3.2 Policy Elements Relevant To Museums

This page has been archived on the Web

Information identified as archived is provided for reference, research or recordkeeping purposes. It is not subject to the Government of Canada Web Standards and has not been altered or updated since it was archived. Please contact us to request a format other than those available.

There is a seemingly endless array of issues that museums may choose to address in their IP policies depending upon local values and needs, but all of the issues can be categorized into two broad areas: IP ownership and IP use.

3.2.1 Ownership

Ownership issues in museums are more complex than in other institutions because museums create works as well as serve as the owners/custodians of works created by others. To avoid confusion and prevent an IP policy from being one-sided, museums may want to treat these distinctions separately in their policy.

3.2.1.1 Ownership of Employee-created Works

Custom and tradition are important considerations when formulating policy about IP ownership. In universities, for example, faculty usually own the work created within the scope of their employment (their publications, their coursework, their research, etc.). This custom is contrary to the U.S. work for hire doctrine and the legislative provisions in the Canadian Copyright Act that govern other employee-created works. Indeed, in the U.S., the university tradition is often referred to as the "faculty exemption" to the work for hire doctrine.

The U.S. work for hire doctrineFootnote 67 and the employment provisions in the Canadian Copyright Act Footnote 68 are important exceptions to the general rule that a creator of a work is its original copyright owner. Under these two particular legal provisions, copyright belongs to the employer or the person for whom the work was created, unless the parties agree otherwise.

The tradition of ownership in museums follows this standard model: the museum, as employer, has legal rights of ownership in works created by its employees within the scope of their employment. In truth, museums do not always enforce their ownership rights in a hard and fast fashion. Most museums, for example, do not claim ownership of professional papers written and published by their staff, or presentations made at professional venues. Some museums are also liberal in their consideration of patent ownership, agreeing to share ownership and revenues with the employee who created the patentable work.

To date, few have questioned a museum's claim to ownership in employee-created works; fewer still have addressed it in policy. However, the current sociopolitical climate involving technology and IP is creating a new set of circumstances that challenge traditional assumptions about ownership. It is becoming increasingly important to address employee ownership issues in a museum's IP policy, to ensure all parties are clear about who owns rights to works.

Some issues to consider when addressing ownership of museum assets are:

  • Exigencies of law
    The law of individual nations may directly affect a museum's ownership claims. For example, Canadian law acknowledges the moral rights of creators, which limits the ownership rights Canadian museums can claim in works created by employees to economic rights only. (See the Royal Ontario Museum example cited below.)
  • Traditions and patterns of ownership in the museum field
    The work for hire or employment provision tradition prevails in U.S. and Canadian museums: however, museums that are part of larger entities (a university, a federal, state, or provincial government) may find they need to modify this tradition to conform to the ownership tradition of their parent institution.
  • Changing societal perceptions of IP ownership
    Digital works are increasingly joint, collaborative endeavors that bring new, and often unclear, expectations about authorship.
  • The museum's ability (or inability) to exploit some of its works
    Circumstances may arise when the museum chooses not to use a particular work created by an employee or contractor on its behalf. Because it does not intend to use the work, and does not wish to stifle the potential of the work in another context, a museum may agree to relinquish its rights.Footnote 69
  • The need for ownership versus the need for access
    Ownership may not be an issue if the museum or the creator feels they can have adequate access to a work via a license or other agreement. A museum, for example, may be willing to grant ownership rights to a curator for her work as long as the museum can have a license to use the work for its exhibition and educational purposes.
  • The museum's conservative or progressive stance about ownership
    A museum may wish to claim all the ownership rights due it under the U.S. work for hire doctrine or Canadian employment provision, or it may be willing to share or even turn over those rights in exchange for other benefits.

Examples:

From The Henry Ford, Policy and Procedures Memorandum Nº. 23A Intellectual Property:Footnote 70

  1. Ownership of Employee Workproduct
    The Museum owns the workproduct of its employees where such workproduct is created within the scope of their employment, including where such workproduct is created as a part of a special assignment or project..... The Museum also owns the intellectual property rights relating to such workproduct.....
  2. Tangible works and inventions that are not created either within the scope of an employee's employment, or as part of a special assignment or project, may be owned by the employee....
  3. Ownership of Independent Contractor Workproduct
    The Museum must have written agreements with independent contractors ("contractors") who create workproduct for the Museum. No compensation shall be paid to contractors, and no business arrangements shall be agreed upon between Museum staff and contractors, until a department manager has determined whether the intellectual property rights in the contractor workproduct will be owned solely by the contractor, solely by the Museum, jointly by both parties, a combination of ownership and license, or some other business arrangement....
  4. Ownership of Volunteer Workproduct
    Volunteers may occasionally create workproduct as a part of their volunteer activities and assignments. The Museum manager for the department utilizing a volunteer shall determine the issue of intellectual property ownership in such workproduct prior to the assignment of a volunteer to such projects. If the Museum intends to own the intellectual property rights in such workproduct, a written agreement shall be signed by the volunteer. All written agreements shall be in a form approved by Museum management.

