DOW, LOHNES & ALBERTSON
1255 Twenty-Third Street • Washington, D.C. 20037-1194
Telephone (202) 857-2500 • (202) 857-2900

Kenneth D. Salomon, Esquire
Dow, Lohnes & Albertson Washington, D.C.

Table of Contents

I. Introduction

A. The Distance Learning Environment
B. Copyright Issues and Distance Learning
C. The National Information Infrastructure

II. Copyright Basics

A. Copyright and Ownership Right
B. Copyright Registration, Notice and Damages

A. Introduction
B. Agreements with Contributors
     1. Use of Underlying Materials
          a. Transmission and Distribution of Works Created or Owned by Others
          b. The Fair Use Defense
          c. Non-Profit Educational Exemptions to Copyright Infringement
      2. Scripts and Lecture Notes
      3. Student Waivers
C. Copyright Ownership Models
     1. Collective Work Model
     2. Joint Work Model
     3. Works Made for Hire Model
D. Summary

IV. Expanding Services into Future Markets: Copyright Problems

A. Future Technologies
B. International Distribution

V. Trademark Issues

VI. The Intellectual Property Audit

VII. Conclusion

A. The Distance Learning Environment

Dramatic advances in communications technology have created many exciting educational and informational programming opportunities. Academic institutions, either individually or as part of networks, now use satellite and other technologies to distribute instructional programming ("telecourses") and share research findings on a regional, national and even international basis. Persons working in remote locations or at full-time jobs or studying at widely dispersed campuses benefit from Distance learning by taking courses and earning college degrees, continuing education credits or job site training via telecommunications .

Several of the organizations distributing instructional programming via telecommunications also produce programs on a small scale. Students unable to view the instructional programs at the regularly scheduled times may view videotapes recorded at network headquarters or at receive sites. Programmers often insert separate audio and video materials, such as excerpts of articles, diagrams, charts and graphs, into the programs for greater educational impact.

Educational organizations have begun to utilize the very latest in communications technologies, such as Integrated Services Digital Networks (ISDN), which promise to increase the real-time interactive capability of educational networks. Many students who participate in Distance learning interact with instructors through two-way audio, telephone, facsimile, computer mail and traditional mail.

B. Copyright Issues and Distance Learning

Virtually every operational aspect of a telecommunications-based educational network creates its own important intellectual property issues. Many organizations, however, do not consider copyright issues until forced to do so by litigious copyright owners; controversies frequently arise upon discovery of a lucrative aftermarket for copyrighted works. Entities involved in the telecommunications distribution of educational or instructional programming will profit, therefore, by anticipating and planning for such issues rather than dealing with them as an afterthought.

This primer highlights the intellectual property issues that will inevitably confront telecommunications networks, participating universities, and other programming contributors who produce and distribute educational programming via telecommunications. The primer also suggests measures that can help shield these entities from copyright liability while permitting maximum flexibility for the exploitation of educational programming.

C. The National Information Infrastructure

A. Copyright and Ownership Rights

Under the Copyright Act of 1976 ("Copyright Act" or "Act"), copyright attaches automatically to a work at the time it is "fixed in a tangible medium." Therefore, any outlines or scripts used in connection with classroom instruction enjoy some copyright protection as soon as they are written. Similarly, the lectures themselves receive copyright protection once they are taped or otherwise recorded in a permanent medium.

For works created by an individual, copyright lasts for the life of the author plus fifty years. For works created by an individual for someone else, i.e. "for hire," copyright lasts for a period of one hundred years from the creation of the work or seventy five years from its publication whichever is earlier. Publication involves loaning, leasing, selling or giving away copies of a work. It should be noted that, while satellite distribution of a work represents Public performance under the Copyright Act, it does not constitute publication. If, however, copies of the program are made and later distributed, this qualifies as publication.

During the period of copyright protection, copyright owners have the exclusive right to (1) reproduce the copyrighted work; (2) prepare derivative works based on the copyrights work; (3) publish the work by distributing copies to the public by sale, rental, lease or lending; (4) publicly perform the copyrighted work; and (5) publicly display the work. Copyright owners may transfer these exclusive rights to others, either as individual rights or as an entire "bundle of rights."

