Emily (foresthouse) wrote,

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Copyright Issues: More on Orphan Works

As a follow-up to my previous post:

Since I know it can be tough to slog through 40-something pages of analysis, and I notice that the whole "mandated registries" notion is what is getting the most attention right now, I'm going to do a little cut-and-paste here. Below (from my paper) are relevant paragraphs dealing with the Copyright Office's proposed solutions to the orphan works problem, as they stood in 2006 (as noted, that is the last time legislation was proposed).

But first, a small cut-and-paste from the 2006 copyright report itself (pp. 60-61):

"However, in 1988, the United States acceded to Berne and passed the Berne Convention Implementation Act (“BCIA”).156 Under the BCIA (and under current law), neither registration nor publication with notice is required for copyright to subsist in a work.

Any legislative solution to the orphan works problem, therefore, must not require an author to comply with formalities if failure to comply with those formalities would result in the author becoming unable to enjoy or exercise the copyright in the work. A prohibited formality could prevent the formation of rights, or divest existing rights later in the life of the copyright. For example, if an orphan works statute required that, promptly after creation or publication, all works be registered with the Copyright Office and that all unregistered works be deemed orphan works, which automatically and permanently fall into the public domain (resulting in a complete loss of rights for the author), Berne’s rule against formalities would be implicated, and violated."

(emphasis added)

Please notice that the Copyright Office's statement from 2006, when they did their report and proposed solutions, makes the likelihood of a proposed bill requiring registries extremely unlikely. As in, we'd have to withdraw from Berne, TRIPS, and other international agreements before passing something like that, and I juuuust don't see that happening.

Exerpt from my 2006 analysis:
(ETA: Alright, I'm also going to go through and bold some stuff and add notes for more ease of reading. :)

1. The Copyright Office's Proposed Solution:

Based on its study and the comments provided, the Copyright Office has devised a suggested legislative amendment to at least decrease, if not solve, the problem of uncertainty in liability for orphan works. The Copyright Office recommends an amendment in Chapter 5 of the Copyright Act, which includes remedies for infringement. The amendment begins with the idea that the potential user must first perform a “reasonably diligent search.” If the user is unable to locate the owner of the work, he is then allowed to use the work and get the benefit of limitations on the remedies that might be imposed on him if the copyright owner appears and claims infringement. The limitation would serve the purpose of increasing the potential user’s certainty that he will not suffer significant monetary damage or an injunction that might halt his work in the middle and cause him to lose time, money, and effort he may have used on his work in reliance on use of the orphan work.

The recommendation has two parts: the first is the requirement of a reasonably diligent search and of attribution to the author and copyright owner where possible. The Copyright Office states that the search for the owner of the work must be completed before an infringing use that involves the work begins, and that the user should bear the burden of proving what search was performed and whether it was reasonable. The Copyright Office reasons that “the evidence of the search that was performed and the circumstances of the use will in almost every case be within the control of the user, not the copyright owner,” and thus it makes sense to place the burden on the user.

The Copyright Office proposes a “very general standard” for a “reasonably diligent search,” which would be applied on a case-by-case basis. It feels that such a broad standard is needed because of the wide variety of works and uses and because “techniques and technologies used to investigate the status of a work also differ among industry sectors and change over time...” However, the Copyright Office specifies that the standard includes some minimum requirements every time. These include “good faith” and “diligence.” The Copyright Office feels that these requirements will serve to protect against abuse of the proposed exception by users who might try to do merely a superficial search before exploiting a work. “[E]xcessive haste and the absence of good faith or diligence should preclude the availability of the limitation on remedies.”

Note: So if you don't prove your search was reasonable if/when you are sued, then you don't get the limitation on remedies.

The Copyright Office also identified a number of other factors that should be used to inquire into whether a search was reasonable. Many commenters suggested that different industry sectors should develop guidelines for reasonable searches in each area. The Copyright Office agreed that this would be helpful, but also thought that a list of the general factors like those it had developed should be included in the legislative history of any orphan works legislation that was enacted, in order to provide guidance for owners, users, and the courts. The first factor is “the amount of identifying information on the copy of the work itself.” In cases where there isn’t much information, as for instance with old photographs, the user’s search might be very limited. However, in the case of a work like a published book, the name of the author and of the publisher are usually included. In that situation, a user would be expected to use this information in his search. The Office, naturally, recommends that authors mark their works to avoid them being accidentally orphaned. However, nothing in the recommended statute would make that mandatory. The Office also notes that in a case where a user is using an unauthorized copy of a work, such as an image from a website, the fact that there is no identifying information may not be as relevant, since that information may have been removed by another. In those circumstances, the user is expected to be more diligent than if he is using an authorized copy that doesn’t contain identifying information.

Note: So if someone pulls an image from the internet, and it has no identifying information, that doesn't mean their search can end there.

