and museums, she observed that the ownership policies for the university
were broad enough to encompass the museums, although they didn't
really address the curatorial aspect. She suggested that each of
the galleries and museums in a university need to take the overall
university policy and go further with it if there were issues not
covered for them. Pantalony thought that university museums may
need "subpolicies," but cautioned that if you become too
granular with your policies in a university setting (i.e., every
school and department having its own policies) you might lose balance
with the other areas of the university.
Museums and the Circumvention of Copyright
Richard Rinehart described how museums own many public domain works
but control them through access to the physical object. Are museums
using this as a way to circumvent copyright? Gasaway said that she
has come up against this frequently in her experience with museums
and archival collections. She tries to shame museums and archives
by essentially asking them (when it is not an issue of preservation),
"why are you doing this?" How can museums expect access
to other works when they aren't offering it for their own works?
Pantalony noted that by controlling access, museums are a lot more
like the recording industry than they care to admit. She suggested
users ask museums who restrict access why they are doing it. That
might further a user's understanding for the museum's perspective
and also break down some barriers that the museum has put up. She
summed it up by saying, "do more than just ask, ask why."
Brian Porter liked Pantalony's list of reasons for developing a
museum IP policy so much that he said he would refer to them as
"Rina's Rules." He asked if Rule #3 ("commercial
potential requires sound fiscal management") was at play in
the dissolution of the MoMA/Tate dot.com enterprise. Pantalony replied
that the MoMA experience was not unlike what many museums were experimenting
with at the time, and, like the entire dot.com environment, it was
being rethought and may resurface with different permutations.
When is IP "born"?
Len Steinbach asked at what point museums give birth to a piece
of IP? He noted this his institution, the Cleveland Museum of Art,
developed a recent project that included the published work of a
conservator, xray and infrared photography from the conservation
department, text by the curator, education department work, images,
etc. At what point in the midst of these activities did it become
IP? When does the museum start considering and treating it as their
IP? Gasaway noted that the example Steinbach cited was clearly a
compilation under US law, and the "work" was likely created
very early in the process. She said that it may be a policy issue
as to when you claim rights in a work, but the copyrightable work
itself was created very early on. Pantalony noted that the definition
of a compilation work is different in Canada and the answer for
Canadian museums might be a little different.
Institutional IP Policy from an International Perspective
Chris Hale broadly addressed the development of museum IP policy,
and highlighted areas where international issues could come into
He began by emphasizing the unique role museums have as both users
and owners, and noted that it is important that museums be consistent
with these roles. The attitudes museums take with respect to their
own IP must reflect the respect the institution shows to the IP
of others. He also suggested that museums start to consider themselves
as "acquirers of rights" in addition to being acquirers
of objects. And he suggested that in considering IP policy development,
museums start from an examination of the relationships they have
with their employees, staff, volunteers and all other individuals
with whom they interact.
Using Canadian and US law as examples, Hale highlighted areas where
differences in copyright play out. First, the bundle of rights that
constitute a copyright can vary from one country to another. Rental
rights, public exhibition rights, copyright term length, work-for-hire provisions, and exceptions to infringement (e.g., fair use
or fair dealing) are also important areas where law may vary by
country. Hale cautioned that if you are undertaking activities in
another country, it is critical to understand and abide by its rules
in all these areas. Citing fair use as a defense, for example, will
not get you very far in Canada.
Moral rights constitute another important area of IP law that varies
by country. In Canada, moral rights are very significant; in the
US, they are less so. Canadian moral rights allow creators to be
identified with their work and to have integrity over their work
(i.e., to resist distortions, mutilations or other modifications
to the work, and to resist association with a product, cause, or
institution if it may damage the reputation of the artist.) Moral
rights can be waived but not transferred by contract. They always
reside with the creator, and the creator is the only one who can
waive these rights. In addition, the term for moral rights in Canada
is the same as the term of copyright, so moral rights pass along
after the death of the creator to a bequeathed or to an heir.
In the larger realm of IP policy, copyright is only one of several
IP issues. Museums must also consider patent or trademark rights,
as well as their institutional liability should they infringe on
someone else's patent or trademark. The latter circumstance is not
as unlikely as it may seem. Patents are increasingly being given
for business practices which may take place in your institution
as a matter of course. For example, a patented ticketing system
that is used by a museum may not be collections-related, but it
is still integral to a museum's operations. In summarizing, Hale
noted that it is important for museum IP policy go beyond the copyright
regime, and for museums to be vigilant about laws and distinctions
in other countries where they conduct business.
Resources on International Copyright Terms
An audience member asked if there was any resource that tabulated
all the known copyright terms internationally. Hale and Pantalony
weren't aware of any single chart, although Pantalony recommended
a work entitled Copyright
in Photographs: An International Survey (by Ysolde Gendreau,
Axel Nordemann and Rainer Oesch, Kluwer Law International, The Netherlands,
1999), which looks at laws in the US, Canada, Asia, and Europe.