B. Copyright Registration, Notice and Damages

Ova the course of recent years, the legal importance of registration has been reduced. While registration of a work with the Copyright Office is no longer mandatory and may be made at any time during the term of copyright, registration still establishes a clear public record of the copyright claim. Also, if registration is made before or within five years of publication, it constitutes prima facie evidence of copyright validity.

In order to register a work, copyright owners must complete an application form, pay a filing fee (currently S20.00), and deposit copies of their works with the Copyright Office. Since the instructional programming produced by most telecommunications organizations is not widely available to the general public, the appropriate entity may organize its copyrightable material in any manner it deems convenient (e.g. by semester, by year, by course or group of courses, by university, etc.).

Although copyright attaches upon creation, copyright owners should register and affix the appropriate notice (in the form of "© 1991 John Doe") to all works in order to advise the public of their copyright. While copyright notice is optional for works first published on or after March 1, 1989, it is highly recommended. Notice informs the public that the work is protected by copyright, identifies the copyright owner, and shows the year of first publication. Furthermore, the defendant in an infringement action cannot claim that he or she was an "innocent infringer" of a work if the work bears the proper notice. A court will usually reduce damages in cases where a defendant successfully claims innocent infringement.

Copyright owners do not need to register the work with the Copyright Office or obtain its permission prior to affixing the copyright notice. The notice should appear at the beginning and end of all telecourse program transmissions, and on all copies distributed to the public through any secondary medium, such as video cassettes. In addition, telecommunications organizations and/or participating universities should contractually require any transferee to guarantee that it will include proper notice on all programming distributed in any form.

A. Introduction

Copyright law provides a general framework for determining the ownership of various intellectual property rights. Although the law regarding general interest programming is relatively well settled, complex questions concerning copyright ownership arise when telecourses integrate live lectures and preexisting materials. The ownership picture is further clouded when groups record programs for tape delayed viewing and archiving.

As a general rule, parties should enter into written agreements with producers, professors, students and all other contributors. Each agreement should specifically delineate the ownership of intellectual property rights in the programming itself and the materials integrated into the programming. Absent such agreements, ownership questions could ultimately be decided through litigation.

B. Agreements with Contributors

1. Use of Underlying Materials

a. Transmission and Distribution of Works Created or Owned by Others

Before producing or distributing any programming that incorporates the copyrighted works of others, telecommunications organizations and universities should obtain written clearances from copyright owners that allow the entities to perform, display, distribute and reproduce all visual, musical and written material incorporated within the programming and to prepare, perform, display, distribute and reproduce any derivative works prepared from those materials. Groups should also obtain clearances for all ancillary materials distributed to students in connection with the telecast courses. Although sections of the Copyright Act allow for the use of certain materials without the copyright owner's permission in face-to-face teaching situations and in transmitted classes, the scope of this permission is somewhat unclear. These provisions are discussed in greater detail below. Therefore, it is recommended that careful assessment be made of the availability for the intended use of copyrighted works and when doubts about entitlement to use persist, permission be obtained. Absent such agreements, telecommunications organizations and their universities may be liable for copyright infringement.

Moreover, an otherwise permissible use of materials in the face-to-face classroom setting may expose telecommunications organizations and universities to liability when telecourses are transmitted and/or recorded at remote receive sites for later use. Finally, while universities may already have agreements that expressly authorize the use of certain materials for classroom purposes, it may well be that these agreements are not broad enough to accommodate telecommunications transmission, videotape recording, or the distribution of course-related materials beyond the classroom setting.

b. The Fair Use Defense

The Copyright Act permits a "fair use" defense to a charge of copyright infringement when the unauthorized use is made for purposes of teaching, scholarship, research, criticism or comment. Significantly, "fair use" is not a bright line legal test. Rather, four statutory criteria are assessed. They are:

1) The purpose and character of the use (including whether it is for profit or not)

2) The nature of the copyrighted work

3) The substantiality of the amount used in comparison to the total work; and

4) The effect of the use on the marketability of the original

Due to the potential ambiguities inherent in a fair use analysis, telecommunications organizations and their member universities should hesitate before relying exclusively upon the fair use defense. To help educators, certain non-statutory guidelines covering educational photocopying were agreed to at the time the Act was passed in 1976. In 1981, the guidelines were expanded to cover video material. Nevertheless, application of the fair use criteria requires a complex legal analysis which, at best, often provides contradictory answers. In addition, the defense may not protect many of the contemplated distribution scenarios. For example, the 1976 guidelines stated that fair use would not protect the use of material by the same instructor "from term to term"; this prohibition would, arguably, preclude organizations and universities from distributing the same programs and related materials in subsequent semesters or years. In addition, the defense applies only to materials that are copied at the behest of professors or by professors themselves. Furthermore, book publishers have successfully sued university copy centers for photocopying even at a professor's request. The fair use defense, may not, therefore, protect all copying done by telecommunications organizations, independent producers, corporations, or universities. Finally, fair use may not permit any subsequent "for-profit" marketing of the programming that embodies the copied material.

