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American Bar Association Report
Section of Intellectual Property Law
1996-1997 Annual Report
Committee 304
William S. Strong, Chair
COMMITTEE NO. 304
PICTORIAL, GRAPHIC, SCULPTURAL AND CHOREOGRAPHIC WORKS

Scope of Committee: Problems of creators of works of fine and applied arts, including choreographers. Informally, architectural works have been added to the Committee's scope for the current year.
Subject 1.FAIR USE
NO PROPOSED RESOLUTION

Past Action. None.
Discussion. Fair use of pictorial and sculptural materials is an area of continuing uncertainty. This may be due in part to the fact that, by their very nature, these works, unlike musical and literary works, may be perceived in toto at a glance, and are not easily paraphrased, and thus often need to be reproduced in their entirety if used at all. This year has seen some interesting developments in the fair use area.
In decisional law, one notable case involved a television show's use of a poster as part of the background of a set, a use which caused a fleeting impression of the poster to appear in the show as broadcast. Ringgold v. Black Entertainment Television Inc., 40 U.S.P.Q. 2d 1299 (S.D.N.Y. 1996). The plaintiff in that case, Faith Ringgold, had created a "painted story quilt" entitled "Church Picnic," combining imagery, handwritten text, and fabric. Atlanta's High Museum of Art had created a poster of her quilt pursuant to a non-exclusive license. The set designers employed by co-defendant HBO Independent Productions hung a framed copy of this poster on a wall in a set used for an episode of the television show "Roc." The poster appeared in nine shots for a total runtime of 26 seconds. In six of those shots, only a corner of the poster was visible, and in none of them was the poster shown unobstructed. In some of the shots, it was out of focus. It was not "readily discernible to one viewing the Episode in anticipation of the appearance of the Poster and . . . even less recognizable to the average viewer." In short, while obviously important in the set-designer's eyes as a way of establishing ambience and perhaps character, the poster was not filmed for its own merits. In the court's words, the defendants did not attempt to capitalize on the quilt's "true essence," but used it to "help portray an African-American church," a use "incidental to the scene." The court further found that the defendants' use was unlikely to have any impact on sales of the poster, and noted that Ringgold had not claimed that her ability to license the poster had been negatively impacted by the defendants' use. The court upheld defendants' fair use defense.
The Committee is not unanimous in approbation of this holding. One member believes the defendants' use of the poster - precisely because the poster could not be well perceived by the TV show's audience - was not comment, criticism, or reportage, and thus not a fair use. The majority of the Committee, however, believe the use to be transformative nevertheless, within the meaning of Campbell v. Acuff-Rose Music, Inc. 510 U.S. 569, 114 S.Ct. 1164 (1994). The dissenting member also objects that there is a well established market for the use of visual works as "set dressing," and that the court should have taken into account the impact of its holding on this market. Yet it seems to others on the Committee that such a market may be one created more out of fear of suit, than out of any natural extension of traditional licensing of visual works. In short, the Committee finds itself, on this point, trapped in the circularity of market definition that the Supreme Court Campbell v. Acuff-Rose Music, Inc. tried to quash. It will be interesting to see how the case is dealt with on appeal.
This case was in sharp contrast to Woods v. Universal City Studios, 920 F.Supp. 62 (SDNY 1996), in which the court enjoined the distribution and performance of a movie in which one of the sets (used in five minutes of the two-hour movie) was modeled on a copyrighted drawing. In that case, the defendant had not even attempted a fair use defense; its major plea was that the remedy of injunction was out of proportion to the injury, especially given that plaintiff had not sued until after the movie was already in release. The court was not impressed.
These two cases are not impossible to reconcile. In one, the copyrighted image was used as an incidental backdrop, posing no substantial harm to the market for the plaintiff's poster. In the other, the copyrighted image was appropriated into the very structure of the work, obviously foreclosing further cinematic use of the original. And yet one wonders if there are not grey areas in between these two cases, that will present more difficult cases in the future.
Another interesting fair use case was that of Leibovitz v. Paramount Pictures Corp., 948 F.Supp. 1214 (SDNY 1996), in which the defendant had copied, in part, the famous Vanity Fair nude cover photograph of Demi Moore, eight months pregnant.
Defendants had posed a different model so as to replicate the overall impression of the plaintiff's photograph, but had superimposed on it the smirking face of actor Leslie Nielsen, and placed underneath the photo the legend "Due This March." All this was done to promote the forthcoming movie "Naked Gun: The Final Result 33 1/3." The defendant argued that the poster was simply taking a free ride on her photograph for commercial, albeit humorous, purposes. The court, however, found the use to be a parody of Liebovitz's work, notwithstanding its obvious commercial motivation. The court said:

Like all parodies, it relies for its comic effect on the contrast between the original - a serious portrayal of a beautiful woman taking great pride in the majesty of her pregnant body - and the new work - a ridiculous image of a smirking, foolish-looking pregnant man. It thus fits squarely within the definition of parody as a "literary or artistic work that imitates the characteristic style of an author or a work for comic effect or ridicule"... Because the humorous nature of the Nielsen ad depended on the unique qualities of the Moore photograph and its instant recognizability, it demonstrates the necessary "joinder of reference and ridicule" to qualify as a parody.