Hale cautioned that this work is for photographs, which are often
subject to much greater restrictions in copyright term than other
work, and urged the audience not to extrapolate from this to other
types of objects. Pallante suggested the WIPO Web site might have
a term chart; the audience member replied that she had found information
at the site, but it was very sophisticated and hard to interpret.
International Copyright Laws and the Web
Diane Zorich asked how an institution can responsibly respect the
laws of other nations when it places its materials on the Web, since
it can't realistically investigate the laws of every single nation
(which is, theoretically, the geographic range for these materials
when they are placed online.) Hale noted that making information
available on the Internet makes it accessible in many jurisdictions,
but the mere fact of accessibility may not constitute an infringement
in the laws of other jurisdictions. Museums need to rely on domestic
counsel, and this counsel will need to take a wider view of things
and decide if the mere fact of display on the Internet is enough
to infringe in another country.
THE PROCESS OF POLICYMAKING
From IP Audit to Valuation and Management
-See Presentation Slides (as Powerpoint;
-See Handout (as Word
document; as PDF)
Maria Pallante's presentation took a practical approach, building
on the broader concerns articulated by previous speakers, but honing
in on the actual process of finding out what intellectual property
a museum actually owns as an institution, how to ascribe value to
it, and how to manage it.
Beginning with the first topic -- finding out what a museum owns
-- the only accurate way to accomplish this is by undertaking an
IP audit. Pallante identified several reasons for conducting such
an audit. First, you need an audit in order to develop an accurate
IP policy. It is impossible to develop sound policy without it being
rooted in the IP reality of an organization. Second, the audit tells
you what it is you have and where it came from. This is revealed
through an inventory of IP assets. Thirdly, an IP audit will trigger
and facilitate creative projects using found assets. Pallante noted
that one of the "joys of inventory" is finding out that
you own something you didn't realize you owned. In the Guggenheim
collection for example, Pallante and her legal colleagues discovered
when going through the files that the Museum owned the copyright
to the artwork Grrrrrrrrrrr!
by Roy Lichtenstein; the artist had bequeathed the copyright to
the Museum, but the staff had not been alerted. This kind of discovery
starts a chain reaction of activity: the retail store realizes it
doesn't need to pay royalties on posters or other products that
feature the work, the publication department realizes it can put
the work online, and the institution may consider licensing the
work. Creative juices flow when you realize you own IP.
Another important reason for conducting an audit is to monitor
compliance. Compliance is the role of the legal office and most
department heads, and to some extent the IT director. If your institution
has a lot of third party institutional agreements, monitoring is
very important. If you don't monitor these agreements, you run into
situations such having staff in your retail shop failing to enter
proper royalty rates, or staff that is unaware of your agreement
with ASCAP and thus not providing compliance data, etc. Getting
your staff to do the operations once you have an agreement in place
is often where things fall apart and is why monitoring is critical.
With licenses, compliance is largely knowing what licenses or agreements
say, not making assumptions, and making sure relevant staff know
of the obligations.
Staff alertness is also critical in monitoring compliance. Pallante
noted that Guggenheim staff often let her know when they see the
Guggenheim name, building image, or artwork in contexts that they
are not sure are legitimate. Knowing who to communicate this kind
of information to is sometimes the greatest gap in monitoring compliance
in an institution.
Pallante next addressed the question of who should conduct the IP
audit in a museum, stating that anyone with a vested interest in
these issues could take the lead. Generally, the push comes from
a person who wants to know, on a regular basis, the state of the
collection, the state of the files, etc. Although one person needs
to take the lead, conducting the audit is not a one-person job.
Every person in every department in a museum will have their own
IP, so it is best for people in each department to look at their
particular department's assets. This is a big project for an institution,
and Pallante suggests setting up institution-wide meetings where
people investigate IP in their departments and then come back to
the larger group to report.