A second factor to consider is “whether the work had been made available to the public.” Since most published works contain some identifying information, these must be investigated by the user. Furthermore, the Copyright Office reasons that if the work has been published, clearly at least in the past the author or owner intended to commercialize and exploit the work. They may still desire to do so, and the user is expected to do more to find the owner in this situation.

A third factor for consideration of a reasonable search is “the age of the work, or the dates on which it was created and made available to the public.” Older works, for example, may contain identifying information that is no longer accurate, such as the name of a company that is now out of business. A fourth factor to look at is “whether information about the work can be found in publicly available records, such as the Copyright Office records or other resources.” Obviously where information about the type of work is easily available through accessible databases, the user will be expected to search those databases. In particular, “only in a very rare case would a reasonable search not include a review of the Copyright Office records for information about a copyright owner’s identity and location.” Also, depending on the industry, a user might be expected to search other databases. For instance, the Authors Registry, co-founded by the Authors Guild, may contain contact information for an author. For musical works, “ASCAP and BMI are two primary resources,” and SoundExchange might have information on sound recordings. In some industries, the Copyright Office notes, “a particular source could become de facto a necessary component of a reasonable search.” The Office suggests that the private sector would be the best place to develop databases in particular industries, and urges organizations to do so, as “registries are critically important, if not indispensable, to addressing the orphan works problem.”

Note: This is important, as I believe what the report says here has been misinterpreted recently. The Copyright Office is not saying, 'Industries should create mandatory registries.' What the Office is saying is that, a) basically all searches should include the Copyright Office records; b) in industries where there are established databases, those must be searched as well; and c) if industries develop databases, it will make it easier for works to be found. So, if searches of the Copyright Office and established databases aren't done, the 'search' done by a user might be judged unreasonable just from the lack of those two things.

I think some people are arguing that this would create de facto "mandatory" registries, because people would feel they would *have* to register with an "established database." This isn't what's being said. What's being said is that if the potential user DOESN'T search, say, a music database that tons of musicians use, then the search would probably be deemed unreasonable just from that. However, the Office *isn't* saying that a reasonable search would necessarily end with a search of a database. Courts could very well expect more from the potential user. For instance, if a musician hasn't registered on the established database, but has posted the song that was used on a personal website, a potential user failing to do, say, a Google search for the song title, and/or a search for the song lyrics might be found to have not met the "reasonable search" criteria.

The last suggested factor to consider is “the nature and extent of the use, such as whether the use is commercial or noncommercial, and how prominently the work figures into the activity of the user.” The Copyright Office gives a correlative relationship to the prominence of the work and efforts to find the owner: the more prominent the role of the work in the user’s activity, the more effort should be required in finding the owner. “Similarly,...the more broadly the work is disseminated, the more effort to locate the owner should be required...

The first part of the Office’s proposal also includes a “requirement of attribution.” A user would be required, if such attribution is possible and appropriate, to provide attribution to the author and copyright owner of the work. This is so that the user makes it clear to the public that the work is the product of the author and that the copyright is owned by another. The Copyright Office listed four reasons it felt this was an important requirement. First, including this information provides more notice to authors and copyright owners that their work is being used, and they may then contact the user and be able to work out a voluntary agreement for use of the work. Second, authors value attribution when they have created something - many will even agree to a royalty-free use as long as they are properly credited. Third, after a reasonably diligent search, a user will already have gathered (hopefully) whatever information on the author and owner there is to find. Therefore, there would be no unreasonable burden on the user. Fourth, one concern raised by authors is that there might be abuse of an orphan works system by users who don’t perform a reasonably diligent search but just use the statute to hide their intent to infringe. The Copyright Office feels that “requiring attribution will curb abuse, because a blatant infringer would not likely be inclined to provide notice to the copyright owner in the situation where he has not performed the proper search.” Further, this requirement may also remind users that they may still have obligations to the copyright owner if he appears.

The second part of the Copyright Office’s amendment recommendation is a closed list of remedies that would be available after a user proves that he performed a reasonably diligent search. The amendment limits both monetary and injunctive remedies. The majority of commenters said that the fear of vast monetary damages is “a substantial deterrent to users” when considering the risks of using an apparent orphan work. Most proposed clear limitations on statutory damages and attorneys’ fees. The Copyright Office recommendation follows this suggestion “by limiting the possible monetary relief to only ‘reasonable compensation.’ ” Reasonable compensation, to the copyright office, represents “the amount the user would have paid to the owner had they engaged in negotiations before the infringing use commenced.” The Office cites Judge Leval’s opinion in Davis v. The Gap, Inc., which explains that in a similar situation, a reasonable license fee was appropriate because it was representative of what “a reasonable willing buyer and a reasonable willing seller in the positions of the owner and user would have agreed to at the time the use commenced, based predominantly by reference to evidence of comparable marketplace transactions.” As in Davis, the burden to demonstrate the fair market value of the work would be on the copyright owner and could not be based on “undue speculation.” Evidence that similar uses have been licensed for a similar fee would support the copyright owner’s claim to compensation.

