WIPO Guide on Managing Intellectual Property for Museums

by Rina Elster Pantalony

August 2007

Acknowledgement

The author is especially indebted to Lyn Elliot Sherwood, Executive Director, Canadian Heritage, for her stewardship and vision and to Michel Francoeur, General Counsel and Director of Legal Services, Canadian Heritage, Department of Justice, Canada for his flexibility and support.

The author thanks Dr. Howard Besser, New York University, for his support, thoughtful reflections and the use of his office. Finally, the author also thanks Richard Owens, World Intellectual Property Organization and his colleagues for their substantive guidance.

This Guide is dedicated to Michael, Seth and Jared for their patience during the month of Sundays it took to finish it.

Table of Contents

PART I: Defining Intellectual Property and Identifying Appropriate Management Practices for Museums

• Chapter 1 - Is Intellectual Property the Carrot or the Stick?
  • 1.1 Promoting National Cultural Heritage
  • 1.2 Establishing the Means to Sustain Cultural Heritage Programming
  • 1.3 What Makes a Quality Museum?
• Chapter 2 - The Basics of Intellectual Property
  • 2.1 Defining Intellectual Property
  • 2.2 The Intellectual Property Law System
  • 2.3 Types of Intellectual Property and their Characteristics
  • 2.3.1 Patents
  • 2.3.2 Copyright and Related Rights
  • 2.3.3 Trademarks, Service Marks and Trade Names
  • 2.3.4 Industrial Designs
  • 2.3.5 Trade Secrets
  • 2.4 Other Types of Law Important to Museums in their Administration of Intellectual Property
  • 2.4.1 Publicity Rights
  • 2.4.2 Privacy Rights and Ethical Concerns Regarding Privacy
  • 2.4.3 Claims, Interests and Laws Concerning Traditional Knowledge and Cultural Expressions
  • 2.5 Contract Law and Acquiring Intellectual Property Rights, Whether for Time or for Life
  • 2.6 The Licensing Model
  • 2.7 Alternative Dispute Resolution
• Chapter 3 - Defining Intellectual Property for Museums
  • 3.1 Copyright
  • 3.2 Trademarks
  • 3.3 Patents and Trade Secrets
  • 3.4 Domain Names
  • 3.5 Industrial Designs
• Chapter 4 - Intellectual Property Management For Museums
  • 4.1 Best Practices Recommendations for the Intellectual Property Inventory or Audit
  • 4.2 Why an Intellectual Property Policy?
  • 4.3 The Intellectual Property Policy - The University Model
  • 4.3.1 How to Create An Intellectual Property Policy
  • 4.4 The Licensing Strategy
  • 4.5 Digital Rights Management Solutions
  • 4.6 Outsourcing the Intellectual Property Management Function?
  • 4.7 Communications Strategies and Marketing Plans
  • 4.8 The Environmental Scan and Case Studies
  • 4.9 Best Practices Recommendations - Summary

Part II: Business Opportunities

• Chapter 5 - The "Experience Economy"
  • 5.1 Defining the Experience Economy
  • 5.2 The Role of the Museum within the Experience Economy
  • 5.3 Commercializing Authoritative Content
• Chapter 6 - Business Opportunities for Museums
  • 6.1 Defining Return on Investment for the Museum
  • 6.2 A Need for Initial Capital Investment
  • 6.3 Cultural and Market Expectations
  • 6.4 The Commercial Value of Cultural Heritage Content: Authenticity, Integrity and Context
  • 6.5 The Markets and Models for Cultural Heritage Intellectual Property
  • 6.5.1. The Production and Distribution of Tangible Products
  • 6.5.2 Can Recognition of a Museum's Name Translate Into Consumer Recognition of Commercial Products?
  • 6.5.3 Product Development and Distribution: To Be Inspired by the Collection
  • 6.5.4 The Art of the Deal: It All Comes Down to Control
  • 6.5.5 Governance and Expertise
  • 6.6 Image Licensing as a Museum Business Opportunity
  • 6.6.1 Learning from History
  • 6.6.2 So Why Discuss Image Licensing?
  • 6.7 Co-Branding Relationships: The Museum, Its Trademark and Commercial Opportunities
  • 6.7.1 Defining the Co-Branding Relationship
  • 6.8 Cultural Heritage Media Production and the Production of Syndicated Content
  • 6.9 Authenticated Knowledge
  • 6.10 New Emerging Business Models
  • 6.11 Summary
• Chapter 7 - Resources
  • 7.1 Organizations That Host Information About Intellectual Property
  • 7.2 Online Journals About Digital Information, Preservation and Intellectual Property
  • 7.3 Electronic Resources About Licensing

Introduction

In industrialized countries, it has been the pervasive and traditional point of view held by the cultural heritage community that they are users and not owners of intellectual property (IP). In the past, IP issues were addressed only when publishing texts that adapted existing material, whether visual or written. With the advent of new technologies, however, these same museums are now faced with a shift in perception from within their own community. That is, there is a growing awareness of the importance that IP plays in being able to share knowledge, provide access to collections, and preserve and manage collections.

Where once museums were concerned with using the IP owned by others, they are now faced with the responsibility of managing their own IP and mediating the potential third party uses and users. The IP at issue may relate to their own interpretative or contextualized authoritative content, to technologies developed in-house to assist in distributing or administering their collections, and to branding tools that provide recognition and awareness of the museum in a commercial context.

The perception of IP in museums in developing countries has been more varied, with some addressing the issue in the context of providing broad access to documented heritage or, instead, as but one issue in the broader debate concerning the retention and preservation of national cultural heritage. With the advent of new technologies, museums in developing countries are also facing similar challenges in managing and distributing their cultural heritage content, that is, while still maintaining provenance, attribution and authority, objectives shared by museums globally.

The World Intellectual Property Organization (WIPO) recognized a growing need in the cultural heritage community and thus, commissioned this publication to address its needs. The publication is separated into two parts, with the first addressing the identification of IP relating to museums and the recommended best practices to manage it, consistent with institutional mission and mandate. The second part of the publication reviews existing and emerging business models that may assist in identifying opportunities for museums as a means of creating sustainable funding for its programs consistent, yet once more, with their respective mission and mandate.

Finally, the author assuredly understands the institutional distinctions between museums and other cultural heritage institutions, such as archives and libraries with rare collections. However, many of the IP issues they face are similar, despite their distinct missions and mandates. Thus, while this Guide refers to "museums", it is only as a matter of expediency. Institutions comprising the cultural heritage community should, it is hoped, take away from this Guide what is specifically relevant to them in making their IP management decisions.

Part I: Defining Intellectual Property and Identifying Appropriate Management Practices for Museums

Chapter 1 - Is Intellectual Property the Carrot or the Stick?

The traditional point of view of museums, no matter where they are located, has been that IP, in particular copyright, has inhibited their ability to carry out their mission and mandate. It is the general view that the IP interests of third parties have prevented them from carrying out reproduction for preservation purposes, reproduction and distribution for educational purposes and reproduction and distribution as a means of providing access to collections.

While, there is little doubt that IP laws necessitate additional administrative functions on the part of the museum, there is a growing awareness that IP may also provide the means to promote national cultural heritage as a whole. Finally, if managed well, IP may also hold the promise of developing sustainable cultural heritage programming for museums.

1.1 Promoting National Cultural Heritage

" Copyright protection is above all one of the means of promoting, enriching and disseminating the national cultural heritage. A country's development depends to a very great extent on the creativity of its people, and encouragement of individual creativity and its dissemination as a sine qua non for progress" ¹ .

IP, in particular copyright, is highly valuable to the development of a forward thinking society. Modern history has shown that culture, and in particular the enrichment of a society's patrimony, is dependent upon adequate IP protection provided to literary and artistic works. A society fosters and nurtures the creative process by providing the impetus to create new artistic and literary works through IP protection. Such protection allows a society's cultural heritage to evolve. Literary and artistic works are not created, nor consumed, in a vacuum, but depend on performers, producers, broadcasters, the telecommunications industry and other communication players who also receive IP protection ² . The rewards of creativity are thus distributed throughout society as a whole.

One of the key objectives of developing countries is to establish a sound and constant development base. With respect to IP, one of the aims of developing countries is to integrate policies on science and technology that facilitate their development and acquisition and to develop the related human potential and expertise. For, technology harnessed together with scientific knowledge leads to a veritable explosion in invention, innovation and productivity within society ³ .

Since IP protection, in particular copyright, encourages the promotion of cultural heritage, then it stands to reason that museums should champion it, rather than denouncing it as being counterintuitive to their mission and mandate. It is therefore part of the museums'mission and mandate to promote and respect IP protection.

1.2 Establishing the Means to Sustain Cultural Heritage Programming

While IP protection fosters and promotes an environment of creativity and intellectual output, at the same time, museums are faced with increasing costs in program management, particularly where the costs associated with the administration of IP rights are considerable. In addition, in developing countries, with government funding being allocated to the greatest of needs, museums are left with few options to fund their programming.

