SOW_Attachment-E_Intellectual_Property_Guidelines_for_Harpers_Ferry_Center_Interpretive_Media.pdf

Intellectual Property Guidelines for Harpers Ferry Center Interpretive Media

Version 1.0, September, 2010

Table of Contents

Preface

Chapter 1 – Introduction to Intellectual Property

Introduction to Copyright

Introduction to Patents

Introduction to Trademarks

Introduction to Trade Secrets

Chapter 2 – Copyrights In Depth

Background of US Copyright Law

Glossary of Common Copyright Terms

Copyright Requirements

TABLE - CATEGORIES OF COMMON COPYRIGHTABLE WORKS

Scope of Copyright Protection

Term of Copyright Protection

TABLE - LENGTH OF COPYRIGHT TERMS

The Public Domain

Fair Use

Chapter 3 – The Contractor Relationship

TABLE - SUMMARY OF RIGHTS IN DATA CLAUSES

Chapter 4 – Acquiring Use Rights for Copyrighted Works

License Agreements

Use-Right Acquisition by Government Employees

Use-Right Acquisition by Contractors

Chapter 5 – Review and Retention of Contractor Submissions

Data First Produced in Performance of the Contract

Data NOT First Produced in Performance of the Contract

Maintaining Records Regarding Use-Rights

Chapter 6 – Computer Software

Acquisitions Involving Software

Open Source Software (OSS)

Chapter 7 – Other Considerations

Illustrations

Donated Works

Privacy and Publicity Rights

Appendix A

Appendix B – Links for Additional Information .................................................................... B-1

Preface

These guidelines were prepared by Harpers Ferry Center to address intellectual property issues that commonly arise in the development and procurement of interpretive media. Because intellectual property laws are complex and often situation-based, these guidelines should not be substituted for professional counsel. They are instead meant to provide general information, basic guidance, and procedures for dealing with common issues.

Chapter 1 – Introduction to Intellectual Property

The term intellectual property refers to a right to one’s own ideas or products of an individual’s intellect. These creations of the mind can be expressed in a variety of ways and, over time, various laws have developed to grant certain rights in these intellectual products. Those rights enable an exclusive benefit to be derived from the creation of intellectual property. It is important to note that intellectual property is an “umbrella term” that encompasses several distinct categories, each of which has specific rules and regulations.

While the scope of each category of intellectual property rights is well defined, a particular item may have components that qualify for protection in more than one category. The major categories of intellectual property are copyright, patent, trademark, and trade secret.

Introduction to Copyright

Copyright is a form of protection granted to the authors of certain original works of authorship. In the United States, this protection originates from Article 1, Section 8 of the U.S. Constitution which provides:

"To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries."

As that clause states, securing individual rights is not the purpose of copyright.

Rather, copyright is a method to achieve the purpose of promoting progress.

Copyright can be seen as a contract between the author and the federal government: for a limited time the author is granted certain exclusive rights in exchange for making their ideas available in a tangible form of expression. This scheme protects authors from those who would steal their ideas and allows others to benefit and build upon the intellect presented in those ideas.

Copyright is available only after the ideas are fixed in some tangible form of expression, but publishing that form of expression is not a prerequisite to copyright. Registering the work with the U.S. Copyright Office is also not required for copyright protection and even if registered, the work is not reviewed to make sure it meets the criteria for copyright protection before the registration is issued.

In short, under the current U.S. law, it is fairly easy to obtain copyright for creative works.

Introduction to Patents

Patent rights originate in the same constitutional clause as copyrights and serve a similar public purpose. They grant certain rights in exchange for disclosure of the idea. One procedural difference is that patent rights are only granted after the U.S.

Patent and Trademark Office issues a valid Patent. Once a patent is issued, it grants to the inventor the right to exclude others from making, using, offering for sale, selling or importing the invention. Generally, the term of a new patent is 20 years from the date of filing the application for the patent in the United States or, in certain cases, from the date a related provisional patent application was filed. A provisional patent application provides a lower-cost first patent filing in the United States. Applicants are entitled to claim the benefit of a provisional application in a corresponding non-provisional application if filed within 12 months after the provisional application filing date. The benefit derived from a provisional patent application is that patentability is evaluated based on the provisional application filing date and patent protection is effective from the earlier provisional application filing date. A provisional patent allows inventors to place the “patent pending” notification on their inventions and places domestic applicants on equal footing with foreign applicants with respect to the patent term. Inventors may file U.S. provisional applications regardless of citizenship, but U.S. patent grants are effective only within the United States, U.S. territories, and U.S. possessions.

