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Can I Avoid Infringement by Making Changes in the Copied Work?

Remember that the test for copyright infringement is substantial similarity. Copying a work and then making some changes to distinguish the copy form the copied work is never a good idea. Like beauty, substantial similarity is typically in the eye of the beholder (in this case a judge or jury). What you may perceive as substantially dissimilar someone else may view as an infringing copy of the copyrighted work. Moreover, remember that the copyright owner has the right to make works derived from the original copyrighted work. Therefore, copying a work in a different medium, such as a three-dimensional sculpture from a two-dimensional painting, may also give rise to a claim of infringement. Of course, there may come a point at which the degree of change is so extensive as to make the copy unrecognizable even to the copyright owner. However, it is best to avoid ever creating a work by copying another work. There is nothing wrong with considering one or more pre-existing works prior to creating a work. When it comes time to start creating, however, put all the prior works in another room. With only a memory of these prior works, you are more likely to a produce a work containing your own expression of the ideas expressed in the prior works.

How Can I Tell Whether a Work Is Copyrighted?

It is safe to assume that works created before 1923 are in the public domain. For all other works, it is necessary to perform a search of Copyright Office records. These records will indicate whether there was a timely renewal of the copyright term of certain works, as well as the current owner of the copyright should it become necessary to request permission or a license to use the work. Unfortunately, not all records are available for online computer searching. As a result, it may be necessary to perform a hand search of paper records. This can be daunting, not to mention time consuming and costly. There are, however, outside search firms that perform searches for a fee. Given this quagmire of potential rights, it may be necessary to assume, absent a full search, that all post-1923 works are still copyrighted and to seek the necessary license or permission on that basis.

You can find further information on this topic at the following Yale Library site:

http://www.library.yale.edu/eli/copyright/circ1.html

Can I Ever Use a Copyrighted Work without Permission?

Any time you make an unauthorized copy of a copyrighted work, this technically infringes the rights of the copyright owner. The law, however, does permit some limited copying of such works as a "fair use" of the works. Even before a work enters the public domain, public policy favors making copyrighted works available for reproduction in scholarly and educational works, as well as in other uses protected as First Amendment free speech. This "fair use" exception to copyright has been defined as use of the copyrighted work "for purposes such as criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research . . . ."

When Does Copying Become Fair Use?

There are four factors that courts typically consider (in addition to any other relevant factors) in determining whether copying of a copyrighted work is permissible as fair use:

the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
the nature of the copyrighted work;
the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
the effect of the use upon the potential market for or value of the copyrighted work.

Unfortunately, courts apply these factors after the fact on a case by case basis in infringement actions. The resulting decisions as to what constitutes fair use can be very subjective and make it difficult to gauge whether a particular use is fair. There is no definitive way of assessing whether or not a use is fair until after a judicial ruling in an infringement suit. As a result, you will have to apply the fair use factors to your project and attempt to make an educated assessment as to whether the extent of copying appears to be permissible. If you have any doubt as to whether your use is fair, you should probably err on the side of seeking permission from the copyright owner.

Are There Guidelines for Determining Fair Use?

Faced with the uncertainty of judicially-applied fair use factors, those in the publishing and education fields have attempted to establish guidelines for engaging in permissible copying for educational purposes. Unfortunately, not all proposed guidelines were ultimately approved. Moreover, approved guidelines attempted to set minimums as to permissible copying. Educators were often displeased with restrictions on scope of copying and duration for retaining copies. Of course, engaging in copying that goes beyond the minimums could still constitute fair use. There is always the risk, however, that the court in an infringement suit could disagree with what you consider to be fair use.

Other institutions, like the University of Texas, have offered rules of thumb for fair use copying for educational purposes:

One article from a journal issue
One chapter or other small part from a book
A few charts, graphs, illustrations or photos

Amounts in excess of these guidelines would require a full fair use analysis and could require obtaining permission and payment of fees if they are found to be beyond the bounds of fair use. The university concluded that limited on-campus nonprofit copying by faculty, staff and students for courses, research and studies should be permissible fair use. On the other hand, if the copying takes money out of the copyright owner's pocket, such copying is less likely to be viewed as fair.

Thus, there is no bright line test for when copying constitutes permissible fair use and when copying requires permission of the copyright owner. Moreover, in the event that the popularity of a multimedia project sparks interest in commercial marketing of the project, this will definitely go beyond fair use and will require permission of the copyright owner. If there is a chance that your multimedia materials could be sold for profit, it may make sense to consider treating such uses as requiring permission.