c. Non-Profit Educational Exemptions to Copyright Infringement

Section 110(1) of the Copyright Act permits the performance or display of a copyrighted work "in the course of face-to-face teaching activities . . . in a classroom or similar place devoted to instruction." Due to its in-class restrictions, however, this provision may not protect the telecommunications transmission and likely does not protect the subsequent videotaping of programming embodying copyrighted works. While Section 110(2) does specifically exempt the performance and display of certain materials that are transmitted for instructional purposes, this exemption does not apply to any copying or later distribution of programs.

In summary, neither the Act's fair use defense nor its non-profit educational exemptions will completely insulate telecommunications organizations and universities that produce, distribute and videotape programming from copyright infringement charges. Organizations and universities should, therefore, obtain written clearances permitting the use of materials inserted into educational programming and for materials distributed in connection with the programming. These agreements should cover initial transmission, any subsequent copying and the lending of videotaped copies to students for later viewing and, if possible, future uses as well.

2. Scripts and Lecture Notes

The Act specifically grants the copyright owner the exclusive right to make derivative works from an original copyrighted work. Therefore, contributors to instructional programming may claim ownership rights to the programming itself under the theory that the program is a "derivative work of their lecture notes or other materials." Accordingly, telecommunications organizations and educational institutions should consider requiring instructors and other contributors to relinquish copyright ownership rights to any notes or other materials from which their presentations are delivered.

3. Student Waivers

Other classroom participants, aside from lecturers and contributors, may also be able to make a claim regarding telecourses. In order to be protected fully, telecommunications organizations and universities should obtain a release from all students, or other audience members, as well as lecturers and other "on-camera" participants, that assign their contributions in the work to the organization or university and authorize the use of their name, voice and likeness. This release protects the organizations and the universities from claims by classroom participants or lecturers for invasion of privacy, interference with the right of publicity and copyright infringement.

C. Copyright Ownership Models

Absent express agreements, the Copyright Act itself may order intellectual property ownership arrangements between telecommunications educational networks, member corporations and participating universities, independent producers, and individual contributors.

l. Collective Work Model

A copyrightable work may arise from the collection of other, individually copyrighted works. Under this "collective works model, a telecommunications organization would own an entire program (as a Collective work"), while individual contributors would own their specific presentations. Unless contributors expressly transferred their rights to the organizations or participating universities, however, these entities could only reproduce and distribute the program in its entirety and would be restricted in exploiting the various contributions.

2. Joint Work Model

The Act also recognize ownership for a Point works in which multiple authors merge their contributions into a single, inseparable work. A telecourse could thus be considered jointly created and telecommunications organizations, universities and individual contributors would hold joint ownership. Joint owners may individually exploit the work, subject to a proper accounting to the other copyright owners for profits earned from the work. This status could complicate the granting of exclusive rights in the works to third parties.

3. Works Made for Hire Model

The Copyright Act also recognizes that materials may be created as swords for hire," for the telecommunications organization or university and, therefore, would be solely owned by those organizations. Works created "for hire" are those prepared by an employee within the scope of his or her employment; alternatively, any work that is specially ordered or commissioned as part of a collective work, audiovisual work or as an instructional text is a work for hire if the party signs a written instrument to that effect. It is, therefore, important that telecommunications organizations and universities enter into an agreement with a contributor that specifically states that the materials are created as works made for hire or, alternatively, that assigns the copyrights to the organization or university.

D. Summary

A. Future Technologies

Intellectual property ownership problems will most likely materialize when audience size or revenue potential increases, or when the traditional medium of distribution changes. A well drafted agreement should recognize and provide for these contingencies. In order to ensure that distribution rights will not be limited to the initial transmission, agreements should expressly state that organizations and/or universities are authorized to copy and distribute programming for "any and all purposes" and "by means of any and all existing technologies and any and all technologies hereinafter created."