The three types of patents are:

1) Utility patents, the most common type, may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof;

2) Design patents may be granted to anyone who invents a new, original, and ornamental design for an article of manufacture. In some countries, similar rights are termed industrial design rights; and

3) Plant patents may be granted to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant.

To obtain a valid patent, an inventor must submit an application that fully describes the invention. The patent office will then thoroughly review the application to determine whether the invention is novel, useful, and not an obvious progression of existing technology. If these criteria are met, a valid patent may be issued.

Introduction to Trademarks

Trademarks are typically thought of as a brand or logo, but trademarks can be a device, brand, label, name, signature, word, letter, numeral, shape of goods, packaging, color or combination of colors, smell, sound, movement, or any combination thereof. Basically, many things can qualify as a trademark so long as the “mark” is capable of distinguishing goods and services of one business from those of others. Technically, a mark used to identify services is called a “service mark,” but all types of marks are commonly referred to as trademarks. Trademarks are regulated by both federal and state law, and most, if not all states have their own registration system. Anyone claiming a trademark under state law can notify others of their claim by placing “TM” for a trademark or “SM” for a service mark next to the actual mark.

The protections that trademarks afford are based on consumer recognition of the mark and can be limited by factors that inhibit consumer recognition. For example, a regional housekeeping chain in the D.C. metro area may have a service mark that consumers in and around D.C. immediately recognize and associate with the company, but consumers in Dallas, Texas, would not know what company the mark belongs. The D.C. - Dallas scenario is obvious, but consumer recognition is not clear cut in practice. This aspect of trademark law has led to the national registration system controlled by the Lanham Act and administered by the U.S.

Patent and Trademark Office. Essentially, the national registration system provides a form of notice to the world of one’s claim to trademark protection. Once the national registration is complete, an ® is placed next to the mark to identify it as a registered mark.

Introduction to Trade Secrets

Trade secrets derive their value from being a secret, so trade secret laws are designed to protect against improper disclosure of the secret. Conversely, they are not designed to protect the actual intellectual genius contained in the subject matter of the secret. The advantage gained by the exclusive use of a trade secret lasts for as long as the subject matter remains secret. While trade secrets can contain a wide range of subject matter, some of the most famous trade secrets are recipes or formulas. Examples are the Kentucky Fried Chicken Original Recipe and the formula for Coca Cola Classic. These examples demonstrate the high value of some trade secrets — and why companies go to great lengths to protect them against disclosure. However, once the trade secrets are disclosed or reverse-engineered then the exclusive rights to the subject matter cease.

Chapter 2 – Copyrights In Depth

Background of US Copyright Law

Authorized by the U.S. Constitution, the first federal Copyright Act became law in 1790 and was essentially codified a longstanding judicial doctrine that recognized rights of authors and publishers. For a time, copyright protection could be had under state laws, but eventually the supremacy of the federal statute was established, making copyrights governed solely by federal law. Since the first Copyright Act, Congress has occasionally revised the statute. The last major revision came in 1976 and along with several subsequent amendments, the 1976 Act represents the current U.S. copyright law. Because of the various revisions of the Copyright Act, analysis of copyrights in specific works depends on which version of the statute applies.

Glossary of Common Copyright Terms

Before delving too deeply into copyrights, it is important to become familiar with common terms and their meaning with respect to copyright law. These terms are defined as follows:

Author - Either the person who actually creates a copyrightable work or, if the copyrightable work is created within the scope of employment, the employer of the person who actually creates the copyrightable work.

Collective Work - A work, like a periodical issue, anthology, or encyclopedia, in which a number of contributions, constituting separate and independent works in themselves, are assembled into a collective whole.

Copies - Material objects, other than phonorecords, in which a work is fixed by any method now known or later developed, and from which the work can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. The term “copies” includes the material object, other than a phonorecord, in which the work is first fixed.

Compilation - A work formed by the collection and assembling of pre-existing materials or of data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship. The term “compilation” includes collective works.

Copyright - The exclusive rights granted to an author or owner of a copyrightable work.

Copyright Owner - The owner of one or more of the exclusive rights in a copyright. The exclusive rights provided by Copyright are completely divisible.

Copyright in a work vests initially in the author or authors of the work. However, the author may assign some or all of their rights to another, e.g., to a publisher, if the work has appeared in a formal publication, who then becomes the owner of the rights assigned.

Derivative Work - A work that is based on, or modifies, one or more pre-existing works. A copyright owner has the exclusive right to prepare or authorize the preparation of a derivative work based on the copyrighted work. If a derivative work, considered as a whole, represents an original work of authorship, it may be separately copyrightable. However, the copyright covers only original portions of the derivative work.