The Supreme Court had presciently considered, in Campbell v. Acuff-Rose Music, Inc., 114 S.Ct.1164 (1994), the possibility that a work might be both a parody and a commercial promotion of an unrelated product; it had said that the "use of a copyrighted work to advertise a product, even in a parody, will be entitled to less indulgence under the first factor of the fair use inquiry, than the sale of a parody for its own sake." This statement from Campbell was, of course, not a rigid rule but a guide to the balancing that a court must undertake in weighing fair use. The Liebovitz court balanced thus:

Under the particular circumstances of this case, I find that the purposes of copyright [to foster the creation and dissemination of the greatest number of works] are best served by a finding that the highly transformative character of the Nielsen ad trumps its admittedly commercial purpose and that the first fair use factor therefore weighs in favor of the defendant, albeit perhaps by only a slight margin.

The court went on to find that it was unlikely there could be any market substitution of the defendant's work for the plaintiff's, given its transformative and parodic character, and that in any event Liebovitz had failed to present evidence of any injury to her own ability to sell or license her photograph.
This finding on the fourth fair use factor is open to question. The Supreme Court in Campbell had held that, since fair use is an affirmative defense, the burden falls on the defendant to show the absence of a market. (The Committee notes that the Supreme court thus requires the defendant to prove a negative.) Here the court seems to reverse the burden of proof. Furthermore, one cannot help wondering if the court, having found that the parody element outweighed the commercial element, then ignored the possibility that the Nielsen ad had damaged Liebovitz's market for non-parodic advertising use of her photograph. Would any movie producer want to make use of her photo now that its advertising value has already been exploited? If not, then the court may have dismissed Liebovitz's claim too quickly.
The interest of these cases notwithstanding, by far the most important development this year in the fair use field, as applied to pictorial, graphic, and sculptural works, was the issuance of proposed guidelines for fair use of such works in digital form for educational purposes. These guidelines, negotiated over many months by representatives of a wide cross-section of affected interest groups (the group generally referred to as "CONFU"), are intended to offer the same benefits as the guidelines developed in the 1970s for educational photocopying. Like those earlier guidelines, these do not have the force of law. The Committee is informed that some CONFU parties may yet withhold approval of the guidelines. Nevertheless, the guidelines are likely to have a strong influence on the behavior of educational users and on the litigational posture of affected copyright owners.
The guidelines fall into two categories:

1. The creation of digital copies of images for educational use. The focus here is on the creation and use of digital "slides" to replace the slide collections that have typically been used in the past to teach and research the fine arts.
These guidelines apply only to digital copying of analog images; they do not apply to images acquired in digital form. They apply only to "lawfully acquired" analog images. And they apply only to educational use in non-profit educational or research institutions. Certain key sections of the guidelines are reproduced below:

2.1 Digitizing by Institutions: Newly Acquired Analog Visual Images. An educational institution may digitize newly, lawfully, acquired analog visual images to support the permitted educational uses under these guidelines unless such images are readily available in usable digital form for purchase or license at a fair price. Images that are readily available in usable digital form for purchase or license at a fair price should not be digitized for addition to an institutional image collection without permission.
2.2 Creating Thumbnail Images. An educational institution may create thumbnail images of lawfully acquired images for inclusion in a visual catalog for use at the institution. These thumbnail images may be combined with descriptive text in a visual catalog that is searchable by a number of fields, such as the source. [A "thumbnail image" is one that will "enable visual identification of records in an educational institution's image collection" and is a "small scale, typically low resolution, digital reproduction which has no intrinsic commercial or reproductive value."]
2.3 Access, Display, and Distribution on an Institution's Secure Electronic Network. Subject to the time limitations in Section 2.4, an educational institution may display and provide access to images digitized under these guidelines through its own secure electronic network. When displaying digital images on such networks, an educational institution should implement technological controls and institutional policies to protect the rights of copyright owners, and use best efforts to make users aware of those rights. In addition, the educational institution must provide notice stating that digital images on its secure electronic network shall not be downloaded, copied, retained, printed, shared, modified, or otherwise used, except as provide for in the permitted educational uses under these guidelines.
2.3.1 Visual online catalog. An educational institution may display a visual online catalog [i.e., a "database consisting of thumbnail images of an institution's lawfully acquired image collection, together with any descriptive text including, for example, provenance and rights information that is searchable by a number of fields, such as source"]... on the institution's secure electronic network, and may provide access to such catalog by educators, scholars, and students affiliated with the educational institution.
