Chapter 7 - Your Questions on Licensing
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Education is an admirable thing, but it's well to remember from time to time that nothing that is worth knowing can be taught.
Below are questions asked in the many seminars and workshops I have instructed on digital licensing since 1997, and through emails and on my blog. These questions are included to provide some specific and practical answers to your questions (often dealt with in further detail elsewhere in this book), with the hope that the sharing of these questions and answers will help museums with some of their specific licensing concerns.
General Licensing Questions
What would a "perfect" digital licence contain?
There is no such thing as a perfect licence. Each agreement must reflect the needs and requirements of the involved two parties. Each situation is unique and you must ensure that your licence meets the particular needs of your museum and the organization with whom you are entering the licence. The "perfect" digital licence would be one that sets out terms and conditions which satisfy both parties who sign the agreement.
Are a licence and assignment the same thing?
No. A licence is mere permission to use content according to specific terms and conditions. An assignment is an outright purchase of the rights to that content. Most digital content is licensed.
Must all licences be in writing?
They should be. This is not always necessary although it is a good idea as it is a good summary of your negotiations and it constitutes a single document setting out the terms and conditions of use of content. It also helps in managing multiple digital licences entered into by museums. Each province has its own requirements as to when a legal agreement must be in writing.
Does the term digital licensing imply that the licensed work is not in the public domain?
Yes. Generally, works that are licensed are protected by copyright. Works in the public domain are no longer protected by copyright and permission or a licence is not necessary to use these works. In more ambiguous circumstances, for instance, in relation to a database in which the copyright status is not clear, a content owner may presume that copyright exists in the work and may then license it. Some museums, however, "license" the access to works which are in the public domain.
What if a licence is not negotiable?
Most things are negotiable. Other than standard online agreements, most licences are subject to some discussion and negotiation. If you are faced with a licence that does not meet your needs and that does not appear to be negotiable, always ask the content owner about the portions of the licence that you would like amended. Try to open discussions and negotiations to ensure that the final licence meets your needs.
When amending an agreement, may you cross out unwanted portions, or do you need to re-write the whole agreement?
You may "cross out" portions of the licence, however both parties should initial those crossed out portions (or any added pencilled-in portions) when they sign the agreement.
Can you negotiate a licence through an exchange of emails?
Yes, you can negotiate through email. However, you should add a clause to your licence to the effect that the written signed licence agreement is what governs your licensing arrangement and constitutes the entire agreement. The email exchanges are just that and do not have any legal significance.
Is our museum responsible if one of our staff members who does not have authority to do so, "signs" a click-through agreement to access online content?
It is possible that your museum is legally liable for any such contracts. A prudent approach for any museum is to ensure that its staff members are fully aware of rights and obligations with regard to entering into online agreements. Also, it is helpful to inform staff members that they may bear responsibility where online agreements are entered into where the staff member has no authority from the museum to do so.
Why do we sometimes have to pay for journals that are very old and obviously in the public domain?
There are several possibilities. One, there may be a new copyright in a collection of journals and you are paying a fee for the collection as a whole rather than the individual public domain journals. Two, the journals may be edited and the new portions of the journals may have a new copyright in them. Third, you may be paying a fee to access the journals and not a copyright fee.
If an article has a Creative Commons (CC) licence, does that mean that the article may be freely reproduced?
No, you need to read the licence. There are different CC licences allowing different uses, from unlimited use of an item to very limited use of the item without authorization from the content owner.
Museum as Licensee
Does the licensor always own the content being licensed?
In some situations, you will license content directly from the owner of the content. However, in many situations, you will be licensing from a publisher, distributor or aggregator who has rights to license content owned by someone else. In either situation, you should feel comfortable that the licensor does actually have the rights to license the content to you. If you are doubtful of this, look for a different licensor. Also, it is always prudent to include a warranty clause in the licence that states something to the effect that the licensor does actually have the rights to license that content to you (however, do not rely on this - be comfortable that they are trustworthy!)
What does "Third Party Rights" mean?
It means that the content is owned by a third party, or someone other than the licensor who is licensing the content to you. In this situation, you want to ensure that the licensor has the rights from the content owner to license that content.
