U.S. Law for the International Educator Avatar

Robert J. Van Der Velde

(SL: Justice Soothsayer)

Eastern Michigan University

 

Paper to be presented at Comunicação, Educação e Formação no Second Life® (CEF^SL08), University of Aveiro, Aveiro, Portugal, June 2008.

Abstract: U.S. copyright and trademark law has great significance for international users of Second Life®, especially educators.   Linden Lab’s Terms of Service makes U.S. copyright law apply even to users outside the U.S., and Linden Lab grants copyright protection to users for works created in the Second Life® environment.  This paper provides a brief overview of the basics of U.S. copyright and trademark law, and the important exception of “fair use” and how it applies to educators.  It will also touch on the U.S. Technology, Education and Copyright Harmonization (TEACH) Act of 2002 and the Digital Millennium Copyright Act of 1998.

 

1. Introduction

        Perhaps the most significant aspect of the development of Second Life® is the decision of Linden Lab to give copyright protection to content created by the users.  Au (2008) recounts how Stanford law professor Lawrence Lessig became the “SL’s Thomas Jefferson” by convincing Linden Lab to recognize the copyright interests of users, inspiring an “economic boom” and becoming what Llewelyn (2008) reports is the only virtual world relying on user-generated content.  The Linden Lab “Terms of Service”, to which all Second Life® users must agree, provides for users that “you will retain any and all applicable copyright and other intellectual property rights with respect to any Content you create using the Service, to the extent you have such rights under applicable law”.   (Linden Lab, 2008c). With these rights comes responsibility, as the Terms of Service go on to state “you are solely responsible for understanding all copyright, patent, trademark, trade secret and other intellectual property or other laws that may apply to your Content”. Thus, Linden Lab’s Terms of Service give both copyright protection and copyright responsibility to the users.  It must also be noted that although the Terms of Service may respect user rights in the content they create, they also restrict users’ use of Linden Lab’s trademarks.

2. Copyrights

• 2.1 Copyrights in General

      A copyright gives the owner of a work of authorship the right to prevent others from unauthorized copying or use of the work.  (Schwabach, 2007).  The U.S. Constitution provides the basis for copyright law by granting Congress the power “To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.” Trademarks are protected under the Commerce Clause, a separate provision of the U.S. Constitution. Copyright law and other intellectual property laws balance conflicting interests.  Limited property rights in creations are balanced by giving the freest possible public access to works of authorship and the ideas they encompass.  That balance is made by limiting property rights to the author's particular method of expressing an idea, not the idea itself.  In addition, even those rights granted in the author's expression are limited in duration and are subject to certain exceptions permitting public use under limited circumstances. (Stim, 2007).

        Copyright protection is granted to “original works of authorship” that are “fixed” in tangible form of expression (such as written down or stored in a computer file), including the following categories of works which might be produced in Second Life®:

        1.     literary works;

        2.     musical works, including any accompanying words

        3.     dramatic works, including any accompanying music

        4.     pantomimes and choreographic works

        5.     pictorial, graphic, and sculptural works

        6.     motion pictures and other audiovisual works, and

        7.     sound recordings

Architectural drawings may also be copyrighted; U.S. government works are not copyrightable, and are always in the public domain.

        For copyright purposes, the author is usually the owner of the copyright.  However, an employer could be the owner of a “work made for hire”.  Section 101 of the copyright law defines a "work made for hire" as a work prepared by an employee within the scope of his or her employment.  Where an independent contractor signs a written agreement stating that the work shall be "made for hire," the employer will own the copyright if the work falls within one of several statutory categories.

        Copyrighted works fall into the public domain, and can be freely copied, upon the expiration of the copyright.   For most works published after January 1, 1978, the copyright begins at “fixation” and lasts for the life of the author plus 70 years, although works for hire may be protected for 95 years after publication or 120 years after creation.   Copyright protection is automatic, and the copyright notice © is not required.  Registration of the copyright with the U.S. Copyright Office is not required, but for a $45 registration fee the copyright protections can be enhanced by making infringers liable for statutory damages and attorneys fees.

