A. The problem of “orphan works”

Simply put, creators of new works often desire to use existing material but cannot locate the copyright owner after reasonable efforts. This is especially true of preservation projects or historical publications that seek to provide access to photographs, letters, sound recordings, film footage, etc., that have clear value yet no identifiable owner from whom to seek permission. Should the creator proceed with using the questionable item in the face of this uncertainty, or should the item simply be avoided? This category of works is referred to as “orphan works,” because of the difficulty in determining ownership.

The U.S. Copyright Office is now ready to give this issue serious attention. On January 26^th, the Copyright Office published a “notice of inquiry” in the Federal Register setting forth the issue and inviting comments. The Copyright Office defined the problem as follows:

A situation often described is one where a creator seeks to incorporate an older work into a new work (e.g., old photos, footage or recordings) and is willing to seek permission, but is not able to identify or locate the copyright owner(s) in order to seek permission.

This situation is a serious impediment to any effort to build valuable new work based upon existing works. Because organizations such as universities and libraries tend to be risk averse, any work that is not clearly in the public domain is simply avoided.

B. Source of the problem

The problem of orphan works is largely the result of changes made to U.S. copyright law over the past 30 years. Specifically, Congress has steadily eliminated the need for “formalities” as a condition for copyright protection. Prior to 1976, copyright laws passed by Congress established a system that required compliance with numerous formalities in order for a work to be protected. The important formalities were:

• Registration of the work and deposit of a copy with the Copyright Office;
• Providing notice of copyright protection upon publication of the work by affixing a device such as the familiar © symbol along with name of the owner.
• Renewal of the registration after a comparatively short period of initial protection.

Compliance with these formalities was mandatory; a failure of compliance meant no protection under the copyright law. While compliance was a hardship for persons desiring to protect their work, this system provided a reliable method for knowing the copyright status of a work and determining the identity of the owner. ^[1]

The practical effect of such a system was that the great majority of works entered into the public domain. This occurred either immediately because the creator did not think the work was of sufficient value to justify the trouble of registering the work, or later when the work’s registration was not renewed after the comparatively short initial term of protection. In any event, the creator of a work eligible for copyright protection had to take positive steps to secure copyright and identify himself to the world.

Starting with the Copyright Act of 1976, however, the importance of formalities has steadily diminished. Indeed, under the present state of the law, there is no need to comply with any formalities whatsoever in order to have copyright protection (although a system of formalities still exists and is advisable to use).

The major steps towards “de-formalizing” U.S. copyright law have been:

• The elimination of required registration . Under the 1976 Copyright Act, copyright protection arises in a work the instant that it is “fixed in any tangible medium of expression.” There was no longer any need to register a work created after January 1, 1978.
• The elimination of copyright renewal . The Copyright Renewal Act of 1992 eliminated the requirement that a renewal registration be filed to gain the full-term of protection available under existing copyright law. Another provision of this act reached back and automatically renewed copyright in any works created between January 1, 1964 and December 31, 1977. This act thus protected an immense amount of material from falling into the public domain.
• The elimination of the requirement of affixing notice of copyright protection . The Berne Convention Implementation Act of 1988 amended U.S. copyright law so as to bring the U.S. into compliance with the Berne Convention. ^[2] An important requirement of the Berne Treaty is its prohibition in article 5(2) against any formalities that act as a prerequisite to copyright protection. By passing this implementation act, U.S. Congress eliminated the last significant formality, the need for a published work to be marked with copyright notice.

Certainly one of the motivations behind this sustained drive to do away with the formalities was the desire to align U.S. copyright law with the requirements of the Berne Convention. Many constituencies were pushing for the U.S. to finally join this system so as to give U.S. citizens greater protection in the increasingly global market for intellectual property.

And so what we are left with at present is a system where protection arises automatically, without even any thought about whether the creator desires to have copyright protection. Click a picture on your digital camera, and you have a copyright-protected work. Dash out a rambling thought on your blog, and you’ve got protection at that very moment. Couple this with the steadily increased term of copyright protection, and a very serious blow has been struck to the availability of freely available public domain works.

The problem of “orphan works” is not, however, solely the result of changes in copyright law. Even if the original copyright owner is known to the permission seeker, the passage of time, death, business insolvency, etc. may result in great difficulty in finding the copyright owner. A willing permission seeker thus may know who held the original rights in the work, but as a practical matter cannot locate this individual or company. In reality, this can be as great of a barrier as the situation where the creator of the work was never known.

C. The current interest in this issue.

So what has prompted the Copyright Office to raise this issue now? After all, problems caused by the elimination of formalities have been recognized for many years. The case of Kahle v. Ashcroft, however, may be the cause of the Copyright Office’s current interest in the topic.

In March of 2004, several plaintiffs filed suit against then Attorney General, John Ashcroft, in the U.S. District Court, Northern District of California. The plaintiffs, Brewster Kahle, the Internet Archive, Richard Prelinger and the Prelinger Film Archive, operate websites that serve to distribute public domain work over the Internet. The suit seeks a declaratory judgment that the current U.S. system of copyright is unconstitutional. The plaintiffs in Kahle focus on what they term the “orphan class” of creative works, which their complaint defines as “work that the author has no continuing interest to control, but which, because of the burdens of the law, no one else can effectively and efficiently archive, preserve, or build upon in the digital environment for a term now approaching almost a century.” ^[3]

The essence of the plaintiffs’ case in Kahle is set forth as follows in the brief filed by the plaintiffs in opposition to the government’s motion to dismiss:

This case is about the speech-related harms caused when Congress radically changed the nature of American copyright law. For the first 186 years of our Republic, copyright laws established an “opt-in” system, one in which copyrights were secured only to those who took steps to claim them. In 1976 and 1989, Congress inverted this regime, transforming copyright law into an “opt-out” system, one in which rights are granted automatically and indiscriminately unless disclaimed.…

In a series of statutes over a relatively short period of time, Congress shifted copyright from an opt-in to an opt-out regime, by removing from our law a core set of copyright formalities. These formalities, including (1) registration, (2) notice, and (3) renewal, … were required of copyright owners for them to secure initial, and continued, copyright protection.

…

… Whereas copyright regulation before was the exception, now it is the rule. Whereas the burden of copyright before was effectively limited to works that had some continuing commercial viability, the burden of copyright now is spread broadly and indiscriminately to all creative works regardless of any continued commercial interest in the copyright.

…

These changes would have been significant at any time in our history. But they are especially burdensome now. Just at the time that digital technologies could enable an explosion in creative reuse of our culture, the burdens of an opt-out system of copyright make most reuse of orphaned work essentially impossible. Libraries and archives could use these digital technologies to make available an extraordinary range of our creative past. Yet the law now imposes burdens that make this reuse essentially impossible.

Not surprisingly, the Kahle case has been unsuccessful thus far. The District Court granted the Government’s Motion to Dismiss in November of 2004, and the case is currently on appeal to the 9^th Circuit Court of Appeals. Since the action is being advanced with the assistance of Stanford Law School’s Center for Internet & Society, the suit is undoubtedly being pursued in part to bring attention to the issue and hopefully create momentum for legislative action.

To follow the case in detail, the Stanford Law School Center for Internet and Society has a webpage devoted to following this litigation: http://cyberlaw.stanford.edu/about/cases/kahle_v_ashcroft.shtml

D. Possible solutions:

While it is easy to define the problem of orphan works, a solution will be difficult. Any solution will have to consider that mandatory formalities often resulted in the inadvertent loss of copyright protection, and this was a major factor in the steady loosening of copyright formalities. Another consideration will be our treaty obligations under the Berne Convention, which also discourage the use of formalities as a prerequisite for copyright protection.

(1) The Canadian approach

Under Canada’s copyright law, the Copyright Board of Canada is authorized to issue a license to use an orphan work. An application must be filed and the board must determine that all reasonable efforts have been made to identify the owner of copyright in the work. The application calls for considerable detail about the efforts taken to locate the copyright owner and the use to be made of the item. This arrangement also calls for the deposit of royalty fees in case the owner is eventually identified. This solution represents a case-by-case approach to the problem. Further details of this system can be found at: http://www.cb-cda.gc.ca/unlocatable/brochure-e.html

This system has not been extensively used. Since its creation in 1990, only 143 licenses have been issued.

(2) Reintroducing formalities

Another approach would be the reintroduction of a system of formalities, either at the time of the creation of the work or at some later time to confirm the owner’s continued interest in protecting the work. Any such system of reintroducing formalities would put the burden on copyright owners to secure or maintain their interest.

In its “Notice of Inquiry,” the Copyright Office mentions this as a possibility but without giving details about how such a system might work: “Another approach, like that used in the 1909 Act, would require registration or some sort of filing by copyright owners to maintain their copyrights past a certain age and to assist in locating copyright owners.”