What if the content owner does not provide a written licence?
As a licensee, you should then ask about terms and conditions. Ask the content owner if there is a licence with terms and conditions of use set out on their Web site, or if they could email or otherwise send you a copy of that licence. If a licence is not available, ask the content owner if they could set out the terms and conditions of use of the content in a letter to you so that you have a record of the nature of the licence. Alternatively, you could draft a licence and offer it to the licensor.
Is it possible to sample some of the content before a licensee signs a licence?
This is something you would want to discuss with the content owner. As the popularity of digital content is continuing to grow, it is possible that you may not find certain content helpful in a digital form. In specific circumstances, you may want to "test" this out with them by gaining "test access" to that content before signing a licence. You may also wish to test the format of the content to ensure it is compatible with your intended uses.
Our legal department will not approve the content owner's licence, but the content owner will not change the offending sections. What should we do?
That is a judgment call for any licensee. Are you allowed to sign a licence with which your legal department does not agree? Is it in your best interests to do so? Carefully examine the reason why your legal department is opposed to the licence. Why is the content owner so inflexible about these offending sections? Will these sections be harmful to your museum, or to the use of the licensed content? What is the liability of your museum for including or omitting certain terms and conditions? Is it possible to obtain the same or similar content from another source? Failing that it would be worthwhile looking at your next best option. This may include looking for another product that can at least come close to meeting your information needs, and finding the same one as part of a package with an aggregator (which would likely have different licence terms.)
Can your warranty and indemnity protect you from a content holder who does not really hold the rights to the content being licensed?
It is always best to enter into any licences or negotiations with content owners whom you trust. If you are suspicious that the content owner does not own some or all of the rights being licensed, it is best to terminate your negotiations and to find and work with a more trustworthy content owner. Although a warranty and indemnity may protect you to some degree, they can be expensive to enforce and the content owner may not in fact have the funds to indemnify you against any losses or legal fees resulting from using content that belongs to another party.
If the museum is licensing content for use in an e-book, is it necessary to obtain rights outside of Canada?
Your museum will need to obtain the right to use the content in the e-book in any of the countries in which the e-book will be distributed. If the e-book is only distributed in Canada, then you only needs rights for use in Canada. However, if the e-book is distributed online and available to all, then you will need to obtain worldwide rights for that use.
Aids in Negotiating Licences
Is it necessary for our museum to have a licensing policy before entering into negotiations?
No. A licensing policy is not part of your negotiations and in fact should be kept confidential to your museum. The purpose of this policy is to act as an internal guide in setting out a consistent approach for negotiating all licences. It should be based on a consensus of information with various people and accumulated experiences to help guide you through the negotiation process, setting out goals and bottom lines for your museum.
Content Specific Issues
Are all databases protected by copyright?
No. In Canada, a database may be protected by copyright as a compilation if it is original (as defined below) and compiled with skill and judgement. A 2004 Supreme Court of Canada decision (CCH Canadian Ltd. v Law Society of Upper Canada, at http://scc.lexum.org/en/2004/2004scc13/2004scc13.html) states the following: “An “original” work under the Copyright Act is one that originates from an author and is not copied from another work. In addition, an original work must be the product of an author’s exercise of skill and judgment. The exercise of skill and judgment required to produce the work must not be so trivial that it could be characterized as a purely mechanical exercise.” Creativity is not mandatory for a work to be original, and the work does not need to be novel or unique.
A protected database may contain individual items that are copyright-protected or in the public domain. Where a database is protected, it is the database itself that is protected and not necessarily the individual items in the database.
May a museum license an image donated to its collection?
It depends on whether there was any transfer of rights with the donation of the image. If full copyright in the image has been transferred to the museum, then the museum has all rights with respect to the image, including licensing the image to others. If only partial rights have been transferred to the museum, then the museum only has these partial rights and you would have to check the donation agreement to see if sub-licensing is permitted. If no copyrights have been transferred, then the museum does not have the authority to license the image. Note that there are special provisions in the Canadian Copyright Act with regard to copying works deposited in an archive (see: section 30.21 at: http://laws.justice.gc.ca/eng/acts/C-42/page-27.html).