From the Virginia Museum of Natural History Copyright and Patent Policy:Footnote 71

Proprietary Interests of the Museum

The Museum shall have the right, title and interest in all intellectual property: 1) when the intellectual property results from an assigned duty of the staff, interns, research associates and other employees of the museum, 2) when the Museum provides funds for the production of the intellectual property, or 3) when substantial use of Museum facilities and resources is made in the production of the intellectual property, including the case when funds and facilities are provided by outside sponsors. The Museum will not construe the nominal use of stationery, postage, photocopies and telephones; travel to professional meetings; nor the provision of office, library, laboratory or computation facilities governed by Museum policies, as constituting significant use of space or facilities.

In cases where the Museum agrees to provide resources for projects that are not a specific part of a Museum assignment, but for which the Museum does not provide all funds and resources, the creator and the Director of the Museum will negotiate and sign a written agreement specifying the resources available to the creator and the specific division between creator and museum of rights and royalties and proprietary interest in the work.....

From the Royal Ontario Museum Copyright Policy:Footnote 72:

Ownership of Economic Rights

The ROM owns the economic rights in works produced by employees as part of their employment duties, in the absence of an agreement to the contrary.

Also, as the ROM owns its collections and other resources, the ROM will have interests to economic rights in works derived, in whole or in part, from the use of these resources.

The examples cited above address ownership from a number of perspectives: the IP policy of The Henry Ford (a complex including the Henry Ford Museum, the Henry Ford Academy, Greenfield Village and other facilities) considers ownership of staff and other worker's products, while the Virginia Museum of Natural History and the Royal Ontario Museum's policies consider staff work as well as works resulting from the use of the museums' resources. A notable feature of the ROM policy is its specific claim to the economic rights in its employee works -- this is a consequence of Canadian law, which recognizes moral rights in its IP statutes. Canadian museum staff retains their moral rights in their work, even when creating works under the scope of their employment (moral rights can be waived, but not transferred). Thus ROM cannot legally claim ownership of the moral rights in its staff-created works. However, in order to prevent employees' moral rights from hindering ROM's mission and activities, the Museum requires its employees to sign a moral rights waiver for works they create within the scope of their employment. The policy specifically states:

The ROM will:

  • acknowledge the contributions of individuals as creators where appropriate,
  • consult with creators regarding changes or alteration to their works, where appropriate

However, in order to facilitate and further ROM work, employees will waive moral rights in works for which the ROM owns the economic rights.Footnote 73

3.2.1.1.1 Patent Ownership

Ownership of patent rights is often more complex than ownership for other IP regimes and thus merits special attention. A patent is a grant of an exclusive right to an invention or discovery of a process, machine, manufacture, or composition of matter for a limited time in a limited territory. It gives the patent owner the right to exclude others from making, selling, using, or offering to sell the patented item. Although not generally considered when discussing museum IP, museums can and do create patentable works, such as exhibit designs and set-ups, cast-making techniques, models, laboratory methods and other inventions. The legal regime of patent is most relevant to science museums, science and technology centers, and natural history museums, whose research and activities often lead to creations of this sort.

Patented works can generate huge revenue streams, which is why universities, drug development companies, the information technology industry and other sectors that produce large numbers of patentable products administer them judiciously. Ownership and distribution of revenues are key components in patent policies because of the high financial stakes.

In universities, it is common for ownership of a patent to be divided among the inventor, the university, and any sponsored research participants. Licensing and royalty income is split at variously negotiated rates among the parties: some portion of the revenue first may go to the university to compensate it for the resources the inventor used; some portion will go to the inventor, her department, and the school her department is located in at the university; some portion may be given to associated sponsored research organizations; and some portion may go into an account to support the inventor's future research at the university. Frequently the distribution of royalty ratios is outlined directly in a university's patent policy.

The complex formulas used by universities for patent ownership and revenue distribution are not likely to be relevant for the vast majority of museums. The revenue potential of patented works is far less for museums, because the volume is lower, the potential markets more limited, and the costs of patent administration are high. Indeed these factors were among the many reasons why The Tech Museum of Innovation decided not to patent its exhibits and related software and multimedia programs.Footnote 74

In museums, IP policies that address patented works are still very rare, and no tradition of ownership or revenue distribution exists. If ownership of patented works is a relevant issue for your museum, the following questions can help identify areas you may wish to address in a policy:

  • What patentable works does the museum create?
  • Who at the museum determines the patentability of an invention? Who determines its potential commercial use?
  • Who will be responsible for administering patented works at the museum?
  • If the museum decides not to proceed with a patent for a particular work, will it turn over rights to do so to the employee-inventor? Will it release rights to use the work to the public?
  • If the museum decides to patent the work, who will own the patent? Who will share in the revenues it generates? Under what circumstances?