Display - Showing a copy of a work, either directly or by means of a film, slide, television image, or any other device or process or, in the case of a motion picture or other audiovisual work, to show individual images nonsequentially.

Fair Use - A statutory exception that allows the use of a copyrighted work for certain purposes without requiring permission.

Federal Acquisition Regulation (FAR) - Federal statutory framework that sets forth uniform policies for acquisition of supplies and services by executive agencies.

First Sale Doctrine - The right of a buyer of a material object in which a copyrighted work is embodied to resell or transfer the object itself. Ownership of copyright is distinct from ownership of the material object. Section 109 of the Copyright Act permits the owner of a particular copy or phonorecord lawfully made under the Copyright Law to sell or otherwise dispose of possession of that copy or phonorecord without the authority of the copyright owner. This provision permits such activities as the sale of used books. The first sale doctrine is limitations in that a copyright owner may prevent the unauthorized commercial rental of computer programs and sound recordings.

Government Distribution or Dissemination - Government-initiated distribution of information to the public. Dissemination does not include distribution limited to government employees or agency contractors or grantees, intra- or inter-agency use or sharing of government information, and responses to requests for agency records under the Freedom of Information Act (FOIA) or Privacy Act.

Government Publication - Informational matter published as an individual document at Government expense or as required by law.

Government Records - All books, papers, maps, photographs, machine-readable materials, or other documentary materials, regardless of physical form or characteristics, made or received by an agency of the U.S. Government under federal law or in connection with the transaction of public business. Government records are preserved or are appropriate for preservation by the agency or its legitimate successor as evidence of the organization, functions, policies, decisions, procedures, operations, or other activities of the Government or because of the informational value of the data in them. Library and museum material made or acquired and preserved solely for reference or exhibition purposes, extra copies of documents preserved only for convenience of reference, and stocks of publications and of processed documents are not included.

U.S. Government Work or a “work of the United States Government” - A work prepared by an officer or employee of the United States Government as part of that person's official duties.

Joint Work - A work prepared by two or more authors with the intention that their respective contributions be merged into inseparable or interdependent parts of a unitary whole. The authors of a joint work are co-owners of copyright in the work.

License - A contractual agreement from a copyright owner or the owner‘s authorized agent, like a third party vendor, allowing another party to exercise one or more of the exclusive rights provided the copyright owner under the Copyright Law. Licenses usually involve the payment of a fee or royalty or both.

Literary Works - Works, other than audiovisual works, expressed in words, numbers, or other verbal or numerical symbols or indicia, regardless of the nature of the material objects, like books, periodicals, manuscripts, phonorecords, film, tapes, disks, or cards, in which they are embodied.

Motion Pictures - Audiovisual works consisting of a series of related images that when shown in succession impart an impression of motion, together with accompanying sounds, if any.

Perform - To recite, render, play, dance, or act a work, either directly or by means of any device or process or, in the case of a motion picture or other audiovisual work, to show its images in any sequence or to make the sounds accompanying it audible.

Permission - An agreement from a copyright owner allowing another party to exercise one or more of the exclusive rights provided the copyright owner under the Copyright Law. Permission generally does not involve the transfer of any fees or reimbursements. Permission is sometimes referred to as a Copyright Release.

Phonorecords - Material objects in which sounds, other than those accompanying a motion picture or other audiovisual work, are fixed by any method now known or later developed, and from which the sounds can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.

Pictorial, Graphic, and Sculptural Works - Two-dimensional and/or three-dimensional works of fine, graphic, and applied art, photographs, prints and art reproductions, maps, globes, charts, diagrams, models, and technical drawings, including architectural plans. Such works include works of artistic craftsmanship insofar as their form but not their mechanical or utilitarian aspects are concerned;

the design of a useful article, as defined in this section, shall be considered a pictorial, graphic, or sculptural work only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.

Publication - The distribution of copies or phonorecords of a work to the public by sale or other transfer of ownership or by rental, lease, or lending. The offering to distribute copies or phonorecords to a group of persons for purposes of further distribution, public performance, or public display, constitutes publication. A public performance or display of a work does not of itself constitute publication.

Transfer of Copyright Ownership - The act of transferring any or all of the exclusive rights comprised in a copyright from the copyright owner to another person or institution. Ownership is generally transferred through an assignment, mortgage, or exclusive license, whether or not it is limited in time or place of effect, but not including a non-exclusive license. To be legally valid, transfers must be in writing and must be signed by the party making the transfer.

Unlimited Rights License - The license defined in FAR 52.227-14, Rights in Data – General that provides to the government a royalty-free, non-exclusive, and irrevocable license throughout the world to reproduce, distribute (except for computer software), perform or display publicly the work, and prepare derivative works from the work by or on behalf of the government. Other rights in data clauses, including FAR 52.227-17, Rights in Data – Special Works, refer back to the General Clause’s unlimited rights specifications.