Is it necessary to obtain a licence to include an image on internal directional signage leading the public to a museum exhibit? How about in a brochure trying to attract membership to our museum?
Both situations would be considered a reproduction of the image and you will need a licence.
Are digital images scanned from non-digital images protected by copyright?
A "mere" scanning or digitization of an image would not result in a new copyright work. If there is a certain level of skill, effort and talent involved in the creation of a digital work, then it is possible that there is copyright in the new digital work. Even if there is no copyright in the digital version, one may license the "access" to the digital work.
May my museum reproduce a photograph that does not have any copyright information stamped on it?
No. The fact that a photograph or other work lacks copyright information does not mean that you may automatically use it. You must seek permission from the owner of that photograph. You may have to be creative to locate the copyright owner or use a different photograph in which you can clear copyright permission. Note that in Canada, you may apply for an unlocatable copyright owner licence from the Copyright Board where you cannot locate the copyright owner. See: http://www.cb-cda.gc.ca/.
May we post articles from a licensed database on our intranet? May we store a journal article from a licensed periodical on the LAN, hard drive or personal drive? May we store copies of a PDF document licensed from a vendor on multiple computers?
It depends. These questions are set out together because they can be answered in the same way as would be any question regarding the use of licensed content. Look at your licence. What does it say? Does the wording of the “rights licensed” or “authorized uses” sections deal with any of the above situations, either specifically or generally? If not, return to the content owner and ask for the specific permissions you need. Keep a list of such situations and when negotiating future licences, negotiate the wording in accordance with your needs and the intended uses of the content.
Before The Negotiations Begin
How does a museum determine what rights need to be in the licence?
Determine what uses of the content will be made then ensure that the licence reflects these uses. It is best to determine these rights independently of reviewing the licence offered to you, in order to ensure that you are meeting your needs. Consult various people in your museum, from your lawyer to your curators, your director of education and the staff of your marketing department. Even consult researchers or the general public, where possible.
Defining Words in Licences
How do we know what words mean in our existing licences?
Check your licences for a definitions section which defines terminology for purposes of that particular licence. Sometimes there is no specific section for definitions but definitions are defined throughout the licence when the word first appears.
Where can we find definitions of words that we need to include in the definition section of our licence?
There are some technology dictionaries that might be helpful but because you want to define the words for the specific purposes of your licence, it is best to ask museum staff including any technology-related persons how to define the terms for your purposes. Sometimes the definitions will have to be negotiated with the other party as different meanings given to different words can affect the terms and conditions of the licence.
Is there a definition of "commercial use?"
There is no single definition of the term commercial use. It is up to the content owner and the licensee to define commercial use in a manner that meets the needs of the licence. This may be negotiable.
Does "personal use" in a licence include an individual researcher who is paid $25 an hour for his research? What about a student in a university?
There is no set definition of "personal use". For each licence, personal use should be defined to meet the needs of that particular licence and arrangement.
Fair Use and ILL
Is fair use/dealing applicable when content is subject to a licence agreement?
If the agreement does not mention fair use/dealing, then fair use/dealing is still applicable. However, the licence may limit the scope of fair use/dealing. This is something you may wish to discuss with the other party.
May a licence prohibit inter-library loans (ILL)?
Yes. A licence may prohibit ILL. However, this may be a point of negotiation.
Can a researcher in Australia legally access content from our museum in Saskatchewan?
You will need to address this in your licence and ensure that the Authorized Users and Authorized Site clauses allow for this.
Are "walk-in users" able to have access to content licensed in an educational institution?
Only if they are defined as authorized users in the licence. If an educational institution has a number of "walk-in users" who will want to access the digital content, then the institution should negotiate for their specific inclusion in the licence.
How do you ensure that a licensee includes the licensor's copyright notice when a licensee accesses the licensed content?
This may be included in the licence agreement. It is not uncommon to see a clause that states something to the effect that a copyright notice in the name of the licensor must be included whenever the content is used, i.e., displayed, published, reproduced, etc.
May content owners require record-keeping of the use of licensed content?