What Factors Can Make a Use Fair?

Although it may be difficult to determine whether copying constitutes fair use, there are certain factors which, in the past, have caused a court to find fair use:

The purpose of the use is for criticism, comment or teaching (including multiple copies for classroom use).
The use will be for non-commercial purposes, such as educational or nonprofit use.
A copy shop charges only for copying and binding course packs and is not involved in the selection or authorization of materials copied for the course pack.
Copying is limited to the amount of material needed to achieve the intended educational purpose. In considering this factor, some courts have looked to whether the copying captures the "heart of the work." Where a professor would not have assigned the material if students were required to purchase the entire work, this would suggest that the amount of copying was fair use.
The amount copied is not a substitute for the purchase of a copy of the entire copyrighted work.
The copied material identifies the author, publisher, etc.
The copied work is out of print and otherwise unavailable.
The copied work has already been published so that copying of the work will not deprive the author of the right of first publication.
The copyright owner could not be located after a good faith search.
The portion of the copyrighted work that is reproduced will not impact adversely on the market for the copyrighted work in its entirety. Some courts have found that copying of even up to 30% of a work was still permissible fair use. When analyzing this factor, courts generally do not view a claimed loss of permission fees as evidence of damage to the copyright owner.
The author does not object to reproducing copyrighted published materials. Authors of academic works may have a greater interest in dissemination of their ideas than in royalties or other forms of monetary compensation.
Still other courts have adopted a "market failure" theory of fair use in which fair use exists to fill a legitimate need to reproduce portions of copyrighted works that the market cannot fulfill. Thus, as it becomes easier within the market to obtain and pay for permission, the scope of fair use should decrease. In other words, if permission at a fair price is readily available, there should be no need to rely on fair use.

You can find a further discussion of fair use and examples of fair use copying at the following Yale Library site:

http://www.library.yale.edu/eli/copyright/circ2.pdf

Are there Risks in Downloading Materials from the Internet?

You should proceed with great caution when downloading and using digital materials from the Internet for incorporation into multimedia presentations. There is often no way to determine whether displayed material is in the public domain or protected by copyright. Moreover, there is no way of confirming that permission was obtained prior to posting a work on the web site. Indeed, given the present confusion about freedom to copy works on the Internet, it is probably safer to assume that permission from the copyright owner is necessary before reproducing materials from an Internet web site.

Does Photocopying Course Packs Constitute Fair Use?

For many years, it has been customary for professors to photocopy packets of materials for classroom use by students. The intended purpose is to provide students with relatively small excerpts from a collection of copyrighted texts. This will avoid the expense of having to purchase all of the works from which excerpts were taken. This making of multiple copies for classroom use has been viewed as a fair use of the larger copyrighted works. More recent technological advances have caused once-traditional paper course packs to give way to multimedia presentations made available to students as classroom presentations or on Internet/Intranet web sites.

Even with this express recognition of multiple copies of a copyrighted work for classroom use, such copying has not always been found to be fair use. In an action for copyright infringement brought against the Kinko's copy shops, a court held that preparation of course packs for classroom use by students at the request of their professors did not constitute fair use. The court analyzed the four fair use factors to create a presumption that every reproduction of copyrighted works for profit by a copy shop was a commercial use.

Needless to say, this decision had a chilling effect on the preparation of course packs for classroom use. To confuse things further, the U.S. Supreme Court later issued a decision involving use of a sampling of the song Pretty Woman in a rap song parody. While the decision had other First Amendment free speech components, the Court's decision did contain favorable language recognizing education-based photocopying as fair use. The Court rejected efforts at establishing a presumption making unfair all commercial photocopying (including commercial photocopying of course packs). Nevertheless, it is still possible for preparation of course packs to go beyond permissible fair use when analyzed on a case by case basis.

What Is the Copyright Clearance Center?

The Copyright Clearance Center (CCC) is a licensor of text reproduction rights. It provides a licensing system for the reproduction and distribution of copyrighted materials in print and electronic formats throughout the world. The CCC currently manages rights in many copyrighted texts and represents the publishers and authors of such texts. CCC claims to have licensed many libraries, academic institutions, copy shops and bookstores. If you need to obtain permission to use a copyrighted textual work owned by an entity registered with the CCC, you can obtain permission to reproduce the work in return for payment of a fee to the CCC. It will be necessary to contact by other means copyright owners that are not represented by the CCC. For further information, you can visit the CCC web site at:

http://www.copyright.com/

Are There Any Resources at Yale for Obtaining Permission to Reproduce Copyrighted Works in Course Packs?