Example:

From the Virginia Museum of Natural History Copyright and Patent Policy:Footnote 75

V. Museum Ownership of Copyright or Patent
The Museum shall have the copyright or patent to all the intellectual materials in which the Museum possesses a proprietary interest in whole or part. The Museum may assign its right to the copyright or patent to the VMNH Foundation .... to manage in trust for the Museum on such terms as the Museum and Foundation find agreeable. .....

If the Museum fails to make progress toward obtaining or marketing a copyright or patent of intellectual property...., the creator may make a written request to the Committee (on Copyright and Patents) that the ownership of the property be abandoned to the employee. Such action shall, however, be at the sole discretion of the Museum.

VII.B. Action by the Committee
The Committee shall consider all reports of intellectual property referred to it by the Director and recommend whether the Museum should apply for copyright or patent. Nothing in this policy shall be construed as requiring the Museum to copyright or patent any property.....

VIII. Royalties
A. Royalties or other income from a property in which the Museum has an interest shall first be applied to reimburse the Museum for its costs of creation.
B. Where, by agreement, the Museum shares royalties or income.... the share of the Museum shall be in direct proportion to its support in the production of the property, including the cost of the patent or copyright if paid by the Museum or Foundation.

3.2.1.1.2 Trade Secret Ownership

Trade secret is another legal regime that has complex ownership issues and is probably the least considered IP regime in museums. It is most often used in industry for protecting information (like the formula for Coca Cola) critical to a business's financial well being. However, museums may also own trade secrets in information such as their donor lists, marketing plans, in-house developed technologies, new exhibit concepts, and business ventures. Museums who use confidentiality or nondisclosure agreements, or who have concerns about releasing information they feel would jeopardize the economics of their operations, may have protectable trade secrets.

Trade secret is commonly defined as any secret, private, or proprietary information that is of sufficient value to offer an institution potential economic advantages over other institutions. Information is likely to be considered a trade secret if it meets the following criteria:

  • It is not known outside the institution
  • It is known to only a few employees within the institution
  • It is kept secret ("guarded") within the institution
  • It is valuable to the institution and would (if known) also be valuable to its "competitors"
  • Significant time, effort, and money has been expended by the institution to develop the
  • The information cannot be easily acquired or duplicated

Unlike copyright, trademark, or patent, there is no "office" where one files a trade secret application; rather, trade secrets must be administered by the trade secret owner. In the U.S., trade secrets are protected by state (not federal) laws. The legal protection mechanisms most commonly employed to guard trade secrets are licenses and confidentiality agreements. Because trade secrets are so complex and arguably one of the most amorphous of the IP legal regimes, any museum interested in pursuing rights under this regime must consult with legal counsel to effectively do so. They should also acknowledge their ownership of trade secrets in their IP policy, and how and why the museum intends to safeguard them. (See Section 3.2.2.6 Partnerships and Confidentiality about IP for more information about safeguarding the confidentiality aspects of trade secrets.)

3.2.1.2 Ownership of Materials Created by Others ("Third Party" IP)

Many policies tend to be one-sided, asserting ownership rights claimed by the institution but ignoring the fact that there are important ownership rights claimed by others that a museum must respect. If a museum's IP policy is to truly guide and govern its staff's use of IP, then its IP policy must address this other side of the ownership equation, particularly since a large percentage of IP in museums falls into the category of third party materials.

Some of the issues to consider when crafting policy on IP ownership of third party materials include:

  • Acknowledgment of the existence and importance of third party materials to the museum's mission
  • Respect for the rights of creators (both moral and economic)
  • Respect for the laws that protect creators' rights
  • The museum's strategy for copyright/trademark/patent compliance for third party IP

Example:

From the San Francisco Museum of Modern Art, Intellectual Property Statement:Footnote 76

SFMOMA is committed to protecting the copyrights and other intellectual property rights of all owners of intellectual property rights. With regard to material created by others, SFMOMA generally does not own intellectual property rights. To ensure its credibility as a contemporary arts organization, the Museum recognizes the primary importance of the rights of creative artists and values its relationships with those artists. The intellectual property rights of creative artists therefore supersede other concerns including ownership rights. SFMOMA makes every reasonable effort to secure any necessary permission for the use of copyrighted material.