        The duration of copyright protection has been revised many times over the years, from the original term of 14 years (renewable for an additional 14 years) established by Congress in 1790.  Works published before 1978 are protected for 95 years after publication, although if published before 1964, they are protected 28 years after publication plus 67 years if renewed.  Works created before 1978 but not published before 2003 are now in the public domain in the United States.   The extension of copyright durations has not been without controversy or litigation.   The most recent extension of copyright duration is the Sonny Bono Copyright Extension Act, named for the late singer-turned-Congressman, and supported by copyright holders such as Walt Disney Corporation, whose copyright on Mickey Mouse would have expired but for the 20-year extension legislation.  (Lessig, 2004).  Professor Lessig challenged this extension all the way to the U.S. Supreme Court in Eldred v. Ashcroft, 123 S.Ct. 769 (2003), but the court ruled that the extension was constitutional.  Au (2006) offers an interesting interview with Lessig who recounts the litigation, ruing that he should have made the case “less about Mickey Mouse, and more about the rest of culture that gets locked up just so we can protect Mickey”.

•  2.2 Copyright exceptions

        Although copyright gives the owner exclusive rights to reproduce copyrighted work, those rights are limited by several exceptions where users of a copyrighted work do not need permission of the copyright owner.  For educators, the most significant of these exceptions are “fair use” and the exemptions provided by the Technology, Education and Copyright Harmonization Act of 2002 (the “TEACH Act”).

         2.2.1 Fair Use

        The exception of “fair use” of copyrighted material developed over many years of litigation, and has been codified in 17 U.S.C.§ 107, which provides that copying for  “criticism, comment, news reporting, teaching (including multiple copies for classroom use), scholarship, or research, is not an infringement of copyright”.  Section 107 sets out four factors to be considered in determining whether or not a particular use is fair:

        1.     the purpose and character of the use, including whether such use is of commercial nature or is for nonprofit educational purposes;

        2.     the nature of the copyrighted work;

        3.     amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

        4.     the effect of the use upon the potential market for or value of the copyrighted work.

These factors are not the only factors used by courts, nor do all courts view each factor has having the same weight, making determinations of “fair use” turn on the facts of particular cases.

        The first factor, “purpose and character of the use” is probably the most important, with one noted judge calling it the “soul of fair use”.  Courts look to whether the use is “transformative”, that is, whether the user changed the original by adding new meaning, new information, or new insights or understanding.   Educational uses, such as for teaching students about a work, or engaging in scholarship or research about a work, are generally held to be “fair use”.  Parody has also received protection of the courts as a non-infringing use, notwithstanding the necessity to copy part of a work in order to parody it.  A landmark case in this area is Campbell v. Acuff-Rose Music, Inc., 510 U.S. 169 (1994), where the U.S. Supreme Court held that a parody of the Roy Orbison song Pretty Woman  by 2 Live Crew did not infringe, nothwithstanding considerable use of the lyrics of the original.  A key factor to the Court was “the more transformative the new work, the less will be the significance of other factors, like commercialism, that may weigh against a finding of fair use.”

        The second factor, the nature of the copied work, courts consider whether the work is informational or purely entertainment in nature.  For instance, copying from scholarly publications encourages the free spread of ideas and encourages creation of additional scholarly works building on the ideas of others.  Courts have also held that a user has a stronger case of fair use if the material is copied from a published rather than unpublished work, because of the author’s right to control the first publication of his or her expression.

        The third factor, the amount of the work that is copied, is relatively straightforward to apply, as quoting a few sentences from an article in order to comment about it clearly has a stronger claim to fair use than the wholesale copying of any entire work.  Contrary to what is popular belief in some circles of the academy, no precise percentage rule is applied.

        The final factor is the effect on the market of the copying.  Courts inquire if the use were widespread, and the use were not fair, would the owner lose money?  When the original work is out of print, or the owner is unidentifiable to obtain permission for the use, courts generally find that this factor supports the fair use copying.  When the copy competes with the original, or avoids payment of royalties in established market, this factor works against the copier.

        To apply these four factors in the Second Life® environment, consider the educator who wants to demonstrate making t-shirts.  She might copy a copyrighted image into a texture, give copes of the texture to students, who then use the textures to create their own t-shirts in Second Life®.  The demonstration of making a t-shift is certainly an educational use, though the copying of the image to the students somewhat weakens the fair use claim.  Similarly, if the educator used the copyrighted image to sell her own t-shirts to others in the Second Life® world, her claim of fair use would be considerably weaker.  Finally, if the educator made t-shirts for sale using the copyrighted image from a t-shirt already for sale elsewhere in Second Life®, thus weakening the market for the copyrighted shirts, the defense of fair use would likely fail.

        2.2.2 TEACH Act

        U.S. educators and their institutions also have the advantage of protections of the Technology, Education and Copyright Harmonization Act of 2002, and international educators might consider partnering with their U.S. counterparts in order to attempt to secure these protections.  The TEACH Act permits transmission of copyrighted work in distance education environments under certain limited conditions without permission of the author, in an attempt to equalize the treatment of distance education and traditional classroom teaching.  (Crews, 2002). Classroom teachers might display copyrighted works (such as models, maps, or other audiovisual aids) in the classroom, and this statute permits the similar display of copies through distance education technologies. 

        Educators and their institutions must follow specific TEACH Act requirements to enjoy the protections of the Act.  The institution must be an accredited nonprofit educational institution (including K-12 schools), and must institute “policies regarding copyright”, provide  informational materials to faculty, students, and relevant staff members about copyrights, and provide notice to students that materials used in connection with the course may be subject to copyright protection.  (Butler, 2004).

        Technology requirements of the TEACH ACT provide that transmission of copyrighted material is limited to students officially enrolled in the course, transmissions cannot be retained longer than class session, and no material can remain on the system longer than necessary to facilitate transmission.  In the case of educators using Second Life® to display copyrighted works, this would mean that the area where the works are displayed must be restricted only to students in the course, such as through use of a private island with limited access.

        Instructors must also follow narrow requirements of the TEACH Act.  Performance or display of the copyrighted work must be made by, at the direction of, or under actual supervision of the instructor, and must be an integral part of class session which is offered as a regular part of systematic mediated instructional activities.  Performance or display must be analogous to what takes place in a live classroom, and instructors must use a lawfully made and acquired copy.  Instructors must also provide notice to students that materials may be subject to copyright protection.  Similarly, the materials copied must fall into relatively narrow requirements, and cannot include materials not eligible for exemption, such as textbooks, course packs or other material in any media, copies, CD’s which are typically purchased by students for use in one or more class session.  Analog works cannot be converted into digital works unless no digital version is available, and only the amount that is authorized under the TEACH Act can be converted.

        2.2.3 Miscellaneous Exceptions

      U.S. Copyright law also has several other miscellaneous exceptions that are relevant to educators.  Section 108 allows libraries to make archival copies of works, including limited copies of works for interlibrary loan.  Section 109 makes it permissible to sell a copy of a lawfully acquired copyrighted work (the “first sale doctrine”), Section 110 allows for classroom display or performances of works, Section 117 permits making backup copies of copyrighted software, and Section 121 allows modifying copies for persons with disabilities.

• 2.3 Digital Millenium Copyright Act of 1998

      The Digital Millennium Copyright Act of 1998 is a multifaceted statute, among other things implementing two World Intellectual Property Organization (WIPO) treaties.  (U.S. Copyright Office, 1998). Title II, the “Online Copyright Infringement Liability Limitation Act”, is of greatest significance to educators using Second Life®.   It provides for limitation of liability of internet service providers for acts of copyright infringement committed by users.  Linden Lab will maintain its limited liability if it does not know about the allegedly infringing activity, does not receive a financial benefit directly attributable to the infringing activity, and upon receiving proper notification of claimed infringement, response expeditiously to take down or limit access to the material. 