2.3.2 Course compilations of digital images. An educational institution may display an educator's compilation of digital images (see also Section 3.1.2) on the institution's secure electronic network for classroom use, after-class review, or directed study, provided that there are technological limitations (such as a password or PIN) restricting access only to students enrolled in the course. The institution may display such images on its secure electronic network only during the semester or term in which that academic course is given.
2.3.3 Access, display, and distribution beyond the institution's secure electronic network. Electronic access to, or display or distribution of, [copyright-protected] images digitized under these guidelines, including the thumbnail images in the institution's visual online catalog, is not permitted beyond the institution's own electronic network, even for educational purposes....
2.4 Time Limitations for Use of images Digitized by Institutions from Newly Acquired Analog Visual Images. An educational institution may use and retain in digital image collections images which are digitized from newly acquired analog visual images under these guidelines, as long as the retention and use comply with the following conditions:
2.4.1 Images digitized from a known source and not readily available in usable digital form for purchase or license at a fair price may be used for one academic term and may be retained in digital form while permission is being sought. Permission is required for uses beyond the initial use; if permission is not received, any use is outside the scope of these guidelines and subject to the four-factor fair use analysis...
2.4.2 Where the rightsholder of an image is unknown, a digitized image may be used for up to 3 years from first use, provided that a reasonable inquiry (see Section 5.2) is conducted by the institution seeking permission to digitize, retain, and reuse the digitized image. If, after 3 years, the educational institution is unable to identify sufficient information to seek permission, any further use of the image is outside the scope of these guidelines and subject to the four-factor fair use analysis...
3. Use by Educators, Scholars, and Students Subject to the time limitations in Section 2.4, images digitized under these guidelines may be used by educators, scholars, and students as follows:
3.1 Educator Use of Images Digitized Under These Guidelines.
3.1.1 An educator may display digital images for educational purposes, including face-to-face teaching of curriculum-based courses, and research and scholarly activities at a non-profit educational institution.
3.1.2 An educator may compile digital images for display on the institution's secure electronic network (see also Section 2.3.2) to students enrolled in a course given by that educator for classroom use, after-class review, or directed study, during the semester or term in which the educator's related course is given.
3.2 Use of Images for Peer Conferences. Educators, scholars, and students may use or display digital images in connection with lectures or presentations in their fields, including uses at non-commercial professional development seminars, workshops, and conferences where educators meet to discuss issues relevant to their disciplines or present works they created for educational purposes in the course of research, study, or teaching.
3.3 Use of Images for Publications. These guidelines do not cover reproducing and publishing images in publications, including scholarly publications in print or digital form, for which permission is generally required. Before publishing any images under fair use, even for scholarly and critical purposes, scholars and scholarly publishers should conduct the four-factor fair use analysis...
3.4 Student Use of Images Digitized Under These Guidelines.
Students May:
Use digital images in an academic course assignment such as a term paper or thesis, or in fulfillment of degree requirements.
Publicly display their academic work incorporating digital images in courses for which they are registered and during formal critiques at a non-profit educational institution.
Retain their academic work in their personal portfolios for later uses such as graduate school and employment applications. Other student uses are outside the scope of these guidelines and are subject to the four-factor fair use analysis...
4. Image Digitization by Educators, Scholars, and Students for Spontaneous Use Educators, scholars, and students may digitize lawfully acquired images to support the permitted educational uses under these guidelines if the inspiration and decision to use the work and the moment of is use for maximum teaching effectiveness are so close in time that it would be unreasonable to expect a timely reply to a requires for permission. Images digitized for spontaneous use do not automatically become part of the institution's image collection. Permission must be sought for any reuse of such digitized images or their addition to the institution's image collection.
5. Important Reminders and Fair Use Limitations under these Guidelines
5.1 Creation of Digital Image Collections. When digitizing copyrighted images, as permitted under these guidelines, an educational institution should simultaneously conduct the process of seeking permission to retain and use the images.
Where the rightsholder is unknown, the institution should pursue and is encouraged to keep records of its reasonable inquiry (see Section 5.2). Rightsholders and others who are contacted are encouraged to respond promptly to inquiries.
5.2 Reasonable Inquiry. A reasonable inquiry by an institution for the purpose of clearing rights to digitize and use digital images includes, but is not limited to, conducting each of the following steps: (1) checking any information within the control of the educational institution, including slide catalogs and logs, regarding the source of the images; (2) asking relevant faculty, departmental staff, and librarians, including visual resource collections administrators, for any information regarding the source of the image; (3) consulting standard reference publications and databases for information regarding the source of the image; and (4) consulting rights reproduction collectives and/or major professional associations representing image creators in the appropriate medium.