However, the ability to operate in the digital environment may provide a way forward. So long as IP rights are understood and well managed, it may not take a great deal of funding to create meaningful online educational programming available to the public, while at the same time meeting the objective of preserving regional cultural heritage collections.

In 2002, the Canadian Heritage Information Network (CHIN), a special operating agency of the Government of Canada, launched its Community Memories ⁴ initiative for small Canadian museums, community archives and community centers. The Initiative enabled them to access Can$5,000 for the development of a virtual exhibition about the history of the people in their respective communities. Included with the production contract was a requirement that the museum obtain a computer and a digital camera that met the standards required in the program guidelines. A great number of these disparate and regionally based museums and community centers were able to use a very small amount of funding to reach out to vast audiences through the power of the Internet. It allowed them to preserve their community-based cultural heritage in digital formats, educate their community and, indeed the world, about its history, and upgrade their computer technology. Through the guidelines to the Community Memories initiative, it also enabled them to learn about IP and implement IP management tools and techniques. Such grass roots programming may hold enormous potential for the developing world.

If the Community Memories initiative of the Federal Government of Canada is an indicator, the power of the Internet can greatly reduce the costs associated with public outreach and educational programming, with the Internet and technology levelling the playing field for museums, notwithstanding the size of their budget or where in the world they are situated. Given the latest MIT Media Lab initiative in having created the US$150 laptop for developing countries, with wi-fi capability, the ability to institute similar programming may be on the horizon ⁵ .

In North America, arguments have been advanced against the leveraging of IP managed or owned by museums. Scholars have long held that museums should stick to their traditional objectives of preservation, access to collections and scholarship and not take part in the expectations of consumers in the experience society. The economy should not have any impact upon their institutional objectives and programs ⁶ . By charging fees to access content, the museum is perceived to run contrary to its mission and mandate. The bottom line has been that even where licensing programs have generated profit, the profits have been only moderate, with mission and mandate outweighing the financial benefits derived from a licensing program.

The issues surrounding sustainability are actually far more complex. Whether a museum's programming runs contrary to its mission and mandate is a fact-specific determination. The Community Memories initiative demonstrated that the amount of funding necessary to reach very lofty objectives could be, indeed, minimal, because of the advent of new technologies and sound intellectual property management practices. If there are opportunities available to museums to earn even moderate amounts of revenue by leveraging their IP, then, depending on the financial circumstances of the particular institution, and so long as the opportunity does not conflict with mission and mandate, it should be explored. And as a matter of due diligence, sound management practices and cultural heritage stewardship in the digital age, the impetus to explore it has become even stronger.

1.3 What Makes a Quality Museum?

Museums, whether in developing countries or in industrialized ones, are compelled to explore their ability to engage in commercial opportunities, so long as their missions and mandates are not seriously compromised. Given this context, how do museums ensure that they continue to meet standards of performance and integrity? The answer to this question lies, in part, in practicing effective IP management.

The late Stephen Weil, professor emeritus at the Smithsonian Institution, developed a formula to assess whether a museum is one of quality. According to Weil, museums must be:

1. Purposeful
2. Capable
3. Effective
4. 4. Efficient ⁷ .

A museum's purpose keeps it accountable and is dependent upon a museum being capable of delivering its programming. Weil defines capability as intellectual know-how, and financial and human resource capacity that enables exhibitions, cooperation with appropriate partners and above all, delivery of purpose ⁸ .

"… One of the most immediately evident hall-marks of the successful museum will be that it regularly has in hand the fiscal resources required to accomplish its purposes on an ongoing and sustainable basis. Unpalatable as some may find the thought, money does matter in museums" ⁹ .

Effectiveness may be the hardest criterion to measure because museums operate without a profit motive. In a company, effectiveness or success is measured by the bottom line. Overall effectiveness is the museum's version of net profit. Thus, according to Weil, even though a museum may be capable and purposeful, it may lack effectiveness in delivering on its mission because it is difficult to quantify a museum's overall effectiveness ¹⁰ . Measuring success has become exceedingly complex because there is no agreed-upon method of measuring achievement even amongst museums ¹¹ .

Finally the last requirement of Weil's test is efficiency. Efficiency is not a top priority, according to Weil because profit is not the main objective of the institution. As Weil states, efficiency should not be confused with an obligation to be "business like" in approach. Instead, museums' constant objective should be " to get the largest possible musicological bang with the expenditure of fewer bucks" ¹² .

Thus, in order to ensure that a museum achieves overall quality, a modern museum must be vigilant in assessing new ways to fulfill objectives and, in the Experience Economy ¹³ , that includes providing visitors with quality experiences whether physically or now even virtually. In addition, in a technologically driven society, the museum needs to be aware of the issues they face when solicited to partner with for-profit companies, as evidenced by Google, Yahoo and even Showtime.

In the digital age, if IP rights are not well managed, the museum will not be able to harness the Internet as an educational and communication tool. Therefore, managing IP well in museums will reinforce and strengthen the ability of the institution to communicate with its public, which, in the digital age, is pivotal in achieving purpose and delivering mandate, ensuring institutional effectiveness and even efficiency. Good IP management practices also ensure that the museum understands the financial stakes and can determine the ability to balance them against purpose and mandate. This is a necessity in running an institution of quality because in this sense, IP management speaks directly to the capability of the institution to carry out its purpose. Finally, the use and management of IP is paramount to the success and quality of a museum because IP promotes the development of a strong national cultural heritage, one of the primary purposes for the very existence of museums.

This Guide does not argue for strong or weak IP protection. Instead, this Guide advocates strong IP management within museums so as they can be places of learning and provide society with intellectual experiences. This is a question of ensuring the overall quality of the institution as required in Weil's four-part test. How a museum identifies its own IP, understands its own rights and limitations in the use of content, has the intellectual capacity to deal with issues as they arise and the ability to deliver on its purposes, will depend on a strong IP management program and policy.

Chapter 2 - The Basics of Intellectual Property

2.1 Defining Intellectual Property

IP confers a form of ownership interest in human intellectual output. IP law developed to regulate the ownership of such interests, and is a system of laws that confers enforceable rights upon the person responsible for the intellectual output, so that the creator or owner of IP can exercise a measure of control over its future use. In addition, market forces dictate the overall value of the intellectual output, potentially granting the person responsible for having created it an opportunity to generate revenue. Finally, IP law grants the creator an exclusive opportunity to exploit their creations by granting others the rights to use it.

The overall objectives of the IP law system are lofty. Depending on the domestic policies instituted in various countries, IP law exists to stimulate creativity in society by providing the financial impetus to create. And it is the means by which information is disseminated throughout society, particularly, as certain types of IP confer exclusive rights for only a limited period of time. In this manner, the author or creator of the intellectual output can control and generate revenue from it for a specific period of time before the intellectual output is made freely available to society to stimulate further creativity, without limitation or restraint. As a result, IP law limits the exclusivity of the author or owner of the IP interests from time to time where it benefits the market system or where the public good outweighs private interests. Other types of IP, particularly industrial property, such as trademarks, have been developed to protect the owner or author's commercial value or reputation, distinctiveness in the market place or good will associated with carrying out its business ¹⁴ .

2.2 The Intellectual Property Law System

Because the flow of ideas knows few jurisdictional boundaries, complex legal systems have been implemented to assist in regulating IP and the corresponding rights and interests derived from it. Historically, each country developed IP laws individually, enacting domestic legislation or laws to regulate the use and re-use of intellectual inventions and creativity, having effect within specific territorial boundaries. For example, the Statute of Anne of 1709 was the first law in the United Kingdom enacted to regulate the right to copy printed material, and only had the effect of regulating the reproduction of printed material in British territory by those people subject to the rule of British law ¹⁵ . Based on individual domestic policies, countries enacted laws that operated in a markedly different ways, conferring different sorts of rights, interests, requirements of perfection, limitations and corresponding durations of protection. As a result, owners of the interests had no means of enforcing their domestic IP rights once their creative inventions and expressions crossed into different legal jurisdictions.

Consequently as the need arose, dictated mostly by commercial activities, international legal systems developed, beginning in the latter half of the nineteenth century, to harmonize IP law systems and provide the owners of IP law interest, with a degree of enforceability ¹⁶ . These multilateral treaties have been enacted over the last 130 years with nation states enacting the general principles found in the treaties into their own domestic law, thereby ensuring harmonization and enforceability of IP interests.

Two key features of these multilateral treaties are the principles of national treatment and reciprocity. They allow a national of a country that has ratified an international IP law treaty the same rights as if he or she was a national of a foreign country in which he or she was seeking to enforce IP rights, so long as the latter country also ratified the treaty in question. In addition, national treatment also provides that IP rights of foreign nationals are defined by the laws of the jurisdiction in which the foreign national seeks protection and enforcement. The principle being that the owner of the IP rights will enjoy no greater benefit than any other national of the jurisdiction in question ¹⁷ .