When should an IP audit be conducted? Pallante defined an IP audit
as a never-ending process that must be done regularly. She cautioned
that if you don't do it regularly, you will have to do it before
you enter into any business venture or contract where IP is an issue,
and then you will find yourself scrambling. Often the impetus for
an audit is the hiring of a new rights or permissions employee:
their arrival spurs action. Pallante found herself in this situation
when she was hired at the Guggenheim: staff came up to her with
urgent inquiries about copyright status for the collections. To
help with this effort, Pallante recently hired an assistant to handle
the administrative side of IP management. In order to convey some
sense of what the administrative aspects entail, Pallante read some
of this person's job requirements: fact-finding and the administrative
work necessary to obtain permissions and rights required for artwork,
photographs, essays, books, etc.; researching and identifying rightsholders;
facilitating communication and negotiating and documenting the parameters
of a license and the fees; monitoring compliance of trademark licenses;
and helping to build and maintain a database and Intranet site for
use by employees that includes information needed to adequately
manage the assets. (See the job description - in Word,
or as PDF)
Pallante quickly outlined some of the places where IP is found
in museums: archives, exhibition and education departments, registrar's
files, curatorial files, directors, office, etc. In reality, the
location of IP is somewhat unique to each institution. Registrar's
files tend to have valuable documents, such as assignments signed
by artists. Curatorial files tend to have evidence of intent, i.e.,
what was supposed to have happened but never actually did. The museum's
retail store may have global distribution agreements.
Pallante explored the question of how a museum deciphers its IP
assets by focusing on trademarks, noting that museum, domain, exhibition,
and catalogue names can be trademarked, as can acronyms, logos,
and buildings. The Guggenheim has actively developed and registered
both its Frank Lloyd Wright exterior circular image of the building,
and the building's interior skylight. These two building images
bring in significant income, which is promptly used for the Museum's
programming and mission. The Legal Department of the Museum has
had to work with the Public Relations Department to determine what
are legitimate publicity uses and what images require written licenses
As an example of how a museum-developed asset can become a trademark,
Pallante discussed the Guggenheim's Learning through Art program.
This particular program is identified with the Guggenheim in New
York City, but the name is not very unique or distinguishing, and
others elsewhere in the country use the name in related, albeit
independent, ways. To further develop the common law trademark (which
by itself is not registerable), the Guggenheim is creating a unique
logo for the program which will incorporate the name. This combination
may be registered as a design mark. Using the name with the logo
clearly identifies the program as the Guggenheim's; if someone illegally
uses this logo/name combination, they are clearly trying to create
confusion in the marketplace. Pallante's point in presenting this
example is that museums may want to register even relatively generic
names if they think there is some value there that should be protected.
Ending her discussion of trademark, Pallante emphasized that trademark
is a process: you have to use your trademark in interstate commerce,
and you have to keep using it or else you loose it. The Guggenheim
has developed an interesting policy about the licensing of its trademarks
that leverages the value of its marks for an even greater benefit
for the museum. For high profile licenses in which a company desires
major public association with the Museum's name and image, the Guggenheim
often expects the company to contribute to the Museum's mission
beyond the licensing fee, perhaps as an exhibition sponsor and or
a corporate member.
Turning to copyrights, Pallante quickly identified the types of
works in museums where copyright might reside: in the collections,
images, brochures, posters, checklists, catalogues, promotional
materials, exhibition design, programs, films, products, websites,
compilations, etc. She discussed licenses and noted that exclusive
licenses effectively cut off other revenue sources, so the terms
of the license have to be very good for one to enter into these
kinds of agreements.
Once the audit has identified a museum's IP assets and their location,
the next step is valuation, i.e., how do you determine what they
are worth? To whom are they valuable? Is the value financial, or
is it a control issue? Is its value found only in a compilation
or collection like a database? Pallante displayed the IRS definition
of fair market value and summed it up as saying that your IP is
"worth what you can get for it."
The next activity that follows an audit is management, i.e., what
do you do with what you own? Noting that this area is complex enough
to merit its own conference, Pallante summarized some of the critical
management needs of IP as follows: analyzing the legal status of
rights, registering copyrights, trademarks and domain names, tracking
renewals, tracking status and ownership, tracking license restrictions,
ensuring proper notice is on reproductions, developing technical
requirements and investing in software for managing the assets.
Technologists are particularly important for these latter tasks
involved in database development. Pallante identified the kinds
of information she'd need in an automated database, including artist's
name, nationality, and birth/death dates, copyright status, contact
information, licenses on file, restrictions on use, policies and
procedures, lists of proper credit lines, renewal dates, etc.
An important part of management is legal notice. A museum's legal
notices on its IP should be specific to what is really being claimed.
For example, a museum probably can't claim copyright in many of
its posters unless the layouts are original. What really should
be on the poster is the artist's copyright (if the poster is using
an image of an artist's work.) Similarly with digital images, catalogues,
photographs, etc., the notices should be specific to the work where
copyright is being claimed; e.g., "Catalog © 2002 Guggenheim
Museum" or "Photo © 2002 Guggenheim Museum."
Pallante ended her presentation by noting that the final part of
management is enforcement. Once you have set up your management
systems, you need someone to monitor and enforce your rights and
make sure you are not violating the rights of others.
