LAW AND AUDIO PRESERVATION
Intellectual Property Section
Office of General Counsel
University of Texas
Strictly interpreted, the task of “preserving audio collections”
encounters few if any copyright problems. After all, the Copyright
Act specifically authorizes libraries and archives to preserve materials
in any medium, including sound recordings, both published and unpublished.
But preservation alone, without some context, may seem pointless.
We don’t wish just to preserve, but to provide access—at
a minimum, to researchers—but more broadly, to the public, to
the people whose culture our audio collections record.
The Copyright Act (17 USC 101 et. seq.) defines what will be protected
and for how long, the rights of copyright owners, and limitations
on those rights in favor of the public. Copyright owners have a set
of exclusive rights that allow them to control how their works will
be exploited—to a point. Their rights are not absolute, but are
limited by the rights the act provides to members of the public to
use the works, and to special groups such as libraries and archives,
that make works available to the public, and by a term of protection
that does not last forever (it only seems that way). If there is no
specific authorization in the law for a use one wishes to make of
another’s work, that use will require the permission of the copyright
owner. Once works enter the public domain, they may be freely used
by anyone for any purpose. The date on which works enter the public
domain varies depending on when and where they were created, but as
a general matter, the term for protection averages and in many cases
exceeds 100 years in the United States.
The framework of copyright law treats different kinds of rights, different
kinds of media, and different kinds of uses differently. Every little
subtlety is important and is there for a reason. Sometimes, however,
the reasons get lost over time so that things that made sense once
no longer do.
The rather convoluted way sound recordings have been protected in
the Copyright Act illustrates these points. They represented a “new
technology” at one time and were initially denied protection
altogether. When they were federally protected in 1972, their protection
was woven into a pre-existing fabric that had evolved mainly to serve
the needs of commercial book and sheet music publishers. Congress’s
focus was primarily on preventing piracy, that is, unauthorized duplication
and distribution, so it did not give the owners of copyrights in recordings
a performance right. Anyone could perform any sound recording without
permission from the owners of the recording, though they were required
to pay a statutory license fee to the owners of copyright in the underlying
composition. The Internet prompted a change in this limitation, however,
and recordings now enjoy a limited performance right by means of digital
audio transmissions. The way recording copyrights have varied over
time gives their protection a sort of “patch-work” quality
that makes understanding difficult, even for lawyers.
For the next 20 minutes, we’ll look a little more closely at
the patchwork of protection for recordings as a way to help us figure
out which recordings may be in the public domain. Then we’ll
focus on the special exemptions that permit us to archive and make
recordings available to the public even when they are still protected,
and finally, we’ll assess the shortcomings in all of this and
review some actions we might take to maximize what we and our patrons
can do with the recordings we have so carefully preserved in our collections.
THE LEGAL FRAMEWORK
U.S. Recordings Protected by Federal or State Law. Today, federal
law protects U.S. sound recordings fixed on or after February 15,
1972 (hereafter, “1972”). As indicated above, these recordings
enjoy only a limited set of rights. Copyright owners have the exclusive
right to reproduce a recording in phonorecords, to prepare derivatives,
and to publicly distribute phonorecords. Recording copyright owners
do not enjoy an exclusive right to publicly perform their recordings;
rather, Section 106(6) provides that the owner of rights in a sound
recording has the exclusive right to perform the recording publicly
by means of a digital audio transmission. Over-the-air broadcasts
by terrestrial broadcasters licensed by the FCC do not violate the
limited right because there is an express exception for them. Further,
there is a statutory license available for transmissions that are
not interactive such as typical Web casting. Congress equates interactive
transmissions with sales of records and treats them differently from
“streaming” and Web casting that are primarily intended
for listening. Copyright owners may authorize or forbid interactive
transmissions, as they see fit, just as they authorize or forbid duplication
and distribution of physical recordings.
So, what about all those pre-1972 recordings? It is tempting to conclude
that U.S. sound recordings fixed before 1972 must be in the public
domain since they are not protected by federal law, but that’s
not quite true. Pre-1972 recordings are protected by state statutes
and common law copyright, misappropriation, and unfair competition
laws until 2067 (95 years after the date on which recordings first
received federal protection in 1972). I researched Texas’s common
law of copyright. What little law we had addressed the right of first
publication and was superceded by federal law in 1978, the year we
moved from the old dual system of common law copyright for unpublished
works and federal statutory copyright for published works to a unitary
system where federal law protects all works from the moment of their
fixation in a tangible medium. Some states have more elaborate statutory
and common law. New York, home of the publishing industry, has many
cases that discuss the subject. While it is beyond the scope of this
short overview to delve into the laws of all 50 states, we can note
that for the most part, state laws today protect the owners of properties
not protected by federal law from misappropriation and unfair competition.