Copyright Requirements

Copyright protection is only available for original works of authorship that are fixed in any tangible medium of expression from which the work can be perceived either directly or with the aid of a machine or device.

Another subject matter limitation is that facts cannot be copyrighted. However, the creative selection, coordination and arrangement of information and materials forming a database or compilation may be protected by copyright. In such a case, copyright protection only extends to the creative aspect, not to the facts contained in the database or compilation. The creative input from the author need only be minimal.

It is critical to realize that copyright protects the form of expression only and does not extend to the idea or concept underlying the work. For example, while an original photograph of Mount Rushmore would qualify for copyright protection, the underlying idea of taking a picture of the famous monument does not qualify.

In summary, the requirements for copyright protection are as follows:

• Fixation – The work must be fixed in a tangible medium of expression.

• Creativity – There must be some creative input by the author, not just facts.

• Originality – The work must not be copied but can be similar to other works so long as it is independently created.

The requirements for copyright can be met through a variety of mediums.

Common categories of copyrightable works are outlined in the chart on the next page.

CATEGORIES OF COMMON COPYRIGHTABLE WORKS

TYPE OF WORK DEFINITION SPECIFIC EXAMPLES

(FORMS OF EXPRESSION)

Literary Expressions in written words or numbers

Novels, nonfiction books, databases, poetry, software

Musical Composition, melody, parts & words, but not if in motion picture or other audiovisual soundtrack

Sheet music, arrangements

Dramatic Directions guiding portrayal of story in performance using dialogue or acting, includes associated music

Script with any accompanying sheet music included, if applicable

Pantomime, Choreography

Dance movements & patterns (successive static & kinetic body movements) following rhythmic relationships

Video, film, dance notation

Pictorial, Graphic, Sculpture

Two- and three-dimensional works of fine, graphic & applied art; must be physically or conceptually severable from functional aspects

Photographs, maps, paintings, 3D sculptures, pottery, textiles, macramé, jewelry, furniture, computer graphics, still cartoon & characters, prints, art reproductions, maps, globes, charts, technical drawings, diagrams, models, games

Motion Picture, Audiovisual

Series of related images shown by machine, accompanied by sounds

Disks, tapes, or other storage media shown by projector or viewed on a monitor

Sound Recordings Series of musical, spoken, or other sounds

Phonorecords (tape, disks, mp3, wave file, or other storage media)

Architectural Building design, architectural plans or drawings including overall form, arrangement & composition of spaces & design elements

Plans, blueprints, drawings, models, structures built after 1990

Scope of Copyright Protection

Once the copyright requirements are met, the author or those deriving their rights from the author are granted the exclusive right to:

• reproduce the copyrighted work

• prepare derivative works

• distribute copies of the copyrighted work

• perform the copyrighted work publicly including by digital audio transmission

• display the copyrighted work publicly

These exclusive rights operate to give the copyright owner a monopoly on their creation for the term of the copyright.

Term of Copyright Protection

Because of U.S. Copyright Law revisions and amendments, the length of copyright protection depends on the date of authorship and, in some cases, the date of publication. Any work produced after January 1, 1978 (the effective date of the 1976 Copyright Act), enjoys copyright protection for the life of the author plus 70 years after the author’s death. For works created before January 1, 1978, the length of copyright term can be difficult to determine. The chart on the following page outlines the length of copyright terms in various situations.

LENGTH OF COPYRIGHT TERMS

DATE OF WORK PROTECTED FROM TERM OF PROTECTION

Created 1-1-78 or after

When work is fixed in tangible medium of expression

Life + 70 years (or if work of corporate authorship, the shorter of 95 years from publication or 120 years from creation)

Published before

In public domain None

Published from 1923 – 63

When published with notice

28 years + could be renewed for 47 years, now extended by 20 years for a total renewal of 67 years. If not renewed then now in public domain

Published from 1964 – 77

When published with notice

28 years for first term; now automatic extension of 67 years for second term

Created before 1- 1-78 but not published

1-1-78, the effective date of the 1976 Act which eliminated common law copyright

Life + 70 years or 12-31-2002, whichever is greater

Created before 1-1-78 but published between then and 12-31-2002

1-1-78, the effective date of the 1976 Act which eliminated common law copyright

Life + 70 years or 12-31-2047, whichever is greater

The Public Domain

Once the term of copyright protection ends, all exclusive rights granted to the author vanish. The work is then said to be in the “public domain” and is available for use by all without violation of copyright laws. Works created by government employees under the scope of their employment, some works created by government contractors, and works that were published without copyright notice under older copyright laws are also in the public domain.

