RAQs: Recently Asked Questions

Topic: Movie covers on Facebook - 01/27/2021
I've seen libraries take pictures of book covers and promote them on their library social medi...
Posted: Wednesday, January 27, 2021 Permalink

MEMBER QUESTION

I've seen libraries take pictures of book covers and promote them on their library social media page, and was wondering if the same policy holds for movies. Can we take a picture of the front covers our new DVDs and promote them on Facebook? Or is it preferred that patrons browse our new DVDs in the library and/or on our library catalog?

Even though we purchased a movie license, I do know that due to copyright laws, we are not allowed to promote on social media any movies that we are showing at the library. Patrons are asked to call us and inquire what movie we are showing. Thanks for the help!

WNYLRC ATTORNEY'S RESPONSE

There are a lot of legal technicalities hidden in this question, but before we get to them, here is my overall advice: The more your library generates unique, custom content showing the people, personalities and experiences of your library on your social media,[1] the more you can include copyright and trademark-restricted content in social media promotions.

For example: If a library takes a picture of a new DVD, with only the cover content in the photo, and posts it to social media, that could potentially trigger some type of copyright/trademark concern.  But if that same library takes a picture of their librarian holding that same DVD while giving a thumbs-up ("This new movie is librarian-approved!") that concern is greatly reduced, since the proprietary work is only part of the message.

This same guidance applies for book covers, new games, and other media packaging.  Since copyright and/or trademark can both be invoked to protect any of that content (although just how protected the content is will vary from item to item), displaying it on social media as part of your library's overall personality and outreach is much better than using a photo or scan of the book/cover on its own.  When you don't have permission, use of a proprietary image as part of a related but larger social media message ("We have this great book!") is generally a safer approach to image use.

Now, at this point I must note: the "image use" in this question is different from using cover content (let's call them "thumbnails," for nostalgia's sake) supplied by providers like Overdrive for your library's online catalog.  Use of thumbnail content in your catalog (and thus, generally, on your library's website) is likely restricted in the license from the provider, but supplied with the understanding that the thumbnails will be viewed via your library's website as part of the service.[2]

Now, as to announcing movie nights...this question gave me a double-take, because neither copyright nor trademark, in and of themselves, bar listing the bald fact that your library is hosting a (licensed) movie night, and the title of the movie—whether via a poster, or via social media.[3]

But since I have never known a librarian to submit a baseless question to this service, I dug a bit more, and found this statement[4] in the Swank guidance for libraries using their "single event' license:

"If the public library’s social media accounts are set to private, the title may be used. If the library’s social media accounts are not set to private, it is recommended the title not be included. The movie event may be promoted on the social media pages with a link to the title on the library’s website."

So to be clear: copyright doesn't forbid promoting the movie, but restrictions on promotion could be a requirement of the license (the contract allowing your library to show the movie), or (as the case here) a "recommendation"[5] of the licensor, likely at the request of the trademark holder.  This is one of the more bizarre "recommendations" I have run into in the contract-analysis business, and I thank the member for sending it along!

And that's it.  Again, the take-away from this answer is: the more your library generates unique, custom content showing the people, personalities and experiences of your library on your social media, the more you can include copyright and trademark-restricted content in social media promotions as a component of that larger messaging.  Along with being a type of risk management,[6] this will also lend itself to your library having better, richer, and more interesting social media, so it's a win-win; sometimes the law and quality control go hand-in-hand.

And now, to go watch the new [TITLE OF MOVIE REDACTED] with my family.

 



[1] For purposes of this question, I do not consider your library's website "social media," since in many ways these days the website is simply the virtual part of the library.  "Social media," to me, are third-party contractors: the usual and growing array, like FB, IG, TT, Twitter, etc.

[2]That's how OverDrive's does it, anyway: "OverDrive grants you a limited, revocable, non-exclusive, non-transferable license to use the Embed Code to display Samples on Your Site."

[3] Using movies stills and original posters can pose a concern, but here, we're just talking about announcing the title.

[5] That said: "it is recommended" is not the hallmark of contractually enforceable language.  My guess is that this is something Swank told its content providers it would do, but everyone realized that as a hard requirement, it is pretty ridiculous ("We're showing a movie!  Can't say the title!") and could cost them business. I can see why content providers would ask for it, though, and I bet it shows up in other licenses.  If you have a license with a requirement like this, please send us a copy; I collect contract artifacts like this.

