[digital-copyright] FW: Copyright question - lengthy

[Kevin Smith <kevin.l.smith@xxxxxxxx>]

From: Kevin Smith
Sent: Tuesday, April 02, 2013 11:32 AM
To: 'Barrera, Ms. Jennifer'; digital-copyright@xxxxxxxxxxxxxx
Subject: RE: Copyright question - lengthy

I think part of the problem here is miscommunication and inaccurate language.

The attorney is correct that he owns a copyright in the material he creates,
automatically and from the moment his original expression is fixed in tangible
form.  Since copyright has been entirely automatic since 1989, the ACEF
language about the event being "copyrighted by ACEF" is inaccurate.

ACEF could own the copyright from the moment of creation only if the work was
"made for hire," which would require and explicit contract prior to the
creation of the work.  I doubt very much that such a contract exists, and the
slides, at least, are probably something that the attorney created some time
in the past. So there is no question of ACEF "retaining" the copyright; if
they really want to own the copyright, they would need to get a signed
transfer from the attorney, which he is clearly is not willing to do (and
should not be, IMO).

What EDGAR 80.34 requires is much less than a transfer of ownership - only a
non-exclusive license in the work.  Once it is understood that ACEF
acknowledges that the attorney is the copyright holder and will continue to be
so, and that ACEF needs only a non-exclusive license in his IP, the
negotiations might be smoother.

I note that the attorney objects to a film of his presentation being made,
which is within his rights.  He is legitimately concerned that a video of his
presentation, combined with his slides, could be used to cut him out of future
seminars in which he would still be the main (virtual) presenter, but without
his consent or any compensation.  Again, his ownership of the copyright would
probably make this an infringement, but the confused language has left him
unclear about his rights.  The ownership issue should be cleared up, and then
the scope of a non-exclusive license should be negotiated.  If the license can
be narrowed so that only people with a relevant relationship to ACEF can view
the materials, and they are not released on the Web or used to create
duplicate seminars, he might agree.  But as the language has been presented to
him, it is inaccurate and would cause me, as an attorney specializing in
copyright who gives frequent presentations and hopes to be able to continue to
do so, to object on the same basis.

By the way, the fact that a contract is not required in this situation should
not prevent one from being used.  Without a contract the copyright will
probably remain with the creator (the attorney) and ACEF will not even have a
license, so it is their interest to negotiate.

Kevin

Kevin L. Smith, M.L.S., J.D.
Director, Copyright and Scholarly Communication
Duke University Libraries
P.O. Box 90193
Durham, NC  27708
919-668-4451
Kevin.l.smith@xxxxxxxx<mailto:Kevin.l.smith@xxxxxxxx>