3.2.2 Use

The majority of IP issues that arise in museums involve usage, which is why usage has traditionally been more important to museums than ownership. Until recently, museum policies focused on third party uses of a museum's IP assets, with little regard for a museum's use of third party IP assets. However, the prominence and dynamic nature of IP today is forcing a change in this narrow perspective. Creators are more aware of IP rights, the range of potential uses have expanded with the digital era, and institutions have become more responsive to their roles and responsibilities in managing IP and in using it to promote the public good as well as generate economic returns.

In the past, the main focus of museum IP policy was to educate third parties about the use of museum IP assets. Today usage statements in IP policies are critical for the following reasons:

  • They establish norms for staff behavior regarding the use of IP
  • They encourage staff to creatively use IP in their work, and to fully exploit those exemptions (such as fair use and fair dealing) in IP law that help them do so
  • They help the museum protect itself against illegal or unacceptable uses by staff
  • They educate user communities about acceptable and unacceptable uses
  • They help standardize the process for seeking permission to use IP

A good starting point for addressing the myriad usage considerations appropriate for an IP policy are the legal regimes that govern IP law: copyright, trademark, patent, and trade secret. Each of these areas of the law identifies a set of rights granted to rightsholders for use of their creative works, and some grant exceptions to those rights. Examining these rights and exceptions, and identifying which ones are critical for your museum (and under which circumstances) can help prioritize the usage issues you may want to address in your institution's policy.

3.2.2.1 Usage Exceptions Allowed in IP Law

Exceptions or limitations to an IP owner's exclusive rights of use allow certain groups to use a protected work, without permission of the IP owner, in specific circumstances and under certain conditions. The basis for all legal exceptions in IP law is a belief that the creative process is predicated on a certain amount of borrowing from the creative output of others (a sentiment famously expressed by Sir Isaac Newton in his statement, "If I have seen further, it is by standing on the shoulders of giants".) Thus exceptions in IP law are attempts to allow some "borrowing-to-fuel-creativity" to continue under limited circumstances that do not unduly jeopardize an IP owner's rights.

Many of the exceptions that exist in IP law are critical for museums: without them, museums could not pursue their missions or undertake their activities. Thus certain exceptions in IP law are often given a prominent place in a museum's IP policy, alerting policy readers to the exceptions and the museum's intent to invoke them, when applicable, for third party materials. Some of the most frequent exceptions addressed in the IP policies of North American museums are:

Fair dealing
A limitation of rights in Canadian copyright law that allows for uses of copyrighted material for purposes of research, private study, criticism, news reporting or reviews. Footnote 77
Fair use
A limitation on the exclusive rights of U.S. copyright owners for purposes of criticism, comment, news reporting, teaching, scholarship, or research. Footnote 78
Special exemptions for certain classes of cultural institutions
Some copyright laws grant cultural organizations limited rights to use works for the maintenance or management of permanent collections, or for preservation purposes. The rights granted, and the types of institutions they are granted to, vary by country. Canada, for example, has special exemptions for libraries, archives, and museums Footnote 79; the U.S. has a slightly different set of exemptions for libraries and archives only. Footnote 80
Distance education
Some exemptions allow for uses of copyright materials in distance education environments. For example, the U.S. recently adopted the TEACH Act (Technology, Education and Copyright Harmonization Act) that allows for such use under a strict set of conditions. Footnote 81

If a museum includes statements in its policy about its intent to invoke exemptions in IP law for third party materials, it should also acknowledge that its user community has the right to invoke some of these same exceptions (such as fair use and fair dealing) when using IP owned by the museum. This consideration testifies to the museum's fairness and its responsibility in promoting IP use to foster creativity in other sectors.

Example:

From the Indianapolis Museum of Art Intellectual Property Policy:Footnote 82

Fair use, in addition to reflecting in copyright law First Amendment-based principles of free speech, provides the basis for many of our most important day-to-day activities in museum scholarship and education. The Indianapolis Museum of Art recognizes that the principle of fair use was created to allow us flexibility in using the work of others in our mission as an educational, non-profit entity. Fair use has also instilled in this institution the responsibility to properly credit the work of others and to not infringe on their legal rights. The Indianapolis Museum of Art values our privilege to grant various reproduction permissions to others (and to gain income from those permissions) as well as respects the rights of others to do the same.