The Yale Reprographic Imaging Services (RIS) offers a fee-based service for preparing course packs and obtaining the necessary permissions for copyrighted works reproduced in course packs. RIS considers all copying of copyrighted materials to require permission unless faculty members request a single copy for their own use. RIS deals extensively with the CCC. For textual works not licensed by the CCC, RIS either encourages the faculty member to contact the rights holder or attempts to contact the rights holder directly.

RIS will attempt to obtain necessary consent to reproduce such items as pictures, graphs and other art work incorporated into textual materials. RIS does not typically receive requests for reproducing artistic works that are not part of a book. With respect to works owned by entities located outside the United Sates, RIS will first attempt to obtain permission through the CCC. If necessary, it will attempt to contact non-US rights holders directly. In those instances where the owner of copyrighted materials cannot be located, RIS will reproduce the materials without permission.

For further information about the services provided by RIS and for an order form for course pack preparation, you can visit the RIS web site at:

http://www.yale.edu/ris/coursepkt_entry.html

How Do I Obtain Permission to Reproduce Non-Textual Works?

A multimedia presentation will often incorporate non-textual materials, such as music, videos, graphics and art work. The owners of such works may be represented by one or more protection agencies that will be able to grant you permission to reproduce the works for a fee. A number of these agencies are discussed in an article posted on the University of Texas web site at:

http://www.utsystem.edu/ogc/intellectualproperty/permissn.htm

The site provides information about the CCC and other international clearance associations, as well as image archives and agencies in the fields of music, theater and motion pictures. All of this demonstrates the daunting nature of the task of obtaining permission for multimedia presentations.

You can also find a discussion of resources for obtaining permission at the following Yale Library site:

http://www.library.yale.edu/eli/copyright/circ3.pdf

When Should I Seek Permission?

At times it will be necessary to go through the process of obtaining permission or of getting consent from a copyright owner to use the owner's copyrighted material. Unless the copying is found to be permissible fair use, using copyrighted materials without permission of the copyright owner will constitute an infringement of the owner's copyright. If the copyright owner sues for infringement, copying without permission can result in liability for injunctive and monetary relief.

While a conservative approach is recommended as for the need to obtain consent, you should not shy away from making fair use for educational purposes. Rather, you should engage in a risk analysis with risk being the key word. Your objective should be to assess the risks in going forward without consent. For example, even where it is unclear whether copying will be viewed as a fair use, the scope and duration of your proposed use may be unlikely ever to come to the attention of the copyright owner. This will have an impact on the decision to copy without permission. On the other hand, commercial marketing and sale of a project that reproduces another's copyrighted material will necessarily heighten the visibility of the project, not to mention a copyright owner's interest in sharing in the profits from a work incorporating copyrighted materials.

You should begin at a preliminary stage of a project to determine what materials are copyrighted and require permission for reproduction. You may want to create an inventory listing each element of the project and identifying parts of the materials reproduced from third party sources. (Downlod a Sample Permission Spreadsheet in Excel format to track your inventory.)

At the very least, you should begin the permission process simultaneously with the start of work on your project. Given the roadblocks and obstacles sometimes encountered in obtaining permission, it is always preferable to get an early start. In addition, the permission fees can be budgeted into the project cost. Lastly, if you are ultimately unable to obtain permission for a project component, early notification will permit the timely substitute of an alternative.

How Do I Seek Permission?

Once it is determined that it is necessary to seek permission for use of a copyrighted work, care should be taken to document the efforts made to obtain the consent of the copyright owner. This will be particularly useful in the event that consent is not obtained due to an inability to locate the copyright owner or if the copyright owner fails to respond to your request.

The best place to start the permission process is to examine the copyrighted materials to identify the name of the publisher or author from whom permission is to be obtained. As a copyright notice typically identifies the copyright owner, this is the entity from which permission must be obtained. With this information, you can determine whether the copyright owner is represented by an agency such as the Copyright Clearance Center. For images and other non-textual materials where ownership is not immediately clear, it may be possible to consult resources at the university library to identify the owner. One could also consult standard reference publications and databases for information regarding source, as well as professional associations representing artists/creators in the appropriate medium.

