Copyright 1998 EDUCAUSE. From CAUSE/EFFECT Volume 21, Number 2, 1998, pp.19-27. Permission to copy or disseminate all or part of this material is granted provided that the copies are not made or distributed for commercial advantage, the EDUCAUSE copyright and its date appear, and notice is given that copying is by permission of EDUCAUSE. To disseminate otherwise, or to republish, requires written permission. For further information, contact Jim Roche at EDUCAUSE, 4840 Pearl East Circle, Suite 302E, Boulder, CO 80301 USA; 303-939-0308; e-mail:

Ownership Issues in Online Use of Institutional Materials
by Dan L. Burk


Institutions of higher education are quite literally in the business of creating, acquiring, and disseminating information in a variety of formats. Over time, any college or university will amass a substantial portfolio of text, illustrations, photographs, software, and other creative works acquired by solicitation, commission, or contribution. Because digital computer networks are becoming common on campuses, the digitization of these works has also become increasingly common. Such digitized materials are routinely being made available online. Indeed, colleges and universities have turned to the Internet as a preferred medium for disseminating the wealth of material under their control.

Educational institutions may choose to offer digitized materials on the Internet for any of a number of reasons: as a public service, as a contribution to scholarship, as a special benefit to alumni, or as a means of self-promotion. A few examples of new uses for old materials include:

Each of these scenarios raises questions about proprietary rights when analog materials are transferred to a digital format. The ability of institutions to transfer materials from previous media to networked digital systems may, in many cases, be limited by laws that regulate the ownership and use of intellectual property. This article addresses several of the intellectual property issues that arise when an educational institution provides Internet access to materials that it previously published in another format. Specifically, this article will focus on express and implied transfer of copyright, rights of privacy, and rights of publicity when materials are transferred from analog to networked digital media. [Burk will also deliver a pre-conference seminar, "Formulating and Promulgating Institutional Copyright Policies," on this topic at CAUSE98.]

Scope of discussion

The questions addressed here are a subset of the intellectual property problems that face an educational institution when its faculty, staff, or students place material on the Internet. On a broad scale, digitization of analog materials raises complex legal and institutional issues: What is the scope of the institution's responsibility for the actions of its students, faculty, and staff? Is it legal for a faculty member or student to make an unauthorized digital copy of a third-party document, given the rules of copyright fair use? Can the institution monitor such activity consistent with the principles of academic freedom? The answers to those questions can be intertwined with difficult issues of institutional ownership, control of digital materials, and the scope of the work-made-for-hire doctrine.

The scope of this article, however, is narrower, and such problems, while related to the topic, will not be discussed here. Rather, this article will examine situations in which the institution transfers to the Internet materials for which it has obtained rights in another medium, such as print. This analysis will focus on situations in which the institution itself has disseminated digitized works, rather than situations in which the institution might be vicariously liable. Issues related to university acceptable-use policies or the review of student or faculty Web pages, with their attendant issues of academic freedom and freedom of expression, lie beyond the scope of this discussion. Additionally, questions of authorship under the works-made-for-hire doctrine will receive only limited attention, as I have previously analyzed this topic in some detail elsewhere.1

Copyright in digital media

Transfer of printed or other material to the Internet will most frequently raise issues of copyright. We generally think of copyright as exactly what its name implies: a right to make copies of a work. Copyright does, in fact, confer an exclusive right of reproduction. However, the right of reproduction is only one of five exclusive rights conferred by copyright ownership. The copyright also comprises the right to distribute copies, the right to make adaptations of the work, the right to publicly perform the work, and the right to publicly display the work.

Copyright extends to a wide variety of subject matter associated with hypermedia, including text, graphics, photographs, motion pictures or other audiovisual works, musical compositions, sound recordings, and computer software. However, the scope of copyright in digitized works is a matter of some dispute. To qualify for copyright, the material must be original and fixed for more than a transitory duration in a tangible medium of expression. These qualifications for copyright protection were developed in the world of print media and do not always map well onto the world of digital media, particularly in a networked environment.

For example, copyright questions have arisen regarding so-called "RAM copies." In automated information processing and retrieval systems, digitized information is reproduced and stored in computer memory whenever the information is accessed. This storage may occur in RAM, or it may occur in temporary "cache" files on magnetic media. In the case of networked computer communications, temporary copies may be made on several intermediate machines as packets are routed to their final destination.