3.2.2.2 Copyright Use

The copyright laws of various nations identify the specific classes of rights that creators are granted. Under U.S. copyright law creators are given exclusive rights to:

  • Reproduce the work
  • Produce derivative works based upon the work
  • Distribute the work
  • Publicly perform the work
  • Publicly display the work

There are also rights bestowed to creators that fall under the category of moral rights. Moral rights provisions vary by country, but usually encompass the following:

  • A "right of attribution" that allows a creator to claim authorship of her work, to prevent the use of her name for works she did not create, and to prevent the use of her name on works that have been distorted, mutilated, or otherwise changed in a way that is detrimental to her reputation.
  • A "right of integrity" that allows a creator to prevent any intentional distortion, mutilation, or other modification of her work that is harmful to her reputation, and the right to prevent the destruction of her work through intentional or overtly negligent acts.

Using statutory rights (as defined in your nation's particular copyright statute) as a starting point, a museum should consider the importance of each right from its dual role as rightsholder and user.

3.2.2.2.1 The Museum as Rightsholder

From its perspective as a rightsholder, the reproduction and distribution rights are key to the museum's operations, from public programs through research, exhibition, and digital initiatives. Museums will want to address these rights in their policy by describing how and when they might be willing to grant them to others. The right to produce derivatives (in Canada, "adaptations") also might be important to address in a museum's IP policy, particularly if the museum has a large retail aspect (such as a museum store or merchandise catalogue operation) that it relies on for revenues. For most museums, the public performance right is not generally relevant unless the museum creates music, dance, or other performance art works. The display right is often tied into the reproduction and distribution rights (users frequently request permission to reproduce and distribute a work so it can be displayed in some context...), but it also stands on its own with the display of original works, such as when a museum loans a work for the purposes of displaying it in another institution.

In deciding when to grant usage rights to others, museums must remember that not all uses are equal. Requests for scholarly, research, or nonprofit use are more in line with a museum's mission than are requests for advertising, merchandising, or other commercial uses. A museum may choose to grant all such uses, but under conditions specific to each.

The following questions can help guide you in making usage decisions about museum-owned IP assets:

  • Why does the museum wish to control copyright of its IP assets? To what end (e.g., revenue generation, preservation, quality assurance, to control the museum's reputation, etc.)? Clarifying the reasons for exerting one's rights under copyright law goes a long way toward letting users understand why museums, as largely public and often publicly funded institutions, need to control their assets.
  • What uses does the museum permit (e.g., reproduction, distribution, display, etc.)?
    • Under what circumstances (e.g., research, advertising, publication, etc.)?
    • Under what terms (e.g., license, fair use, etc.)?
  • What uses does the museum restrict or forbid (e.g., reproductions of sacred materials that fall under cultural patrimony laws; lewd, sexually explicit, or demeaning associations; uses that violate privacy laws, etc.)?
  • How is the museum's rights administration handled (e.g., through a central rights and reproductions department, within individual departments, outsourced to an external rights administration agency)? How might this administrative structure affect your decisions about usage?
  • Who at the museum has the authority to allow usage of museum-owned IP assets?

The answers to these questions, combined with an understanding of a museum's needs regarding the use of its assets (as determined from the resource discovery process outlined in Section 2.4.2.1), will help a museum create a policy statement that best expresses its philosophy and perspective on the use of its IP assets.

Examples:

From the Indianapolis Museum of Art, Intellectual Property Policy:Footnote 83

The Museum maintains strict control of the right to reproduce works in its collection:

  • To protect and preserve the Museum's copyright of its photography of the permanent collection
  • To ensure quality reproductions faithful to the original art works
  • To avoid undesirable associations with particular commercial products, organizations, etc.
  • To use the Museum's reproduction rights as a valuable revenue resource.

From the Maine State Museum, Chapter 502 Reproduction of Museum Collections Policy:Footnote 84

Museum collection items are deemed to be the property of the Museum, held in trust for the people of Maine. They are not, therefore, to be managed as a source of private, profit-making activities by individuals and firms.

The Museum reserves all rights to reproductions of the collection items and may license vendors, contract for reproduction, collect royalties from the sale of reproduction or make other similar arrangements that may be beneficial to the Museum....

The Museum does not endorse the reproduction of collections in its care for private use. Such use would extend a privilege to an individual rather than to the population of the State as a whole.

3.2.2.2.2 The Museum as a User of Third Party IP

From the perspective as a user of third party IP, museums will find the reproduction and distribution rights still remain paramount, as museums often seek permission to reproduce (and less often, to distribute) third party works as part of their activities. The public performance right also takes on added importance, since museums are frequent users of music or other performing arts in their exhibits, galleries, educational programs and retail shops. Canada's "exhibition right" (a 1998 amendment to Canadian copyright law that makes exhibition of certain works an infringement of the creator's copyright) means Canadian museums must carefully consider if and how they can use a third party work in an exhibit, a website, or other situation where the work is "displayed." The moral rights of creators also take on importance when the museum assumes its user role: the creator's rights of integrity and attribution require greater vigilance on the part of museums who use modern or contemporary third party works.