The hallmarks of a claim under state law are bad faith, fraud, or
misappropriation coupled with copying and distributing someone else’s
property. Usually, a directly competitive relationship between the
owner and the user is required. Mere duplication alone is not likely
Foreign Recordings Protected by Federal Law and Possibly State Law.
Foreign recordings are protected in a different manner. Until 1996,
pre-1972 recordings created and published in foreign countries were
ineligible for protection in the U.S., just like their U.S. counterparts.
Today, a foreign sound recording not in the public domain in the
country of its origin on January 1, 1996, when the Uruguay Round
Agreements Act (URAA) of the General Agreement on Tariffs and Trade
(GATT) went into effect, and
first published before 1972
° in an eligible foreign country (one of the signatories to the
Berne Convention or WIPO Copyright Treaty, a member of the WTO, or
an adherent to the WIPO Performances and Phonograms Treaty),
° with at least one author or rights holder being a national of
or domiciled in an eligible country,
° and not published here within 30 days of the foreign publication,
is protected in
the U.S. for the full term of protection it would have had if published
here as a book or image or other work comprising protectable subject
matter under federal law—95 years from the date of publication.
The URAA “restored” the foreign work’s copyright in
the United States.
Here are two examples that illustrate how this works: If a composition
were created in 1920 and performed and recorded in London in 1935,
the recording would be protected by U.K. law (Copyright Act of 1956)
for 50 years from the end of the year in which it was first published,
that is, until the end of 1985. So, on January 1, 1996, when URAA
went into effect in the U.S., that recording was in the public domain
in the U.K. and would not be eligible for restoration in the
Another composition created in 1920 and recorded in London in 1947
would qualify for restoration because the recording would still
have been under U.K. protection on January 1, 1996 when URAA went
into effect. It would be protected for 95 years from its date of first
publication, or until the end of 2042, even though in the U.K., it
would have become public domain in 1997.
A pre-1972 foreign work that does not qualify for restoration might
possibly be protected by state common law in the U.S., but courts
should be reluctant to use state law to protect a work whose copyright
has expired. See, for example, Capitol Records, Inc. v. Naxos of
America, Inc., 2003 WL 21032009 (S.D.N.Y.) and a recent Supreme
Court case in which the Court came down strongly against the use of
trademark law to protect a copyrighted work in the public domain,
Dastar Corp. v. Twentieth Century Fox Film Corp., 123 S.Ct.
2041 (June 2, 2003).
The URAA was challenged as unconstitutional in Golan v. Ashcroft;
the case was stayed pending a decision in another case that dealt
with an overlapping issue (Eldred v. Ashcroft, 123 S.Ct. 769
(2003)). Eldred was decided January 15, 2003; however, there
has been no activity on Golan since that date.
Composition Copyrights. A further complication results from
the fact that the composition embodied on a recording is itself protected
by copyright, so in some cases, even if a recording is in the public
domain, the underlying composition may not be, and vice versa.
THE PUBLIC DOMAIN
So, what may we conclude is in the public domain? Compositions published
in 1922 or earlier and performed and recorded (or, in some cases,
released) in foreign countries on a date that would result in their
being in the public domain on January 1, 1996, in the source country
(i.e., during or earlier than 1945 for countries that protect sound
recordings for 50 years) are in the public domain, and we should be
able to do with them as we wish and permit our patrons to do the same.
There may be some question about possible state law claims for unfair
competition, but as the Naxos and Dastar cases suggest,
other laws should not be stretched to make the good faith use of public
domain materials actionable.
U.S. recordings of public domain compositions (i.e., those published
during or before 1922) fixed in a tangible medium before 1972 are
protected by state laws, but as noted, state law causes of action
center on unfair competition for the most part. That is unlikely to
affect archival and research activities. Patrons who would like to
commercially exploit such recordings, however, would be well advised
to obtain permission from the owners.
There is one other category of works that may be in the public domain:
works whose copyrights have been abandoned or waived. Before 1989,
when copyright notices were required to claim federal protection,
failure to affix the proper notice for publication resulted in the
works becoming public domain. U.S. recordings published between 1972
and 1989 may be in the public domain if they were published or otherwise
widely distributed without the proper notice. Also, works published
between 1923 and 1964 had to be renewed at the end of their 28-year
terms. If the copyright owners failed to renew the copyrights, those
works would now be in the public domain. By some estimates, as many
as 95% of copyright owners did not renew their copyrights.
OUR ARCHIVAL RIGHTS UNDER THE COPYRIGHT ACT
Section 108. Libraries have rights to archive and distribute
works that are protected by the law, but when we wish to make and
distribute digital archival copies, the rights do not extend much
beyond the walls of the physical structures that hold our collections.
Sections 108 (b) and (c) of the Copyright Act provide our basic authority
to archive and distribute works. Section 108 (b) applies to unpublished
works and section 108 (c) applies to published works. The main differences
between the two sections relate to the purposes for which we may make
copies and the circumstances that must exist to justify making them.
We may copy unpublished works for preservation and security or for
deposit for research use in another public or research library if
we currently possess the work in our library. We may copy published
works only to replace them if they are damaged, deteriorating, lost,
or stolen, or if their format has become obsolete, and only after
we have determined after reasonable effort that we cannot obtain an
unused replacement at a fair price. One crippling condition applies
to both types of works: digital copies cannot be made available to
the public outside the premises of the library.
Section 108 (h) provides libraries and archives with special rights
during the last 20 years of a work’s copyright term. If a published
work is not being commercially exploited, a copy cannot be obtained
at a reasonable price, or the copyright owner has not notified the
Copyright Office that the work is being commercially exploited or
copies are available at reasonable prices, the library may make digital
copies for preservation, perform them publicly, and distribute them
to the public for scholarship or research.
The language of 108 (h) is very generous, giving libraries rights
to copy, perform, display, and distribute publicly even digital copies
of published works in their last 20 years of protection. However,
section 108 (i) says that the rights of reproduction and distribution
contained in 108 do not apply to musical works except for preservation.
This creates a conflict: 108 (h) says we can copy, distribute, display,
and perform published works publicly, and music is clearly “performed,”
but 108 (i) says that 108 (h) does not apply to music (by failing
to include 108 (h) in its exceptions). Frankly, I think this is just
sloppy drafting. Even assuming it does apply, section 108 only covers
published compositions in their last 20 years of protection and U.S.
recordings published before 1972 that are not protected by federal
copyright law. So, libraries can (arguably) archive digitally and
distribute publicly for scholarship and research pre-1972 U.S. recordings
of compositions that were published between 1923 and 1927, inclusive.
Next year, the eligible dates will be from 1923 through 1928, and
so on, each year adding another year’s worth of works to the
Notice how the beginning date of 1923 stays the same; this results
from the addition in 1998 of an additional 20 years of protection
to all works then under copyright (the Sonny Bono Copyright Term Extension
Act). Works published in 1923 that would have gone into the public
domain in 1998 did not lose their protection, and for the following
19 years, no works will enter the public domain in the U.S. Thus,
the next time a U.S. work will enter the public domain will be at
the end of the year 2018, when protection for the works published
in 1923 will finally expire—unless, of course, Congress passes
another extension, which the Supreme Court, in Eldred v. Ashcroft
cited above, has indicated it is free to do.
The only foreign restored works to which this “last 20 year” provision
would apply would be those from countries, if any, whose laws protected
recordings for 68 years or longer in 1996. A recording that was
published in 1928 in a country with a 68-year term would still have
been protected in 1996 in the source country and would have then been
eligible for restoration. The restored term of protection in the U.S.
would end in (28 + 95 =) 2023. Such a work would be in its last 20
years starting in 2003. Next year, works published in 1929 in that
country would enter their last 20 years of protection.
I am not sure that there are countries that protect recordings for
68 years or longer, however, because Article 18 of the Berne Convention
requires that member countries provide a 50-year term of protection
to pre-existing works originating in another WTO member country if
those works have not already enjoyed a full term of protection in
both countries. So the norm is 50-year terms, not 68 or 70-year terms.
A work from such a 50-year term country would have to have been published
no earlier than 1946 to be still under protection on January 1, 1996
when URAA went into effect. A work published in 1946 would enjoy a
95-year term (46 + 95 = 2041) in the U.S. Its last 20 years of protection
will not begin until 2021.
Because recordings embody at least two copyrights, the composition
copyright and the recording copyright, those protected by U.S. federal
law (foreign restored works and U.S. recordings published after 1972)
would arguably require that both copyrights be in their last 20 years
to qualify for digital distribution pursuant to section 108 (h). This
point has never been raised, to my knowledge, so there is no legal
Fair Use and Other Exemptions. In addition to libraries’ rights to archive works, libraries enjoy fair use rights as well.
Section 108 specifically states that nothing in that section affects
the rights of fair use, so it is reasonable to assume that fair uses
may be made even of digital archival materials that would otherwise
be restricted to the premises. For example, digitized archival materials
may be put on electronic reserves, incorporated into class projects
by faculty and students, and performed in the classroom and in distance
education in accordance with fair use.