Even “reasonable compensation” was said to be too high by potential users such as museums, libraries, and archives. These groups argued that if they wanted to use potentially thousands of works, even a small monetary award would be prohibitive. However, there are two important observations to be made here. The first is that the monetary award would only apply for an infringing use of a copyrighted work. Therefore, only the individual pieces in the group of works that infringed would trigger a monetary remedy. Assuming that the museum, library, or archive had performed a reasonably diligent search for each piece, it would be possible that only a small number of works would still be unidentified at the time of use. Second, “reasonable compensation” could amount to zero in the appropriate circumstances. It is less likely in the case of an orphan work where the owner is by definition unlocatable, that the copyright owner could produce evidence of the market value of the work. Even though the possibility that libraries, archives, and museums will be liable for vast monetary damages is slim, the Copyright Office has added an additional limit to damages “where the user is making a non-commercial use of the work and expeditiously ceases the infringement after receiving notice of the infringement claim.” If the organization wished to continue using the work, however, it would have to pay reasonable compensation for its past use and future use of the work.

Note: This is one point I *do* have a problem with. In my view, the idea that "reasonable compensation could amount to zero" is NOT sound. If someone wants to use it, clearly there's some value to be had in it, and my opinion is that, along with limiting remedies, they should acknowledge that the desire of another person to use one's work means there *is* some monetary value to it. Even if that value is not huge.

The recommended statutory language also limits injunctive relief. Many potential users worry that an untimely injunction, after they have put time, effort, and possibly a great deal of money into a project in reliance on use of an orphan work, will halt production and cause them to permanently lose all they have worked for. The recommended amendment thus limits injunctive relief in two ways. First, “where the orphan work has been incorporated into a derivative work that also includes substantial expression of the user, then injunctive relief will not be available to stop the use of the derivative work in the same manner as it was being made prior to the claim of infringement, provided the user pays reasonable compensation to the copyright owner. Second, in all other cases, full injunctive relief may be available, but the court must to the extent practicable account for and accommodate any reliance interest of the user that might be harmed by an injunction.”

Note: Here, an interesting point I saw raised is an argument that revolves around the "moral" right of the creator. I.e. what if someone goes and uses something in a way the artist would never want (e.g. a photo as a backdrop in a porno movie)? Moral rights in copyright do not have a strong history in the U.S., and the U.S. Copyright law is not based on that principle. Note that the Berne Convention does have requirements regarding moral rights, but when the U.S. acceded to it, they essentially wrote that section out of what they needed to agree to by saying these rights were addressed by slander and libel laws.

This limit serves to reassure those users described above that they will not have to cease their use of the work if a copyright owner turns up mid-project or at just before a project is released to the public. The Copyright Office stated that since in those cases “the user’s reliance interest is greater, and he has contributed new expression to the public benefit, [he is] entitled to more freedom from injunctive relief.” Simple republication of a work, in contrast, will still merit a full injunction, although courts may consider hardship that the user might suffer from the injunction.

The Copyright Office’s final provisions are a savings clause to clarify that nothing in the new language would affect rights and limitations elsewhere in the Copyright Act, and a sunset clause recommending that after 10 years Congress have a chance to assess the practical effect of the amendment.

Note 1: Because I cut and pasted, I had to take out all the footnotes. You can see all citations in the original paper.

Note 2: The 2006 proposed legislation is in an appendix at the end of my paper, in case you want to see what the actual proposed text was in 2006.

ETA: One of the only informed and reasoned blog discussions on orphan works that I've seen so far, other than the few folks cited in my previous post. I'm not saying I agree with every single point, but he knows what he's talking about and raises important issues. He also alerted me to the page that shows the hearing that resulted in the March 13 statement I linked in my previous post. You can see several other statements by clicking on the witness names.

ETA Deux: I've done one more post on the orphan works issue, focusing on a "reasonable search," particularly for visual arts.


In something completely unrelated, I want Neil Gaiman's couch. ZOMG. Neil himself is cool and all, but the couch! The COUCH!


It's gigantic! It makes Wonderful Neil look like a wee sprite! It's like some kind of modernistic pastel-loving giant's lounge furniture, and I covet it mightily. Particularly if I could also have all of the weird pillows, poufs, and blankets that nest there (seriously, what is that thing on the right? A fish-pillow tied to a regular pillow? Whatever it is, it is bizarrely awesome).
Tags: awesomeness, copyright, law, the internet iz serius biznes, wonderful neil

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