B. International Distribution

Telecommunications organizations and participating universities contemplating satellite distribution, videocassette sales, or interactive teleconferencing on an international scale must be aware of the significant differences between United States copyright law and the copyright laws of other countries. Telecommunications organizations and universities considering any type of foreign venture should familiarize themselves with (1) the basic terms of the two major international copyright treaties and (2) the copyright law of the nations in which their programming will be distributed.

While there is no such thing as an International copyrights that will universally protect intellectual property rights, most countries afford U.S. copyright owners some protection under the terms of the two major international copyright conventions to which the United States belongs: the Universal Copyright Convention ("UCC") and the Berne Convention for the Protection of Literacy and Artistic Works ("Berne").

Generally, an author may claim protection for a work under the UCC if he is a national or domiciliary of a country that is a member of the UCC or if the work was first published in a UCC country. The work must, however, bear the notice of copyright in the form and position specified by the UCC. The UCC notice consists of the symbol "C," the name of the copyright owner and the year the work was first published.

In addition to insuring against copyright infringement claims, organizations and universities should protect their trademark rights by registering any trademarks or service marks which are currently in use or which may be used in the near future for Distance learning goods or services. The system of federal registration, which categorizes marks into forty-two classes of goods and services, protects trademark rights nationwide.

Federal registration lasts for ten years and may be renewed. Registrants are required to complete an application, submit samples ("specimens") of their mark to the Trademark Office, indicate the date on which they first used the mark and pay a filing fee of $245 per mark per class. After five years, trademark owners must affirm their continued use of a mark; the trademark then achieves "incontestable" status, offering even greater protection for the trademark holder.

The marriage of new technology and traditional teaching methods creates unique opportunities and challenges for entities involved in distance learning. One of the biggest challenges for telecommunications organizations and participating universities will be to order their relationships with instructors and other contributors to protect themselves against charges of copyright infringement; at the same dime, these entities must protect their works against copyright and trademark infringement by others.

Telecommunications organizations and participating universities should prepare a copyright audit to determine which materials they will incorporate into their programs, which rights have been secured and, most importantly, which rights remain to be secured. Organizations must assess these rights on a case-by-case basis. Written consents are the best means of ordering the rights between all involved parties; absent such agreements, the courts will order the relationships in a manner that may or may not be satisfactory to the telecommunications organization or the participating university. As the educational and commercial value of distance learning becomes more apparent, the need for clearly ordered copyright relationships will become equally obvious.

Finally, distance learning should be viewed as one important aspect of the emerging electronic superhighway. It is predictable that impressive technological advances will lead to policy initiatives, addressing practical and legal questions vital to educators. Now is the time to marshall resources and participate in the debate which will shape how effectively distance learning institutions will function in the 21st Century.

For more information please contact Kenneth D. Salomon at (202) 857-2566.

1) A transfer of copyright ownership is defined under the Copyright Act s "an assignment, mortgage, exclusive license, or any other conveyance, alienation, or hypothecation of a copyright or of any of the exclusive rights comprised in a copyright, whether or not it is limited in time or place of effect, but not including a nonexclusive license." 17 U.S.C. § 101. Transfers, which must be in writing and signed by the party making the transfer, should be recorded with the Copyright Office. Recording the transfer provides constructive notice of the transfer and is also a prerequisite to n infringement suit.

2) Any world first published before March 1, 1989 risks losing protection unless it bears a notice of copyright. However, copyright is not automatically lost if notice was omitted or an error was made on copies distributed between January 1, 1978 and March 1, 1989. Copyright protection extends to worlds registered within five years after publication without notice, if the owner makes a reasonable effort after discovery of the omission to add notice to all copies distributed in the United States.

3) The Copyright Act specifically provides that states may not rely upon the U.S. Constitution's 11th Amendment immunity clause to escape copyright liability for their infringements.

4) The fair use defense will only apply to the materials used for instructional purposes. Thus, for example, "bridge music" may not be exempted where its only purpose is to enhance the ambiance of a program or to fill time in between programs.

5) Starting in 1989, The Trademark Law was amended to permit filing of applications based on a bona fide "intent to use" ("ITU") a trademark. Once the mark is actually used, the ITU may be converted to a use-based registration, with protection dating back to the filing of the ITU.