Using a work that it is the public domain has the advantages of being cost effective and having unlimited use-rights. However, use caution in determining whether a particular work is, in fact, in the public domain, because there may be circumstances that complicate such a determination. For instance, a work that is in the public domain can be resurrected in a sense by the preparation of a derivative work. The author of the derivative work must add some element of creativity to qualify for copyright protection and this could be accomplished by something as simple as retouching a photograph or remastering an audiovisual work. While the original work would still be in the public domain, the new and possibly better work could be subject to copyright restrictions.

Not surprisingly, determining whether the creative input added to a public domain work is sufficient to trigger new copyright protection depends on the facts of the specific situation. However, because initially claiming copyright in a work is a non-adversarial process, an analysis of the situational facts only occurs after an alleged copyright infringement. These characteristics of the process can lead to claims of copyright protection and subsequent licensing of use-rights for works that are nothing more than a digitization of a public domain work. While in these types of cases an individual work’s qualifications for copyright may be debatable, infringing a copyright based on a belief that the copyright in invalid is prohibited.

Fair Use

While the exclusionary rights granted under the Copyright Act are quite comprehensive, certain exceptions to copyright infringement do exist. One such exception is the doctrine of fair use. Fair use exceptions developed through court decisions over the years and are now codified in Section 107 of the Copyright Act.

Some actions that commonly qualify as fair use exceptions like criticism, comment, news reporting, teaching, scholarship, and research are listed in the statute and in addition, the statute identifies four factors that should be evaluated on a case-by-case basis to determine if a specific use qualifies as a fair use. The factors, which should be considered together when determining fair use, are as follows:

• Purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes

• Nature of the copyrighted work

• Amount and substantiality of the portion used in relation to the copyrighted work as a whole

• Effect of the use upon the potential market for or value of the copyrighted work

Under the first factor, courts focus on two primary issues. First, they consider whether the use is a transformative use that adds something to the work (e.g., literary criticism or scholarship) or whether the use is merely a copy offered as a substitute for the original. Second, the courts consider whether the use is for commercial or nonprofit purposes. A nonprofit use for socially beneficial purposes, while not determinative, weighs in favor of a fair use finding.

Under the second factor, courts find the scope of fair use is greater with respect to factual works than non-factual works. Under this factor, courts have also found that the scope of fair use is much narrower for high-priced newsletters than for inexpensive mass circulation periodicals.

Under the third factor, courts disfavor the copying of entire articles or publications.

Courts consider not only the percentage of the original used but the importance of the portion used. Use of a portion that is the “heart of a work” is less likely to be considered a fair use.

Under the fourth factor, courts are less likely to find fair use if widespread practice of the challenged use would adversely affect the market for the copyrighted work.

In making “fair use” determinations, courts are not restricted to the four factors discussed. Also, the weight courts assign to each factor varies with the specific circumstances. Since the determination of whether a particular use is considered fair is essentially a judicial balancing act, the distinction between fair use and copyright infringement can be very complicated and unclear.

If a fair use is found to exist, it may include the practice of any of the exclusive rights provided by copyright. As previously mentioned, reproduction for purposes like criticism, comment, news reporting, teaching, scholarship, or research is considered fair use. However, this is not always the case and as such, assuming that a particular use is fair can be costly.

The fair use exception applies to the U.S. Government just as it applies to any other user. However, fair use should be used only as a last resort, not to circumvent an available license or to otherwise cut corners. For NPS purposes, fair use should only be used when specific content cannot be obtained by any other means and only upon written permission of the Chief of the Contracting Office. In making the determination whether to grant permission, the Chief of the Contracting Office will rely on the advice of legal counsel that will perform a comprehensive fair use analysis.

Chapter 3 – The Contractor Relationship

Because much of our creative work is performed through contractors, it is important to realize that works by NPS contractors are not considered U.S.

Government works. Instead, contactors are considered the authors of works first produced under the contract and, as such, they have rights to that work. If no agreement exists regarding the respective rights to works produced under contract, NPS would be left with a final product that, when used, could be considered copyright infringement. It is therefore necessary to specify the allocation of rights through contractual terms. In government contracts these terms are typically standard “Rights in Data” clauses contained in the FAR.

Copyright in works arising out of NPS contracts are governed by FAR Subpart 27.4, which specifies several clauses to insert into contracts where use and/or production of copyrightable works is contemplated. Each clause is similar in its basic effect, with each ensuring that government use will not be restricted due to a limitation of rights. However, each clause differs in its specific allocation of rights, procedures for claiming copyright, and other related terms. The clauses apply to many types of works that in FAR terminology are generally called “data.”