The World Intellectual Property Organization, (WIPO), a specialized agency of the United Nations, was established by the WIPO Convention in 1967 with its initial mission to act as a secretariat for international treaties concerning IP. Since that time, WIPO's mission has evolved "… to promote through international cooperation the creation, dissemination, use and protection of works of the human mind for the economic, cultural and social progress of all mankind." ¹⁸ While it still administers international treaties relating to IP law, its work also includes education of and awareness about IP, and the administration of international registration systems for particular forms of IP interests, thereby further promoting the principles of international cooperation and harmony ¹⁹ . To date, WIPO's membership comprises 184 Member States including both industrialized and developing countries.

2.3 Types of Intellectual Property and their Characteristics

WIPO has identified six forms of IP ²⁰ . For the purposes of this discussion, however, five are most relevant: patents, copyright and related rights, trademarks, industrial designs, and trade secrets.

2.3.1 Patents

A patent is a grant issued by a government, according to law, that allows the patent holder to exclude any other person or corporation from commercially exploiting the patented invention. Patent protection operates within a specific territory, and for a limited time period (the international standard set by the World Trade Organization's Trade-Related Aspects of Intellectual Property (the "TRIPS Agreement") is 20 years from the filing date). Generally speaking, patents are granted for new, inventive and industrially applicable (or useful) inventions, such as new machines, chemical compositions, or innovative processes and methods. The public interest is integrated into the patent system, for example, through the conditions of patentability which aim to safeguard the public domain, or because the applicant has to disclose the invention to the public so that others may gain from the knowledge of how the new invention operates ²¹ .

The criteria of protection require the invention to consist of patentable subject matter (the initial threshold), the definition of which differs throughout the world. In particular, many patent systems exclude from patentability mere discoveries, scientific theories, purely mental acts, biological processes, inventions the exploitation of which would contravene public order or morality and, finally, diagnostic, therapeutic and surgical methods of treatment for human beings or animals. The invention must also be a useful object, novel or new, and must exhibit non-obvious traits (i.e., be inventive) and comply with the criteria of industrial application or utility. In terms of being useful, a patent has to have practical application and not be just theoretical in nature ²² .

If a patented invention is copied or incorporated into other inventions without authorization, then the patent is alleged to have been infringed. Infringement gives rise to a right of action for, in particular, a recovery in damages and declaratory judgment concerning the future use of the invention that incorporated the original patented one.

2.3.2 Copyright and Related Rights

Copyright refers to rights generally conferred by statute to protect the original expression of ideas fixed in a tangible or digital form. Copyright protection is not registered or applied for but instead protects the work from the moment that it has been created ²³ . Copyright does not protect the idea itself, but instead protects how the idea is expressed, arranged, formatted and even organized so long as the expression of the idea is represented with some form of physical permanency, and is original in scope. Copyright is a bundle of rights that include both economic and moral rights. The economic rights conferred by copyright are associated with reproduction and communication, and are given to the authors and creators of these fixed expressions, called works, for a limited time, in order to allow a measure of control and exploitation for the purposes of financial gain. In return, upon the expiration of the term of protection, the work falls into the public domain, becoming available to any person who wishes to reproduce, adapt or communicate it. Thus, copyright embodies the principles of IP law, as described in the proceeding paragraphs, since it provides the financial impetus to develop new intellectual creations and in return, acts to foster development in society.

Copyright law applies to almost every form of mass media, to protect publications, broadcasts, film production and distribution, and computer software. The subject matter of protection includes literary works, (such as poems, fiction, non-fiction, dramatic works, and any form of written work, published or unpublished - computer software applications are generally considered literary works); musical works (as a composition of a musical score or the recording of the music itself); artistic works (whether two or three dimensional, whether digital or analog); maps and technical drawings (such as architectural plans and renderings); photographs (generally, regardless whether they are factual or artistic); and audio-visual works, (including film, television broadcasts, and certain multimedia exhibitions). Copyright also protects content on the Internet and web sites which are usually compilations of various different works, creating complex layers of copyright protection from the website itself, to the copyright that may exist in the underlying works embodied in it.

As copyright is not one right, but a series or bundle of rights, those rights often need to be broken down to understand the depth and scope of potential enjoyment of a copyright protected work. The most obvious right is the right to copy or reproduce the work. Other rights include the right to perform a work in public, which includes the right to play music in a public place; the right to record an audio work, whether musical or otherwise; the right to record an event or happening as a motion picture or audio-visual work, whether fictional such as the performance of a play or in certain cases factual, such as a television newscast; the right to broadcast or communicate a work, whether by signal or cable; and the right to translate or adapt a work, which include modifying a work or translating the work into a different language ²⁴ .

Moral rights are rights conferred by copyright and are required by international treaty ²⁵ . They protect the integrity of the work and the reputation and right of accreditation for the original author of the work. Neighboring (or "related") rights are rights connected to copyright. The rights can vary by jurisdiction, but generally speaking, they are rights conferred to performers in their performance or to producers for their sound recordings and the rights of broadcasters in their broadcasts ²⁶ .

With respect to ownership of copyright interests, the author or creator is usually the first owner of the copyright. There are certain exceptions to this principle, such as in the case of works created in the course of employment or where works are commissioned on behalf of another party. In the case of moral rights, however, the principle is that moral rights always rest with the author or creator of the work in question. It is said that in general, moral rights are inalienable rights.

There are certain circumstances where copyright is limited, other than just for duration or territory. Copyright can be limited where it serves a specific public interest, such as provided for by exceptions and limitations to copyright that conform to international treaties. For example, certain common law countries have "fair use" or "fair dealing" provisions enacted in their copyright laws that permit users in certain circumstances to use copyright protected works without prior authorization ²⁷ . Domestic laws have enacted exceptions to copyright protection for the preservation and management of cultural heritage patrimony, for example, or in the interests of serving the educational community. In addition, certain exceptions may be enacted to facilitate the communications industry, such as in the case of allowing the reproduction of the ephemeral recording for broadcast purposes ²⁸ .

In the event that someone exercises the rights of a copyright owner without obtaining consent, then the rights of the copyright owner have been infringed. Unauthorized copying or distribution of copyright protected content is sometimes referred to as "piracy". Committing infringement can lead to civil damages, criminal liability or both. And, with the advent of the Internet and new technologies, piracy has become an issue at the forefront.

2.3.3 Trademarks, Service Marks and Trade Names

A trademark is a distinctive sign, such as a word, logo or phrase, used to identify an organization or corporation's products. A service mark identifies particular services with the organization or corporation providing them. A trade name is a distinctive name that is associated with a particular organization or corporation. In all of these cases, the purpose of the mark or name is to distinguish the products or services in the commercial marketplace. ²⁹ The requirements for protection can vary but generally speaking they include first, a measure of distinctiveness amongst a particular set of products and services and second, they cannot mislead the public about the product or service relating to the mark ³⁰ .

Unlike copyright or patents, the owners of trademarks, trade names and service marks cannot stop others from copying the goods or services associated with them. Instead, trademark law prevents others from using the mark so as to create confusion in the market place as to the origin of the good or service related to the mark. In other words, the unauthorized use of a trademark or service mark allows the user to benefit from the integrity and goodwill built up by the holder of the mark in relation a particular product or service.

Trademarks, trade names and service marks are subject to registration and territorial limitations and may be subject to registration. Each country has its own system of registration. In some cases, while the provider of a service or manufacturer of a product may be successful in registering a mark or name in one jurisdiction, it may not be successful in another because the mark or name may have already been registered by another party. In addition, trademarks, trade names and services marks are subject to associated uses. This means that similar marks can co-exist in the same jurisdiction so long as marks do not create confusion in the minds of consumers.

The basis for protection is most often legislated, based on prior use and/or registration of the mark or name with a government entity established for that purpose. The duration of the registration varies from each jurisdiction but they can be renewed so long as the holder of the mark can establish its ongoing use. On that basis, trademarks, trade names and service marks can also be abandoned if they are not used in the market place on an ongoing basis. They can also be diluted in strength if not protected by the owner of the mark against infringement.

In common law countries, trademarks are also given common law rights based simply upon established prior use and the distinctive association of the mark with a particular product or service. However, these common law rights are based on seniority so that if two mark holders try to establish rights to a similar mark, the mark that was established first in time, becomes first in right. The right of action at common law for the infringement of a mark is called "passing off".

Trademarks can be distinctive or suggestive. Each type of mark, however, warrants different levels of protection. Distinctive marks establish clear connection with a product or service and are the strongest types of marks warranting protection. Suggestive marks, however, while still considered sufficiently distinctive as to warrant protection are given narrower scope. They often connect a product or service with a place or venue or experience but may not allow the consumer to recognize immediately with whom the mark is associated.