[6] Because it will make it much easier to claim fair use, and also make it much less likely that your library will be accused of infringement in the first place.

 

Tags: Trademarks and Branding, Copyright, Fair Use, Movies, Social Media

Topic: Posting Patron Images on Facebook; When is an image release required? 8/22/2018
Are libraries legally required to obtain photo releases from all patrons (children's parents, ...
Posted: Wednesday, August 22, 2018 Permalink

MEMBER QUESTION

Are libraries legally required to obtain photo releases from all patrons (children's parents, teens, adults), even if we don't name those patrons before publishing photos to our social media accounts and/or press releases?

WNYLRC ATTORNEY'S RESPONSE

This is a huge question.  To answer it, let’s start with where the mania over image releases comes from.

New York Civil Rights Law, §50, states:

A person, firm or corporation that uses for advertising purposes, or for the purposes of trade, the name, portrait or picture of any living person without having first obtained the written consent of such person, or if a minor of his or her parent or guardian, is guilty of a misdemeanor.

In this age where every “click” and post is potentially monetized (and thus “advertising”), this rule is tough to advise on.  If I post a picture of my sister on Facebook, and her smiling face helps Facebook get attention for a sidebar advertisement, can she fulfill a threat made back in 1987 to get me in “sooooooooo much trouble?”  Not quite.  But if I create an ad for an event to be held at my law firm, and I use someone’s image without permission, that could be problematic.

The next layer of concern could come from Facebook itself.  As they say in their “Terms,” users may not:

do or share anything:

  • That violates these Terms, our Community Standards, and other terms and policies that apply to your use of Facebook.
  • That is unlawful, misleading, discriminatory or fraudulent.
  • That infringes or violates someone else's rights.

[emphasis added].

So, if my sister alleges that I have “violated her rights,” by posting her picture, am I risking my Facebook account, too?

A lot of this comes down to how Civil Rights Law §50 is being applied these days.  As of this writing, I did not find any case law where simply posting an image to Facebook violated §50.  Further, recent case law gives insight into what the courts will consider to be “advertising.”

“Under Court of Appeals precedent, the statute is to be narrowly construed and strictly limited to nonconsensual commercial appropriations of the name, portrait, or picture of a living person. A use for advertising purposes has been defined as a use in, or as part of, an advertisement or solicitation for patronage.” [1]

This sounds helpful, until you starting thinking that, in the world of Facebook, everything is only one degree from being an advertisement.  So how does a library post photos of patrons using their library without losing sleep at night?

The 2013 case of Leviston v. Jackson is instructive.  In Leviston, a woman sued the rapper 50 Cent for posting a sex tape (not made for commercial use) featuring her on his unmonetized web site.  During his testimony, 50 Cent stated that he posted the video to antagonize an opponent in a rap war.  During his testimony, 50 Cent admitted that rap wars are conducted in part to test the mettle of different rappers, and to bring attention to the combatants.  The judge, seizing on this admission that rap wars are in part for “attention” (of the commercial variety) refused to dismiss the Plaintiff’s claim.

So, if your public library is at war with the association library across town, or fighting a budget battle, and you would like to post pictures of patrons claiming “Our Books Our Bigger!” your library should get written image releases.   If, however, your not-for-profit library is simply publicizing “new hours!”, the person whose image you use would have a very weak claim (if they had a claim at all).

That said, in general, it is a good practice for libraries to get image releases whenever possible.  First, you never know when you might snap the perfect picture to illustrate why a new resources or a bigger budget would really help your mission.  Second, asking for permission to use a person’s image will emphasize your library’s respect for personal privacy and patron confidentiality.  And finally, by memorializing permission to use an image, you reinforce the patron’s connection to the library…and generate a great record for the archivist who will be trying to catalog your photos in 2118!

Thank you for your question.

 



[1] Leviston v. Jackson.

 

Tags: Policy, Privacy, Image Rights, Trademarks and Branding, Social Media

Topic: Trademark Considerations When Promoting a Conference - 12/12/2017
A member collaborating on a conference asked for some general legal advice to keep in mind when se...
Posted: Tuesday, December 12, 2017 Permalink

MEMBER QUESTION

A member collaborating on a conference asked for some general legal advice to keep in mind when selecting a name for the event (“branding”).

WNYLRC ATTORNEY'S RESPONSE

Branding and trademark questions are some of my favorite “Ask the Lawyer” submissions.  Since GLAM institutions[1] attract innovators and creative professionals, new products and services emerge from them at an impressive rate.  And because the people driving the development tend to have degrees in esoteric areas of the humanities, you get a lot of cool logos and names.