Some court decisions suggest that copies of a program loaded into RAM may be relevant for copyright purposes. Because the RAM copies are accessible and endure for more than a transitory duration, some judges have said that the copy in RAM may be an infringing copy. This, in turn, implies that intermediate digital copies of copyrighted works, including copies of works in Web browser caches created during the operation of network applications, may be infringing copies. In turn, digital transmission of those copies over a network would presumably constitute a distribution of copies.

Overlapping rights

Digital media also involve the exclusive right of adaptation. Adaptation occurs when an author mixes another author's work with his or her own original expression to produce a new work. This might occur, for example, when a poem is set to music to become a song, or when a novel is adapted into a screenplay for a movie. It arguably also occurs when analog materials are adapted to HTML or other digital formats for posting on the Internet. For example, if text is being incorporated into a multimedia work, the addition of sound, graphics, and similar original expression by the multimedia author transforms the adapted work into a new work based in part on the initial text. Even if obvious additions such as music, graphics, or animation are not made, the transformation of the text to digital format--into a type of software file--may by itself constitute an adaptation.

Similarly, the rights of public performance and display are at issue when analog materials are put online. It may seem obvious that graphics or text on the Web are being displayed; when they are accessed by an Internet user, the materials are clearly displayed on the user's computer screen. It is less intuitive that graphics or text are being "performed," but this is what occurs under the definition in the copyright statute.

The implications of this analysis are somewhat startling: When material is posted on a digital network, it is almost certainly being simultaneously copied, distributed, adapted, publicly performed, and publicly displayed. This type of simultaneous overlapping use was not a characteristic of traditional media such as print. Printed materials may be reproduced and distributed by means of photocopiers, but this activity is unlikely to raise questions about public performance and display. Unauthorized broadcast of television or radio programming may raise questions regarding public performance and display, but probably not regarding reproduction and distribution. The same was true of video tapes, sound recordings, and other analog media. Use of such media might raise questions about one or two of the copyright exclusive rights, or perhaps different exclusive rights at various times, but never all the exclusive rights at once.

In a networked environment, however, copies of copyrighted material are routinely made and distributed as a necessary part of the network's operation. Of course, if the owner of the work placed the work on the Net, then we can infer that the owner intended such copying, distribution, performance, and so on to occur. But if placement of the work on the system is unauthorized, the normal operation of the computers and computer networks will result in repeated and widespread copyright infringement.

Scope of institutional rights

This overlap of rights can cause problems for institutions wishing to digitize what appear to be their own materials. Educational institutions may lack the rights they need to digitize such works and place them on the network. For example, in one of the examples given above, a university might have obtained rights to publish---that is, to reproduce and distribute copies of--stories solicited for its alumni magazine. But it is unlikely that the university secured the right to adapt, publicly perform, and publicly display the stories. Such rights were simply not necessary in a print-based world, and so they probably were not considered at the time the work was solicited. But, as shown here, these rights are central to electronic distribution of such stories on the Internet. Unless the college or university obtained all rights to the stories--that is, unless it obtained a transfer of copyright ownership--it may well have to go back to the author to obtain additional rights for electronic distribution.


In some instances, an institution may be able to claim ownership of all rights in a previously published work because the institution is considered the author of the work. Institutions can be authors under the doctrine of work-made-for-hire; works created by employees of an institution will often fall into the category of work-made-for-hire. In that case, the institution, rather than the person who created the work, is considered the author. In such instances, because the institution owns all rights to the work, it may use the work in any manner it wishes, including transfer of the work to new media. However, this unusual claim of authorship may be of limited use in the type of situation considered here. Although the work of administrators and staff, created in the course of their regular duties, likely falls within work-made-for-hire, application of the doctrine to full-time faculty is highly problematic, for reasons that I have elsewhere described in some detail.2 Additionally, although commissioned works sometimes are considered works-made-for-hire, this applies only if the works fall within certain categories, such as audiovisual works, instructional texts, tests, and test answer materials. Works derived from the contributions of visiting speakers, free-lance writers, and scholarly commentators are unlikely to meet the criteria of works-made-for-hire.