Sometimes, where copyright to a work has been assigned, it will be necessary to go through the chain of ownership to find and contact the current owner of record. In those instances where the owner cannot be identified, a file should be maintained documenting all efforts taken to identify and contact the owner.

Once you have identified the copyright owner, it is necessary to present your permission request to the owner or an entity representing the owner. In so doing, care should be taken to specify the rights as to which you require permission, such as reproducing the work or creating a work derived from the protected work. These should probably include the right to "use, modify, adapt, reproduce and distribute" the work in a specific format. Your request should also specify the duration and the territory to be covered by the consent. For example, permission can be given for a one-time use, a one-year use or even a use in perpetuity. The nature and scope of your copying needs can impact on the fee connected with obtaining the consent. You may also wish to set forth the media in which you are likely to use the work, e.g., printed, textual, graphic, multimedia, CD-ROM, etc.

It is not uncommon for a consent to come with a price. Your initial consent request should not offer compensation for the consent. The owner's desire for compensation can depend upon the amount of material to be reproduced and whether the project is educational (non-profit) or commercial (for profit).

What Documents Do I Need to Obtain Permission?

It is important to get the consent in writing. While an oral consent may be enforceable either explicitly or implicitly, it is always preferable to have a written document setting forth the precise terms of the consent. At the very least, try to send a letter to the owner confirming the scope of the permission and request the owner to sign and return a copy of the letter. This will avoid possible disputes as to interpretation down the road.

Thus, a permission or consent should take the form of a writing between the copyright owner and you as the author of the educational project. The writing can take the form of an agreement signed by both parties or a letter from you setting forth the terms of the consent and countersigned and agreed to by the party granting the consent. In short, the permission agreement should give you the right to use a copyrighted work in a manner that would otherwise constitute an infringement of the owner's copyright.

What If I Cannot Locate the Copyright Owner or the Copyright Owner Does Not Respond to My Request?

Sometimes, even after a good deal of documented effort, you may be unable to identify the appropriate party from whom to request a consent. There may also be times when the copyright owner ignores the request for permission. There could be a number of reasons why this occurs. It may be that the work, while still copyrighted, is relatively old and out of print so that there is no one with an ongoing interest in further commercializing or exploiting the work. Failure to locate a copyright owner or to receive a response to a permission request does not excuse your reproduction of copyrighted works. Since such copying is technically an infringement, you should take care to document your efforts at identifying the copyright owner or in attempting to communicate with the copyright owner in defense of your decision to reproduce the work in your project. This decision must also be weighed against other "fair use" factors to assess the risk of reproducing the work.

How Much Should a Permission Cost?

The process of identifying and locating the copyright owner will result in an expenditure of time and money. These expenses can be added to the actual fee for the consent when calculating the actual cost of the consent.

The actual consent fee will depend on a number of variables, such as the portion of the copyrighted work to be reproduced, the value of the copyrighted work and the nature of the proposed work, i.e., non-profit (educational) or for profit (commercial). Consequently, it is difficult to establish a firm guideline as to what fees are likely to be encountered. Moreover, as new technologies continue to develop for the production and dissemination of educational projects, consent fees are likely to continue to evolve in answer to these changes.

Do I Need to Give Credit to the Owner of Copied Works?

Whenever you reproduce copyrighted materials with the permission of the copyright owner, you will typically be asked to provide an acknowledgment that the work has been reproduced with permission. In the event that you decide to treat a reproduction as fair use, you should still acknowledge the owner of the work. If the copied work has a copyright notice, you can reproduce the notice along with the copied work. Printed text should identify the book, author and publisher in a standard bibliographic format. The credit or acknowledgement, if possible, should be placed in proximity to the reproduced work. At the very least, the notice should be in a position reasonably likely to provide notice to viewers of the project.

Can I Incorporate the Name or Likeness of a Person in My Project?

Individuals have certain rights to control commercial use of their names and likenesses. The right of privacy (the right to be left alone) protects members of the general public from unauthorized use of their names and likenesses. The right of publicity (the right to control commercial exploitation) protects against unauthorized use of the names and likenesses of celebrities. As a result, it is necessary to obtain a release prior to using the name or likeness of a person in your project. For example, before creating a multimedia project incorporating interviews with certain individuals, it will be necessary to obtain a release consenting to use of each person's name or likeness in the project. On the other hand, merely incidental display of an individual in a multimedia project should not require a release.

The CLS hosts seminars and workshops on a variety of topics; all language instructors at Yale are invited.

The CLS offers non-linear digital video editing equipment and support for faculty and students.