Copyright Law | Orphan Works Draft Points

On January 21, 2005, the Copyright Office issued a Notice of Inquiry requesting comments regarding the problem of “orphan works” (see attached link: www.copyright.gov/fedreg/2005/70fr3739.pdf). Orphan works are those for which a copyright owner is “difficult or even impossible to locate,” and they create an unclearable copyright risk for anyone who wishes to make use of them. As a result, the public is often deprived of access to these works for any purpose, even though no copyright owner would likely object.

I believe this is an important issue on which the views of Association, and specifically the Copyright Committee, should be heard. I have prepared the following recommendations, which I ask you to review and comment on before I turn them into a formal comment letter. Although many details remain to be filled in, I believe the structure described below would result in a workable system that accomplishes several important objectives: (1) substantially lessen the risk for those who seek to make use of orphan works, (2) impose the least possible burden on both users and copyright owners, (3) comply with the international obligations of the US to avoid imposing formalities as a precondition of copyright protection, and (4) require the least possible intervention by the courts and the Copyright Office.

I welcome your thoughts and comments on all of the recommendations below, but I am particularly mindful of the need for (1) additional real-world examples of the orphan works problem and (2) recommendations for the definition of “safe harbors” which could create an unrebuttable presumption of orphan work status. Because time is somewhat short, I would ask for your comments by the end of this week (i.e. March 11).

Three specific examples illustrate different sorts of works as to which the copyright owner is "difficult or even impossible to locate"

A non-profit foundation seeks to digitize images of artworks from around the world for use by art historians and researchers. Many of the images are of pre-1923 artwork with no known date of publication and no photography credit for the reproduction. Because of uncertainty as to the copyright ownership, if any, in these works, many images which are likely in the public domain will be left out of the database and thus unavailable to scholars who lack the resources to visit the various libraries in which the images now reside.
A theatrical composer seeks to create a musical based on an obscure 1951 novel about race relations in the South. The novel was registered and renewed by the author but has long been out of print. The author died broke and alone in the 1980s and left no will. His surviving relatives, located through court records in Mississippi, are all bitterly alienated from the deceased author and from each other; they have not probated the estate and have no interest in doing so. The show cannot proceed until the composer gets a clear grant of rights from someone who can speak for the estate.
A commercial publisher seeks to produce a book of 9/11 ephemera and commissioned poems from major U.S. poets. The ephemera include scraps of paper that blew out of the Trade Center, missing-person fliers posted around New York immediately after the event, and anonymous drawings, sculptures and poems left in public places as memorials. The "works" are contemporary but untraceable to an author. The publisher cannot afford to risk litigation.

The definition of orphan works should consist of two parts: (1) a series of specific “safe harbors” which would create an unrebuttable presumtion of orphan work status, similar to the DMCA safe harbors for ISP’s; and (2) a broad, functional description which courts can interpret in cases falling outside the safe harbors (analogous to the contributory and vicarious infringement doctrines that may apply to ISP’s falling outside the DMCA safe harbors, or the fair use doctrine that applies to classroom performances which do not qualify for the section 110 exemption).

The broad definition should be phrased in terms of the result, e.g., “the owner cannot with reasonable diligence be located,” rather than specifying any particular investigation the prospective user must undertake. It is important that the definition not be limited to older works, as there are many recent works which raise the same issues. It is also important that the definition recognize the possibility of an orphan element within an otherwise non-orphan work, e.g., the set design or music incorporated into a film of a dance performance. Further, the definition should apply to both published and unpublished works; since all works are now subject to statutory copyright upon fixation, private documents such as letters and journals present the same copyright risks as do best-sellers, and are almost certain to be unregistered and otherwise difficult to trace to an owner. The historical and scholarly value of such works can be significant.

As to the safe harbors, they should recognize the different informational resources available with respect to different sorts of works. Owners of musical compositions, for example, are almost universally identifiable in the databases of ASCAP, BMI and SESAC, but photographs (often untitled) are frequently impossible to trace through any central source. Copyright Office records cannot be definitive, because many works are not registered, even after successful commercial publication.

As noted above, works falling within one of the safe harbors should be freely usable, but a copyright owner who comes forward should not be without a remedy. As with reliance party works under sec. 104A, a copyright owner who can prove ownership should be entitled to an injunction against the sale of the work going forward, but not to money damages for past uses. If the work has been incorporated into a derivative work or compilation, there should be no injunctive relief going forward, but a court would be empowered to set a reasonable license fee for continued use. This could be implemented with a change to the remedies provisions in Chapter 5 of Title 17, without affecting the availability of copyright protection vel non.

For works not falling within the safe harbors, the orphan status of a plaintiff’s work should still be available as a defense to preclude monetary damagfes for past actions. The burden should fall on defendant to prove that the work’s owner “could not with reasonable diligence be located,” (or whatever the statutory standard might be) by coming forward with evidence of the steps defendant took to locate him or her. The plaintiff would still have the burden of proving ownership, however, as in any infringement action. This might be difficult if the work was registered more than five years after publication (as will frequently be the case – a promptly registered work is not likely to be hard to identify).

In addition to this basic structure, which would place no additional burdens on copyright owners and require no additional clearinghouse of information, it would also be desirable to establish a notification procedure similar to that used under 104A with restored works. Rather than placing a burden on copyright owners to claim rights in their works, however, as does 104A, the burden should be on the party seeking to use an orphan work. The user would list the work by author, title and year date, on a publicly accessible database maintained by the Library of Congress. If the user posts such a notice and the author does not come forward, the user would have the same relief from remedies as would a user in one of the safe harbors. If the author did come forward, the work would not be an orphan work and the parties could negotiate a license. Authors who feared that their works might easily be mistaken for orphans could inexpensively keep an automated watch of the database, much the way trademark owners watch for the publication of potentially conflicting marks by the USPTO.

Under this structure, users who fall outside the safe harbors have an incentive to post their notices, because by doing so they can “earn” their way into full safe harbor status. Authors have an incentive to check the database, because if they come forward they can have the full range of Title 17 remedies, rather than simply injunctive relief going forward.

Whether the database is added to the basic structure or not, the above proposal would seem to be consistent with interntational obligations because, like section 104A, it does not impose any formalities as a condition to copyright protection, but merely restricts the availability of remedies in certain circumstances.