OPEN FORUM 1
"Scooping" a Trademark
Scott Sayre related a trademark saga that occurred when he worked
for the Minneapolis Institute of Arts (MIA). The MIA's project,
was created with the MCI Foundation as a funder. The MIA and the
Foundation agreed, in writing, that the MIA would register and own
the trademark to ArtsConnectEd. When the MIA went to register the
trademark, they found that MCI Corporation already owned it. The
MCI Corporation told the MIA that the agreement they made was with
the MCI Foundation, not the Corporation. Eventually, the MIA was
able to obtain the trademark back from the MCI Corporation. Scott
offered this experience as a cautionary tale about entering into
an agreement with someone who sees intellectual value in the name
Pallante responded that contracts only apply to the parties specifically
named within them, and suggested that one way to prevent such things
from happening was to include the organization and all its affiliates
in a contract, to protect yourself from being undermined by an affiliate.
Hale noted that in order to obtain the US trademark registration,
MCI Corporation must use the mark in interstate commerce or rely
upon use by a licensee. Without knowing more, it would be interesting
to see if the MCI Corporation defined their use as that of the Foundation.
This would imply that there was a licensing relationship between
the Corporation and the Foundation.
Revocation of Copyright Assignments
Lu Harper asked the panelists about revocations of artists assignments
by an estate, and whether there is an obligation to inform owners
of art work when such revocation has taken place. Her institution
had a written artist's assignment for a work, but was told by the
estate's licensing organization that this meant nothing.
Pallante said that it sounded like the estate was ignoring the assignment
of copyright under US law, and they did not have the right to do
this. She urged Harper and her institution to carefully review the
assignment document to understand just what it states. Hale brought
up the possibility that "reversionary" rights might be
coming into play here. In Canada, when 25 years remain on a term
of copyright, all rights revert back to the heirs. You cannot contract
out of this. Reversionary rights also exist in US law, but they
are complicated and not automatic, as in Canadian law. Without knowing
all the details, Hale suggested that this may be what is happening
in Harper's situation. Pantalony suggested that this kind of situation
necessitates "another column in your IP audit sheet" that
identifies works where assignments exist, so you can give yourself
a warning date when something may be reverting back.
Domain Name Registration: How Much is Enough?
Len Steinbach asked how a museum can reasonably determine how many
domain names it should register. His institution (the Cleveland
Museum of Art) used a computer program that took words like "art,"
"museum," "store," "Cleveland" etc.,
and created every permutation that could be used as a domain name.
They came up with approximately 380 possibilities for their institution.
How far does a museum really have to go in licensing all these domain
Pallante said that defensive registrations -- registering names
you never intend to use but want to prevent others from using --
is not as important as it was in the past because new law and the
development of ICANN registration/arbitration procedures are of
tremendous help in countering cybersquatting. Hale added that if
everyone pursues a "register all possibilities" strategy,
we will be back to where we were a few years ago: needing more top-level
domain names. He advised museums to simply figure out the names
they really want to use, noting that the goal should be to ensure
that people can easily find you on the Web.
Gasaway suggested that cease-and-desist letters that mention the
anti-cybersquatting statute are often enough to get someone to surrender
a domain name, but both Pallante and Hale cautioned that this can
backfire, with people publishing your cease-and-desist letters on
the Web or circulating them online with negative commentary. By
doing so, suddenly your complaint is twisted into something that
becomes a public relations disaster. Hale suggested another strategy:
monitoring the registration of domain names that have been registered
by a cybersquatters. Sometimes cybersquatters forget to renew their
registrations, and you can then register the name for your institution.
Rights Management Software
A audience member asked if there was any off-the-shelf software
for managing IP. Pallante suggested researching corporations and
law firms to see what they are using, since they have been managing
IP for a long time. Len Steinbach said that there are very expensive
software packages that deal with rights management, but also noted
that the collections management systems for museums are getting
sophisticated in this area. Pantalony knew of software systems that
can sit on top of your collections management system and assist
with the IP management aspects, but emphasized that there is nothing
that offers everything you want, and you still will be resorting
to multiple methods for organizing and accessing IP information.
David Green noted that the NSF is sponsoring an effort to create
a digital rights management core in metadata, which will help further
standards in the recording of rights management information.
Putting Together a Museum's IP Policy: Renaissance ROM as a Case
-See the Presentation Slides (as Powerpoint
; as PDF)
-See the ROM Copyright Policy (in Word,
or in PDF)
-See the ROM Trademark Policy (in Word,
or in PDF)
-See the ROM Information Management Policy (in Word,
or in PDF)
Brian Porter began his talk by making some important points about
content. In the new media environment, content, not bandwidth, is
in demand, and it is content that museums like ROM have and need
Porter provided background and an overview of the Royal Ontario
Museum (ROM) and the changes that are underway there. ROM is Canada's
largest museum, with a dual mandate of culture and civilization,
and natural science. Porter briefly discussed "Renaissance
ROM," a capital campaign and renovation program designed to
reinvent the museum. He also discussed "ROM Digital,"
another initiative piggybacking onto Renaissance ROM, which will
systematically digitize the collections and leverage these new assets.