5.3 Attribution and Acknowledgment. Educators, scholars, and students should credit the sources and display the copyright notice(s) with any copyright ownership information shown in the original source, for all images digitized by educators, scholars, and students, including those digitized under fair use. Crediting the source means adequately identifying the source of the work, giving a full bibliographic description where available (including the creator/author, title, publisher, and place and date of publication) or citing the electronic address if the work is from a network source. Educators, scholars, and students should retain any copyright notice or other proprietary rights notice placed by the copyright owner or image archive or collection on the digital image, unless they know that the work has entered the public domain or that the copyright ownership has changed. In those cases when source credits and copyright ownership information cannot be displayed on the screen with the image for educational reasons (e.g., during examinations), this information should still be linked to the image.
5.4 Licenses and Contracts. Institutions should determine whether specific images are subject to a license or contract; a license or contract may limit the uses of those images.
5.5 Portions from Single Sources Such as Published Compilations or Motion Pictures. When digitizing and using individual images from a single source such as a published compilation (including but not limited to books, slide sets, and digital image collections), or individual frames from motion pictures or other audiovisual works, institutions and individuals should be aware that fair use limits the number and substantiality of the images that may be used from a single source. In addition, a separate copyright in a compilation may exist. Further, fair use requires consideration of the effect of the use on the potential market for or value of the copyrighted work. The greater the number and substantiality of images taken from a single source, the greater the risk that the use will not be fair use.
5.6 Portions of Individual Images. Although the use of entire works is usually not permitted under fair use, it is generally appropriate to use images in their entirety in order to respect the integrity of the original visual image, as long as the limitations on use under these guidelines are in place. For purposes of electronic display, however, portions of an image may be used to highlight certain details of the work for educational purposes as long as the full image is displayed or linked to the portion.
5.7 Integrity of Images: Alterations. In order to maintain the integrity of copyrighted works, educators, scholars, and students are advised to exercise care when making any alternations in a work under fair use for educational purposes such as criticism, comment, teaching, scholarship, and research. Furthermore, educators, scholars, and students should note the nature of any changes they make to original visual images when producing their own digital images.
5.8 Caution in Downloading Images from Other Electronic Sources. Educators, scholars, and students are advised to exercise caution in using digital images downloaded from other sources, such as the Internet. Such digital environments contain a mix of works protected by copyright and works in the public domain, and some copyrighted works may have been posted to the Internet without authorization of the copyright holder.
6. Transition Period for Pre-Existing Analog Image Collections
6.1 Context. Pre-existing visual resource collections in educational institutions (referred to in these guidelines as "pre-existing analog image collections") [i.e., existing prior to January 1, 1997] often consist of tens of thousands of images which have been acquired from a wide variety of sources over a period of many years. Many pre-existing collections lack adequate source information for older images and standards for accession practices are still evolving. In addition, publishers and vendors may no longer be in business, and information about specific images may no longer be available. For many images there may also be several layers of rightsholders: the rights in an original visual image are separate from rights in a reproduction of that image and may be held by different rightsholders. All these factors complicate the process of locating rightsholders, and seeking permissions for pre-existing collections will be painstaking and time consuming.
However, there are significant educational benefits to be gained if pre-existing analog image collections can be digitized uniformly and systematically. Digitization will allow educators to employ new technologies using the varied and numerous images necessary in their current curricula. At the same time, rightsholders and educational institutions have concerns that images in some collections may have been acquired without permission or may be subject to restricted uses. In either case, there may be rightsholders whose rights and interests are affected by digitization and other uses.
The approach agreed upon by the representatives who developed these guidelines is to permit educational institutions to digitize lawfully acquired images as a collection and to begin using such images for educational purposes. At the same time, educational institutions should begin to identify the rightsholders and seek permission to retain and use the digitized images for future educational purposes. Continued use depends on the institutions' making a reasonable inquiry (see Section 5.2) to clear the rights in the digitized image. This approach seeks to strike a reasonable balance and workable solution for copyright holders and users who otherwise may not agree on precisely what constitutes fair use in the digital era.
6.2 Digitizing by Institutions: Images in Pre- Existing Analog Image Collections.
6.2.1 Educational institutions may digitize images from pre-existing analog image collections during a reasonable transition period of 7 years (the approximate useful life of a slide) from [December 31, 1996]. In addition, educators, scholars, and students may begin to use those digitized images during the transition period to support the educational uses under these guidelines. When digitizing images during the transition period, institutions should simultaneously begin seeking the permission to digitize, retain, and reuse all such digitized images.
6.2.2 Digitization from pre-existing analog image collections is subject to limitations on portions from single sources such as published compilations or motion pictures (see Section 5.5). Section 6 of these guidelines should not be interpreted to permit the systematic digitization of images from an educational institution's collections of books, films, or periodicals as part of any methodical process of digitizing images from the institution's pre-existing analog image collection during the transition period.