Common scenarios in which museums use third party materials include: software products for administrative, design, multimedia, and other tasks; reproductions of images in exhibits, publicity materials, public programs, print and web publications; film, video, and music in exhibitions, public programs, or other museum spaces (cafeteria, retail store, etc.); reproductions in a museum gift shop, original modern/contemporary art works used in exhibitions, etc.

The following questions can help a museum analyze its role as a user of third party IP, and how that role should be expressed in the museum's IP policy:

  • What are all the ways the museum uses third party materials? How does it acquire them (donation, purchase, loan, etc.)?
  • How does the museum determine whether use of third party materials is fair use or requires permission?
  • How does the museum enforce copyright compliance for the use of third party materials?
  • By what processes does the museum seek permission for use of third party IP (e.g., individual or blanket license)?
  • How does the museum acknowledge moral rights in the third party materials it uses?
  • What does the museum want its communities to know about its use and treatment of third party materials?

By acknowledging its use of third party materials, their importance, and the actions the museum will take to ensure responsible use, a museum conveys its respect for copyright law and the creativity it is intended to promote. It also conveys the importance the museum attaches to the various communities who help it accomplish its mission and activities.

Examples:

From The Henry Ford Policies and Procedures Memorandum Nº. 23A Intellectual Property:Footnote 85

5. Third Party Materials
The Museum routinely adds to its collections through the acquisitions of materials from donors, from the purchase of materials, and through loans (collectively "Third Party Materials"). The Museum may have a variety of rights to use Third Party Materials, or it may have no rights other than to conserve and/or display the materials in its collections. Thus, Museum staff may not sell, transfer, license, or authorize others to use Third Party Materials (or the intellectual property rights in such materials) without prior clearance from the appropriate department manager....

7. Noninfringement of Intellectual Property Rights of Third Parties
Employees shall ensure that their contributions to Museum workproduct are original to them, or are public domain materials, or are licensed from a third party for use by the Museum. Employees shall not incorporate into Museum workproduct the unlicensed authorship, inventions, or trade secrets of third parties. If an employee has any question as to whether Museum workproduct may incorporate the unlicensed intellectual property of a third party, he or she shall bring the question to the attention of the department manager.

From the Explanatory Statement On The Andrew W. Mellon Foundation's Intellectual Property Policy For Digital Products Developed With Foundation Funds:Footnote 86

While the Foundation seeks usage rights to ensure broad scholarly use wherever appropriate, it takes substantial measures to safeguard the rights of the intellectual property owners. The Foundation's agreements generally provide that if and when the Foundation chooses to exercise a license to use and distribute products for scholarly and educational purposes, the Foundation, or a Foundation designated entity charged with distributing the products, will limit access to users who agree to use the products only for those purposes that are noncommercial and educational and/or scholarly in nature. The Foundation's agreements also generally provide for notice of the content owner's copyright, and require, through user agreements, that appropriate permissions be sought directly from the content owner for any reproduction of the digital products other than for noncommercial scholarly and educational reproductions, or other uses authorized by law. In some instances ... the Foundation will also establish and fund the electronic monitoring of digital products to detect any improper uses of those materials.

3.2.2.3 Trademark Use

Unlike copyright, which protects a creator's rights in a tangible work, trademark protects the association of a source (such as a museum) with the goods and services it offers. It also protects the public from being confused or intentionally deceived about a source of goods or services. The protections offered by trademark come into play in two areas that are relevant for museum IP policies: in the use of the museum's name or other marks, and in the museum's use of trademarks owned by others (i.e., third party marks).

3.2.2.3.1 Use of the Museum's Name and Associated Marks

One of the most important IP assets of any museum is its name and the phrases, exhibit titles, designs, logos, domain names, and other text or design symbols associated with that name (collectively referred to as "marks"). An institution's name is linked to its reputation and goodwill; the products and services it produces are viewed in a special manner because of the reputation associated with that name -- what is often referred to in the business world as "brand".

Whether museums wish to be considered a "brand" or not, they certainly have an interest in determining how their name is used and seen by others, as well as ensuring that it is not used in a detrimental manner. Improper use of a museum's name can adversely affect its prestige and tarnish its image as an institution dedicated to serving the public good. It also can lead to confusion among the communities the museum serves: indeed, a phenomenon such as cybersquatting relies upon such confusion by deliberately registering domain names that appear to be associated with established organizations. For these reasons, museum IP policies often address the rights and protections an institution holds over its name. These protections largely fall under the regime of trademark law, although the creative, design-like elements of the symbols associated with a museum's name (such as its logo or its distinctive building design) are also protected under copyright.