The basic Rights in Data clause is FAR Clause 52.227-14, Rights in Data – General.

This clause states that the contractor may establish copyright in scientific and technical articles without government approval. However, this clause does require the approval of the Contracting Officer before a contractor may establish copyright in all other data first produced under a contract. Due to the type of work that HFC contractors perform, approval from the Contracting Officer would be required in most cases. Even if the contractor requests and is granted permission to retain copyright protection, the clause specifies that the contractor grants the government a royalty-free, nonexclusive, and irrevocable license throughout the world to reproduce, distribute (except for computer software), perform or display publicly the work, and prepare derivative works from the work by or on behalf of the government. When this clause is used in the contract, the contractor may use any data first produced under the contract in other ways without the need for government permission.

In place of the above data rights clause, Clause 52.227-17, Rights in Data - Special Works may be used. Under this clause the contractor agrees not to assert copyright to any work first produced in the performance of the contract without prior written permission of the Contracting Officer. If permission is not granted, the government can obtain copyright by requiring the contractor to formally register for copyright protection and assign the copyright to the government or a designated assignee. If permission is granted, then the government is again granted a world-wide, royalty-free, nonexclusive, and irrevocable license to reproduce, distribute, perform, or display publicly the work, and to prepare derivative works. The Special Works clause also prohibits the contractor from using data first produced under the contract for other purposes outside the contract without first obtaining the written permission of the Contracting Officer. Finally, the clause specifies that the contractor will indemnify the government against any liability arising out of intellectual property rights violations by the contractor.

The rights in data clauses are designed for use in a range of government contracts and, the Rights in Data – Special Work Clause is usually the most appropriate for HFC interpretive media contracts. However, this may not always be the case, therefore the requirements of each individual procurement must be assessed to ensure that the necessary clauses are used. Furthermore, the NPS now uses more and more technology-based methods to deliver interpretive stories. These new methods require use of contractual clauses that contemplate using computer software, cell phone applications, and other technologies that potentially introduce patent and trade secret concerns.

The table on the next page identifies common Rights In Data clauses and briefly describes their purpose.

SUMMARY OF RIGHTS IN DATA CLAUSES

CLAUSE BRIEF DESCRIPTION

52.227-11, Patent Rights— Ownership by the Contractor

Contractor retains ownership of any subject invention or else retains a license to any subject invention to which the government asserts ownership

52.227-13, Patent Rights— Ownership by the Government

Ownership of any subject invention is transferred to the government, with contractor retaining certain limited license rights.

52.227-14, Rights in Data – General

Contractor may establish copyright in scientific and technical articles without permission, and other data first produced under the contract with permission. If contractor asserts copyright then government receives a broad license.

52.227-15, Representation of Limited Rights Data and Restricted Computer Software

Requires contractor to specify whether the use of trade secrets or other confidential data is contemplated in fulfilling the contract requirements.

52.227-16, Additional Data Requirements

Allows the government to order data first produced or used in performance of the contract but not delivered under the terms of the contract.

52.227-17, Rights in Data – Special Works

Contractor cannot assert any copyrights in data first produced under the contract without permission.

Government may assert copyright if it chooses.

52.227-18, Rights in Data – Existing Works

Specifies the license transferred to the government in contracts exclusively for the acquisition, without modification, of existing copyrighted works

52.227-19, Commercial Computer Software License

Specifies the specific rights needed when contractor acquires “off the shelf” software under government contracts

52.227-23 Rights to Proposal Data (Technical)

Specifies that the government receives unlimited rights in any technical data contained in the proposal upon which the contract is based.

Chapter 4 – Acquiring Use Rights for Copyrighted Works

Along with work first produced under contract, the FAR contemplates that contractors will also include pre-existing copyrighted works in their final deliverables. Using these works requires contractors to procure use-rights from outside sources if the needed content cannot be found in the public domain. Also, HFC’s current needs dictate that use-rights for certain projects are acquired by government employees without the use of a contractor. Regardless of the scenario, a general understanding of the license agreements used to acquire use-rights can prove invaluable for making sound business judgments.

License Agreements

In essence, a “license” is nothing more than a permission to do something that would otherwise not be proper without the license. For example, you must not drive a car without a driver’s license or fish, in most places, without a fishing license. In the realm of copyright, a license entitles the end user to do something with the copyrighted media that would otherwise be considered copyright infringement.

A license agreement is a contract between the licensor (owner of the copyright) and the licensee (person or entity requesting use rights) that specifies the terms by which permission to use the copyrighted media will be granted. Because the exclusive rights granted under copyright are severable from one another, the use-rights transferred by the license agreement can vary significantly. In addition, the differences between types of copyrighted material and the general nature of contract law combine to make the terms on which use-rights may be granted practically unlimited.