There are a lot of resources out there on how create strong trademark[2], but what most of those resources don’t consider is people developing marks in an inter-institutional, collaborative environment.  So, I’ll take this opportunity to set out a few general questions for you cooperative trailblazers to keep in mind when co-branding your next collection, conference, or information management tool.

#1.  Whose mark is it, anyway?

Any development of a brand (which usually includes some or all of the following: developing a name, generating a logo, registering a domain name, creating a #hashtag and other hallmarks of a social media existence, determining a promotional strategy, and maybe even creating a new corporate entity) should only happen after the parties agree on who will own it.  This agreement should be in writing. 

[Pro tip: if you are at a larger institution, you might want to check with the PR/marketing department before formally taking ownership, or even partial ownership, of a new brand.  Think of it as helping them properly accession something into their collection.]

 

#2.  How will we (the colloborators) use it?

It is critical that the collaborators on a brand share a general understanding as to how the mark will be used (this is what I refer to above as the “promotional strategy”). 

Every collaborative venture will handle this differently, but the important questions are:

·       What is the purpose of the mark?

·       What good or services is it associated with?

·       To what uses is this mark restricted?  Or…is the mark deliberately unrestricted?

·       Who is in charge of the mark on social media?

·       Can a collaborator use it in the context of their own venture?

·       What media will the mark be used in?

·       How, if ever, will the mark be retired?

 

#3.  How do we protect our mark?

Once the group know who owns it, and how it will be used, it’s important that the underlying copyright supports that strategy.

·       Who owns the copyright to the logo design (if it is sufficiently original)?

·       Will we register our mark with the U.S. Patent & Trademark Office (“USPTO”)? 

·       Who maintains the mark?

·       Who monitors the mark?

·       Who is in charge if a use departs from the promotional strategy?

·       Are there any grant funding terms that effect ownership of the mark?

 

#Always. Does the mark we’ve picked infringe?

The question of infringement should not drive the creative process, but it should be at the forefront of every branding initiative.

Trademark infringement is established when a plaintiff demonstrates that it owns a protectable mark[3], AND the defendant’s use of that mark is "likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person." Grady v. Nelson, 2014 U.S. Dist. LEXIS 172759, at *17 (D. Colo. Dec. 15, 2014)

Just like copyright infringement, trademark infringement is not excused by educational or not-for-profit use.   So, at every stage (picking the words, picking a logo, registering the domain, etc.) care to check that your new mark isn’t stepping on an old one is absolutely critical. 

In a collaborative venture, where it is easy to assume that someone else is handling something, proof of this step being taken, in a timely manner, should be clear and well-documented (and preferably reviewed and confirmed by a lawyer with malpractice insurance).

Brand on.



[1] A saucy bit of branding I recently observed, meaning “Galleries, Libraries, Archives, Museums.” 

[2] And I mean a LOT.  Most intellectual property-focused firms or lawyers have a FAQ or helpful article on their website/blog on “how to build a strong brand.”  To be fair to all of them, the link I have provided is to the same type of material, hosted by the American Bar Association.

[3] Not all “protectable trademarks” are registered.  If a mark has been routinely used in commerce, the owners may have “common law” rights.  

 

Tags: Copyright, Trademarks and Branding, Conferences and Events

Topic: Ownership of Employee Created Materials - 5/25/2017
At a recent WNYLRC webinar, we discussed the ownership of materials generated by library staff.&nb...
Posted: Thursday, May 25, 2017 Permalink

MEMBER QUESTION

At a recent WNYLRC webinar, we discussed the ownership of materials generated by library staff.  Who owns the massive amount of original work generated by an active, engaged library staff?

WNYLRC ATTORNEY'S RESPONSE

The answer is: it depends. 

Let’s start with the fundamentals:

FIRST:  Copyright vests the moment an original work is fixed in a “tangible medium of expression.”  Trademark is established through either registration or use on the marketplace.  Patent can protect useful articles and unique business operations.  Trade secret law can protect confidential  information that gives your institution a unique edge.   What does this mean?  It means that the e-mails, presentations, displays, unique business solutions, archive collections and other valuable work-product generated by library staff are all assets that can be owned.

SECOND:  Unless there is a contract, policy, or other express documentation to the contrary, an employer owns the copyright to any work produced by an employee as part of the scope of their employment (this is one of the reasons why it is always important to ensure staff have updated job descriptions).  For trademark, patent, and trade secret, similar rules may apply.  Be warned…if not set out clearly, this “express documentation” can take many forms: it can be buried in a union contract, can be inferred from a hire letter, or might even be derived from a habitual business practice.  For both the library and its employees, there should be a clear policy.

THIRD:  Not only copyright, trademark, patent, and trade secret law governs the control of employee work-product.  The ethics of the profession may influence ownership.  If your library serves a particular industry, like education or healthcare, the work-product is controlled by privacy regulations.    It is important that the initial ownership arrangement between the library and its employees consider the other terms that may govern the work product, and it is critical that any policy reinforce the obligation to safeguard certain information. 

So how does a library set up to ensure it owns the valuable work product it pays its staff to produce, but doesn’t encroach on the employees’ right to generate their own intellectual property when not at work?  As more and more people “work from home,” use their own laptops, and may even compose work product on their cell phones, it couldn’t be more important to observe the following:

A carefully considered policy on employee work product.  This policy should be harmonized with the ethics and mission of the institution, its policy on employee use of technology, and its regulatory compliance obligations.  This does not have to be extensive; just a few clear, concise paragraphs in the Employee Handbook. 

Clear hire letters and routinely updated job descriptions.   Remember, in order to determine if something was created as part of an employee’s “scope of employment,” both parties need a clear notion of what that employment is!

Routine copyright, trademark, and patent registration of critical employee-generated IP. If your archives are known for a particularly good compilation of old photographs, for example, consider registration of the compilation with the Library of Congress (even if the images already have their own unique registration).  If you gave the compilation a unique name, consider trademarking it.  If your library developed a unique way to search the archive, explore a patent (before disclosing it to any other party!).

And if the asset is not only employer-owned, but critical, make the necessary archive and recovery copies, and make sure that back-up is controlled by the employer (locked cabinet, separate hard drive, employer-licensed cloud service). 

What can an employee or institution do if there is confusion regarding an employee-generated asset?  The best option is to promptly consult a lawyer.  Remember…what people do and say during the initial phase of a dispute can later become evidence, while timely input can hopefully avoid unnecessary debate, and find a “win-win.” That said, there is no replacement for clear hire terms, current policies, and routine IP asset management.  Staff and the great work they generate are critical assets of libraries and archives, so clarity is definitely worth the effort!

Tags: Copyright, Labor, Trademarks and Branding, Work-for-Hire

Topic: Digitization of Newspapers Prior to 1923 - 10/17/2016
We would like to digitize newspapers that were published prior to 1923. Since the paper is still i...
Posted: Monday, October 17, 2016 Permalink

MEMBER QUESTION

We would like to digitize newspapers that were published prior to 1923. Since the paper is still in business, does public domain apply in this case? They are very difficult to deal with. We do have a contact there. However, if there is nothing stopping us from digitizing the older issues, we prefer not to deal with them. Would this also apply to other newspapers who are still publishing today but whose content does exist prior to 1923.

WNYLRC ATTORNEY'S RESPONSE

You have confirmed that the “Buffalo Evening News” (and other iterations) content originates BEFORE the strategic “1923” date confirmed by the Copyright Office (Circular 15a) as in the public domain.  This is true whether the original article or image was owned by the paper, or licensed by the paper and owned by another person or entity.

 Once an item is in the public domain, there are numerous ways for either the original owner, or another, to create a copyright in a new medium re-presenting the content (this is a motivating factor in many “special editions”), but the original is no longer protected, and may be digitized as you describe, without concern about an successful infringement claim.

One caveat on the “Buffalo News” content: there could be a concern as you promote the newly created resource.  “The Buffalo News” is a trademark owned by (interestingly) The Columbia Insurance Co. (registration # 75834888).  So while you can list the resource, I advise against using the name “The Buffalo News” in any promotion of the collection.  That is for optimal safety and so you don’t get a cease-and-desist.

The good news is that the “Buffalo Evening News” trademark is officially “dead”  (see attached screenshot).  This may be used to promote the service, should you wish to do so.

This analysis and a similar caveat would apply to any other newspaper.

  buffalonews_2

Tags: Public Domain, Copyright, Digitization and Copyright, Newspapers, Trademarks and Branding

The WNYLRC's "Ask the Lawyer" service is available to members of the Western New York Library Resources Council. It is not legal representation of individual members.