When considering how to draft policy about the use of a museum's name and other marks, the following questions may help guide the process:

  • Why does the museum wish to control the usage of its name and marks? To what end (e.g., revenue generation, quality control over products and services, to control the museum's reputation, etc)?
  • What is the value and importance of the museum's marks?
  • What are the marks (i.e., the names and associated symbols) the museum wishes to protect? Make a list of them to see the number and variety of marks the museum has an interest in.
  • How does the museum intend to preserve and enhance its marks (e.g., trademark registration; licenses; trademark "watching services", etc.)?
  • Who in the museum oversees the marks? Registers them? Licenses them? Monitors their use?
  • What are permissible uses of the museum's marks in commercial and noncommercial contexts? Restricted uses? Forbidden uses (e.g., poor quality products, associations with disreputable organizations, etc.)?
  • Under what circumstances is an employee permitted or forbidden from using the museum's name or other marks?

Institutions that wish to use their marks for economic gain (e.g., licensing use for a financial return) would do well to have a rather elaborate policy about protection of this asset. The trademark policy of the Royal Ontario MuseumFootnote 87, for example, goes into great detail on why the Museum values its marks, how it uses and administers them, the permissible and restricted uses of the marks, and a list of all the marks the Museum has registered or is in the process of registering.

University trademark policies go into similar detail and often include provisions for employee use of the university's name and marks (usually permitting uses in the context of offering the employee's affiliation, but denying it for uses that may imply endorsement). Because universities derive substantial revenue from licensing their name (e.g., for clothing and other merchandise), these provisions frequently are articulated in separate "use of name" policies that outline permissible and restricted uses of the university name by the public, staff, and university departments.Footnote 88

Museums with less of an interest in economically exploiting their name/marks, and more of an interest in ensuring that they are not used in a detrimental manner, need not go into great detail in this area. For these institutions, it may be sufficient to note the important association between the museum's reputation and its name/marks, and the institution's intent to safeguard its name/marks because of this association. The Maine State Museum incorporates a straightforward statement about its name/marks in the context of reproduction of the Museum's IP assets:

The use of the Museum's name, logo, or any other distinguishing symbol, or any device implying the involvement or approval of the Museum in a commercial endeavor, or any representation suggesting Museum involvement, is prohibited, except as may be authorized specifically by the Maine State Museum Commission.Footnote 89

3.2.2.3.2 Use of Third Party Trademarks

Museums are frequent users of third party marks in their retail stores, cafeterias, solicitation and receipt of sponsorships, traveling exhibits, and websites. The use of third party marks is often so routine that it can be easy for museums to infringe on a mark without intending to do so. For example, museum retail stores may work with suppliers who do not own or have not licensed the marks in the merchandise they sell. A Web designer may "grab" and use the logo of another organization on the museum's website without realizing that she may be infringing. A children's museum may innocently host a local "Cat in the Hat" parade without knowing that use of this trademarked phrase in this context might require permission from the estate of Theodore Geisel (a.k.a., "Dr. Seuss").

While permissions do not need to be obtained for purposes such as fair use, nominative (i.e., descriptive) use, or (in the U.S.) First Amendment considerations, it is wise to understand how and when an institution may use the marks of others and when permission should be sought for that use. As with the use of copyrighted works, museums must respect and use other organizations' trademarks properly, and with authorization when necessary. If a museum is a heavy user of third party trademarks, it would be wise to acknowledge this, and the museum's philosophy about using such marks, in its IP statement.

Issues to consider in policy discussions about the use of third party marks:

  • In what instances does the museum use third party marks?
  • Which of these instances are fair use or other noninfringing uses, and which require permission?
  • Who in the museum is responsible for overseeing the use of third party marks?

3.2.2.4 Patent Use

As with any third party IP, museums cannot violate law regarding third party patents. Under patent law, a patent infringement is committed when someone makes, uses, offers for sale or sells a patented work without permission of the patent owner. Of late, it is becoming increasingly difficult to ensure that such infringements do not occur, because patents are now often given to nontangible items like business practices (such as Amazon.com's "one-click" sales concept) and methodologies (such as a recently patented method for providing reservations for restroom use). Unlike physical inventions, these so-called "soft patents" can be difficult to identify, and you often may not know about them until you receive notice of such in a cease and desist letter. The best museums can do is to remain aware and vigilant about their use of inventions and business practices that may be patentable and, when in doubt, check to see if a patent exists (or has been filed) for the work or process in question.Footnote 90 A museum policy that addresses patent should mention respect for third party patented works so that employees are aware that they also are responsible for their use of this category of IP.