The FAR Rights In Data clauses that apply to copyright use the term “data” to describe copyrightable media. The FAR contemplates two types of data to be delivered under the contract. The first type, data for which only the contractor could assert copyright protection, is described as “data first produced in performance of the contract.” The respective rights of the parties concerning this type of data are controlled by the rights in data provisions in the contract. The second type of data contemplated by the FAR, “data not first produced in performance of the contract,” includes any content that the contractor would have to license from another party. Ultimately, this data is also transferred to the government under the terms of the Rights In Data clauses. Because a contractor cannot transfer more rights than it has acquired, it is important to inform the contractor of the needs of the project and also to review the license agreements to ensure those needs are met. This review process should, at a minimum, involve the Contracting Officer’s Representative, the Contract Specialist, and the Contracting Officer.

In addition to reviews of contractor submissions, reviews of any license agreement entered into by NPS are required to ensure that the use-rights obtained correspond to NPS needs. Please note that only the Chief of the Contracting Office has the authority to enter into a license agreement on behalf of NPS, either by signing a written agreement or by accepting license terms electronically.

A typical license agreement contains a variety of terms, conditions, representations, warranties, and other contractual language. This wealth of legalese can make it hard to determine whether the agreement is compatible with the intended use of the material. The following information will help you understand and review license agreements:

Types of Licenses

Limited. The term “limited” simply alerts the reader that the specified rights granted elsewhere in the agreement are fewer than the rights held by the copyright owner, or are otherwise restricted or limited in some way. By contrast, an unlimited grant would give the licensee use-rights equal to those of the copyright holder. Because virtually all licenses are limited and use of the term is unnecessary, the term is commonly not used.

Exclusivity. License agreements either make a non-exclusive or exclusive grant of use-rights. Through a non-exclusive grant, a copyright owner can license the content to any number of licensees, but under an exclusive grant there is only one licensee which enjoys exclusive use of the content for the term of the license agreement.

Transferability. A license agreement may state that the license is “non-transferrable” or contain a similar statement that prohibits the transfer of rights from the original licensee to another person or entity. A non-transferrable license usually contains language whereby any attempted transfer voids the license. This language can present problems when contractors are acquiring use rights in the contractor’s own name and then transferring those rights to NPS. It is therefore necessary for the contractor to acquire use-rights under license terms that accurately reflect the contractor’s intention to transfer the rights to the NPS as the ultimate end user.

Revocability. Many license agreements contain provisions that allow one party to void or revoke the agreement upon a breach of the agreement by the other party.

Terms like these are common in all types of contracts and present no problem for NPS. However, some agreements allow the licensor to revoke or terminate the agreement at any time and without cause. No terms like these should be permitted in any license agreement regardless of whether the agreement is executed by a contractor or by the government.

Rights Granted and Permitted Uses

To recap, the five exclusive rights granted to a copyright owner are as follows:

• reproduce the copyrighted work

• to prepare derivative works

• to distribute copies of the copyrighted work

• to perform the copyrighted work publicly, including by digital audio transmission

• to display the copyrighted work publicly

Because the listed rights are completely severable, a license agreement may grant permission for any number and combination of the listed rights. Also, the agreement can place more terms and conditions on use like limiting the use to a defined project or limiting the geographical area of the use. License agreements should state the types of rights granted and the permitted uses of the copyrighted content.

Length of Use

The grant of a license often comes with an expiration date on which any rights granted automatically terminate. If no expiration date exists then the unlimited length of use is denoted as “in perpetuity” or “forever” or a similar term. HFC prefers use-rights that continue in perpetuity, but HFC does recognize that such rights are often difficult to obtain. If rights in perpetuity cannot be reasonably obtained, then use-rights for the “life of the project” are acceptable.

Any proposed acquisition of use-rights that are limited to a term that is less than the “life of the project” must be approved in writing by the Chief of the Contracting Office. The request for limited-term approval should contain a detailed description of both the steps taken to find another source for the content and the inability to negotiate “life of the project” rights. Finally, the request must also include an acknowledgement from the Park which recognizes the limited term-of-use and specifies the understanding that the content must either be removed or re-licensed when the term expires.

Payment Terms

Payment terms in a license agreement are generally fee-based, royalty-based, or both. A fee-based payment is the familiar one-time payment. A royalty-based scheme contains provisions for a recurring payment usually based on the amount or length of use.

Any proposed acquisition of use-rights that requires royalty payments is prohibited unless approved in writing by the Chief of the Contracting Office. Like the limited-term approval detailed above, this approval should detail the steps taken to find another source for the content, the inability to negotiate a one-time fee and an acknowledgement from the Park which recognizes the recurring payments.