6.2.3 If, after a reasonable inquiry (see Section 5.2), an educational institution is unable to identify sufficient information to seek appropriate permission during the transition period, continued retention and use is outside the scope of these guidelines and subject to the four-factor fair use analysis ... Similarly, digitization and use of such collections after the expiration of the transition period is outside the scope of these guidelines and subject to the four-factor fair use analysis...

2. The inclusion of protected works in educational multi- media projects.

The guidelines under this heading apply to the use, without permission, of portions of lawfully acquired copyrighted works in educational multimedia projects created by educators or students "as part of a systematic learning activity by nonprofit educational institutions." The term "educational, multimedia projects" refers to work that "incorporate[s] students' or educators' original material, such as course notes or commentary, together with various copyrighted media formats including but not limited to, motion media, music, text material, graphics, illustrations, photographs and digital software which are combined into an integrated presentation." The term "systematic learning activities" includes use in connection with "non- commercial curriculum-based learning and teaching activities" at nonprofit educational institutions. Just what sort of thing the phrase "curriculum-based" is meant to exclude is not clear.
One of the interesting and novel things about these particular guidelines is that for the first time copyright owners have attempted to place implicit limits on what students can do; previous fair use guidelines have been focussed exclusively on the activities of teachers and institutions. The guidelines say:
Students may incorporate portions of lawfully acquired copyrighted works when producing their own educational multimedia projects for a specific course.
and
Students may perform and display their own educational multimedia projects created under Section 2 of these guidelines for educational uses in the course for which they were created and may use them in their own portfolios as examples of their academic work for later personal uses such as job and graduate school interviews.
It seems remarkable that anyone thought it necessary to reassure anyone on these points. Not surprisingly, though, most of the guidelines are aimed at teacher activities.
Educators may incorporate portions of lawfully acquired copyrighted works when producing their own educational multimedia projects for their own teaching tools in support of curriculum-based instructional activities at educational institutions.
Other excerpts follow.

3.2 Educator Use for Curriculum-Based Instruction: Educators may perform and display their own educational multimedia projects created under Section 2 for curriculum- based instruction to students in the following situations:
3.2.1 for face-to-face instruction,
3.2.2 assigned to students for directed self-study,
3.2.3 for remote instruction to students enrolled in curriculum-based courses and located at remote sites, provided over the educational institution's secure electronic network in real-time, or for after class review or directed self-study, provided there are technological limitations on access to the network and educational multimedia project (such as a password or PIN) and provided further that the technology prevents the making of copies of copyrighted material.
If the educational institution's network or technology used to access [a lawfully made educational multimedia project] cannot prevent duplication of copyrighted material, students or educators may use the multimedia educational projects over an otherwise secure network for a period of only 15 days after its initial real-time remote use in the course of instruction or 15 days after its assignment for directed self-study. After that period, one of the two use copies of the educational multimedia project may be placed on reserve in a learning resource center, library or similar facility for on-site use by students enrolled in the course. Students shall be advised that they are not permitted to make their own copies of the educational multimedia project. 3.3 Educator Use for Peer Conferences:
Educators may perform or display their own educational multimedia projects created under Section 2 of these guidelines in presentations to their peers, for example, at workshops and conferences.
3.4 Educator Use for Professional Portfolio Educators may retain educational multimedia projects...in their personal portfolios for later personal uses such as tenure review or job interviews.
4. Limitations - Time, Portion, Copying and Distribution The preparation of educational multimedia projects incor porating copyrighted works are subject to the limitations noted below.
4.1 Time Limitations Educators may use their educational multimedia projects...for a period of up to two years after the first instructional use with a class. Use beyond that time period, even for educational purposes, requires permission for each copyrighted portion incorporated in the production ....
4.2 Portion Limitations These limitations apply cumulatively to each educator's or student's multimedia project(s) for the same academic semester, cycle or term. All students should be instructed about the reasons for copyright protection and the need to follow these guidelines. It is understood, however, that students in kindergarten through grade six may not be able to adhere rigidly to the portion limitations in this section in their independent development of educational multimedia projects. In any event, each such project retained under Sections 3.1 and 4.3 should comply with the portion limitations in this section. 4.2.4 Illustrations and Photographs The reproduction or incorporation of photographs and illustrations is more difficult to define with regard to fair use because fair use usually precludes the use of an entire work. Under these guidelines a photograph or illustration may be used in its entirety but no more than 5 images by an artist or photographer may be reproduced or otherwise Section 2. When using photographs and illustrations from a published collective work, not more than 10% or 15 images, whichever is less, may be reproduced or otherwise incorporated as part of an educational multimedia project created under Section 2.
4.3 Copying and Distribution Limitations. Only a limited number of copies, including the original, may be made of an educator's educational multimedia project. For all of the uses permitted by Section 3, there may be no more than two use copies only one of which may be placed on reserve as described in Section 3.2.3.
An additional copy may be made for preservation purposes but may only be used or copied to replace a use copy that has been lost, stolen, or damaged. In the case of a jointly created educational multimedia project, each principal creator may retain one copy but only for the purposes described in Sections 3.3 and 3.4 for educators and in Section 3.1 for students.
5.2 Duplication of Multimedia Projects Beyond Limitations Listed in These Guidelines Even for educational uses, educators and students must seek individual permissions for all copyrighted works incorporated in their personally created educational multimedia projects before replicating or distributing beyond the limitations listed in Section 4.3.
[Note: the use of the word "must" here, and at certain other places in the excerpts that follow, is somewhat at odds with the general intent that these guidelines are "safe harbor" guidelines, not the last word on the topic.]
6.2 Attribution and Acknowledgment Educators and students are reminded to credit the sources and display the copyright notice and copyright ownership information if this is shown in the original source, for all works incorporated as part of educational multimedia projects prepared by educators and students, including those prepared under fair use.
The credit and copyright notice information may be combined and shown in a separate section of the educational multimedia project (e.g. credit section) except for images incorporated into the project for the uses described in Section 3.2.3. In such cases, the copyright notice and the name of the creator of the image must be incorporated into the image when, and to the extent, such information is reasonably available; credit and copyright notice information is considered "incorporated" if it is attached to the image file and appears on the screen when the image is viewed. In those cases when displaying source credits and copyright ownership information on the screen with the image would be mutually exclusive with an instructional objective (e.g. during examinations in which the source credits and/or copyright information would be relevant to the examination questions), those images may be displayed without such information being simultaneously displayed on the screen. In such cases, this information should be linked to the image in a manner compatible with such instructional objectives.
6.3 Notice of Use Restrictions Educators and students are advised that they must include on the opening screen of their multimedia project and any accompanying print material a notice that certain materials are included under the fair use exception of the U.S. Copyright Law and have been prepared according to the educational multimedia fair use guidelines and are restricted from further use.
6.5 Integrity of Copyrighted Works: Alterations Educators and students may make alterations in the portions of the copyrighted works they incorporate as part of an educational multimedia project only if the alterations support specific instructional objectives. Educators and students are advised to note that alterations have been made.

3. Distance learning. This set of guidelines is directed to the "performance and display of copyrighted works in some of the distance learning environments that have developed since the enactment of Section 110 and that may not meet the specific conditions of Section 110(2)." Unlike the other guidelines, they apply not only to non-profit institutions but also to governmental agencies engaged in teaching their employees. (Query whether the guidelines apply to state governmental agencies, given the present uncertainty over the issue of state immunity.) The guidelines establish conditions under which instructors may perform and display copyrighted works as if they were engaged in face-to-face instruction:
[Teachers] may, for example, perform an audiovisual work, even a complete one, in a one-time transmission to students so long as they meet the other conditions of these guidelines. They may not, however, allow such transmissions to result in copies for students unless they have permission to do so, any more than face-to-fact instructors may make copies of audiovisual works for their students without permission.
"Distance learning" is defined as "teaching through the use of telecommunications technologies to transmit and receive various materials through voice, video and data."
The guidelines make certain interesting observations about the interplay of Sections 107 and 110:
The developers of these guidelines agree that these guidelines reflect the principles of fair use in combination with the specific provision so Sections 110(1)-(2). In most respects, they expand the provisions of Section 110(2). In some cases, students and teachers in distance learning situations may want to perform and display only small portions of copyrighted works that may be permissible under the fair use doctrine even in the absence of these guidelines. Given the specific limitations set out in Section 110(2), however, the participants believe that there may be a higher burden of demonstrating that fair use under Section 107 permits performance or display of more than a small portion of a copyrighted work under circumstances not specifically authorized by Section 110(2).
* * *

These guidelines apply to the performance of lawfully acquired copyrighted works not included under Section 110(2) (such as a dramatic work or an audiovisual work) as well as to uses not covered for works that are included in Section 110(2). The covered uses are (1) live interactive distance learning classes (i.e., a teacher in a live class with all or some of the students at remote locations) and (2) faculty instruction recorded without students present for later transmission. They apply to delivery via satellite, closed circuit television or a secure computer network. They do not permit circumventing anti-copying mechanisms embedded in copyrighted works.
These guidelines do not cover asynchronous delivery of distance learning over a computer network, even one that is secure and capable of limiting access to students enrolled int eh course through PIN or other identification system. Although the participants believe fair use of copyrighted works applies in some aspects of such instruction, they did not develop fair use guidelines to cover these situations because the area is so unsettled...[C]onsideration of whether fair use guidelines are needed for asynchronous computer network delivery of distance learning courses perhaps should be visited in three to five years.