3.2.2.5 Trade Secret Use

Museum employees may, in the course of their employment, be given access to a trade secret of another company (for example, when reviewing a yet-to-be-released software product). In such instances, the employee will likely be asked to sign a nondisclosure agreement. Museums must ensure that their employees understand the importance and ramifications of these agreements, as the museum could be liable if an employee violates the agreement. For this reason, it may be prudent for a museum to note (in its IP policy) that the museum and its staff will respect and honor third party trade secrets made available to the museum in the course of its operations. Such a statement informs staff that it is responsible for safeguarding this information and lets others know that the museum can be a trusted partner in any collaborations or prospective business opportunities.

3.2.2.6 Partnerships and Confidentiality About IP

Closely aligned with trade secrets is the broader issue of confidentiality in a museum. There are many instances when a museum may wish to use confidentiality agreements with potential partners or users of its collections: for example, to ensure the privacy of individuals involved with the museum or its collections, to safeguard the security arrangements for its collections, to ensure respect for cultural property associated with indigenous tribes, and to protect its proprietary information.

Museums frequently partner with other nonprofit or for-profit institutions and individuals to develop exhibits, public programs, and other creative endeavors. Issues of ownership (discussed earlier) are obviously of concern in these relationships, but so too is the issue of confidentiality. When collaborations are being considered or negotiated, potential partners often have access to a museum's IP. To safeguard the museum's interests in the event that the collaboration does not come to fruition, a museum should have a policy about confidentiality that goes into effect in these situations.

Why is this important? Consider a possible collaboration between a museum and a vendor who wishes to market an image database developed by the museum's IT staff and curators. During discussions, the vendor will want to examine the image database system, the underlying software code, the data dictionary, etc. Should the collaboration fail to come to fruition, the museum must ensure that the vendor does not leave the negotiations and then replicate the system on its own. Nor would the museum want the vendor to describe its system to others, because this might prevent the museum from successfully pursuing another collaboration with a different vendor.

Museums who engage in frequent collaborative projects (whether educational, promotional, or commercial) and who feel they need to take protective steps in these circumstances, may choose to include a statement about confidentiality in their IP policy, since the nature of the confidences involve IP. Doing so alerts potential partners that there may be copyright, patent, or trade secrets involved with any information the museum discloses to them in the course of their discussions. Museums who choose to include notices of confidentiality in their IP policies should acknowledge that they too may be asked to adhere to similar codes of conduct by potential partners, and that they will abide by such requests.

The Henry Ford IP policy includes, in a section entitled "Access to Museum Collections," the following notice about confidentiality:

Occasionally, Museum staff may wish to share creative workproduct with a prospective partner, vendor or contractor before the development of a contract governing a business arrangement. In this situation, the staff member should have the prospective partner, vendor or contractor sign a statement of confidentiality... to protect the Museum's intellectual property.Footnote 91

3.2.3 Access to IP in Museums

Museums often find themselves in a position where they must restrict access to the various IP in their institutions for reasons of conservation, preservation, confidentiality, contract, respect for tribal rights, or privacy rights. Many institutions choose to acknowledge these access issues in their IP policies to let the public know that there are circumstances when a museum cannot make all the IP in its possession available for use. In a section of its IP policy entitled, "Access to Museum Collections," The Henry Ford chose to convey this information as follows:

For a number of reasons, including conservation, confidentiality, contract, management, or other, the Museum may restrict access to its collections, workproduct or loaned resources. Procedures governing staff and public access and use of such materials may be communicated formally (for example, in written policy) or less formally (such as by memo or by oral instructions from supervisors). These access and use policies may apply to different resources at different times, and may exclude even Museum staff or volunteers from Museum resources.....Footnote 92

While the public generally accepts that there are legitimate instances when a museum must restrict access to certain IP, museums are increasingly being called to account for restrictions that appear to have no purpose other than controlling potential income streams that might be generated from the use of certain works. Museums need to consider the ethical and moral dilemmas they create if they impose such restrictions as a matter of policy, for they would not wish to face similar restrictions imposed on them by others. The copyright infringement case involving research use and publication of the previously restricted Dead Sea ScrollsFootnote 93 provides an object lesson in how restricting collections solely for economic or proprietary reasons can limit fair use, scholarship, and creativity. Whether such restrictions are worth the price is an ethical question that museums must ask themselves when they consider access issues in their IP policies.

Contact information for this web page

This resource was published by the Canadian Heritage Information Network (CHIN). For comments or questions regarding this content, please contact CHIN directly. To find other online resources for museum professionals, visit the CHIN homepage or the Museology and conservation topic page on Canada.ca.

Report a problem or mistake on this page
Please select all that apply:

Thank you for your help!

You will not receive a reply. For enquiries, contact us.

Date modified: