This is probably the least well-defined area of copyright coverage in Cites & Insights—which may be why this is the first ©1 essay under that title. The last big splash in this area was Eldred v Ashcroft, an attempt to overturn the Copyright Term Extension Act. You can read my coverage of that failed attempt in 2002 (C&I 2:5, 7, 9, 14, 15) and 2003 (C&I 3:3, 5). I’ve covered the Public Domain Enhancement Act under ©2—and maybe there’s no point in separating these aspects. For now, two areas merit discussion under this umbrella.
A second attempt to overturn CTEA on different grounds began in March 2004: Kahle v Ashcroft. I discussed the case in C&I 4:8 and, briefly in C&I 5:1, its dismissal by a Federal court in fall 2004. That dismissal was appealed to the Ninth Circuit court in January 2005. Since Ashcroft is no longer the Attorney General, the case is now Kahle v Gonzales. The case page at the Stanford Center for Internet and Society (cyberlaw.stanford.edu/about/cases/kahle_v_ashcroft. shtml) doesn’t show anything past an April 12, 2005 post linking to the appellants’ brief, government opposition, and appellants’ reply brief.
What’s it all about? Here’s the summary at the SCIS page:
In this case, two archives ask the U.S. District Court for the Northern District of California to hold that statutes that extended copyright terms unconditionally—the Copyright Renewal Act and the Copyright Term Extension Act (CTEA)—are unconstitutional under the Free Speech Clause of the First Amendment, and that the Copyright Renewal Act and CTEA together create an “effectively perpetual” term with respect to works first published after January 1, 1964 and before January 1, 1978, in violation of the Constitution’s Limited Times and Promote...Progress Clauses. The Complaint asks the Court for a declaratory judgment that copyright restrictions on orphaned works—works whose copyright has not expired but which are no longer available—violate the constitution.
“Unconditionally” is a key term. Until 1976, you got copyright protection under U.S. law only if you asked for it—if you registered the copyright or at least included a copyright assertion. Otherwise, your work entered the public domain upon publication. Further, U.S. copyright used to require that you renew that copyright protection after a reasonable length of time.
Now, protection is automatic (“unconditional”) and the term shows signs of being effectively unlimited (given expectations that copyright industries will ask for another 20-year extension come 2016, just as they did with CTEA in 1996). Where Eldred v Ashcroft dealt with term extension, Kahle v Gonzales questions the shift from conditional to unconditional copyright. Note the following, from the case FAQ:
Under our traditional system of conditional copyright, the overwhelming majority (as much as 90%) of published works were neither registered nor noticed, and thus passed immediately into the public domain, where they were freely usable by others without the need to ask permission. Of the minority of works that were registered and noticed, and therefore protected by copyright, over 85% were not renewed after a relatively short (28 years) initial period of protection. These works also passed into the public domain. Our traditional copyright rules thus kept a vast amount of creative work wholly free of the burdens of copyright regulation—a freedom, it should be noted, that was granted by an author’s voluntary decision not to register his work. Even for the subset of works for which authors secured copyright, the conditional regime’s registration requirement served to keep records of works for which copyright was claimed, and moved most protected work into the public domain after a relatively short initial term—again, by the voluntary decision of the author. Both the existence and duration of copyright regulation was effectively narrowed to just those works that the author or his assigns had a desire to protect.
One interesting supporting brief comes from the Brennan Center for Justice at NYU, ACLU of Northern California, Public Knowledge, Center for the Public Domain, and the First Amendment Project. You’ll find the brief at www.fepproject.org/courtbriefs/kahle.pdf
This brief supports the notion that eliminating the “formalities” of copyright registration and notification does alter the substantive “contours of copyright protection,” denying one basis on which the lower court dismissed the suit. It quotes writers who assert that the formalities helped “to ensure that most works entered the public domain promptly, so that the public could make unfettered use of them.” Unquestionably, changes in copyright law have slowed the expansion of the public domain—or “dramatically reduced the public’s ability to reproduce, distribute, access, and make new uses of historical and creative materials of all kinds.”
How does this relate to orphan works, those whose creators can no longer be found in order to arrange licensing or permission? Quite simply, most creators didn’t feel any need to protect their works—either no need at all, or no need beyond an initial 28 years. Most copyrights were not renewed. Those owners (specifically, all copyright holders for works produced between 1964 and 1978 who would not have renewed their copyright), whose current copyright protection was neither expected nor apparently desired, are most likely to be unfindable.