Where marks are used without prior consent, for the purposes of diverting revenues intended for the actual holder of the mark, it may give rise to a right of action based on having produced counterfeit products. Where a mark or name is similar to another and both operate in the same market with similar products or services thereby causing confusion in the market place, it gives rise to a right of action for trademark infringement.

2.3.4 Industrial Designs

Industrial designs may be defined as the "ornamental or aesthetic aspect" of an article that includes shape, pattern, or color, whether two or three dimensional in nature ³¹ . The article in question is most often one that is functional and useful. The industrial design that gives the article its particular shape or appearance contains both functional and non-functional aspects, but many national laws provide that only the non-functional aspects are covered by industrial design protection. The purpose of affording protection to the industrial design is to provide the originator of a new or unique design a commercial advantage in the market place.

Industrial designs are perhaps the hardest form of IP to define and categorize. The rights conferred upon industrial designs can be legislated, depending on jurisdiction and legal traditions. Certain countries have industrial design statutes that provide a degree of protection, once the design has been registered under a government mandated and administered registration system ³² . Generally speaking, the design, once registered is protected for a fixed period of time with possible renewal up to, in most cases, 15 years. In order for the design to qualify for protection, it most often requires unique or new characteristics. An additional requirement may be that the design be manufactured in large numbers ³³ . In other countries, industrial designs are provided less distinct protection, falling under either patent, copyright or trademark protection. The functional or technical features embodied in an article may, subject to compliance with the requirements of national laws, be protected as patents or utility models.

In addition, industrial designs can actually attract multiple forms of protection depending on the nature or aspect of them. For example, in the United States of America, there is no specific statute devoted to industrial designs. Instead, patent, trademark and copyright laws may be available as the means to protect different aspects of design. Copyright may protect pictorial, graphic or sculptural aspects of a useful article as far as those aspects meet the general thresholds of protection under the applicable copyright law as artistic works ³⁴ . On the other hand, patent law can also be used to protect the unique characteristics of a design's functionality. Finally, trade dress, a form of protection under trademark law in the United States of America, protects a design as a trademark where among other traits; it is commonly associated with a particular product ³⁵ . Therein lays the complexity. It is often difficult to dissect the aesthetic aspect from the utilitarian function of the article to determine what might be protected as a form of IP and what form of IP might protect it.

2.3.5 Trade Secrets

Trade secrets are not legislated rights. They consist of confidential or proprietary information that provide the owner of the information a competitive advantage in the market place. This makes such information highly valuable not only to its owner but also to the owner's competitors. As criteria for protection, trade secrets cannot be generally known information and cannot be ascertained readily. Instead, trade secrets are proprietary and can only be obtained by those authorized to receive them, and only by sanctioned means. Because trade secrets are not legislated rights, they can only be protected through contract law or by bringing a legal action based on anti-competitive behavior.

2.4 Other Types of Law Important to Museums in their Administration of Intellectual Property

Other types of laws do have an impact upon how IP rights are administered, particularly for collecting institutions. While they are not the subject matter of this book, they bear mentioning because they impact upon a collecting institution's ability to manage or even exploit IP.

2.4.1 Publicity Rights

These can be legislated or common law rights depending on each jurisdiction. The laws of publicity in the United States operate somewhat like the attribution rights associated with moral rights in copyright or similar in right to trademarks, and provide a publicly recognizable person with the ability to control the use of their likeness or image in the reproduction of an audiovisual work or photograph, in conjunction with the promotion of other types of copyrighted works or in the promotion of products, as in trademark. Publicity rights can vary in duration and in the criteria that determines whether a person is of sufficient notoriety to deserve this special status. Thus, while copyrights may have been cleared to allow for the reproduction or distribution of a work, the requisite consents from the public person whose image appears in or in conjunction with a particular work may not have been obtained, thereby still necessitating additional consenting agreements before the work can be promoted, reproduced or distributed ³⁶ .

2.4.2 Privacy Rights and Ethical Concerns Regarding Privacy

Privacy rights operate somewhat in opposite fashion to publicity rights. They are most often legislated, and in some jurisdictions are considered fundamental human rights. They have become especially prominent in light of the advent of the Internet and the digitization of private records. The purpose of most privacy rights is to ensure that a person who is not publicly recognizable as a prominent political figure or one who holds celebrity status, has the ability to control how his or her image, or their personal information can be made available to others. To the collecting institution, membership records, Internet tracking data and other activities that gather personal information about patrons have to be managed in keeping with privacy legislative requirements.

In addition, even where the copyright may have been cleared to allow for the reproduction and public performance of an audiovisual work, for example, the contents of the work, if particularly sensitive in nature and publicly performed, may violate a person's privacy rights. This is especially the case where the public performance takes place for reasons other than to report the events of the day. Works that include sensitive information about children and their personal information are particularly susceptible to claims of violations of privacy ³⁷ .

Privacy matters are especially relevant where collecting institutions hold archival film collections. While the news of the day may have warranted a public news report at the time an event happened, performing the news report in public 25 years later, could lead to claims of privacy violations, since the purpose of screening the report 25 years after the fact, could not be justified by claiming that the screening was held for the purposes of reporting the news. In such cases, despite the fact that the copyright issues may have been resolved allowing for the public performance of an audiovisual work, privacy concerns may preclude a collecting institution from going ahead with the screening.

2.4.3 Claims, Interests and Laws Concerning Traditional Knowledge and Cultural Expressions

The intersection of traditional knowledge and traditional cultural expression with IP law is complex ³⁸ . Traditional knowledge, such as environmental and medicinal knowledge, is integral to and embodies age-old communal identities, practices, beliefs and values. Traditional knowledge systems are also frameworks of ongoing innovation, representing the vibrancy and currency of the cultures to which they are connected. There is often no one inventor of a traditional innovation. Instead, the innovative process is communal over long periods of time. This body of knowledge, however, may hold significant cultural and commercial value, particularly in the scientific, agricultural and medicinal fields, and thus communities have become much more vigilant in their attempts to preserve and protect it against misappropriation and misuse.

Similarly, traditional cultural expressions (sometimes referred to as "expressions of folklore"), such as music, designs, performances, symbols, art and crafts, are based on long-standing practices within a particular community, are subject to customary laws and protocols, represent a valuable facet of the community's patrimony, and are handed down through generations with the first author of the expression often unknown. Initially, these artistic practices and cultural expressions were not created for the purposes of commercial exploitation but instead embody and represent the culture of the people in the community and often their spiritual practices or ethical values. Like traditional knowledge, traditional cultural expressions are also "living" and evolve constantly over time, as a reflection of the community connected to them ³⁹ .

IP law is predicated, as described above, on being able to identify a particular author of a work and owner of the interests in it. Second, IP assumes that a work is complete at some stage so that rights may be attached to the work and the duration of protection may flow from the time that the work has been created. IP protection is also, mainly, concerned with facilitating commercial exploitation, although, of course, moral rights in copyright also play an important personal and cultural role.

" In this dynamic and creative context, it is often difficult from an IP perspective, to know what constitutes independent creation. Under current copyright law, a contemporary adaptation or arrangement of old and pre-existing traditional materials can often be sufficiently original to qualify as protected by copyright… Is the protection already available for contemporary tradition-based creations adequate or is some form of IP protection for the underlying and pre-existing materials necessary?" ⁴⁰

Yet, there are concerted efforts nationally, regionally and internationally to enhance the respect for and promotion, protection and preservation of traditional knowledge and traditional cultural expressions.

International organizations have made varying degrees of progress towards advancing the field by adding to the research and discussion about traditional knowledge and traditional cultural expressions. UNESCO has passed a number of international conventions and recommendations concerning the safeguarding and preservation of intangible cultural heritage, world heritage sites, traditional culture, folklore and cultural diversity ⁴¹ .

WIPO's work on the legal protection of traditional knowledge and cultural expressions against unauthorized and illegitimate use has been considerable in this field. It has convened an Intergovernmental Committee ⁴² and has consulted broadly with indigenous groups on the subject and published a considerable series of reports on their findings. Most recently, the WIPO Intergovernmental Committee is discussing draft provisions for the protection of traditional knowledge and cultural expressions. These drafts could eventually, depending on Member States' wishes, form the basis for new instruments in these areas ⁴³ .

The study, recording and dissemination of traditional knowledge and cultural expressions by researchers, museums and other cultural institutions has led to indigenous groups voicing the concern that scholarly and preservation activities do not always take adequate account of their rights and interests; documenting or displaying a traditional song or tribal symbol, for example, makes them vulnerable to misappropriation, it is argued. In these cases, the very process of preserving traditional cultural expressions can trigger concerns because of their lack of legal protection.

In response to a widely-felt need for more information and guidance on these issues, WIPO's Creative Heritage Project is developing guidelines, best practices and related resources for the management of IP in recording and digitizing cultural heritage, with a particular focus on issues around access to, control over and ownership of traditional cultural expressions ⁴⁴ . These resources could be useful for communities who wish to prevent the unauthorized exploitation and misuse of their traditional cultures and derive economic benefit from them through community-based cultural enterprises; museums, galleries and other cultural institutions who wish to devise IP-related strategies in support of their safeguarding, educational and, in some cases, income-generation objectives; and creators, researchers and scholars wishing to access, study, share and re-use intangible cultural heritage. The approach by WIPO has been to stress the need for balance between the claims and interests of indigenous and local communities, on the one hand, and creators, researchers and the broader public, on the other ⁴⁵ .

At the same time, a number of countries and regional organizations have introduced domestic legislation that has attempted to give some normative values and structure to the issues. A database of such laws and legislative measures ⁴⁶ reflects the diversity of approaches to these issues at regional and national levels. As well, many indigenous communities throughout the world have developed and made available their own protocols of practice concerning traditional knowledge and traditional cultural expressions. Their protocols have lead to a growing awareness and acceptance of the expectations of the communities holding the knowledge and expressions at issue ⁴⁷ . At the international level, one should also not forget that the WIPO Performances and Phonograms Treaty (WPPT), 1996, provides protection internationally for performers of "expressions of folklore". Such performers have, for example, the right under the WPPT to authorize the fixation of their unfixed performances and the reproduction of their performances fixed in sound recordings.

Thus, significant attention should be paid when dealing with ethnographic collections that include artifacts of significant cultural heritage value to indigenous communities, especially sensitive cultural materials such as secret or sacred artifacts. This is particularly the case where there is a need to exhibit them, or reproduce them for various programming requirements. Depending on the jurisdiction, there may be laws enacted that require additional permissions prior to being authorized to reproduce or make the artifacts available to the public either by performance, in the case of an audio or audiovisual work or by exhibition or display. In addition, special permissions may be needed as a matter of ethics in order to carry out the day-to-day functions of a museum, regardless of the status of the IP. The resources being developed by WIPO, with a particular focus on managing IP issues when recording and digitizing elements of intangible cultural heritage of particular interest to indigenous and local communities, will provide additional and complementary guidance on these issues.

2.5 Contract Law and Acquiring Intellectual Property Rights, Whether for Time or for Life

Apart from creating works in which IP rights subsist, the law has evolved to provide for the means of disposing, selling, renting, and leasing these rights, most often in return for some benefit, whether monetary or otherwise. These practices are dependent upon contract law as the vehicle by which to transfer IP rights from one party to another, whether for a fixed period of time or permanently. IP interests can be acquired, and a type of acquisition instrument or agreement is necessary to effect the acquisition. The acquisition is most often referred to as an assignment of rights. In most cases, it is necessary and desirable to register the change in ownership with the governmental authority charged with the responsibility of the IP registration system.

IP can also be licensed by the owner to another party on terms and conditions among which the most relevant are the duration of the license, territory and purposes of the party licensing the IP. The license is a contractual instrument that acts as evidence of one party having obtained the permission to exercise the IP rights owned by another. And, it is the means by which risks associated with the use of IP owned by another are mitigated.

Essentially, the license specifies:

1. The parties to the agreement, so that it is clear who owns the rights and it is clear to whom the rights are being licensed;
2. The IP that is the subject matter of the license;
3. What types of rights are being granted to the party seeking the license;
4. Authorized uses and in particular uses that may be expressly prohibited;
5. The fees and royalties to be paid for the uses itemized in the license together with any reporting and auditing requirements;
6. The duration that the license is in force and whether it may be renewed;
7. What happens upon default and breach and the indemnities that may flow as a result; and
8. Choice of law and jurisdiction to govern the license, where the scope of the license is international ⁴⁸ .

2.6 The Licensing Model

Traditionally, the licensing model was seen as the optimal way to generate revenue by charging a fee and a royalty as consideration for the license. The publishing industry was the first to develop this model. As media became more sophisticated, particularly in the 20 ^th century, the licensing business model was developed to its optimal level, with publishing houses and producers of media content being placed in substantive positions of power. They commanded many of the terms and conditions of their various licenses both with their end-users, that is the consumers, and with their various stables of authors and composers.

With the development of the Internet, at the end of the 20 ^th century, digital content was believed to hold great commercial potential ⁴⁹ , and individual authors and composers began to use the Internet as a means of self-publishing. The Internet provided the means of experimentation and the traditional licensing started to change to adapt to new ways of publishing and communicating works. Certainly, the phenomenon of peer-to-peer file sharing technology placed enormous pressures on the traditional licensing model for the recording and distribution of music.

Certain collecting institutions, particularly those that represent classes of works that are of interest to museums are placed in the position of being a clearing house of IP rights because so much of their own content is based on the adaptation of pre-existing rights and interests held by others, most often, scholars and artists. Thus, it is now that collecting institutions, in trying to develop sustainable programming, are forced to examine the potential of their own contextualized content as valuable assets. The following chapters seek to define IP held by museums and the best practices to manage them.

2.7 Alternative Dispute Resolution

Disputes may arise with regard to IP licenses. Museums should consider, in order to avoid ending up in the courts of their own location or that of their contract party, alternative dispute resolution (ADR) procedures when they negotiate licenses, particularly international licenses. ADR can assist in the time and cost-efficient resolution of these disputes.

The WIPO Arbitration and Mediation Center, for example, offers several ADR options, principally arbitration, mediation and expert determination ⁵⁰ . The potential of the Center's services for the resolution of disputes in the cultural sector has been observed by a number of authors ⁵¹ .

The WIPO Arbitration and Mediation Center has established Recommended Contract Clauses which can be included by parties to licensing agreements ⁵² . Different options exist, such as the clause stipulating ‘Me diation Followed, in the Absence of a Settlement, by Expedited Arbitration':

"Any dispute, controversy or claim arising under, out of or relating to this contract and any subsequent amendments of this contract, including, without limitation, its formation, validity, binding effect, interpretation, performance, breach or termination, as well as non-contractual claims, shall be submitted to mediation in accordance with the WIPO Mediation Rules. The place of mediation shall be [specify place]. The language to be used in the mediation shall be [specify language].

    If, and to the extent that, any such dispute, controversy or claim has not been settled pursuant to the mediation within [60][90] days of the commencement of the mediation, it shall, upon the filing of a Request for Arbitration by either party, be referred to and finally determined by arbitration in accordance with the WIPO Expedited Arbitration Rules. Alternatively, if, before the expiration of the said period of [60][90] days, either party fails to participate or to continue to participate in the mediation, the dispute, controversy or claim shall, upon the filing of a Request for Arbitration by the other party, be referred to and finally determined by arbitration in accordance with the WIPO Expedited Arbitration Rules. The arbitral tribunal shall consist of a sole arbitrator. The place of arbitration shall be [specify place]. The language to be used in the arbitral proceedings shall be [specify language]. The dispute, controversy or claim referred to arbitration shall be decided in accordance with the law of [specify jurisdiction]."

ADR options may not always be the preferred contract option, but contract partners can only benefit from knowing the various dispute resolution options available to them.

Chapter 3 - Defining Intellectual Property for Museums

Of the five types of IP identified in the proceeding Chapter, museums own or manage them all. Since 1999, studies and scholarship concerning the management of IP for museums have surveyed institutions both quantitatively and qualitatively to determine how they define their IP, and below is a cross section of the scholarship thus far.

3.1 Copyright

The Canadian Heritage Information Network (CHIN) undertook a commercial market study for museum IP and then, in 1999, a management practices study of North American museums. Both studies identified the following types of copyright-protected assets that were either held by or owned by museums as part of their collections:

• Photographic images of artifacts and artworks in museum collections;
• Audio recordings and publications, such as CDs;
• Audiovisual works;
• Multimedia productions whether on CD or available on the Internet;
• Publications, and educational material, whether in print or electronic; and
• Databases of information about collections ⁵³ .

3.2 Trademarks

In 1999, the American Association of Museums published its Guide to Copyright and Trademarks ⁵⁴ , where it identified both copyright-protected assets and trademark-protected assets as being IP held or managed by museums. In addition to the above listing, it also identified a number of assets protected by trademark law owned or found in the collections of institutions. Their listing includes:

• The museum's name and any identifying logos or graphic work as a trade name or trademark;
• An artist's name or signature as a trademark, with many prominent artists or their foundations moving to register their names or protect their uses;
• The building in which the museum is housed, particularly if it is highly recognizable and sought after as a filming venue, such as, for example, the Guggenheim Museum in New York;
• Titles of exhibitions and programs, protectable as trademarks;
• The packaging or color of museum-based objects, often sold in their gift shops as a form of trademark law; ⁵⁵ and
• Works of art as trademarks, where the work in inherently tied to the museum in a way that patrons will immediately be reminded of the institution or the artwork when thinking of either.

