Understanding the Orphan Works Controversy

For the first time in many years, the creative community has been mobilized into action to deal with the “orphan works” bills currently pending in both houses of Congress. The problem arises when someone wants to reproduce or otherwise use a copyright-protected work but is unable to obtain the copyright owner’s permission because the copyright owner cannot be identified or, if known, cannot be located. These works are known as orphan works.

This type of problem may arise when the work does not include a copyright notice. No notice is required for unpublished works created before Jan. 1, 1978, or for works created on or after March 1, 1989. In some circumstances, notice may not have been required for works created between Jan. 1, 1978, and March 1, 1989. In these situations, identifying the owner of the copyrighted work is often a problem. Furthermore, even when a copyright notice or other attribution appears on the work, the party desiring to use or reproduce the work may be unable to find the copyright owner. Photographers are especially concerned with this situation because it is quite common for photographs to be published without attribution or identification of authorship.

For many organizations, such as historical societies, museums and educational institutions, publishing such works for educational purposes or institutional projects presents a dilemma. That is, they may desire to reach an acceptable arrangement with copyright owners but cannot find them. Publication without permission is risky and could subject the organization to liability for copyright infringement.

The issue may also arise when individuals desire to have old photographs, such as a photo of a family member, restored or reproduced. Photo shops will not reproduce or restore photos that appear to be professionally taken unless the customer has evidence that the copyright owner agreed to permit such activities. Unfortunately, there is often no way for individuals to locate the copyright owners of old photographs, resulting in deterioration of these family heirlooms.

Proposed legislative solutions

In order to deal with this dilemma, individuals, businesses and cultural organizations have asked Congress to establish an arrangement to balance the rights of copyright owners with the rights of those who wish to use orphan works. Legislation was introduced in 2006, but was not passed. New bills have been introduced this year.

Register of Copyright Mary Beth Peters has been active in assisting Congress in understanding the issues surrounding orphan works and in fashioning proposed solutions. Her Statement before the Subcommittee on Courts, the Internet and Intellectual Property, which you can read here, is very informative for those who wish to understand the problems and proposed solutions. It is clear from the testimony that the Copyright Office has been a prime mover in the orphan works arena and that it will continue to assist in developing criteria for dealing with orphan works.

Understanding the procedure

There appear to be strong feelings about orphan work legislation based on misinformation, a lack of understanding of the proposed laws or a fear of change. Alarmists have incorrectly stated that the orphan works bills would deprive copyright owners of their rights or force creative people to register their works with the Copyright Office. Others have characterized the proposed legislation as confiscatory and aimed at depriving copyright owners of their ability to obtain fair compensation for the uses of their works. None of these positions is accurate, though the legislation does have practical problems.

To begin with, it is important to understand the fact that two different bills have been introduced: one in the House of Representatives, and one in the Senate. There are differences between the two bills that can be dealt with if, and only if, each house recommends passage of its version of the bill. Then a committee comprised of members of the House of Representatives and the Senate would work out a compromise between the two versions of the law, and that compromise bill would ultimately be sent to the president for signature. This is how the Copyright Revision Act of 1976 came into existence.

Both the House and Senate versions of the orphan works bill would require individuals or businesses who wish to reproduce or otherwise use copyrighted works to diligently search for the copyright owners in good faith before reproducing or otherwise exploiting the work and to provide attribution to identified but unfound copyright owners. The Copyright Office must publish a statement of “best practices” for such a search, considering its own records as well as other sources of information reasonably available to users, industry practices and guidelines, technology tools and expert assistance, as well as electronic databases. While the bills do not state with particularity what a diligent search must consist of, Registrar Peters’ testimony suggests that the Copyright Office will work with interested groups in developing best practices for conducting and documenting an appropriate search.

If the search discloses that the owner of a work believed to be orphaned can be found, then neither version of the pending legislation would apply, and the copyright owner will have to work out an acceptable arrangement with the proposed user of the work or there must be an exception in the statute, such as fair use, for reproducing the work before the work can be legally reproduced. It is only those works that remain orphaned that the bills apply to.

Concerns for visual artists

A problem that many photographers and other visual artists have been upset about is the fact that, in many situations, it is virtually impossible to determine whether a photo or work of visual art is registered with the Copyright Office. The copyright registry does not contain representations of the works deposited for registration. When reproduction of a work is desired and a diligent search is conducted without success, the work would still be characterized as an orphan work even if the copyright was registered, and in this situation, both bills would deprive the copyright owner of the remedies traditionally available for copyright infringement. All that the aggrieved owner of the registered copyright will be entitled to is the reasonable compensation provided for by the orphan works legislation, though the House version does allow a court to consider, when determining reasonable compensation, any value added by reason of the registration. It is not clear what this means.