        The DMCA established a “notice and takedown procedure” followed in cases of claimed copyright infringement.  The copyright owner must submit a notification under penalty of perjury to the service provider’s designated agent, and the notice must comply substantially with the statutory requirements to constitute knowledge of the alleged infringement by the service provider. If, upon receiving a proper notification, the service provider promptly removes or blocks access to the material identified in the notification, the provider is exempt from monetary liability. In addition, the provider is protected from any liability to any person for claims based on its having taken down the material.  (Littman, 2001).

        To protect against erroneous or fraudulent notifications, the DMCA gives alleged infringers the opportunity to respond to the notice and takedown by filing a counter notification. If the provider receives a counter notification complying with statutory requirements, including a statement under penalty of perjury that the material was removed or disabled through mistake or misidentification, then, the service provider must put the material back up within 10-14 business days after receiving the counter notification, unless the copyright owner files an action seeking a court order.

        Anyone making knowing material misrepresentations in either a notice or a counter notice may liable for any resulting damages (including costs and attorneys’ fees) incurred by the alleged infringer, the copyright owner or its licensee, or the service provider.  (U.S. Copyright Office, 1998). The Linden Lab Terms of Service specifically require users to “comply with the processes of the Digital Millennium Copyright Act regarding copyright infringement claims covered under such Act”.  (Linden Lab, 2008c). Linden Lab publishes its specific DMCA procedures on its website, including information on takedown notices and counter notices.  (Linden Lab, 2008a).

4. Trademarks

         Current U.S. trademark law dates from the Lanham Trademark Act of 1946, which has been amended several times, most recently by the Trademark Dilution Revision Act of 2006.   A trademark is a word, name, symbol or device used to indicate the source of the goods and to distinguish them from the goods of others. A servicemark is the same as a trademark except that it identifies and distinguishes the source of a service rather than a product. The terms "trademark" and "mark" frequently refer to both trademarks and servicemarks. 

         Copyright laws specifically do not protect names, titles, short phrases, or geographic names.  Trademark protects distinctive words, phrases, logos, symbols, slogans, and any other devices used to identify and distinguish products or services in the marketplace. Sometimes both trademark and copyright law may be used to protect different aspects of the same product or service.  For example, copyright laws may protect the artistic aspects of a logo used by Linden Lab to identify its services, while trademark may protect the logo from use by others in a confusing manner in the marketplace.

         A trademark may be claimed upon first use in commerce, with or without registration.  The symbols ™ or SM may be used without registering the mark, but the federal registration symbol "®" may be used only after the U.S. Patent and Trademark Office actually registers a mark, and not while an application is pending.  Although trademark protection begins with use of a mark in commerce, registering a mark provides additional protections for the mark's owner. U.S. trademark registration provides several advantages:

1. Constructive notice across the U.S. of the trademark owner's claim.

 2. Evidence of ownership of the trademark.

3. Jurisdiction of U.S. federal courts may be invoked.

4. Registration can be used as a basis for obtaining registration in other countries.

(U.S. Patent & Trademark Office, 2008).

         Linden Lab has registered Second Life®, and asserts trademark protection of several other marks.  Consequently, as a trademark owner Linden Lab must enforce its marks, and is concerned about an important aspect of trademark law: “genericide”.  “Genericide” occurs when a mark is used widely and indiscriminately to refer to a type of product or service rather that the product or service of a specific company, causing the mark’s owner to lose trademark protection.  (Stim, 2007). Perhaps the most famous instance of “genericide” was the passing of the previously trademarked term “aspirin” into public domain.  Companies take pains to describe their products with both the generic term and the brand name, such as Kleenex brand tissues.  If the word “Kleenex” became synonymous with paper tissues, the company would lose exclusive rights to its mark.

         Linden Lab uses its Terms of Service to help protect its trademarks, by requiring users who agree to the Terms of Service to abide by its guidelines for using its marks.  (Linden Lab, 2008b and 2008c).

         In addition to taking care not to infringe Linden Lab marks, users must also avoid infringing upon the marks of others.  Trademark infringement can involve large sums of money, as demonstrated by a recent jury verdict awarding $305 million (nearly €200 million at current conversion rates) to Adidas for infringement of its trademarks by a shoe store chain.  (Hunsberger, 2008).  The creation of Adidas trademarked shoes in-world, for example, would subject the copier to trademark infringement liability, though the damages would presumably not be measured in millions.