Fair use

Outside of the works-made-for-hire situation, the work's creator will normally be considered its author, and institutional use of the work will have to rest on some other claim of right. Sometimes the copyright statute permits use of copyrighted works without a license or transfer of rights. Indeed, one of these special exceptions may appear to be an attractive--but probably unwarranted--justification for unauthorized transfer of materials to computer networks. Educational institutions might be tempted to say that the placement of materials on a network is a fair use of the materials. This argument may seem appealing because colleges and universities are accustomed to justifying unauthorized use of copyrighted works on the grounds of fair use. To be sure, many unauthorized educational uses of copyrighted works probably are fair use, but the fair use exception to copyright is not a carte blanche for every institutional use of a copyrighted work.

A full discussion of copyright fair use exceeds the scope of this article, but a limited treatment is in order. Fair use provides a limited privilege allowing otherwise-unauthorized use of protected works for purposes such as scholarship or criticism. Typically, fair use will involve a minimal use of a portion of the total work, such as a quote or excerpt, and the portion taken would not substitute for the work in the marketplace. For example, quoting a few lines from a book in a book review is a classic example of fair use. Taking all of a work, especially for commercial purposes, should usually trigger concern that the use exceeds the statutory privilege.

Education is a preferred activity under fair use, and many of the institutions that might place digital materials on their Web sites have not-for-profit status. However, each of the examples cited at the beginning of this article contains elements that signal the activity may exceed fair use. All of the examples involve placing the entire work or collection of works, rather than exerpts, on publicly accessible networks. Also, not-for-profit status is primarily a designation for purposes of taxation; such status does not necessarily mean that no money changes hands at the institution, or that the institution is not engaged in activity that might be considered commercial for purposes of copyright. Additionally, many of the proposed uses in the examples may fall outside the strict definition of "educational." Institutions may be placing materials on public networks in order to promote their services and attract enrollment, rather than to engage in instruction. Finally, and most important, materials placed on publicly accessible networks will often substitute for authorized copies of the work.

Express and implied licenses

If the college or university is not the author of a work and its aim extends beyond minimal fair use of the work, then it will have to gain the rights to the work via contract before posting the work on the Internet. In many cases, an institution's past practices will pose a serious impediment to the new use of the work. For example, the institution may have neglected to secure a written agreement related to commissioned, contributed, or solicited works. Record keeping as to the author's identity and whereabouts may be poor. Locating and securing express permission may be time-consuming or even impossible.

In other instances, a written contract may have been secured, but may contain no provisions related to allocation of copyright. Even if an institution has had the foresight to both secure an express agreement and make express provision regarding allocation of copyright, it may nonetheless have failed to foresee the transfer of the work to a new medium, such as digital networked media. In such cases, the contract's copyright provisions may not address rights like public performance or public display, which may not have been seen as relevant to use of the work at the time the contract was executed.

In the absence of express provisions governing a situation, courts will infer the existence of a contract, or license, from the conduct of the parties. For example, as suggested above, if a copyright owner places a work on a computer network, we can infer that he or she must have intended for RAM copies to be made and distributed in the course of network access to the work. Similarly, if someone submits an article to a journal, we would reasonably infer that the author intended that if the article is accepted, copies of the work would be reproduced and distributed in the course of publishing and disseminating the journal. Other common practices may also indicate assent to publication. For example, it may be common practice in certain fields to allow an institution's journal to print a speech delivered at a scholarly symposium that took place at the institution. A court could infer that the author of the speech, by delivering it at the symposium, reasonably intended that it would be published in the journal.

However, hindsight reconstruction of implied licenses has its limits. The actions of the parties may not clearly indicate their intent with regard to new uses of the material, if indeed they had any intent at all. Additionally, the copyright statute itself imposes a limit on the usefulness of implied-license doctrines: the statute mandates that exclusive rights or ownership in a copyrighted work can be transferred only by an express writing. Thus, an unwritten contract that might be inferred after the fact can at best convey non-exclusive rights in the copyrighted work.