Naturally, there’s a lot more to the brief and to the other papers in the case. As those involved have noted, passage of the Public Domain Enhancement Act (formerly known as the Eldred Act) would ameliorate the problems addressed in Kahle v Gonzales. So would other actions to improve access to orphan works. There’s some activity in this sphere; see below.
The Copyright Office opened an inquiry on the problem of orphan works—works still under copyright whose owner cannot be identified and located by someone wishing to use the works—in 2005, asking for comments and holding roundtable discussions. I commented on some of the 850-odd comments received last September (C&I 5:10). Now the Copyright Office has issued its Report on orphan works. It’s quite a document: 127 pages with clear recommendations for legislative action. The page at www.copyright.gov/orphan/ includes links to the 127-page PDF and a 200-page version (including appendices). That page also links to transcripts of the three roundtables (two in Washington, D.C. and one in Berkeley), audio recordings of the Berkeley roundtable, all but a few of the 721 primary comments and all of the 146 reply comments.
If you want to review the report but aren’t up to reading 127 pages, I’d suggest printing out the executive summary, introduction, and description (pages 1-40 as numbered on footers, not the PDF page numbers) and the conclusions and recommendations (pages 92-127), although the legal background (41-68) and description of solutions proposed by commenters (69-91) are also worth reading. I haven’t read the appendices, so can’t comment on them. Herewith, a tiny set of extracts and comments.
This Report addresses the issue of “orphan works,” a term used to describe the situation where the owner of a copyrighted work cannot be identified and located by someone who wishes to make use of the work in a manner that requires permission of the copyright owner. Even where the user has made a reasonably diligent effort to find the owner, if the owner is not found, the user faces uncertainty—she cannot determine whether or under what conditions the owner would permit use. Where the proposed use goes beyond an exemption or limitation to copyright, the user cannot reduce the risk of copyright liability for such use, because there is always a possibility, however remote, that a copyright owner could bring an infringement action after that use has begun.
It’s clear that orphan works represent a real problem—and the report agrees that the most common outcome (would-be users choose not to use the works because of the risk of liability for infringement) “is not in the public interest.”
Some commenters tried to expand the definition of orphan works to include cases where the owner could be located but failed to respond, refused permission to use the work or asked for a larger fee than the would-be user was willing to pay. Once those and other situations were discarded (by an agency admittedly favoring copyright interests), something over 25% of comments identified “a situation that could fairly be categorized as an orphan works situation.”
The report gathers proposed uses of orphan works into four categories:
(1) uses by subsequent creators who add some degree of their own expression to existing works to create a derivative work; (2) large-scale “access” uses where users primarily wish to bring large quantities of works to the public, usually via the Internet; (3) “enthusiast” or hobbyist uses, which usually involve specialized or niche works, and also appear frequently to involve posting works on the Internet; and (4) private uses among a limited number of people.
Skipping over discussion of existing remedies, proposed remedies, and the nature of the problem, we come to conclusions and recommendations.
Four conclusions each receive a paragraph of discussion. The brief version: The orphan works problem is real; The problem is elusive to quantify and describe comprehensively; Some orphan works may be addressed by existing copyright law, but many are not; Legislation is necessary to provide a solution to the orphan works problem as we know it today.
The copyright office sees two overarching goals for legislation:
First, any system to deal with orphan works should seek primarily to make it more likely that a user can find the relevant owner in the first instance, and negotiate a voluntary agreement over permission and payment, if appropriate, for the intended use of the work….
Second, where the user cannot identify and locate the copyright owner after a reasonably diligent search, then the system should permit that specific user to make use of the work, subject to provisions that would resolve issues that might arise if the owner surfaces after the use has commenced. These provisions should balance the interests of the right holder with the interest of the user who has undertaken to use a work in reliance on the orphan works designation. Ideally those provisions should establish in the user’s mind a measure of certainty about his or her copyright liability exposure in the rare event that an owner might surface in the future, while at the same time not carving back too much on the copyright owner’s rights and interest in exploitation of his or her copyright.
A third consideration is efficiency: the solution should impose the least possible new burdens on all stakeholders involved.