         Fair use may be a defense to a claim of trademark infringement, though fair use in trademark law differs somewhat from the doctrine of the same name in copyright law.  The Trademark Dilution Revision Act of 2006 provides some additional clarity as to how fair use applies.  It provides that fair use includes comparative advertising, “identifying and parodying, criticizing, or commenting upon the famous mark owner or the goods and services of the famous mark owner”, as well as all forms of news reporting and commentary, and “any noncommercial use of a mark”.  Use of Linden Lab’s trademarks in this article, for example, should be considered a “fair use” of those marks.

5. Conclusion

The recognition of copyright by Linden Lab for works created in-world by users of Second Life® has led to the development of a rich in-world environment.  But copyright protection comes with copyright responsibility.  Educators using Second Life have the obligation to educate themselves about their rights and responsibilities, and international educators must familiarize themselves with the requirements, protections, and responsibilities of U.S. intellectual property law.

6.  Bibliography

AU, Wagner James (2008).  The Making of Second Life: Notes from the New World.  New York, NY: HarperCollins Publishers.

AU, Wagner James (2006).  “The Second Life of Lawrence Lessig”. [online blog posting of Second Life® transcript]  http://nwn.blogs.com/nwn/2006/01/the_second_life.html (accessed May 10, 2008).

BUTLER, Rebecca P. (2004).  Copyright for Teachers and Librarians.  New York, NY: Neal-Schulman Publishers.

CORNELL LAW SCHOOL (2008). Copyright. [online] http://topics.law.cornell.edu/wex/Copyright

CREWS, Kenneth D. (2002).  “New Copyright Law for Distance Education: The Meaning and Importance of the TEACH Act”.  [online] http://www.copyright.iupui.edu/teach_summary.htm (accessed May 11, 2008).

HUNSBERGER, BRENT (2008).  “Jury Gives Adidas $305 million in Payless stores trademark suit”.  The Portland Oregonian, May 6, 2008. [online news article] http://blog.oregonlive.com/breakingnews/2008/05/portland_jury_orders_payless_t_1.html (accessed May 10, 2008).

LESSIG, Lawrence (2004).  Free Culture:  How Big Media and the Law Lock Down Culture and Control Creativity.  New York, NY: The Penguin Press.

LESSIG, Lawrence (2001).  The Future of Ideas: The Fate of the Commons in a Connected World.  New York, NY: Random House.

LINDEN LAB (2008a) “DMCA: Digital Millennium Copyright Act” [online] http://secondlife.com/corporate/dmca.php (accessed May 10, 2008).

LINDEN LAB (2008b) “Guidelines for Using Linden Lab’s Trademarks” [online] http://secondlife.com/corporate/brand/trademark/ (accessed May 10, 2008).

LINDEN LAB (2008c) “Terms of Service” [online] http://secondlife.com/corporate/tos.php (accessed May 10, 2008).

LITTMAN, Jessica (2001).  Digital Copyright.  Amherst, NY: Prometheus Books.

 LLEWELYN, Gweneth (2008). “The Intergrid and the Second Life Foundation”. [online blog article] http://gwynethllewelyn.net/2008/04/28/the-intergrid-and-the-second-life-foundation (accessed May 10, 2008). 

 SCHWABACH, Aaron (2007).  Intellectual Property.  Santa Barbara, CA: ABC-Clio, Inc.

 STIM, Richard (2007).  Patent, Copyright & Trademark: An Intellectual Property Desk Reference, 9th Ed.  Berkeley, CA: Nolo.

 U.S. Copyright office (1998).  “Digital Millennium Copyright Act of 1998: U.S. Copyright Office Summary. [online] http://www.copyright.gov/legislation/dmca.pdf (accessed May 8, 2008).

 U.S. PATENT & TRademark office  (2008).  “USPTO FAQs: Questions and Answers”. [online] http://www.uspto.gov/main/faq/index.html (accessed May 10, 2008).