3.3 Patents and Trade Secrets

In 2002, co-sponsored with the National Initiative on Networked Cultural Heritage, CHIN hosted a Copyright Town Meeting on the development of museum IP management policies. In addition to copyright and trademarks, two other types of IP were added to the list, inherent to the administration of the museum. At the meeting, thus, four broad categories of IP were identified in museums:

• In collections, as initially identified with the advent of the new technologies;
• In academic activities, such as in the contextualization of information about collections often written by the curators of the museum;
• In technologies, such as specialized collections management methods and technical applications; specialized html mark-up language for museums, scientific conservation techniques; business methods concerning various e-commerce capabilities associated with online retail; and
• In the administration of the museum, such as its database of patrons, donors and sponsors, its business practices and methods concerning fund-raising; its organizational management structures, specific to non-profit museums ⁵⁶ .

The latter two points refer directly to IP created by the museum that can either be patentable or considered trade secrets.

3.4 Domain Names

In addition to the list of IP assets above, considerable investment has been tied into the development of Internet domain names by museums. Domain names perform functions similar to trademarks. While domain names are not strictly speaking a form of IP, they will often include trademarks and trade names, and can attract significant value. For that reason, domain names require substantial and strategic management in initial choice and then in ensuring that they are properly renewed and defended against inappropriate copying or use ⁵⁷ . Museums in particular are not immune to these management requirements, particularly with of the acceptance by the Internet Corporation for the Assigned Names and Numbers of ".museum" as a top-level domain name ⁵⁸ .

3.5 Industrial Designs

As noted in the preceeding Chapter, design can be captured by a number of different forms of IP. Various museums either have design collections, or, as a means of creating products for commercial development, commission new designs that are inspired by their own collections. Depending on the domestic laws protecting industrial designs, IP rights may apply to objects in a collection, thereby necessitating licenses for their reproduction and distribution. Furthermore, cultural sensitivities may also demand the need for restraint and negotiation before these objects can be reproduced and distributed by the museum. Finally, with respect to commissioned works, depending on the domestic laws protecting industrial designs and the agreements negotiated with independent designers commissioned by the museum, commissioned designs may provide a new source of IP for museums. Chapter Six discusses at length the commercial opportunities afforded to museums that may wish to create and distribute products that are design-based under their respective trade names and marks.

Notwithstanding the type of IP at issue, museums are stewards of their collections with the three pillars of mission and mandate being to:

1. Preserve its collections;
2. Educate the public about them; and
3. Provide the public with access to the collection.

Strategic and informed management of IP, it is argued, will strengthen the ability of the museum to deliver under all three stated pillars. Chapter Four will address the management techniques which will allow museums to take advantage of the defined business opportunities. Part II of this publication will address potential business opportunities that, if well managed, could result in an increase in sustainable funding for programming.

Chapter 4 - Intellectual Property Management For Museums

First and foremost, the purpose of this Chapter is to define and discuss a series of best practices that enable museums to understand, review, critique and, if warranted, leverage business opportunities described in the preceding Chapter. In short, they are referred to as IP management practices. Even if a museum determines that it does not wish to engage in business opportunities, these best practices, it is argued, are still necessary since they provide the means to accomplish purpose, mission and mandate. Sound IP management practices not only allow a museum to engage in business opportunities but also protect it from unwanted and often avoidable liability for IP infringement.

IP management is a series of processes that help to identify, organize and enrich the understanding of a museum's collection. In the past, museums identified their property and collections as tangible assets. For example, real estate or leasehold interests for the real property of the museum are managed by the administrative arm of the museum. The collection, on the other hand, is managed by the registrar or collections manager. With the advent of new technologies and the growing awareness of complex IP issues, new management processes are now recognized as necessary to manage the assets and liabilities that may not be readily apparent.

Initially, museums lacked the expertise to deal with such matters because IP assets are not tangible - that is, not readily recognizable as institutional assets. With the development of technology, museums have developed unique management techniques for their intangible assets.

No matter in what manner museums engage in IP management practices, the current practices of museums in managing their IP will also impact how they manage IP in the future, notwithstanding any new practices or policies they adopt. Consequently the following requisites of IP management also include a requirement concerning context, tradition and culture in IP management that cites regional snapshots of current management practices. In business terms, regional snapshots of current management practices are referred to as the "environmental scan".

Essentially, IP management can be divided into seven distinct categories:

1. The IP inventory or audit;
2. The IP policy;
3. Licensing strategies;
4. Digital rights management solutions;
5. Outsourcing;
6. The communication and marketing plan; and
7. The environmental scan.

4.1 Best Practices Recommendations for the Intellectual Property Inventory or Audit

If you are not aware of the IP assets your museum may own, or the terms and conditions of the IP assets you may have licensed then it is likely that it will not be able to assess whether your museum is able to engage in the business opportunities presented in the previous Chapter. For, they are all predicated on the understanding that the participants understand what assets they own and what those assets may be worth to the other party.

Diane Zorich, in her seminal work "Developing Intellectual Property Policies: A How-To Guide for Museums" ⁵⁹ states that:

" The IP audit serves many functions. It tells you exactly what IP you have and where it came from. It also triggers actions that make a museum more accountable for its assets and helps facilitate creative projects using "rediscovered" assets. In addition, it helps an institution monitor compliance with IP laws and avoid infringements". ⁶⁰

An audit of IP in a museum is not necessarily an audit of past practices. It is, instead, an inventory of the IP assets held by the institution, whether by creation, acquisition or license. It is also an inventory of IP interests, relating to the artifacts in an institution's collection, even where the rights holder is unknown or held by another party. Hence, it is suggested that the IP inventory be mapped against the general inventory of the collection, integrating the results of the inventory, if possible, into the collections management system.

In addition, the inventory can be divided into IP interests associated with the collection and IP interests associated with the administration of the museum. The latter comprises the IP interests managed through the administration of the museum as a whole, such as its trademarks and names, the license of its location for use in films, any technology innovations developed by the museum, its business methods and finally, the licensing or syndication of its publications.

The audit can be a time consuming and complex process and there is never an optimal time to start it. Most often, however, outside forces dictate a review of the IP assets in an institution, such as the development of a new initiative or even when the museum has been accused of infringing IP laws. It is always best to be proactive in managing issues associated with risk so that the risks can be avoided or contingencies can be put in place to minimize them. Hence, it is recommended that the IP audit or inventory commence by a decision taken by management. The short message is "don't wait for a triggering event".

How do you determine who is responsible for this task? In the event that the audit begins with a review of the IP assets associated with the administration of the museum, those responsible for the institution's administration should most likely be responsible for the audit. An IP audit of the copyrights associated with the collection, on the other hand, is best undertaken by staff members that work directly with the collection. For example, administrative staff who may grant permission for the use of the institution's location as a filming venue will have an understanding of the terms and conditions of previous grants, the value associated with the grant, and the terms and conditions required in each case.

Collections managers, or registrars of a museum, on the other hand, have a better understanding of the breadth and scope of a collection. The staff members who are responsible for the development and publication of a catalog of the collection will also have the experience in rights and reproductions matters associated with its publication. These staff members may be better off managing the part of the IP audit or inventory associated with the collection itself.

Finally, if you have access to legal counsel, have the lawyer review the inventory and any decisions recorded in it. Consider consulting your lawyer on an ongoing basis if a provision in a document requires interpretation in order to determine the status of the rights associated with the asset. Thus, it is recommended that the tasks in the inventory be distributed substantively, based on experience and responsibility, with one or two people responsible for delivery of the finished product.

The Canadian Heritage Information Network (CHIN) determined in a quantitative study undertaken in 1999, that many museums do not centralize the function of rights management. Instead, the function is disbursed across the institution based on need ⁶¹ . Therefore, the publications department or curators may have already determined the rights to works in the collection out of necessity, due to a particular exhibition or because they published a catalog.

A museum's own archives may hold many of the types of files documenting the use of the collection in ways that indicate prior IP management decisions. As well, the administration or management of IP rights inherent to the museum will most likely sit with the administrators for the particular function or task. Sometimes, if legal counsel was involved, the lawyers may actually have the files needed to complete the inventory. The recommendation, thus, is not to expect that the information will have been centralized unless your museum made it a priority to centralize the function in the first instance.

What sorts of documents do you look for in the inventory process? The best-case scenario is that the IP rights associated with the collection were actually acquired together with the collection, at acquisition. The acquisition documents, are thus, key to determining the status of the rights associated with a collection. In addition, former and current licensing agreements may provide you with a lot of information such as rights already licensed for particular uses, the coordinates of those who hold the rights so that they may be contacted if necessary, the limitations that rightholders requested and the fees paid for the rights to reproduce or distribute the IP in question. Exhibition agreements also provide key information concerning IP because the licensing provisions could have been incorporated into the exhibition agreements as opposed to being found in separate documents. To that end, Diane Zorich suggests reviewing visiting lecture and curator agreements for the rights associated with their curatorial work while on temporary assignment at the museum ⁶² .