ROM Digital will consist of a number of a new structures and activities
in the Museum, including the implementation of a new collections
management system, an imaging center, a digital repository database,
a digital gallery, and education and business applications.
As ROM begins these new initiatives, the Museum has had to learn
a new language of business. The fiscal responsibilities and issues
involved in taking digital assets and making money, or identifying
ways to make money, are a huge challenge. It will require technology,
policy, process, and organizational changes, but the outcome will
ensure that the Museum has a disciplined capture process and secure
storage of its assets. For Porter, it is all about creating and
protecting assets, providing wider access to them, helping people
make personal connections through them, and last but not least,
improving efficiencies in internal organization.
As Renaissance ROM and ROM Digital were underway, the ROM Board
adopted a new governance model that required redrafting several
policies and creating new policy where none existed before. By last
Spring, ROM had 20 new policies in place, including one on copyright
and related policies in the areas of public access, information
management, and publications.
Porter emphasized that having a copyright policy is one way of
recognizing that your IP is an asset and a commodity. The policy
also addresses the demand for self-sufficiency and revenue growth
and, at ROM, was critical in addressing the inconsistent practices
that existed within the Museum. The process of how the policy was
put together was complex, but a group of staff members worked on
its development and hired a writer, in conjunction with ROM's Chief
Operating Office, to craft the document.
Porter reviewed some items outlined in ROM's IP policy. The policy
notes for example, that ROM owns the economic rights in works produced
by employees and has interests to economic rights created in conjunction
with ROM-funded activity or research. The policy also details the
steps for employees entering into projects that are not directly
related to their employment at the Museum and outlines use of ROM
resources for external projects. It allows employees to waive moral
rights where ROM owns economic rights to the content, addresses
the right of integrity for accessioned objects, and requires that
senior executives have all information necessary to ensure that
ROM staff and the institution is adhering to the policy.
In a model that is driving the business side of ROM's digital initiatives,
the Museum is expecting immense growth in three key areas: the museum
attraction, asset exploitation, and education programs. Copyright
policy is key to success in these areas. As projects and programs
develop, ROM will be considering its initiatives along a four-part
matrix that includes process, policy, technology and organization
issues. Porter concluded by suggesting that the audience members
who participate in the workshop portion of the program consider
this four-part matrix when they address the workshop scenarios and
draft some policy statements.
Constructing Values: What to Put Into a Policy
Rachelle Browne examined the importance of understanding an institutions
larger values in constructing policy. When asked to speak on this
topic, Browne initially was overwhelmed by its complexity. Among
the first questions that she asked herself was how does one identify
the sources for an institutions larger values? Do you look
at an institutions governing documents? Enabling charters?
Any applicable codes of museum ethics? Or the general expectations
of the communities that are served by the museum? Even if you assume
that you can identify the sources for those values, how should those
values be applied in a museum setting that may be beset with a host
of financial, legal, technical, time or other practical constraints?
In constructing a policy, is there any value in doing
so if the policy only responds to or addresses current problems
or challenges? In other words, should that policy anticipate, and
be drafted with an eye to being useful in addressing, future concerns
and museum needs as both technologies and the communitys
established practices and understandings evolve? And, just
what policy are we constructing? Is it solely a policy on a museums
own uses of copyrighted materials or on its handling of requests
from third parties for the use of materials from the museums
collections? Or, should the policy also address the disposition
of rights between the museum and its employees, freelancers, volunteers
To get started, Browne drew upon three well -taught, but simple
lessons from her grandmother (Browne reminded participants that
neither her grandmother nor she made any claims of original authorship
to these lessons): 1) thou shall not steal; 2) do unto others as
you would have them do unto you, and 3) make new friends but keep
the old. She considered these lessons in two contexts: when museums
want access to others materials, and when other parties want
access to museum materials. In both contexts, a museum may have
a legal basis to do what they want to do, but that legal position
is not always the most sound one for a museum. Browne noted that
a prudent museum should examine the consequences of any particular
policy in the context of the following:
- How does the policy fit in with the museums mission?
- How does the policy enhance museum delivery of education, cultural
or other public good?
- Does the policy respect and support innovation and creation,
as evidence in the level of fairness with which it treats artists,
donors, sources communities, users and visitors?
- Is the policy consistent with stewardship responsibilities?
