July 12, 2008

Orphan Works Proposals Moving Quickly Through Congress

By Pike, George H

Legal Issues Nearly 16 months after an orphan works proposal died at the end of the 2005-2006 congressional session, two new proposals have been introduced and are moving rapidly through Congress. Between April and early May, the proposals (one in the House and one in the Senate) were introduced, marked up, and hustled through their respective committees.

Orphan works are those creative works where the copyright owner cannot be identified or located, or it cannot be determined if the work is copyrighted. Any new use of orphan works as part of a new work (an archive of old photos or a website featuring collections of letters) runs the risk of the copyright owner emerging and suing for thousands of dollars for infringement damages. With the web established as a tool for disseminating works that might otherwise be lost to time, Congress recognized the need to resolve the problem.

Copyright Office Report

The proposals emerged after the U.S. Copyright Office published a report in 2006 that identified the problem and proposed a solution. The Copyright Office's proposal required potential users to conduct a "reasonably diligent search" for the owner of works they wished to use. If the potential users were unable to locate the owner, they could then go forward with the new use. In return, if the original copyright owner was subsequently identified and asserted his or her copyright claim, the liability for infringement would be limited to providing reasonable compensation to the owner and giving the owner some rights to restrict further publication of the new work.

The congressional proposals outline a series of events that generally follow the Copyright Office's recommendations, beginning at the point the proposed user wants to use an orphan work and ending if and when the copyright owner emerges and sues the user for copyright infringement.

Qualifying Search

The first step for those who want to use an orphan work is to conduct a "good faith, qualifying and documented search" for the owner of the copyright before using the work. A "qualifying search" must be "diligent," must use fee-based resources if required, and requires the user to show that he or she followed up on all relevant facts, including any facts uncovered during the search. The proposal would require the Register of Copyright to establish a set of best practices to help in guiding users.

Upon publishing their works, users would also be required to provide attribution (as much as possible) to the owner in their new works. The proposals also request the Register of Copyrights to develop a symbol or notice that must be applied to the new creative work.

The House bill includes a controversial requirement that users of orphan works file a "Notice of Use" that would be archived by the Register of Copyrights. The notice would include a description of the work and how it would be used, the name of the proposed user, a summary of the search, any known information about the owner and/or author of the work, and a certification from the Copyright Office that a qualifying search was conducted in good faith. Users must file a notice under this provision or they will be subject to the full penalties for infringement.

The Dark Archive

This section has been called the "Dark Archive" provision. The American Library Association (ALA) expressed concern that compliance with this requirement will be "burdensome and potentially extremely costly." There was also concern that the archive could be misused by "copyright trolls" to further exploit orphan works without doing the necessary search. Defenders of the provision respond that the archive will help to verify and confirm legitimate searches and uses.

The next steps would occur if the owner of the work emerges and seeks compensation or damages for the new use of the work. While the proposals encourage negotiation of reasonable compensation for the new use, the owner retains the right to sue for copyright infringement if he or she declines to negotiate with or cannot reach an agreement with the new user over compensation.

The limited liability provisions of the proposal apply in response to a lawsuit. The new user must respond to a suit by claiming his or her limited liability rights. The user would then document that the search for the copyright owner met the requirements of a qualifying search.

Reasonable Compensation

If a court finds that a qualifying search was conducted, then the court limits the user's liability to paying reasonable compensation to the owner. The user is protected from the risk of damages that can otherwise reach $150,000, along with costs and attorney fees. If the user is a nonprofit educational institution, museum, library, archive, or public broadcaster, and the new work is produced without commercial intent for education, religious, or charitable purposes, then compensation may not be required.

The orphan works limitation does not apply to certain pictorial, graphic, or sculptural works in the form of "useful articles" (physical things) that are sold to the public. This responds to textile and other manufacturers' concerns about counterfeiting designs being exploited as orphan works. Finally, the proposal would ask the Register of Copyrights to certify searchable databases of visual works and to study new options for dealing with copyright "small claims" more efficiently.

A 'Gold Mine for Opportunists'?

Photographers, illustrators, cartoonists, and other graphic artists remain concerned that they will lose copyright protection under the proposals. They point out that they often generate more content than most authors or songwriters and that their content is easily separated from the identifying information or casually published with minimal credit information. The option of registering all of their works would be costly, whereas leaving their works unregistered would create a "gold mine for opportunists" to locate and use unregistered works as de facto orphans.

The Senate Judiciary Committee has approved its orphan works proposal and sent it to the full Senate. The House version has been approved by the Subcommittee on Courts, the Internet, and Intellectual Property and sent to the full House Judiciary Committee. Both committees agree that there may be additional changes, plus the need to resolve the differences between the versionssuch as the Dark Archive provision-before either proposal becomes law.

The Copyright Office's proposal required potential users to conduct a 'reasonably diligent search' for the owner of works they wished to use.

George H. Pike is director of the Barco Law Library and assistant professor of law at the University of Pittsburgh School of Law. His email address is [email protected] .edu. Send your comments about this column to [email protected]

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