In situations where a written contract exists, courts will look to the language of the contract as an indication of the intent of the parties. Even if the contract does not explicitly discuss "electronic rights" or "online use," language in the contract may inform the court's decision. There is a fairly large body of case law dealing with contractual rights to exploit creative works in new media, such as television or videocassette, that were not explicitly mentioned in old contracts. Courts have tended to conclude that when the new medium was completely unknown and unforeseen, a contract should not be construed to include rights in that new medium. However, when the parties to the contract were sophisticated in the relevant industry, courts have tended to conclude that contracts should be construed to include new media unless the author included language expressly reserving such rights. Courts have especially been persuaded that broad, contractual language referencing use "by any means now known or hereafter invented" should be construed to include new media. It is likely that these interpretive trends would be extended to computer networks, as they have been to past media developments.

Recent electronic rights decision

Educational institutions may look for some guidance in Tasini v. New York Times,3 which discusses implied and express contracts, as well as a special provision of the copyright act dealing with republication of collective works. Collective works include periodicals such as magazines and newspapers, which comprise individual contributions. In the Tasini case, copyright infringement claims were brought by six free-lance writers who had sold articles to a variety of periodicals. In most cases, the writers sold their work based on verbal agreements, although in one case a written contract granted "first publication rights." The periodicals subsequently licensed their contents for use in digital media, including dial-up access databases containing only the text of the articles, and image-based CD-ROM products containing photographs of the periodicals as published.

The authors asserted that the publishers had no rights to reproduce their articles in these new media. The publishers argued that the right to republish the works in digital format was inherent in the agreements to publish the works in print format. They also argued that the copyright act allowed them to include the writers' works as part of reprinting the periodicals, albeit in a different medium.

The court held that transfer of rights to republish the articles in new media could not be inferred from oral agreements or even, in the case of the express contract, from the language granting "first publication" rights. According to the court, "The right to publish an article first cannot reasonably be stretched into a right to be the first to publish an article in any and all mediums." However, the court also held that the publishers had the right under the copyright act to republish the works as part of reprinting past issues of the periodical "collective works," and that the right extended to new media such as dial-up databases and CD-ROM products.

Although this court decision may appear to clarify the question of electronic rights in previously published materials, there is reason to regard the Tasini holding with caution. First, the trial court's decision is pending appeal, and appellate review may or may not uphold the decision. Appellate confirmation of the decision could be persuasive to other courts, but would establish legal precedent in only a geographically limited area of the northeastern United States, and the current trial court ruling carries no precedential weight at all. Second, the trial judge's reliance on the "collective works" republication right of the copyright act may be questionable. The decision focuses primarily on the author's right of reproduction, without recognizing or analyzing the problem of RAM copies. Further, the opinion gives only cursory consideration to the problem of overlapping rights, offering a superficial and arguably inaccurate discussion of the right of public display. It is inconceivable, for example, that a court would consider a radio broadcast, film adaptation, or dramatic reading of the contents of any given print magazine to fall within the statutory revision privilege related to collective works; it is unclear why digital "broadcast" should be so considered. The result in Tasini appears to be an artifact arising from the superficial resemblance that electronic media bear to print media, in that both display text. Thus, future decisions about the permissibility of transferring materials to "new media" may likely be grounded in the type of contract analysis reviewed above, rather than esoteric provisions of the copyright act.

Rights of privacy and publicity

The discussion of proprietary rights has to this point focused primarily on copyright. But copyright is by no means the only issue involved in transferring materials to the Internet. For example, transfer of certain materials to the Internet may involve invasion of privacy. American law recognizes several different rights of privacy, but the version of the right that is most applicable to this discussion concerns the commercial appropriation of a person's likeness. The classic version of this privacy tort involves publication of a person's photograph in a newspaper, typically as a human interest story, rather than because the individual has engaged in a newsworthy activity. This could be relevant when institutions propagate the "persona"--that is, the image, likeness, or other personal attributes--of private people on publicly accessible networks. This might occur in the example of the annual report above, if it contained images of students or alumni. Internet distribution of photographs portraying an individual is comparable to a worldwide broadcast of the individual's likeness. Similarly, placing an audio file of a speech on the Internet is comparable to a worldwide broadcast of the individual's voice. Such widespread distribution of the persona may extend impermissibly far beyond the more limited distribution in print or on magnetic media.