Finally, administrative files may hold letters or even email that suggest the status of IP rights corresponding to a particular work. Depending on the status of domestic contract law, such correspondence may be considered to be part of an agreement as a whole or may at least be considered as providing evidence of the intentions of the parties. The recommendation, therefore, is to be as exhaustive as possible in reviewing any documentation that may provide information about the rights associated with the collection. There may not be the "smoking gun" agreement or license that provides a clear understanding of the related rights and interests.

What information do you record in the inventory? There are many ways to record an inventory of IP rights associated with either a work in a collection or with the museum's self-created IP. The two most important fields of information in an inventory provide the reviewer with the immediate knowledge that the rights to the work in question are either owned by the museum or that the IP rights associated with the object or work in question have expired. Other fields of information seminal to the inventory are, if known, the duration of any IP rights still protecting the work and the contact information for those individuals or companies administering these rights. Finally, the inventory should record any limitations on the use of the works. For example, if an artist does not wish to license the reproduction and distribution of his work on the Internet, this information should be recorded in the inventory. The recommendation, therefore, is to determine the most important type of information required by your museum based on need and specialty and be consistent in providing the same information for every IP interest identified.

Several experts in the field suggest that the inventory should record past fees paid, fees earned and known risks in reproducing and distributing the content without permission. Fees and risk information represent an overall valuation of the IP assets. ⁶³ As mentioned in the previous Chapter, the reputation and integrity of the institution are two of its most valuable assets and undue risk that harms reputation or integrity can affect the overall value of the institution's trademarks. Thus, loss of reputation for having knowingly infringed IP is highly problematic. Of course, the financial and sometimes even criminal liabilities associated with some infringements, depending on jurisdiction, will also affect greatly the ability of the museum to continue to operate. Thus, it is recommended that where limitations on use have been identified in prior agreements or where particular sensitivities have been recorded in correspondence with rightholders, these limitations should be recorded in the IP inventory.

Are there other legal or ethical issues that may preclude certain uses? These include legal considerations such as privacy rights and publicity rights. Is the artifact in question from an ethnographic collection and thus sacred to indigenous communities? Is the artifact in question, while in the public domain, protected as a traditional cultural expression? What if the work in question falls into the public domain but the artist still wants to be consulted on future use as a contractual right? Are all the rights in different aspects of musical works exhausted? It is recommended therefore that where ancillary rights to IP impact upon future reproduction or distribution, then they should be recorded in the inventory.

Included below are two sample inventory sheets based on inventories of collections prepared by graduate students in the Moving Image and Archive Preservation Program at the Tisch School for the Arts, New York University, and a checklist for license clearance and IP inventory assessment prepared by Maria Pallante-Huyn ⁶⁴ .

Sample Inventory Sheet 1

Sample Inventory Sheet 2

 

Checklist for License Clearance and IP Inventory Assessment ⁶⁵

The Process of Policymaking: From IP Audit to Valuation and Management
September 4, 2002
(Maria Pallante-Huyn)

1) THE AUDIT: Why, Who, When, Where, What?

Why Should a Museum Conduct an IP Audit?

• For the sheer joy of inventory: what do you have? Where did it come from?
• To trigger and facilitate creative projects using found "assets"
• To monitor compliance (for your use of third party IP and vice versa)
• To avoid infringement
• o create an accurate IP POLICY

Who Should Conduct a Museum's IP Audit?

• Anyone dealing with or benefiting from the Assets in the Ordinary Course of Business

When should a Museum Conduct an IP Audit?

• Regularly
• Prior to a business dealing or new project
• With introduction of a new rights or permissions employee
• As result of law suit

Where is a Museum's IP?

• Know Your Departments and Office

What Are You Looking for, What are you looking at, Exactly?

• Trademarks (Names, Logos and Building Images), Trade dress, Domain Names (SM), Copyrights
• Federal Registrations/State/Foreign/Common Law
• Collections, Publications, Products, Websites, Databases, Exhibition Names, Design, Lectures, Images
• How to Analyze Ownership: A Primer on Assignments, Licenses, Releases and Work for Hire

2) VALUATION: Intangible Assets Can Have Tangible Worth

• Formal Valuation/Risk analysis for balance sheet vs. Informal Cultural Assessment
• Measuring through Licensing (in both directions):
• Scope of Rights Conveyed Weighed Against Restrictions or Conditions
• Measuring through Industry Standards/Comparable Arms Length Transactions (Fair Market)
• Generating Revenue and other Pleasant Surprises: Exploiting IP within the Mission of your Museum

3) MANAGEMENT: Building the Great IP Database

• Keeping Good files
• Writing Good Contracts and Licenses/Record Keeping
• Tracking Ownership and Rights
• Tracking Copyright Status (Copyright Term/A Word about Shorter Durations)
• Remembering Photo Rights and other subsidiaries (but see Bridgeman)
• Register
• Monitor for Infringers
• Attach proper legal notices, credit lines, framing & linking, conditions of website use
• Create an IP INTRANET for employees to learn about IP and IP procedures

 

4.2 Why an Intellectual Property Policy?

At the 2002 NINCH Copyright Town Meeting, six reasons were cited in favor of developing internal IP policies for museums:

4.3 The Intellectual Property Policy - The University Model

The IP policy of a museum is a series of principled statements that provide guidance to administrators of museums faced with decisions concerning the use of IP either owned or licensed. This is not a novel concept, nor unique to museums. In fact, the private sector uses policy-like documents to assist them in making decisions concerning potential licensing requirements and business opportunities ⁶⁸ .

Thus, as with the university policy, the museum IP policy is a series of statements to be used internally within the museum. Its overall purpose, if applied consistently, will be to mitigate risk. Its administrative purpose is to clarify the rights and obligations of the institution, the faculty, authors and artists whose works are considered part of the collection and the corresponding interests of the institution's patrons.

At the Copyright Town Meeting on Intellectual Property Management for Museums, held in Toronto in 2002, Professor Laura Gassaway, of the University of North Carolina, reviewed the university experience in developing IP policies. The objective of the policy was to clarify issues before disputes arose. Gassaway reviewed reasons why academic institutions require a policy. University policies included statements about how it protected itself from liability for infringement, statements concerning ownership and use of self-generated IP, the means by which the institution clarified ownership of student IP and student use of third party rights ⁶⁹ . It was concluded that, much like a museum, the university is both a user and creator of IP. The National Initiative for Networked Cultural Heritage ((NINCH), and CHIN, while working together, recognized the similarities and began a process of trying to adapt the university policy to the museum, resulting in a joint publication released in 2003, used by many to guide them through the policy process ⁷⁰ .

4.3.1 How to Create An Intellectual Property Policy

There is no set format of development, and some museums treat their policies as being organic, developed through iterative processes. For example, while it may be best to develop a cohesive policy, written and implemented at the same time, the set of guiding principles that form the policy could have developed in an ad hoc way, and over a long period of time. Notwithstanding, there are several factors to consider in undertaking the policy process:

• The time commitment: The policy will not be developed overnight, nor should it be. It is an ongoing task that has to be integrated into the work plans of staff engaged in the process of developing the policy and amending it, over time. Even once it has been drafted and adopted, it has to be revisited every so often as a means of ensuring that it remains current with business practices and the law.
• Gathering support for the cause: In order for the policy to work cohesively and be implemented consistently, the staff and executive management have to support the initiative conceptually, approve of and engage in the process to develop it, approve of the final product and provide leadership in ensuring that it is implemented throughout the museum.

As a means of introducing the subject matter so as to gather support for it, evidence is crucial. Anecdotal evidence, such as prior experiences is often persuasive. For example, as a means of developing an understanding for the need of protocols of practice within the documentary film community in the United States, American University, Center for Social Media in conjunction with Washington College of Law, published a report that provided persuasive evidence that the community was failing to use some of the legal tools available to it in US copyright law to clear rights for production purposes ⁷¹ . The members of the documentary film community had been led to believe that permissions were required for every potential re-use of film content, when this was not necessarily the case. The report led to the development of a published IP policy about the re-use of film content that is now endorsed by a host of documentary film producers, funders, and film associations in the United States. Other organizations and communities are now emulating this policy development process ⁷² .

While the museum's policy will be an internal one that most likely will not be shared amongst an open community, it may be of benefit to circulate some sort of initial written report of past experiences within the institution as a means of marshalling support. As additional impetus, the report should include some assessment of risk for failing to engage in the policy process as part of effective IP management. Even if past experiences suggest that the museum has not faced prior legal action for infringement of IP rights, financial risk can also be categorized as a failure to assess properly potential business opportunities.

• Engaging the right people: The key is to take an all-inclusive approach, with only a few staff members being placed in charge of the drafting process. Staff responsible for IP decisions should be engaged in the process. This could include:

• Staff responsible for rights and reproductions in publications;
• Staff responsible for education and outreach;
• Curators (to the extent that they may engage in such tasks);
• Registrars and collections managers;
• Publicity and communications staff;
• Conservation staff; and
• Executive management responsible for strategic planning, since they have a lateral understanding of the operation of the museum.

