As discussed in The Fundamentals of Copyright and the Problem with Lost Owners (Part One) the exclusive rights of copyright attach automatically to a work, whether a photograph or a poem, once it has been transposed into tangible form. However, for works created before 1978, authors and artists had to take affirmative steps to secure the copyright in their works. They also had to notify the public through the use of the (c) symbol or other notice that copyright had been claimed.
Since 1978, registration has been an option to authors and creators which provides a few additional, yet significant, benefits. Registration is required prior to filing a lawsuit for infringement, or other issue. A registered work is entitled to greater awards of damages than non-registered works. However, creators often choose not to register their works because it is expensive and its value is not obvious.
Also, the requirement that works for which copyright protection has been claimed be marked with some kind of notice to the public was abandoned in 1988 when the United States became a party to the Berne Convention for the Protection of Literary and Artistic Works. Therefore, for the past 20 years everyone from illustrators to songwriters could publish their works without including the (c) symbol or other notice.
As time has passed, creators and/or copyright owners of many works have been lost leaving many works without parents. The copyright registrations may not have been kept up to date to reflect change in ownership or contact information. Modern works for which registration is not required may not have been marked clearly or efficiently to provide third parties notice as to whom the creator and/or owner is. Such works are commonly referred to as Orphan Works.
Significantly the exclusive rights of copyright still apply to Orphan Works. Unlike with real property, there is no such thing as an abandoned copyright. Therefore, publishers, filmmakers and other third parties are wary to use an Orphan Work for fear that a parent might emerge to reclaim the copyright, and claim infringement which could result in monetary or injunctive relief.
Orphan Works are the unintended consequence of automatic copyright without formalities. It is doubtful that Victor Hugo, a driving force behind the Berne Convention, could have predicted the vast array of works to which copyright would apply by the end of the 20th Century, or the plethora of platforms through which such works can be delivered and used. Nor, one would think, could anybody anticipate the impact the fear of being sued for copyright infringement would have on end users.
In January 2005 Congress charged the Copyright Office of the Library of Congress to review the Orphan Work problem and propose statutory language. The Copyright Office issued its report a year later which outlines that yes there is an Orphan Works problem. The statutory language they proposed, however, left much to be desired so Congress reclaimed the project. The “Orphan Works Act of 2006″ was eventually included in the “Copyright Modernization Act of 2006″ which did not become law.
Congress has revisited the problem of the Orphan Work. This time both the House and Senate subcommittees with jurisdiction for intellectual property are considering legislation to alleviate the liability users of Orphan Works would otherwise be exposed to for copyright infringement. Each version provides that a user of an Orphan Work may avoid, or limit, liability as long as certain conditions have been met.
To qualify for the limited liability for copyright infringement under both the House and Senate versions, users must perform and document a “qualifying search, in good faith” for the owner of the Orphan Work. Both versions provide that for a search to qualify as a diligent search, Users will have to establish that:
- the search method was “reasonable and appropriate under the facts;”
- the search was within the “best practices” the Register of Copyrights has issued; and
- the search was commenced prior to the use of the Orphan Work.
Under neither the House or Senate version would a user of an Orphan Work avoid liability or the need for a search due to the lack of identifying information about the copyright owner on a copy or phonorecord.
Furthermore, to qualify for the limitation on liability, the House version requires users of Orphan Works to file a “Notice of Use” with the Register of Copyrights. The notices would include:
- the type of work being used;
- a description of the work (NOTE: the language in this provision is awkward as “work” is not defined; is Congress referring to the Orphan Work or the user’s intended work?);
- a summary of the search;
- identifying information about the owner of the Orphan Work (NOTE: there is an 800 pound guerrilla in the room: who is the copyright owner of a work? What if you know the identifying information of the creator but the creator assigned his/her interest to a third party?);
- a certification from the user that a search was made in good faith; and
- the user’s name and how the Orphan Work will be used.
Though the House directs the Copyright Office to create an archive for the notices it is unclear how the records will be available to the Public. Such notices will only be available according to the regulations of the Copyright Office.
Under both versions, users of Orphan Works will have to provide attribution to the owner of the copyright, if known to a “reasonable degree of certainty.” Again, neither version addresses the 800 Pound Guerrilla in the room: Who is the Owner of a Copyright? Technically, a creator of a work, unless the work qualifies as a work made for hire, is the owner of the copyright. However, copyrights may be assigned to another person in whole or in part.
Finally, both versions will require users of Orphan Works to include a “symbol or other notice” to provide the world notice that an orphan is incorporated into the work.
Users who comply with the conditions set forth in the Orphan Works legislation do not necessarily get a free pass for the use of the work. No, users will have to pay “reasonable compensation” for the use. Under both versions of the proposed legislation “reasonable compensation” has been defined as “the amount on which a willing buyer and willing seller would have agreed with respect to the infringing use of the work immediately before the infringement began.”
Additionally, in ascertaining what qualifies as “reasonable compensation” the House version rewards those who register their works with the Copyright Office. Specifically, the House version provides:
If a work is registered, the court may, in determining reasonable compensation under this paragraph, take into account the value, if any, added to the work by reason of such registration.
Significantly both the current versions provide that the owner of an Orphan Work may be entitled to injunctive relief. In the original versions, injunctive relief was specifically denied to owners of Orphan Works. However, where the Orphan Work has been recast, transformed, adapted or integrated into the new work which includes a “significant amount” of the user’s “original expression” injunctive relief should be limited.
The most significant difference between the House and Senate version might be that the House would deny the limitation of liability to certain commercial users of Orphan Works. Specifically, the House version provides:
The limitations on monetary and injunctive relief under this section shall not be available to an infringer for infringements resulting from fixation of a work in or on a useful article that is offered for sale or other distribution to the public.
Therefore, if enacted, a greeting card or calendar company would not be able to rely on the Orphan Works limited liability to use illustrations or photographs that might appear to be orphans.
It may not be likely Congress will adopt any version of Orphan Works legislation this term. However, legislation is necessary to address the unintended consequences of automatic copyright–> many works with lost owners.
Yes, copyright protection automatically attaches to works under the current copyright law. However, automatic copyright is not necessarily effective copyright. Registration is required to obtain the full bundle of rights available to copyright owners. Similarly, creators and owners of a copyright protected works should also maintain accurate records and provide notice to the world that you are the owner of a work.
It would also be helpful if the Copyright Office took some affirmative steps to alleviate the hurdles copyright owners face maintaining accurate records. Significantly, the filing fee for amending a copyright registration is too high. At $115 per application, owners of registered works would have to spend three times as much to update the registration as it cost to file the original application.
Also, creators should let their voices be heard in the debate to let Congress know your views. To learn more about how Orphan Works legislation might affect you:
- National Music Publishers
- National Press Photographers Association
- American Society of Media Photographers
- The Illustrators’ Partnership
- Public Knowledge
Update: The Future of Music Coalition has prepared a great Fact Sheet on the Orphan Works controversy as related to sound recordings, and other works. More importantly, in its blog, the Future of Music Coalition highlights the complexity of determining who should be considered the parent of a work, whether it is the creator or the copyright owner, and what happens if you can find one party and not the other.