Christopher Sprigman of the Stanford Law School has written an extensive law review article discussing just how a system of formalities might be reintroduced into U.S. copyright law, without falling afoul of treaty obligations under the Berne Convention. ^[4]

(3) Limitation of remedies

Another approach mentioned by the Copyright Office would encourage the use of orphan works by lessening the potential penalties if the copyright owner did later emerge and object to the use. For example, if the user can show that reasonable efforts were taken to locate the copyright owner prior to the use, damages from any infringement action would then be limited to a reasonable royalty fee (without the threat of other remedies available under current copyright law). This approach would limit the exposure of a user of an orphan work, but still preserve the copyright owner’s legal right to enforce protection.

(4) Expansion of the doctrine of “fair use”

In a posting on Professor Lawrence Lessig’s blog, Judge Richard Posner proposes to extend the concept of “fair use” so as to permit the use of a work where the copyright owner has not taken any steps to provide notice of his continued interest in protecting the work. Judge Posner summarized the argument as follows:

“…we advocate an interpretation of ‘fair use’ that would solve the major problem that extending the copyright term creates. We argue that it should be considered fair use to copy an old work if the copyright owner hasn’t taken reasonable steps to provide notice of his continued rights, as by entering his name and address in a copyright registry.” ^[5]

While Posner raises this argument in response to the threat to the public domain by the extension of the term of copyright, the argument could easily be applied to the problem of orphan works.

An extensive analysis of the problems presented by orphan works has been prepared by the Center for the Study of the Public Domain at Duke Law School. The Center prepared a study, “Orphan Works Analysis and Proposal,” in response to the Copyright Office’s call for comments. ^[6] The Duke study summarizes proposed solutions to the problem of orphan works and discusses what features any new system of formalities should have.

E. Summary

While the problem of orphan works is real, prospects for a legislative solution seem unlikely. The revision of U.S. law to allow the use of orphan works would represent a reversal of the decades long trend giving greater and greater protection to intellectual property rights. Recent legislative efforts such as H.R. 2601, the Public Domain Enhancement Act, failed to make it out of committee during the 108^th Congress. ^[7] Only a concerted effort aimed at raising the public’s awareness of the issue will create the necessary momentum to place this issue before Congress.

Links

January 26, 2005 “Notice of inquiry” of the U.S. Copyright Office: http://www.copyright.gov/fedreg/2005/70fr3739.pdf

Save Orphan Works: http://eldred.cc/

Center for the Study of the Pubic Domain – Duke Law School: http://www.law.duke.edu/cspd/orphanworks.html

Kahle v. Ashcroft Submission Site: http://notabug.com/kahle/ (website collecting submissions from persons explaining their difficulty in clearing rights to use “orphan works.”)

Creative Commons submission re orphan works: http://www.copyright.gov/orphan/comments/OW0643-STM-CreativeCommons.pdf

“Library Digitization Projects and Copyright” by Mary Minow – //www.llrx.com/features/digitization.htm

Footnotes

[1] Of equal importance has been the steady lengthening of the term of copyright protection. The original 1790 Copyright Act provided for only a 14-year period of copyright protection. Currently, U.S. law provides for copyright protection for the life of the author plus 70 years. This lengthening of the term of copyright protection naturally serves to delay the passage of protected works into the public domain.

[2] The Berne Convention is the primary international copyright treaty system. The Berne Treaty was drafted in 1886, but the U.S. long resisted joining this treaty. The U.S. instead relied on a series of bilateral agreements and adherence to the Universal Copyright Convention, which did not prohibit the use of formalities.

[3] While the Copyright Office’s definition of “orphan works” and the Kahle plaintiffs’ definition of “orphan class” of works differ, they both focus on the difficulties created for permission seekers by the elimination of formalities under current U.S. copyright law.

[4] Christopher Sprigman, Reform(aliz)ing Copyright, 57 Stanford L. Rev. 485 (Nov. 2004).

[ 5] “Fair Use and Licensing,” posted by Richard Posner, August, 23, 2004, http://www.lessig.org/blog/archives/002114.shtml. The article will appear in the California Law Review and will be co-authored by William Patry.

[6] The document is available at: http://www.law.duke.edu/cspd/pdf/cspdproposal.pdf.

[7] H.R. 2601 was filed on June 25, 2003 by Representative Zoe Lofgren.