As a practical matter, the orphan works bills may very well deprive copyright owners of any realistic remedy if the reasonable compensation for a particular use is not very high. Under the proposed legislation, there is no prospect of recovering attorney fees or costs. Considering that the fee for filing a complaint in federal court is $350, many infringements would be economically impractical to redress because the owners might wind up spending more to pursue compensation than they could hope to recover. In such cases, infringers may realize that certain kinds of infringement are de facto immune from redress despite the fact that the infringement may detract from the value of the work for other uses. For example, a person might infringe an image by putting it on a website and the value of such a license might be $1,000 for a limited use. The infringement could result in the copyright owner being precluded from licensing the work for more lucrative uses because prospective licensees are unlikely to want to use an image that has become stale as a result of the infringing use.

Databases and registration

Both versions of the orphan works bill contain a requirement that the Copyright Office certify one or more searchable pictorial electronic databases. The law might not take effect until the earlier of the Copyright Office’s certification of two such databases or 2011 in the Senate bill and 2013 in the House bill. Neither bill addresses the question of whether additional charges will be assessed for inclusion of images in the databases. This will likely mean that creators of certain types of works not clearly labeled with identifying information will incur additional costs.

One possible solution to this problem would be to provide a clear definition of orphan works, which excludes works that have been registered with the Copyright Office, even if the owner cannot be found. In this situation, the statute could provide that a court, in assessing damages for infringement, should take into account the fact that a diligent search had been conducted and that, despite this effort, the copyright owner could not be located. This would put the problem of dealing with works that had copyright registration back into the hands of the courts.

The orphan works situation underscores the importance of creative people updating their contact information with the Copyright Office, as provided by current law. This will eliminate the problem where a potential licensee identifies a work as registered with the Copyright Office but is unable to find the copyright owner because the information on file is out of date. In addition to the diligent search, the House bill also requires that the potential user file a Notice of Use with the Register of Copyrights.

It is clear from the pending orphan works legislation that there is no coercion to have copyright owners register their copyrights in and to their works with the Copyright Office since that already exists in the current copyright statute. Under current law, a copyright owner cannot maintain a lawsuit for copyright infringement without first registering the work, and if the copyright is not registered with the Copyright Office before an infringement occurs, the copyright owner of the work being infringed may recover only actual damages and obtain an injunction. In addition, the copyright owner is not entitled to recover statutory damages or attorney fees.
There is a “safe harbor” that provides that registration of a copyrighted work within three months of publication will be retroactive back to the date of first publication. Thus, the benefits to be derived from early registration with the Copyright Office are already law and not a new attempt by Congress to coerce copyright owners into registering their works.

Reasonable compensation and rights

Both versions of the orphan works bills contain provisions making it clear that copyright owners will be entitled to “reasonable compensation” for use of their works if infringements are discovered. Both versions of the bill define reasonable compensation as the amount a willing buyer and seller in the positions of the copyright owner and the infringer would have agreed to before the use began. Of course, there may be a dispute as to what that amount is, but this is the same kind of problem that a copyright owner would face when attempting to recover damages for infringement under current law and it is likely that experts will have to be used to establish reasonable compensation. There are some exceptions for noncommercial use by nonprofit educational institutions, libraries, archives and public broadcasting entities.

Furthermore, an infringer who complies with the requirements of the law will be permitted to continue to use a work that recasts, transforms, adapts or integrates the infringed work with a significant amount of the infringer’s original expression, but will be required to pay reasonable compensation for such use and, if requested by the copyright owner, provide appropriate attribution. The House bill also provides that the limit on damages and injunctive relief do not apply where the infringer fixes the work in or on a useful article for distribution to the public.

It is clear that the rights of copyright owners—such as artists, photographers, writers and other creators of copyrighted works—must be balanced against the rights of those who desire to reproduce those copyrighted works for educational, institutional or other purposes. Balancing conflicting interests is never easy but must often be undertaken for societal purposes. Creative people should attempt to understand the proposed legislation and participate in crafting a law that will serve their goals. Museums, historical societies and other publishers of creative works would be well advised to work with representatives of creative communities in order to fashion a law that serves the best interests of all. Rather than throwing the baby out with the bath water, it would be wiser to attempt to fashion the kind of law that addresses the problem of orphan works and provides an acceptable solution.


Leonard D. DuBoff and Christy O. King are the authors of Art Law in a Nutshell and several other leading art law treatises. They are attorneys at The DuBoff Law Group of Portland, Oregon. They would like to thank Bert Krages for his useful comments on this article.

 


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