Key to the development of the policy, however, is to ensure that lawyers are not brought into the process too early. Lawyers should review the policy statements to ensure that they are within the law and provide some strategic input. However, since they do not engage in the business of running museums per se, then they should not draft the policies. A small working group should be struck to draft the policy statements and, once drafted, they should be circulated for comments. Once a draft has been approved for the group or committee of staff engaged in the process, it should be reviewed by executive and, if available, legal counsel.

• The tie-in to the IP audit or inventory: IP policies have to be customized to the needs of particular museums. Thus, it is essential that the policy flow from the inventory as a means of addressing the IP management issues identified in it. This includes an assessment of your museum's level of risk tolerance as catalogued during the inventory process. In the event, that your institution is highly risk-averse, the assessment will be reflected in your policy's statements.
• The tie-in to current business practices and mission and mandate: The policy should take into account existing business practices and other administrative policies so that it is a harmonious document working in concert with the mission of the museum. A balanced approach is needed in IP management to ensure that museums continue to operate in a way that reflects their overall mission.
• The tie-in to ethics and values: The soft law issues mentioned in Chapter Two might, depending on each institution's collection, play a part in modeling the policy. Notwithstanding the law, it may be of benefit to require input from a stakeholder in a collection because of cultural sensitivities or as a means of protecting a long-standing tradition or relationship. If this is the case, it is recommended strongly that these ethics and values be reflected in the policy.
• Adoption, education and enforcement: Once the policy has been approved by those responsible for its creation, executive management should move to adopt it such that it is enforced throughout the museum. An education process is required inside the museum to educate staff that were not involved in the policy development process. If a museum has a large staff, it is advisable to require the communications department to create an internal communications strategy. Finally, once the policy has been adopted, disseminated, communicated and implemented, it should be recognized as a living and not static document. Developments in law, business and administrative practices, and technology may lead to a need for amendments. Thus, the policy should be reviewed on an annual or even bi-annual basis to ensure that it remains current.

The Royal Ontario Museum (The ROM) developed its own IP policy. The ROM model has been the subject of much discussion and emulation. ROM's policy was seen as driving the business side of its digital initiatives with ROM expecting immense growth in three key areas: the museum attraction, asset exploitation, and educational programming. As stated by Brian Porter of the ROM, a " copyright policy is key to success in these areas" ⁷³ . Set out below is the ROM's copyright policy as a reference ⁷⁴ . In addition to the ROM policy and as a matter of comparison, the copyright policy developed by the University of North Carolina's 16 separate campuses that has been in effect since 2001, is attached in the Appendix to this Guide ⁷⁵ .

 

4.4 The Licensing Strategy

If a museum makes the decision to engage in complex licensing activities, then it should create a licensing strategy. Lesley Ellen Harris describes the museum licensing strategy, with reference to digital licensing, as follows:

" A digital licensing strategy is a blueprint or plan that guides your museum as a whole through the digital licensing maze. Taking into account the unique position of museums, the strategy must examine licensing from both the perspectives of owners, and consumers, of digital content. From the owner perspective, your strategy need not repeat but should reflect your museum's IP Policy. Whereas your IP Policy will help you audit and determine your copyright assets, your digital licensing strategy will take you to the next stage of granting rights to the use of those intangible assets to others and financially benefiting from doing so." ⁷⁶

IP matters are complex, requiring the ability to track and manage rights flowing both in and out of the museum. Licensing strategies take a long view so that where possible, term expirations, license duration, and renewal negotiations can be timed so that workload and financial pressures can be managed comfortably over time. This is a key feature of a well-run licensing venture.

Licensing strategies also help to determine whether new licensing opportunities are feasible. The licensing strategy allows the museum to map prior financial and IP commitments over a time line. An institution may want to engage in a new project, but it may have already committed the funds or the rights to previous projects or ventures. The licensing strategy provides the means to manage the rights in such a way that avoids this result.

Finally, the licensing strategy behaves like a work plan. It allows long term proactive planning for new opportunities. The museum can remain in control and seek out new business opportunities instead of simply reacting to opportunities that are presented from time to time.

4.5 Digital Rights Management Solutions

Digital rights management (DRM) is a term given to a very broad spectrum of technology ⁷⁷ . Essentially, it is the technological means to either control, track or provide or deny access to and use of content in the digital environment. There are many types of different forms of DRM, and DRM means different things to different users and implementers.

A quick search of the term "digital rights management" on the Internet reveals multiple definitions. DRM includes technology that marks content as being owned by a particular person or organization. Watermarking technology used on images is an example of this type of DRM. DRM can also include information, known as rights management information, that is tagged to the content to inform a user about its owner. And finally, DRM can act as a barrier to access, where rights expression languages are used to inform a user about the limitations of use on content, or allow the owner of the rights to track the use of its content. The form of DRM, however, that is reported in the news with acute regularity is the form that denies access to the content unless a secure key (that can be as simple as a user name and password), is provided to the user in advance, usually once the user has signed an access contract and paid for the reuse of the content ⁷⁸ .

While some attempts have been made to work across party lines ⁷⁹ , the development of these technologies have been driven largely by the commercial content industry in their attempt to thwart rampant online piracy of intellectual assets. DRM is still at an early stage of development and many of the software applications developed have taken an all or nothing approach. That is, they either allowed access or they denied it outright, regardless of the exceptions and limitations in IP law that give access and certain limited uses to targeted users for particular purposes. These targeted users often include educators, students, and largely the nonprofit museums. Pamela Samuelson, a noted IP scholar who advocates for the educational sector in the United States, hopes that market forces push DRM to take into account consumer needs and advocates for a strong consumer aware DRM:

" Unless the technology industry, computing professionals, and public interest organizations define and endorse a common set of principles, [broader consumer protection awareness in DRM] may not happen at all." ⁸⁰

Museums have not been enamored with DRM technology for policy and even ideological reasons. Museums, whose mandates include providing the public with access to content, have viewed these technological barriers as impediments to the fulfillment of purpose. Consequently digital rights management technologies, particularly those devised to deny access, have been viewed with skepticism. Thus, very few museums have given it any thought, with many relying upon copyright statements on their web sites as a means of deterrence. In addition, many museums have also relied upon the use of low-resolution images so that the image, if copied off a website, would likely not be useful for most commercial publishing endeavors ⁸¹ .

This approach is no longer sufficient because museums provide online access to content far more dynamic than the image. How can museums provide online access to copyright protected audio and audio-visual material without infringing copyright or inviting others to do so? It could very well be that museums may be forced to adopt various forms of DRM solutions not for the purpose of denying access to content, but instead, for the purpose of ensuring measured access by the public to any copyright protected content at all. This is not a novel concept but, given the polarized environment surrounding the use of DRM within the non-profit sector, a little discussed one.

The Canadian Heritage Information Network has been studying the development of the implementation requirements for, and available DRM products to, museums since 1997 when they published the first edition of the Virtual Display Case ⁸² . Now in its third edition, the purpose of the publication is to provide a guiding tool for the protection of electronic images in the Internet environment. In addition, CHIN's publication rating and accrediting collections software products, entitled "Collections Management Software Review", also includes a rating criterion that collections management software include the management of rights and reproductions information about each artifact catalogued in a collection ⁸³ . The fields of information could include no less that those recommended in the copyright audit sheets discussed earlier in this Chapter.

Thus, while DRM solutions for museums may not have been introduced wholesale for commercial purposes, museums have recognized the need to track information about the IP associated with the artifacts in their collections as a necessity of working in contemporary outreach and educational contexts.

While certain DRM, more particularly protection technologies, are categorized as technology that operates in the extreme, either barring access entirely or providing access only by way of license, it may be possible to create DRM solutions that take a more measured approach by allowing access without license in targeted circumstances ⁸⁴ . It has been suggested that DRM solutions can be devised to take into account certain consumer needs, such as free access for educational use.

According to John Erickson, while DRM operates in essentially a yes/no environment, the key to a successful DRM solution lies in the development of clearly articulated complex IP policies. These policies can be translated into computer code so long as they are articulated with various outcomes, given value and determined in advance. Erickson emphasizes that any oversimplification could result in a bad decision on the part of the software to accept or deny access:

" Only those policies that can be reliably reduced to yes/no decisions can be automated successfully… policies that are subject to many exemptions or based on conditions that may be indeterminate or external are difficult or impossible to automate with DRM". ⁸⁵

While it may be difficult to map certain educational exceptions at such a granular level, it is quite likely that a number of access requirements for educational or academic use could be mapped in computer code so long as the museum's institutional IP policy is taken to a very granular level ⁸⁶ . It could also mean that users trying to gain access may have to answer questions about their intended uses prior to obtaining it, with the questions and answers being automated online. Users may also have to enter into the system through trusted means, such as a recognized Internet Protocol. Finally, for those complex cases that cannot be automate