The key portions of the guidelines follow:
3.1 Relation to instruction. Works performed must be integrated into the course, must be part of systematic instruction and must be directly related and of material assistance to the teaching content of the transmission. The performance may not be for entertainment purposes. 4.1 Transmission (delivery). Transmission must be over a secure system with technological limitations on access to the class or program such as a PIN number, password, smartcard or other means of identification of the eligible student.
5.1 One time use. Performance of an entire copyrighted work or a large portion thereof may be transmitted only once for a distance learning course. For subsequent performances, displays or access, permission must be obtained.
7.1 Commercial uses. [Permission is required for any] commercial use including the situation where a nonprofit educational institution is conducting courses for a for- profit corporation for a fee such as supervisory training courses or safety training for the corporation's employees.
7.2 Dissemination of recorded courses. [Permission is required where an] institution offering instruction via distance learning under these guidelines wants to further disseminate the recordings of the course or portions that contain performance of a copyrighted work.
Subject 2. REVISITING THE PROBLEM OF "FRAMING" AS "DERIVATIVE WORK"
NO PROPOSED RESOLUTION
Past Action. None.
Discussion. Two scarcely reconcilable cases, concerning whether remounting of a pictorial work constitutes making a derivative work, have become famous with law professors and their students. One, Mirage Editions Inc. v. Alburquerque A.R.T. Co., 856 F.2d 1341 (9th Cir. 1988), found that defendant had created unlawful derivative works of the plaintiff's images by removing them from a book and shellacking them onto wooden plaques. The other, C.M. Paula Co. v. Logan, 355 S.Supp. 189 (N.D.Tex.1973), found that defendant had not infringed copyright in the plaintiff's greeting cards by removing the ink from the cards through a somewhat ill- explained process and re-applying the ink to ceramic plaques; such activity, said the Paula court, was protected by the first sale doctrine (enshrined in 17 U.S.C. �109) because the image was merely resold, albeit after transfer to a different medium.
An argument could be made that both of these cases were wrongly decided. The Committee finds itself divided on the point. Be that as it may, for a long time the two cases seemed mere curiosities . However, the kind of use they both address appears to be of greater economic significance than one might have supposed. It reappeared in 1993 in Munoz v. Albuquerque A.R.T. Co., 829 F.Supp. 309 (D. Alaska 1993), in which the Alaska court, following Mirage Editions, found infringement in A.R.T.'s process of mounting artwork on ceramic tile. Now this year come two new cases which, like Mirage Editions and Paula, reach diametrically opposed results.
In Greenwich Workshop Inc. v. Timber Creations Inc., 932 F.Supp. 1210 (C.D. Cal. 1996) the plaintiff sued on copyrights it owned in certain watercolors and photolithographic prints of those watercolors. It also claimed copyright in a book, "The Art of Bev Doolittle," in which smaller scale reproductions of Doolittle's works were compiled. The defendant's sin was to cut pages out of copies of this book and frame them. The court, following Mirage Editions, found that the matting and framing of these plates constituted the creation of unauthorized derivative works. It therefore rejected defendant's first sale doctrine defense.
The court took one interesting position which Mirage Editions had not explicitly taken. It said, "Defendants' infringement is particularly evident in the context of the copyrighted book, which defendants have clearly 'recast' and 'transformed' by physically removing the pages and adapting them into works of art to hang on the wall...Defendants' practice of removing from plaintiff's copyrighted book reduced-scale versions of plaintiff's artwork, which were intended solely for inclusion in the book, is not equivalent to simply framing a work of art for display purposes."
A serious flaw in this logic is that the copyright in the book was strictly a compilation copyright, since each image had already acquired its own separate copyright. It is difficult to see how the removal of pages from a book creates a derivative work of the compilation as such, since it does not itself create any compilation.
Furthermore, there is no evidence that the reduced-scale versions of the original artworks contained, themselves, any copyrightable authorship, being merely perfect copies on a reduced scale. Thus, the court's position that the protected artworks were intended "solely for inclusion in the book" lacks foundation.
Thirdly, even if each plate had its own protectible copyright, the fact that the plates were produced solely for purposes of inclusion in the book does not mean that their inclusion in the book in any way affected their content or appearance. If it did not, then their removal from the book could not have affected their content or appearance.
The fundamental problem that the court failed to address is that a derivative work, by definition, contains some new copyrightable expression, and that therefore, to find there has been an infringement of the derivative work right under Section 106, one must find such new expression to be present. The Court made no finding on this point, believing itself bound by the holding in Mirage Editions.