PROMOTING OUR PATRONS' USES
Generally. Although the law gives us reasonable rights to create
archives, what we can do with them, and more particularly, what our
patrons can do with them, is tightly constrained by copyright. In
particular, the restriction to building-only use for digital archival
copies of analog works tremendously limits the research value of digital
archives, to say nothing of their value to the public. We are fast
approaching a time when for many people, what you can’t find
on Google does not exist.
This unhappy circumstance suggests first that we should proactively
manage our collections and copyrights to facilitate patrons’
uses. Even though we may not be authorized to distribute a work digitally,
we can make use of public Web sites as well as the more typical proprietary
indexing and finding aids to make our holdings known to the public.
Without being overly aggressive, we certainly can try to negotiate
the widest scope of rights in materials we acquire from a rights holder,
most importantly, the right to provide digital access to researchers
at a minimum, and ideally, to the public. We can update our acquisition
forms to encourage broad grants of rights to access and use. We should
revisit collection restrictions periodically to encourage that they
be lifted. We should not only obtain, but try to maintain accurate
contact information for copyright owners when we acquire materials
without rights so that we can facilitate the permissions process;
alternatively, we might maintain specialized resources to help patrons
locate and contact copyright owners. We may even try to acquire more
general rights from a rights holder in connection with a specific
patron request. We might create materials that can be used to educate
researchers about the issues of rights when they are involved in the
creation of recordings and forms they can use to clear rights expeditiously.
Anthony Seeger speaks more extensively to these issues in “Rights
Management—Intellectual Property and Audiovisual Archives and
Collections” at <www.clir.org/pubs/reports/pub96/rights.html>.
Lobbying for Changes in the Law to Promote Access. Ultimately,
we must bring the issue of greater access to digital archives to Congress.
The changes made in section 108 in 1998 were intended to address serious
problems—the complete lack of a digital archival right and the
effect on research and scholarship of a new 20-year extension of the
copyright term—but they addressed these problems in a way that
only opened the door a crack. Copyright owners’ fears that wide
access to digital copies in libraries would undermine sales of the
owners’ works prevented adoption of any but the most restrictive
provisions. But today, the National Recording Preservation Board has
a mandate from Congress to study laws that must be changed to make
preserved recordings available digitally, 2 USC 1724 (b)(4). Sections
108 (b) and (c) must be at the top of their list. If they are not,
the board needs to hear from librarians and archivists about the need
for changes in this law.
In response to a request from Ann Blonston, via e-mail before the
conference, I offer as a summary this checklist of procedures to assess
the extent of the rights you have to digitize the audio recordings
in your collections and make them available to researchers or the
whether the recording and underlying composition are in the
public domain or protected only by state unfair competition
and similar laws.
Composition published before 1923; recording created and published
in a foreign country on a date that would result in its being in
the public domain in the foreign country in 1996. For countries
with a 50-year term of protection for recordings, the date would
be during or before 1945.
b. Composition published before 1923; recording created or published
in the U.S. before 1972: note: archival uses are very unlikely
to be actionable under state law; patron commercial uses probably
need permission from recording copyright holder.
c. Compositions published between 1923 and 1964 in the U.S. whose
copyrights were not renewed and compositions published between 1923
and 1989 whose copyrights were abandoned by failure to follow formalities;
recordings created and published in the U.S. before 1972 (see note
above at 1b).
2. If the composition
is still protected in the U.S., digitize and archive recordings
in accordance with sections 108 (b) or (c) depending on whether
the composition at issue is unpublished or published, respectively.
Digital copies of analog works cannot be made available to the public
outside the premises of the library or archive.
3. If the composition is in its last 20 years of protection (i.e., published between 1923 and 1927 inclusive), and the recording
is pre-1972, digitize and archive U.S. recordings in accordance
with § 108 (h) (see note above at 1b).
that the work is not enjoying normal commercial exploitation.
b. Distribute it for research and scholarship with no limitation
to the premises.
c. For commercial uses see note above at 1b.
For proposed uses that exceed the limits imposed by section 108, consider
whether fair use or another exception (TEACH Act, for example)
5. If no exception covers a proposed use of a protected work, it requires
the permission of the owner of copyright in the recording and
its underlying composition.
6. If you find that many uses you or your patrons would like to make
of your collection fall outside the scope of statutory authorizations,
consider more aggressive rights management strategies to secure
broader rights for public use when possible, and legislative initiatives
to broaden the scope of current authorizations.
© 2003 Georgia Harper