She asked the audience to consider two different scenarios:
A wife of an aging, visual artist asks a museum about a reproduction
of his original painting in a popular trade book. The museum purchased
the painting in 1977 for $1000, and the work was reproduced in that
same year in a calendar published by the museum. The museum has
no record that the museum authorized the reproduction of the painting
for this particular book. The Museum informs the artist of this
fact, and also informs the artist that it believes that the work
fell into the public domain in 1977 upon its sale to the museum
(when it was also first published, without copyright notice.) The
response does not mention that since 1977, the museum has collected
usage fees of over $3,000 for reproductions of the work in other
contexts, nor does the response mention that the museum has included
this image in a digital database created for university use in closed
Is the museums legal position defensible (i.e., that the
artists work is in the public domain)? Maybe. Assuming that
the museums position is correct, is the museum now free to
usurp control of any residual economic value in the image because
it controls physical access to the object? Can the museum now authorize
and license reproduction of the work for a fee? Should the museum,
as an ethical matter, account for and share the proceeds with the
artist? If it did so, does this mean the museum also must treat
all public domain works of living artists in this same manner?
Contrast the museums response in this scenario with the response
in the following one.
In the early 1970s, an artist allowed the museum to include his
painting in an exhibit. The artist never retrieved the work from
the museum. Twenty years later, museum staff find the painting and
recommend it for reproduction as one of several images in a children's
educational gameboard. The game sold for $15.00 and never made any
money for the museum. A new registrar discovers that the painting
was never accessioned into the collection. The museum director,
on his own initiative and without legal counsel, contacts the artist
and invites the artist to the museum at the museums expense.
At the meeting, the artist is provided with a copy of the gameboard
and the financial report of all sales and expenses associated with
Assuming that the painting was published, without notice, upon
being lent to the museum, and consequently fell into the public
domain, what obligation, if any, did the museum have to the artist?
Possibly none. What did the museum gain? In this instance, it got
a written deed of gift from the artist for the work, an oral interview
from the artist for the archives, and it removed any risk that the
artist might have found out about the infringement on his own. It
was a win-win situation. In the case of intangible communal property
- folklore or sacred songs - in the public domain, a museum, a matter
of policy and not law, may exercise a form of self-censorship, limiting
access to, or dissemination and exploitation of, such materials
unless adequate and respectful safeguards are followed. Browne discussed
a set of guidelines that Tony Seeger (former director of Smithsonian
Folkways Recordings) has written about for collecting and recording
music from developing and developed countries, which emphasize fair
and ethical treatment of artists and performers, even thought these
practices may put added burdens on the organization. Why would a
museum following the same principles assume added constraints on
its operations or act in a manner contrary to its mission of disseminating
information as freely and as broadly as possible? On reason
is that a museum does not want to marginalize the communities who
create the works in their collections. Another reason is that a
museum could risk alienating the wider community that supports its
Browne addressed the second lesson -- do unto others as you would
have them do unto you -- in considering requests from others to
use materials in the museums collections. Browne noted that
museums, unlike the motion picture industry, record companies, or
for-profit publishers, historically have operated in a gift
economy, where the focus is on the educational, cultural,
scientific or societal exchange. But many museum are developing
policies that may impair access and exchange, especially in digital
The goal of most museums digitization projects is generally
to preserve the originals and encourage and provide wider access
on a non-commercial basis. The question then must be asked, given
these objectives, why would a museum have a policy of imposing barriers,
such as watermarks or other protective copyright management tools,
that limit a website visitors access to, or ability to reuse
a work in digital format? Or why would a museum claim rights to
still images and other works in digital format when the underlying
work may enjoy no copyright protection? Museums have some legitimate
reasons for doing so: for example, licensing or other contractual
obligations imposed by the source of the materials; a sense that
the museum has a fiduciary obligation to protect the integrity of
the work from diminution by the publics" misuse;
and an obligation to prevent the disposal or giving away
of the museums assets with little or no consideration for
the inurement of private, commercial interests as distinguished
from the general public. But increasingly some of the reasons are
not really tenable (such as claiming rights in a digital copy of
a public domain image) and risk incurring the ire of larger communities
as well as calling into question a museums core values.
Browne quickly summarized the third lesson (make new friends
and keep the old) as it applies to museums by encouraging
museums to devise IP policies rooted in their core values but which
also embraced the role and place of new technologies. She concluded
her presentation by stating that legal issues should not be the
sole lens through which a museum focuses its IP policy. Values and
ethics play an equally important role.
See the Scenarios (in Word or in PDF)
After giving their individual presentations, Porter and Browne
led the group in the second part of the workshop: an exercise in
drafting policy in response to three particular scenarios that they
created. The audience was split into groups of six to eight people
and given thirty minutes to read through, discuss, and draft a policy
that addressed one of the three scenarios. Each group selected a
discussion leader, a timekeeper, and a "scribe" to record
the discussion and draft the sample policy statements. At the end
of this time, each group reported on what it had discussed and the
statements it had crafted.