Closely related to the right of privacy is its more commercial cousin, the right of publicity, which generally pertains to public figures. Like invasion-of-privacy torts, the right of publicity grows out of state law, and so may vary from state to state. Infringement of the right of publicity usually involves the appropriation of a celebrity's likeness for commercial gain. Unlike the private citizens in the newspaper photograph cases, celebrities cannot easily claim invasion of privacy when their likeness is published. They are, after all, celebrities because their likenesses are so frequently published, so their images are hardly private. However, because they make their living from public appearances, unauthorized use of their likeness for commercial purposes may threaten their livelihood. Therefore, the law may protect that image as a commercial asset. The right may also extend to characteristics of the celebrity other than likeness, such as a distinctive manner of speaking or singing.

Consequently, some care may need to be exercised with regard to Internet posting of photographs of public figures or celebrities who have visited an institution or participated in institutional events. Such public figures might include prominent guests who have spoken at commencement, who have been honored with institutional awards, who have appeared at the opening of new structures, or who may have attended alumni events. Presumably, the fact that such individuals are public figures whose appearance was photographed or recorded at a public event affords some degree of First Amendment right to disseminate the photograph or recording. Additionally, the public figure likely should have had some reasonable expectation that an appearance at the event would be recorded and discussed. But the extent of such an implied license to disseminate the public figure's likeness is unclear, especially if the college or university is reaping some direct or indirect financial advantage from using the picture.

As in the case of copyright, the scope of institutional rights in this area would ideally be defined by an explicit right of privacy/right of publicity waiver. However, institutions are just as likely to have failed to secure such waivers as they are to have neglected to get copyright agreements, or where a waiver has been obtained, to have failed to address the use of the individual's likeness in new media. In the past, courts faced with extension of the right of publicity to new media have applied the same principles of contract interpretation discussed above. Without express contractual language allocating rights of privacy or publicity, the rights will be subject to implied contract analysis. As in the case of copyright transfer, a court would consider the parties' knowledge and experience, their prior behavior, and the custom of the industry to determine the parties' reasonable expectations. So the question for transferring photographs to digital networks will be whether such use should be anticipated as part of permission. As the use of the medium becomes more common, and awareness of the medium grows, such an expectation may be routinely inferred. However, it is less than clear now whether express or implied permission for print distribution means it's okay to reproduce that image on the Internet.

Institutional responses

The discussion above outlines several situations in which unauthorized transfer of materials to digital networks may leave educational institutions liable for copyright infringement, right of publicity violations, or other misappropriation of proprietary rights. This, in turn, suggests that educational institutions should consider methods to assess and minimize possible exposure to infringement liability. There may be a variety of such methods, but the most workable option for many institutions may be to develop an intellectual property compliance checklist that must be reviewed or approved prior to transfer of materials to digital format. Using this kind of a checklist for pre-publication clearance is standard procedure for many commercial corporations: Before an advertisement, brochure, or other publication goes out the door, it is reviewed by corporate counsel for copyright compliance, trademark compliance, right of publicity compliance, and so on. Educational institutions may need to consider implementing similar review mechanisms.

Proprietary rights audits

The necessity of considering such a traditionally commercial-sector measure underscores the new reality of digital publication that colleges and universities face. Traditionally, the high cost of typesetting, printing, and distributing print materials required publishers to be highly capitalized. Intellectual property compliance was primarily a concern of wealthy, specialized businesses. But digital networks drastically lower publication costs. By enabling low-cost preparation and worldwide dissemination of materials, digital media have allowed almost any institution to become a publisher. However, with this new role come the traditional concerns and liability exposure of a publisher. To the extent that educational institutions are now operating as publishers, they must begin to address the same issues that have traditionally been addressed in the for-profit business sector. Ironically, many institutions that can now afford to be publishers may be poorly positioned to afford the costs of pre-publication review and liability exposure.

Additionally, in an educational setting, the mechanism of pre-publication checklists must be deployed with some caution. However much educational institutions are beginning to resemble traditional publishers, much of online publishing in colleges and universities is quite different from corporate advertising or publication. Most particularly, online scholarly publication by university faculty differs markedly from corporate publication. Indeed, scholarly publications traditionally have not been subjected to institutional pre-publication review in the print world. Implementation of such review should presumably be no more appropriate in digital media than it has been in print media. At minimum, starting such a review for scholarly faculty publication would raise serious questions of academic freedom and expression.

