Intellectual property and Internet publications. (Legal).

Trade and professional associations regularly create published or recorded materials, such as magazines, newsletters, books, videotaped speeches and presentations, and other items as important means of communication with members and others. Much of it is written or edited by association members, staff, consultants, and freelance writers. Association publications have increasingly addressed the copyright, defamation, and privacy issues that often arise in the production of printed publications. It is equally important for associations to become familiar with the potential legal implications of publishing activities and the Internet. In this article, Lauren W. Bright explains the basics of copyright law and the legal implications for both print and electronic publications.

Copyright law provides some protection for written materials in that it allows an association to assert exclusive rights to works. The basic purpose of copyright is to balance the legitimate intellectual property rights of authors, publishers, and other copyright owners with society's right to the free exchange of ideas. Under the Copyright Act of 1976, creations of original expression that are fixed in a "tangible medium of expression" (e.g., on paper, tape, computer software) are eligible for copyright protection. Contrary to the perception of many, copyright protection is automatic, and it extends to both published and unpublished works. The key element in the right of protection is originality of "expression," and not the effort that may have been expended to discover the work's content. For that reason, facts, ideas, procedures, or the like are not subject to copyright protection because they do not result from an act of authorship.

Copyright for any work made for hire, such as an article prepared by association staff, is presumed to be owned by the employer. Under the work-made-for-hire doctrine, the employer is author and owner under the law for all purposes. However, this arrangement can be changed by written agreement between the employer and the employee. The doctrine does not apply to contributions by nonemployees. Associations ordinarily receive the right to use such submitted materials through a written assignment signed by the original copyright owner.

Associations might also consider obtaining from the copyright owner a license, transferring something less than the entire copyright interest to the association. As such, it is important to try to anticipate all possible uses for submitted contributions, including Internet or other electronic use, and make written agreements with the copyright owners to cover those uses.

Recent developments in copyright law

In the well-publicized Tasini case (New York Times Co., Inc., et al. v. Tasini, et al., 2001) involving six freelance writers and several newspaper and magazine publishers, the Supreme Court secured for freelance authors sole possession of the opportunity to license the rights of sale and distribution to electronic databases of their individual contributions to collective works. In the case, contracts governing the relationship between the freelance authors and the publishers retained for the authors copyrights in their individual works and the right to license their articles in original hard-copy form--but made no mention as to ownership of the right to license the electronic sale or reproduction of the articles. Despite this ambiguity, the print publishers licensed the rights to the articles to a computerized database and entered licensing agreements conveying the right to reproduce issues of the publications in several CD-ROM formats. The freelance authors alleged that the placement of their articles on co mputerized databases infringed their copyrights.

Rejecting the lower courts' decision, the Supreme Court found that the users of the electronic databases perceived the articles as individual works, and not an original or revised edition of a periodical. In light of the decision, nonprofit organizations must be careful in the distribution and reproduction of publications containing articles written by nonemployees or other freelance writers.

Minimizing potential liability

It is unlikely that any organization that engages in transactions with nonemployees or freelance writers, for profit or not, will be exempt from the reach of Tasini or the need to obtain permission from individual authors prior to reproducing or incorporating works into electronic databases. In the nonprofit sector, there are a number of steps that can be taken to minimize potential liability.

1. Seek written copyright assignments or licenses from nonemployees responsible for creating copyrightable works that the association will publish or sell. Because copyright infringement can jeopardize potential profits, copyright owners are often vigilant in enforcing their rights. Although specific instances differ, associations should obtain agreements in writing authorizing the use of materials prior to printing, duplicating, or distributing materials in printed or electronic form.

2. Be careful in the electronic distribution and reproduction of any communication containing materials written by nonemployees and freelance authors. Ensure that permission is always obtained for journals or other publications that may be published on the Internet or included in other electronic databases. And while the Tasini decision seems to limit itself to electronic databases, associations should be cautious when including on their Web pages archives or reproductions of newsletters containing freelance articles.

3. Seek appropriate representations and warranties from third parties responsible for creating copyrightable works that the association will use. In addition to establishing the ownership of content prepared by or for the association, there is an equally compelling need to ensure that authors appropriately incorporate the works of others into their materials. Articles, photos, reports, or other information readily obtained from the Internet may be in the public domain but infringe on the rights of the owner if appropriate permission is not obtained. Associations should seek from all third parties representations and warranties that address the originality of the work, the author's role as its sole creator and owner, and the fact that the work does not violate any copyright interests or proprietary or personal rights of others.

4. Restructure contractual arrangements with electronic publishers and database operators. Agreements calling for immediate publication or licensing of collective works should be revised and replaced with contract terms requiring that permission for use of a work be obtained either by the electronic or hard-copy publisher from the freelance author before works are included and published electronically.

5. Review and research copyright law in other nations prior to reproducing or distributing materials outside of the United States. The guidance provided in this article is applicable to works created by U.S. nationals or those domiciled in the U.S., works first published in the United States, and other works subject to the jurisdiction of the federal copyright statute. A review of the copyright laws of other countries is required if an association seeks to use the works of foreign authors or when publishing or distributing works abroad.

Associations are at risk of violating a copyright any time the unauthorized use of copyrighted material owned by another party occurs. In order to minimize the risk of copyright infringement liability, associations must investigate the sources of works and ensure that authorization is obtained for the use of any copyrighted materials.

Lauren W Bright is an attorney and Jerald A. Jacobs is a partner with the law firm of Shaw Pittman, Washington, D.C. Jacobs edits this column and is general counsel to ASAE.