The group who worked on this exercise - developing an IP policy
that addressed handling requests from outside parties for copyrighted
works in the museum's collection -- felt that the series of questions
in the scenario, and the questions in Exercise 1, required first
and foremost a broad "mission-like" statement in the policy
that identified the purpose and core values of such a policy. To
that end, they proposed the following:
"The purpose of the Museum's IP policy is to :
1. Respect the IP rights of all stakeholders involved
2. Protect and promote the museum's intellectual assets
3. Provide defined authorities and guidelines for managing these
4. Educate staff and users about the policy and monitor its compliance
Once the group agreed on this broad, philosophical position statement,
they felt the museum staff could develop specific statements on
handling museum assets, whether the underlying IP of these assets
was owned by the museum or not. Time constraints prevented the group
from crafting language that addressed these specifics.
The group working on this exercise addressed the issues of fees
associated with using museum IP assets. The scenario asked the group
to develop a policy that addressed the issue of fees when the museum
owned the IP rights, and when it did not. Participants in this group
drafted the following position statements:
- The museum has the right to derive, at a minimum, cost-recovery
from any request, or fees through a standard pricing schedule
- Requests to use materials must contain restrictions. All requests
should follow the same process.
- Copyrighted works should not be used before the copyright holders
have been contacted. Proof of copyright clearance must exist before
releasing the item.
After reporting on their position statements, a short discussion
ensued on practices in this area in other museums. Amalyah Keshet
spoke about the distinction between a copyright and a use fee, the
latter being a fee for use of the museum's product (not the underlying
work). This use fee helps recoup the museum's considerable costs
in creating the product. Richard Rinehart noted that most users
would understand a fee for recouping a museum's time and expense
in providing them with a photograph of a work or access to a work.
What they object to is when they pay a use or access fee for a photograph
of a public domain work, but then cannot use the photograph (even
if the user himself took it) except in very restricted circumstances.
Maria Pallante noted that museums cannot necessarily exploit their
copyright in a photograph without the permission of the artist who
owns the underlying work, because the photograph is technically
a derivative work that requires approval of the original copyright
owner. For this reason, museums need to tell artists when they acquire
their work that the museum needs to photograph the work for documentation,
conservation, etc., but that it will not photograph their work for
commercial purposes without their permission.
The third group addressed the policy issues involved in a museum's
recording and use of a videotape depicting an indigenous tribe performing
a traditional spiritual dance and song. The museum was using this
video as a supplement to an exhibition on objects from the region.
Portions of the video include chanting that is considered sacred
to the indigenous community.
Two groups addressed the issues in Exercise 3. The first group
agreed that any policy must:
- Respect the moral rights of authors and performers.
- When possible, create meaningful contracts with authors and
performers; always negotiate directly with the creators and performers,
as well as any legal entity that has the right to bargain on their
- Make certain that copyright of individual components of the
performance resides with creators, but the copyright in the aggregate
work should be jointly shared between the museum and the indigenous
- Clearly post copyright statements and/or credits whenever the
work is presented; the copyright statement would be specific to
the work (not a generic statement).
- If a work is used for commercial purposes, a profit-sharing
agreement will be used if the commodified work makes a profit.
The second group drafted the following position statements.
- The new policy will dictate that permissions will be secured,
in advance of any image/sound capture, including for performance
of any underlying copyrighted work. For aboriginal/traditional
cultures, permission will be sought from elders/authorities of
that culture. The museum will ensure ownership of copyright in
the recording by the use of good, clear employment contracts.
- The permissions will be broad enough to address various uses
the museum may wish to make, taking into account future (albeit
- The museum's IP policy will be guided by ethical issues, apart
from strictly legal considerations.
- The museum will make clear, allowable uses to visitors to encompass
fair dealing/use, and banning commercial use.
- The museum will ensure good copyright protection for its own
content, and an efficient licensing operation.
OPEN FORUM 2
At the end of the workshop, David Green invited all the panelists
to answer any final questions from the audience. The following issues
Copyright in Web Sites
An audience member asked if his museum could claim copyright in
his Web site as a compilation. Pallante responded in the affirmative,
saying that a Web site is a definitely a compilation copyright.
Although licenses may be needed for use of information/images at
sections of the site, the entire site is copyrightable as your compilation.
The audience member followed up with a question about copyrighting
dynamic resources like a database or Web site. Gasaway noted that
the US Copyright Office has been accepting Web site registrations
for a couple of years now, and encouraged people to register their
Web sites. Pallante suggested updating the copyright registration
on these works at frequent intervals. If you do not choose to register
them with the Copyright Office, you should at least keep files of
these resources as "snapshots" of what they are like at
certain points in time. The reason for this is that often you don't
discover infringements until later, so you will want to have a sense
of what your database was like at the point at which the infringement
occurred. Pantalony noted that CHIN places a date range in their
copyright notice (i.e., Copyright 2000-2002 Canadian Heritage Information
Network) to indicate to users that there have been a series of changes
to the Web site or database during this period and CHIN holds copyright
to all versions of the site that existed during this period.