Not surprisingly, use-rights may also be obtained at no cost. This type of license is generally referred to as a “permission” rather than a license agreement. Even though the content is provided at no cost, there are often restrictions and conditions that go along with the permission. As with any license agreement, it is important to review the grant of permission to ensure that the government’s needs are met.

Indemnification and Hold Harmless Clauses

Indemnification and hold harmless clauses are contractual methods by which one party agrees to cover losses sustained by another party. Inclusion of these clauses in copyright license agreements is commonplace, especially when the licensor is not the author of the work but an outlet that licenses content for many different authors. To understand how an indemnity provision works, consider the following simplified scenario:

A photographer has an agreement with a large image house whereby the image house will act as an agent to license the photographer’s work. ACME Corporation licenses one of the photographer’s images from the image house, pays the license fee, and signs a license agreement containing an indemnification/hold harmless provision.

Subsequently, something goes wrong with the use of the licensed photograph, and the photographer wants to sue for damages. The photographer chooses to sue the image house because that is the party he has a contract with. The image house then relies on the indemnification provisions to make ACME pay the costs of litigation and damages.

Indemnification provisions create a problem for the federal government because they give rise to a potential contingent obligation to pay money in the future in an unlimited amount. Such an obligation violates the Anti-Deficiency Act, which limits the authority of contracting agencies to make legally binding financial commitments in excess of appropriated funds. Because government contracting professionals have no authority to agree to indemnify another party, such terms are strictly forbidden.

Any occurrence of an indemnity/hold harmless provision necessitates a closer inspection and in many cases the language will have to be modified. However, it is important to determine which party is indemnifying the other, because the obligation can be written to go either way or both ways. If the NPS is being indemnified by the licensor without an indemnification of the licensor by NPS, then no change is necessary.

Choice of Law/Jurisdiction/Venue

As strange as it may seem, it is often difficult to determine what law applies to a particular dispute. To clear up the uncertainty, most contracts, including license agreements, contain terms that specify what law applies. Some contractual provisions go as far as specifying a jurisdiction or even a particular court in which a legal action may be pursued. If a state’s law is specified as controlling or a state’s courts are specified as the appropriate venue for a legal action, then the provisions must be changed. Because the federal government does not generally subject itself to state law or jurisdiction, such terms should be appropriately changed to allow for U.S. federal law to be controlling with the venue being the US Federal Court System.

Arbitration/Mediation

Substantial benefits can accrue from using alternative dispute resolution (ADR).

ADR can greatly reduce the expense and effort required to litigate a dispute.

Because of the potential benefits, license agreements often have mandatory arbitration or mediation provisions. Both the FAR and DIAR encourage the use of alternative dispute resolution, but specified limits and procedures regarding the use of ADR must be followed. Therefore it is necessary to compare any ADR provisions with the regulations in FAR 33.214. Most notably, binding arbitration is allowed only if specific agency guidelines are established, and because the Department of the Interior does not have guidelines regarding binding arbitration now, such a clause cannot be agreed to. The clause may be modified to comply with the FAR or else removed from the agreement.

Use-Right Acquisition by Government Employees

Any license agreements required for “in-house” use-right acquisition must be reviewed and signed by the Chief of the Contracting Office unless that authority has been specifically delegated. To obtain approval for the license agreement, the problematic terms outlined above must either be modified or removed as appropriate. Negotiating the necessary modifications to license agreements may be simple if the licensor is willing and the agreement to be modified is simple.

However, many licensors are reluctant to change contractual terms, and license agreements are often long and complex. The specifics of each situation will dictate the best processes to use to negotiate an acceptable agreement. For example, if a proposed license agreement only needs an indemnification clause and/or choice of law provision removed, then it may be best to simply negotiate removing the clause or replacing with the substitute language found in Appendix A-1. On the other hand, if many terms need to be changed then the Addendum found in Appendix A-2 may be the appropriate choice. Regardless of method used to modify the license agreement, the changes must be a mutually agreed to, with the licensor signing-off on the modifications.

Any proposed acquisition of use-rights which are limited to a term that is less than the “life of the project” or contains reoccurring royalty-type fees must be approved in writing by the Chief of the Contracting Office. The request for limited-term approval must contain a detailed description of the steps taken to find another source for the content and the inability to negotiate the appropriate rights and/or fees. The request must also include an acknowledgement from the Park that accepts the problematic license terms and specifies the understanding that appropriate future action is necessary to comply with such terms. In the case of limited-term rights, the Park must understand that the content must either be removed or re-licensed when the term expires.