The Remotely Charted Territory Of Orphan Works

4th September, 2024 - 12:23 pm Categories: Copyright 0 Comments

Introduction

“Orphan works are works that are protected by copyright, but the author cannot be identified or found”[1]. Any creative work whether literature, music, films, or art, where the copyright holder is difficult to trace or cannot be located is an orphan work. Within the enormous landscape of copyright law, the problem of orphan works is especially unique. Orphan works are creative pieces for which no copyright holder exists or is located. This creates a difficulty, both from the legal and practical point of view, how can one use such works legally if the owner is unknown? What would happen if one uses the work without the owner’s permission? What would happen if the owner suddenly reappears? All these questions are mostly uncharted. Considering the growing digital era, discovering a better approach to protect orphan works is indispensable for the future of copyright law.

Understanding Orphan Works

Orphan works are, in effect, “lost” in terms of the law. In a copyright work, the creator or their heirs are unknown in their location or identification; however, the copyright still subsists. It is a complex issue for many a reason:

• the copyright holder dies without clear heir,
• a company holding rights goes out of business, or
• records of ownership are lost over time.

The law, despite the abandonment of the work in practice, continued to protect it and placed obstacles in the way of any use, preservation, or distribution of it. An orphan work as per US Copyright office report on orphan works can be defined as “a copyright-protected work (or subject matter protected by related rights), the rights owner of which cannot be identified or located by anyone who wants to make use of the work in a manner that requires the rights owner’s consent[2]. Where the right owner cannot be found, even after a reasonably-conducted search, the prospective user has no choice but to either reutilize the work and bear the risk of an infringement claim or to drop his intention to use the work. In the latter case, a productive and beneficial use of the work will be forestalled. This is clearly not in the public interest, in particular where the right owner, if located, would not object to the use of his work.”[3]

Legal Issues with Orphan Works

The main legal issue with orphan works is the lack of clarity about their application. Users of orphan works risks facing legal action in case the original owner reappears because copyright law demands consent from the rights holder for any kind of reproduction, distribution, or public performance. It is owing to this risk that libraries, archives, museums, and artists are discouraged from using orphan works, which makes this big chunk of our cultural history unavailable or inefficiently used.

Moreover, the fear of violating the rights of unknown rights holders deters creativity and invention. Filmmakers, writers, and other creatives are unlikely to use the orphan works to make their new works, losing the opportunity to enrich already existing cultural assets.

International Approaches to Orphan Works

In 2006, the United States introduced the Orphan Works Act[4], which would have limited liability to a person who performed a “reasonably diligent search” for the copyright holder in the process of using orphan works. The bill did not pass, hence leaving a hole in the statute. A 2015 report by the United States Copyright Office, Orphan Works and Mass Digitization[5], recommended legislation to reform the law as it pertains to orphan works issues. Under that recommended legislation, the recommended law would have limited liability for use of an orphan work if good-faith due diligence was used in an attempt to locate the owner.

[Image Sources: Shutterstock]

It also recommended that the person seeking to use an orphan work file a notice of use with the Copyright Office, so that there would be a record of the search and the use. One such system would be the creation of some orphan works database or registry where creators would be able to check whether their work had been used, and thus be paid a license fee.

The European Union gave a more structured approach with the Orphan Works Directive in 2012[6]. It allows for digitalization and access by certain heritage institutions, libraries and archives, for orphan works, under the prerequisite that the work has undergone diligent search and registration in a public database. This, however, solves only the case of non-commercial use and will do little to help in the real issue of reuse by private entities or individuals.

Management of Orphan work

The key issues and possible solutions for the management of orphan works were discussed during a Seminar organized by WIPO on Orphan Works in May 2010[7].

Requirements of Diligent Search:

The other aspect that needs attention is the control of orphan works. Since such works may very well have right holders, adequate management would facilitate making such works available without wrongfully designating them as orphaned, in cases where right holders can still be found. Normally, the users are supposed to conduct an extensive search for the owner before making use of the work. While some legislative proposals, such as those in the US, describe this search broadly, others, like those from the EU, offer more specific guidance. In all cases, the search should be systematic, starting in the work’s country of origin, and include detailed documentation of the search efforts.

Limited Liability Regimes:

Although an Orphan Works Act of 2008[8] was proposed in the US Federal Congress, it never became law, but it did characterize the competitive nature of a limited proposal, to circumscribe the remedies that a copyright holder could obtain under the law if the infringer made a reasonably diligent search for the author. The proposal was that, instead of the copyright holder’s licence to claim statutory damages, they were to be entitled only to “reasonable compensation.” Injunctive relief was also to be limited or not granted if the user agreed to pay reasonable compensation and furnish proper attribution to the owner. While, under such a system, the liability would not be eliminated, the risks for users would be abated. Unless, that is, the holder of the copyright showed up. At which point, the user still could go ahead with the use without worry. The. system pushed the user to try to locate rights holders in good faith and at the same time pushed owners to make their rights known. However, the main drawback is the uncertainty users face, as the possibility of an owner resurfacing and demanding damages might still deter them from using orphan works. Additionally, if the owner does reappear, both parties could face expensive litigation.