Even when considering pre-publication review for non-academic publications, the institution should review the degree of burden that compliance checklists will impose on university operations. For example, very few university counsel offices are equipped to handle the workload that would be generated by pre-publication review of the institution's online materials; in the case of smaller universities and colleges, there may be no permanent legal office. To ease some of the burden, colleges and universities might establish benchmarks that would trigger review by either inside or outside legal counsel. Or, institutions might spread the responsibility for review over administrators of subsidiary academic units such as colleges or departments. However, assignment of such responsibility to subsidiary academic units does not wholly solve the problem of burden; few deans or department chairs will welcome the additional burden of pre-publication review for online materials generated by their administrative units. Additionally, creating multiple centers for review creates a risk of uneven compliance, depending on the competence and diligence of each office. Other approaches, such as designation of a departmental "intellectual property compliance" officer, or review by faculty committee at the departmental, college, or university level, might be implemented to meet the particular needs and constraints of individual institutions.

The choice among various review options will be largely a matter of institutional risk management: the benefits of increasingly greater scrutiny must be weighed against a realistic measure of the institution's likely exposure to liability for intellectual property infringement. Factors to consider in choosing a review method may include: how often institutional materials are likely to be placed on publicly available networks, the type of materials most likely to be transferred to such networks, the resources available for pre-publication review, the bureaucratic delay caused by more elaborate review, and the history and internal culture of the particular institution. Increased likelihood of exposure to liability will tend to dictate a more stringent approval process, unless the institution lacks the resources for review, or is willing to incur the potential liability. At a bare minimum, however, even the most resource-constrained or risk-tolerant institutions should consider distribution of the compliance checklist as an informational tool, if not as a review requirement.

Rights acquisition

As a second component of a proprietary rights compliance program, educational institutions should develop a policy for acquiring rights in new media. Regardless of past oversights or mistakes, colleges and universities should take steps to avoid ownership problems in the future by articulating a coherent approach to newly commissioned or solicited works. This will likely include a standard form or license embodying the policy. Of course, one approach to the matter is to do nothing about ownership allocation of invited or commissioned works, rather than require a standard transfer. An institution can certainly choose to seek new permission or clarification for each future use of works in new media. This approach might be desirable for institutions where the cost of developing and implementing a rights-ownership policy exceeds the expected benefits of the policy; for example, at a small institution that seldom invites or commissions such works, or has chosen not to make such works available via electronic media. However, this approach should be adopted as a conscious choice in the management of the institution's intellectual property portfolio, rather than as an unconscious default due to neglect or ignorance.

At the far end of the rights-management spectrum, institutions may attempt to simplify rights management by simply demanding authors to surrender all rights in solicited or commissioned works. For copyright, this would require a signed writing, which would likely include the language discussed above about transfer of rights in "any medium now known or hereafter invented." However, many non-institutional contributors, visiting speakers, and distinguished guests may be reluctant to transfer all rights, and may elect instead not to contribute or speak. Even if the institution has sufficient leverage to induce some speakers or contributors to sign the transfers, the policy may be viewed as overreaching. These considerations, together with the potential burden on the institution of monitoring and policing a large intellectual property portfolio for which the institution would be the exclusive owner, may militate in favor of some intermediate position. Educational institutions may be able to require the transfer of only specific rights that will accommodate both their management needs and the interests of the author. For example, since copyright is infinitely divisible, an institution might opt for the transfer of a non-exclusive right to use materials in future media.


Transfer of previously published materials to the Internet may implicate a variety of proprietary rights. Because of the nature and operation of digital networks, educational institutions will frequently lack the necessary permission or ownership of rights for such online usage. In order to avoid infringement liability, some type of audit of the materials may be necessary prior to placing them online, in order to determine whether the institution has secured the necessary permissions, licenses, or rights ownership. Different levels of review will be appropriate to different educational institutions, depending on their individual determination of likely exposure. Additionally, educational institutions should give prompt attention to development of policies on securing the electronic or "new media" rights to materials acquired in the future.


Sample Pre-Publication Review Checklist

Identify the source of all copyrightable works including:

Right of privacy or publicity
Identify the use of any individual's persona including:


1 Dan L. Burk, Ownership of Electronic Course Materials in Higher Education, CAUSE/EFFECT, Fall 1997, 13-18.

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2 Burk.

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3 972 F. Supp.804 S.D.N.Y. 1977.

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Dan L. Burk ( is an associate professor of law at Seton Hall University. the table of contents

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