Museum Use of Copyrighted Works for Promotional Activities
Hsiu-Ling Huang asked a question about use of images from the collection
to promote certain museum programs (e.g., the education department's
use of images on a teachers' calendar, the membership department's
use of images on brochures to recruit new members, etc.) when the
rights to the underlying work belongs to others. Is this type of
use "fair use"? Amalyah Keshet amended this question to
include use of such images for museum fundraising efforts.
Gasaway responded that this is possibly fair use, but not likely.
Pallante noted that fair use is very fact-intensive. You cannot
extract from one instance of fair use to another. A catalogue use
may be judged fair in one instance, and not in another. All the
examples Huang cited in posing her question are really very different
from one another when considering fair use.
Huang noted that the museum was not making a profit from these
uses. Gasaway responded that it was a fallacy to think that whether
you make a profit or not determines fair use. Profit-making is really
not the point. It is a tiny piece of one of the four factors that
define the fair use doctrine. The real issue is the effect on the
market for a value of the work to an artist or a photographer. Gasaway
didn't think anything Huang described qualified as fair use. Browne
noted that the uses Huang mentioned fall in the area of marketing
and promotion, and at her institution (the Smithsonian), they do
not see these as fair uses.
Keshet raised the quandary that this presents for museums: if a
museum can't use images of copyrighted works in its collections
to convey information about itself, how can it portray and promote
itself? How can it show others what it has in its collections and
why people should come to visit or use its collections for research?
One Israeli copyright attorney has suggested to Keshet that ideally
fair use should include an exception for informational uses, i.e.,
just letting people know that "this is the work I am talking
about." Keshet conveyed an anecdote in which her museum wanted
to use reproductions on museum maps and directional stands whose
purpose was solely to point visitors to the galleries where particular
works are displayed. When given a choice to pay a royalty or take
the signage down, they opted for the latter. Everyone loses when
control is asserted at this level.
(Editors Note. In May of 2002, a Federal court case in New York
suggested that informational uses such as Ms. Keshet notes above
may be permissible within the context of the First Amendment and
privacy laws of various states. The lawsuit was filed against the
artist Barbara Kruger for her use of a photograph of a woman (without
the woman's permission) in one of her works, and against the Whitney
Museum of Art and the Los Angeles County Museum of Contemporary
Art for reproducing the image for merchandise and advertisement
(of the Kruger work). The Court stated that the artist's use of
the image fell under the First Amendment as free speech, and the
"Whitneys display of the work was therefore protected
by the First Amendment... as was the reproduction of the image in
the exhibition catalogue. Similarly, ... the leaflets, newsletters,
and other exhibition advertisements, including the large vinyl billboards,
fell outside New Yorks privacy protection, because they merely
proved the worth and illustrated the content of the
show" (See M. Lufkin's
"Art Trumps Right to Privacy," The Art Newspaper.com.
Sept. 27, 2002)
Museums, Fair Use and Risk Aversion
Richard Rinehart wondered if the museum community needs to be more
proactive in claiming fair use. At his institution (Berkeley Art
Museum, UC, Berkeley), when an issue is borderline, they take the
position of "taking the risk." As he sees it, when cases
come before judges, the judges might look at the common practice
in the field as a sort of baseline for consideration in rendering
a decision. If that common practice in museums is to be risk-averse,
that works against museums, for that is the rubric by which museums
may be judged in future court cases. Rinehart fears that museums
may be closing the fence around them by adopting this stance. He
sees an ethic coming out of museums that says "being a responsible
museum means being risk-averse" when it should be that being
a responsible museum means being on the lookout for the public good.
Pallante cautioned that US copyright law is a strict liability
law. It doesn't matter if you didn't know about something. Thus
an institution's position really does have to depend on how much
risk it wishes to take.
The Place of Privacy Rights in an IP Policy
Julia Matthews asked if protection of personal privacy was part
of an IP policy. Gasaway responded that this was an important issue
that definitely required a policy, but not within an IP policy.
Matthews felt that privacy issues crop up so frequently in the context
of IP issues that any IP policy would need to have many "see
agreed that this might often be the case, but said that privacy
rights issues occur in so many contexts that it should be the subject
of its own policy.
David Green closed the meeting by thanking everyone who had participated,
and announcing that CHIN and NINCH will be publishing a book on
this subject, based upon presentations and conversation at this
meeting, to be available next Spring.