This important doctrinal point was, however, addressed in Lee v. Deck the Walls Inc., 925 F.Supp. 576 (N.D.Ill. 1996). Plaintiff Annie Lee, an artist, sued defendants for gluing her notecards to ceramic tiles and covering the images on the tiles with clear epoxy resin. The court in Lee rejected the holding of Mirage Editions and Munoz, observing that to be an infringing derivative work an object must be original enough that, if lawful, it would qualify for protection as a derivative work. The Lee court cited Woods v. Bourne Co., 60 F.3d 978 (2nd Cir. 1995), for the rule that to be a derivative work a thing must be "independently copyrightable." The court found no "creative spark" in the "mundane act of placing notecards onto a ceramic tile." The court also cited in support of its finding the case of Paramount Pictures v. Video Broadcasting System, 724 F.Supp. 808 (D. Kan. 1989), in which the addition of commercials at the beginning of videocassette movies was not found to create infringing derivative works.
Subject 3. WORKS OF ART AND USEFUL ARTICLES.
NO PROPOSED RESOLUTION
Past Action. None.
Discussion. The definition of "pictorial, graphic and sculptural works," in Section 101 of the Copyright Act, denies copyright to works of art embodied in useful articles unless the artistic features "can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article." Over the years there have been many scarcely compatible cases dealing with this language. These cases have involved lamps, bicycle racks, clothes dummies, and belt buckles, inter alia. The newest, and perhaps the oddest, case in this troubled area is Hart v. Dan Chase Taxidermy Supply Co. Inc., 86 F.3d 320 (2d Cir. 1996).
The court in Hart had before it a portfolio of products used as mannequins for mounting animal and fish skins. A year earlier the district court, in Hart v. Dan Chase Taxidermy Supply Co.Inc., 884 F.Supp. 71 (N.D.N.Y. 1995), had found mannequins of a bear, a moose, a sheep, a steer, and an antelope to be copyrightable. It had however applied the merger doctrine to strike down copyright in various fish mannequins, finding that the fish mannequins had no meaningful details that were not dictated by the idea of portraying a fish in a realistic pose. The parties settled as to the animal mannequins but plaintiff appealed on the fish.
The Second Circuit held that the lower court had been too hasty in finding merger. It observed that the eight different mannequins before it exhibited sufficient differences, one from the other, to suggest that there is a broad enough range of expression of realistic fish that copyright will not create a monopoly in the idea of a realistic fish mannequin.
The defendant argued that, regardless of merger, the mannequins were useful articles and that the expression contained in them was not separable from their utilitarian function. The Second Circuit disagreed. It stated that, unlike the human mannequins in Carol Barnhart Inc. v. Economy Cover Corp., 773 F.2d 411 (2d Cir. 1985), the fish mannequins before it were intended not merely as a frame to present the covering material but to portray a complete fish, jumping or wriggling its tail or "munching on plankton." In short, said the court, "the fish mannequin is designed to be looked at. That the fish mannequin is meant to be viewed clothed by a fish skin, rather than naked and on its own, makes no difference. The function of the fish form is to portray its own appearance, and that fact is enough to bring it within the scope of the Copyright Act."
Of course, the plaintiff in Carol Barnhart had likewise argued that its mannequins, viewed without clothes, had an artistic component that could be appreciated separately from their utilitarian function. It lost because the court found that the primary purpose of the mannequins was to present clothes. Here, what the Second Circuit seems to be saying is that the fish mannequins' entire purpose is expressive, not utilitarian, because portraying fish is fundamentally an artistic function, not a "useful" function. Significantly, it did not bother the court that the fish mannequins were sold to taxidermists for use in their plainly non-artistic business. The court was prepared to view the mannequin frames as artistic in themselves.
It is hard to foretell what, if any, significance this case will have outside its own rather odd facts. If nothing else, though, it shows that the primary/secondary analysis used in Carol Barnhart remains alive and well in the Second Circuit.
Carol Barhart received less reverence earlier in the year in a Fourth Circuit case on the same subject. In Superior Form Builders, Inc. v. Dan Chase Taxidermy Supply Co., Inc., 74 F.3d 488 (4th Cir. 1966), the Fourth Circuit expressed misgivings about Carol Barnhart, but reached a conclusion quite similar to the Second Circuit's regarding the copyrightability of animal mannequins. The Fourth Circuit found that the mannequins "provide[] the creative form and expression of the ultimate animal display," and that their utility does not disqualify them from copyright because it is "merely to portray the appearance" of the animals, citing 17 U.S.C. � 101. The court's subsequent discussion of the separability issue was somewhat perfunctory and does not shed much light on how it will approach a case where separability is the key issue.
Members Approving Report:
Connolly, Francis William
Cook, Noel Matthew
DuBoff, Leonard D.
Dunn, G. Harvey
Koegel, John B.
Marshall, Carol J.
Newbury, Robert M.
O'hara, Ann
Prutzman, L. Donald
Strong, William S.
Thompson, Roger S.
Weil, Stephen E.
Members Disapproving Report:
None
Members Abstaining:
Block, Allyson
Members Not Heard From:
None

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