Content owners may request record-keeping as to who is accessing the licensed content, when, for how long, or for what amount or portion of the content being licensed. However, a licensee should be very cautious in agreeing to record-keeping in any detail. This is in part due to the invasion of privacy, and also in part because of the expense and time involved in such record-keeping. If the content owner is asking for unreasonable record-keeping, try to negotiate less onerous record-keeping.
Frequently Negotiated Areas
How can our museum avoid entering into the same licence year after year?
You can negotiate a licence for a longer duration of time than one year. Alternatively, you may negotiate a clause for automatic renewal upon certain circumstances so that if the licence is working well, you do not need to re-negotiate it each year.
What if the content owner wants a higher fee for the content than the licensee can afford?
If the licensee cannot negotiate a lower fee for the electronic content, try the strategy of narrowing the terms and conditions of use for that lower fee you are offering. For instance, try to restrict the number of users that will have access to the content. Or, reduce the number of years to be covered in the licence.
If a licence does not mention "electronic archiving", would this be allowed?
It depends on the wording of the "Grant of rights" clause. You must carefully review the grant of rights to see whether electronic archiving is either specifically or implicitly included. If implicitly included, you may want to specifically include mention of this use of the content.
If a licensee wishes to reproduce/re-publish in print form content in which only a digital licence has been obtained, is that permissible under the digital licence?
Generally, a digital licence will only provide permission for digital uses of the specified content. Unless the licence also permits print uses, you may need to include a clause relating to print uses.
We are negotiating a licence with a U.S. client and the client will not sign an agreement that "is governed in accordance with the laws of the province of Ontario, Canada." How can we proceed?
Some U.S. enterprises, including U.S. state bodies, cannot sign agreements subject to the laws of a different jurisdiction than their own. However, they may not address the issue of jurisdiction in an agreement. So leaving jurisdiction out may not be the best solution, but it is a compromise solution.
Issues After Signing the Licence
We have content we licensed directly from copyright holders which we are now sub-licensing to an online database publisher. Do we need to obtain any additional permissions to sub-license the content?
Unless your initial licence with the content holders included the right to sub-license that content to a third party such as an online database publisher, you will require additional rights to do this.
May we post licensed content on our museum’s blog or YouTube channel?
This is only permissible if your licence explicitly or implicitly (through a broad authorized use clause) allows these uses.
What if the content is not available for the duration of the licence?
This is something you should consider before signing the licence. The licensee should ask the content owner for some guarantee as to the length of downtime for maintenance, etc. and for either a reduction in the licence fee or an extension in the licence to compensate for downtime beyond this amount. The licensee should consider a clause in your licence to get out of the contract obligations or at least obtain a reduction of licence fees should the content not be available during the duration of the licence.
What if a licensee needs a right that is not included in the licence, for instance, the right to email a copy of a article from a licensed database?
If the right is not specifically included in the licence, or cannot be interpreted as an authorized use in other rights granted or permitted uses, then the article may not be emailed. If necessary, the content owner may agree to an amendment of the agreement, or to include this right when the licence is renewed.
How do you know if their licence will automatically renew?
This is something that would have to be addressed in the licence. If the licence does not deal with automatic renewal, then it will not automatically renew at the expiration of the licence. If you would like automatic renewal, negotiate this in your licence.
Does the content owner or the licensee have the onus to renew the licence?
Either party may approach the other one about renewing the licence. It is a good idea for a licensee to keep a database of licences and their renewal dates. This way, the licensee can ensure on-going access to licensed content, and that agreements are renewed prior to their expiration date.
May a licensee archive licensed content and provide access to it after the licence has expired?
That would depend on what your licence states. If this is not addressed in your licence, then you should not be making archive copies or providing access to these copies after the expiration of the licence. Having access to previously licensed content is an issue that is controversial and is difficult to address in a licence. It is the subject of much discussion in the licensing world, especially amongst libraries and publishers and these discussions are well worth following.
Tracking Your Questions
As you proceed through various negotiations, you will find that the same questions unique to your situation arise again and again. It may be helpful to keep a list of these questions and answers and include them in your Licensing Agreement Policy or intranet. Update the list on a regular basis. Also, you may consider providing a forum on your intranet where your colleagues can post their own questions. Perhaps you could meet with your lawyer from time to time to review these questions and provide practical answers to them on your intranet.
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