Licensing Schemes:

A licensing system for orphan works permits users to acquire, from a government body, a legally binding permission to use a work following a diligent search for the copyright owner. The main benefit of this system is that it is not a limited liability approach, but rather a certainty of non-infringement for the future; the downside being that it is necessarily expensive and takes time. Such licensing systems have been introduced in, for example, Canada and Hungary. Further licenses and terms are granted by the Copyright Board of Canada and royalties are retained by a collective society until claimed by the owner. Hungary’s system, similar to Canada’s, also offers favourable conditions for non-profit uses. The UK, however, dropped the orphan works licensing provision from the Digital Economy Bill during legislative debates.

Collective Licensing Schemes:

Collective licensing schemes simplify the process of obtaining permissions by allowing a licensing agency to represent multiple copyright owners and publishers together. This method eliminates the need for users to negotiate with each individual rights holder and enables them to secure licenses from a central body at a set price, reducing both tracing and transaction costs. Examples of such schemes are found in Norway, Denmark, and the Netherlands, with ASCAP in the US being a notable example. The i2010 High Level Expert Group recommended that Member States should encourage rights holders to authorize national Rights Clearance Centers (RCC) to manage licenses. These centers would collaborate with national authors’ collective management organizations to set up policies, criteria, and fees for orphan works.

The 2015 report addressed the mass digitization issue highlighted by Authors Guild, Inc. v. Google, Inc. (2015)[9], where Google’s extensive effort to digitize and make millions of books searchable online led to a lawsuit by the Authors Guild for alleged copyright infringement. The case was settled with Google paying fees for the books used. The report suggested implementing an extended collective licensing (ECL) system, as discussed in the case but not adopted, where users would pay a fee to access a set number of full-length works online, with the fees distributed to copyright owners.

Enhancing the Public Domain:

To address the orphan work issue, one approach is to enhance the public domain, which has been reduced due to excessive copyright protection. The Public Domain Enhancement Act proposed to the US House of Representatives suggests a renewable copyright system. Under this system, works could enter the public domain if their copyright owners fail to pay a minimal maintenance fee after 50 years from the first publication and every 10 years thereafter. This would keep only those works still valued by their owners under copyright while allowing abandoned works to enter the public domain.

Another strategy involves using Open Access Licenses, where copyright holders permit their works to be used freely under certain conditions, such as for non-commercial purposes without royalties. These licenses may also specify terms for commercial use, derivative works, and whether the license is viral. While Open Access Licenses help prevent orphan works by clarifying usage permissions, they mainly apply to new works and do not address the problem of existing orphaned works.

Additional Solutions:

Several additional solutions have been proposed to address the orphan works issue, each offering a different way to balance the needs of copyright owners and users. One approach is a copyright levy, which imposes a fee on each use of the work, such as charges for blank recording materials or equipment. The collected fees could then be used to support copyright holders. Another method involves establishing copyright exceptions, for instance, the Australian Copyright Act permits libraries and archives to reproduce works for preservation, ensuring access to cultural materials without infringing on copyright.

In Israel, a distinctive solution involves transferring management rights to a “government guardian” if the owner of a work is unknown or cannot be located. This guardian can then authorize the use of the work, allowing access to orphaned works while still safeguarding the potential rights of the original owner.

The Future of Orphan Works

The more digital preservation initiatives extend, the more acute the problem of orphan works becomes. Large domains of our culture, without legal reform, could end up in legal limbo, out of reach of both the public and new creators. This is a timely moment to contribute to the development of a solution that can protect copyright while allowing access and cultural preservation through cooperation among legislators, rights holders, and users.

Protection and use of orphan works is a delicate balancing exercise, though the rights of copyright holders must be observed, it cannot be done at the expense of the public interest in accessing and using the works. With the evolution of the legal environment, new and innovative answers will have to be formulated to satisfy the challenges posed by orphan works and to have a lively cultural heritage that will be accessible to posterity.

Conclusion

In conclusion, the challenges of orphan works must be addressed by having a well-thought-out strategy that will strike a balance between copyright protection and access of the public to major cultural materials. The different ways in which this can be achieved range from diligent searches to licensing systems, management of rights by collecting societies, and actions aiming at increasing the size of the public domain. The 2015 ruling in the case of Authors Guild vs. Google on mass digitization underlined the possibility that an extended collective licensing system would make access to digitized works possible while bringing in fair remuneration for the rightholders. These kinds of strategies ensure intellectual property and, at the same time, broader access to knowledge.

Author: Ishika Preetam, in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at  Khurana & Khurana, Advocates and IP Attorney.

[1] US Copyright Office report, 2006

[2] https://guides.library.ucla.edu/mas/copyright

[3] https://www.copyright.gov/orphan/orphan-report.pdf

[4] https://www.congress.gov/bill/109th-congress/house-bill/5439/text

[5] https://copyright.gov/orphan/reports/orphan-works2015.pdf

[6] https://eur-lex.europa.eu/LexUriServ/LexUriServ.do?uri=OJ:L:2012:299:0005:0012:EN:PDF

[7] https://www.wipo.int/edocs/mdocs/sme/en/wipo_smes_ge_10/wipo_smes_ge_10_ref_theme11_02.pdf

[8] https://www.congress.gov/bill/110th-congress/house-bill/5889

[9] 13-4829-cv Authors Guild v. Google, Inc. [ https://law.justia.com/cases/federal/appellate-courts/ca2/13-4829/13-4829-2015-10-16.html ]