Given those considerations, and in the interests of proposing low-overhead legislation, the report does not propose new registries either of ownership or of intent-to-use information. It also does not propose spelling out “reasonably diligent search,” the basis for claiming a work is orphaned, but does offer several factors to be considered in defining reasonable diligence (identifying information on the work itself, whether the work has been published, age of the work, whether information is available in public records, whether the author is still alive, and the nature and extent of proposed use). The report also suggests that stakeholders in various sectors might wish to develop their own voluntary guidelines for reasonable diligence, and says that most groups involved in the discussion did not want the Copyright Office to develop such guidelines.
In addition to carrying out a reasonably diligent search, anyone wishing to use an orphaned work “must provide attribution to the author and copyright owner of the work if such attribution is possible and as is reasonably appropriate under the circumstances.” That’s a sensible balance: The user has a moral duty to make clear that this is someone else’s work, and to identify who that “someone else” is—if it’s reasonable to do so. When is that not the case? One good example is the reason Wal-Mart officials were concerned about orphan works: When someone wants to have an old commercially-taken family picture (wedding pictures, for example) copied and possibly restored. Chances are, the studio or photographer’s name isn’t on the original print; it would be unreasonable to insist that it appear on the copy.
The other key to any solution is making the user comfortable—which means eliminating statutory damages and full injunctive relief if the copyright holder suddenly appears. Who’s going to use an orphan photograph within a new book if there’s a chance that someone will suddenly ask for $150,000 or enjoin publication?
The proposed limitations strike me as reasonable. Possible monetary relief is limited to “reasonable compensation”—what a reasonable “going rate” would be for licensed use. That places some burden on the surprise copyright holder: they must have evidence that the amount requested is comparable to actual licenses for similar uses. Additionally, libraries, archives, museums and similar institutions or individuals making non-commercial uses (e.g., exhibits) would be free of any monetary penalty if a copyright holder emerges—as long as they’re willing to cease the infringement upon notice.
Injunctive relief would also be limited:
First, where the orphan work has been incorporated into a derivative work that also includes substantial expression of the user, then injunctive relief will not be available to stop the use of the derivative work in the same manner as it was being made prior to the claim of infringement, provided the user pays reasonable compensation to the copyright owner. Second, in all other cases, full injunctive relief may be available, but the court must to the extent practicable account for and accommodate any reliance interest of the user that might be harmed by an injunction.
An example of the second case is pure republication or posting. So, for example, if a publisher has printed 10,000 copies of a book that appeared to be an orphan work, and the copyright holder suddenly appears and asks for an injunction, “the court is instructed to avoid unnecessary hardship on the user in those circumstances, say, for example, by allowing the unsold copies to be sent to retailers.”
The proposed Section 514 (a new section in copyright law) is terse and reasonably clear; the entire proposed section takes less than one printed page in the report. Here it is in full—and note that it’s designed as a ten-year experiment:
SECTION 514: LIMITATIONS ON REMEDIES: ORPHAN WORKS
(a) Notwithstanding sections 502 through 505, where the infringer:
(1) prior to the commencement of the infringement, performed a good faith, reasonably diligent search to locate the owner of the infringed copyright and the infringer did not locate that owner, and
(2) throughout the course of the infringement, provided attribution to the author and copyright owner of the work, if possible and as appropriate under the circumstances, the remedies for the infringement shall be limited as set forth in subsection (b).
(b) LIMITATIONS ON REMEDIES
(1) MONETARY RELIEF
(A) no award for monetary damages (including actual damages, statutory damages, costs or attorney’s fees) shall be made other than an order requiring the infringer to pay reasonable compensation for the use of the infringed work; provided, however, that where the infringement is performed without any purpose of direct or indirect commercial advantage, such as through the sale of copies or phonorecords of the infringed work, and the infringer ceases the infringement expeditiously after receiving notice of the claim for infringement, no award of monetary relief shall be made.
(2) INJUNCTIVE RELIEF
(A) in the case where the infringer has prepared or commenced preparation of a derivative work that recasts, transforms or adapts the infringed work with a significant amount of the infringer’s expression, any injunctive or equitable relief granted by the court shall not restrain the infringer’s continued preparation and use of the derivative work, provided that the infringer makes payment of reasonable compensation to the copyright owner for such preparation and ongoing use and provides attribution to the author and copyright owner in a manner determined by the court as reasonable under the circumstances; and
(B) in all other cases, the court may impose injunctive relief to prevent or restrain the infringement in its entirety, but the relief shall to the extent practicable account for any harm that the relief would cause the infringer due to the infringer’s reliance on this section in making the infringing use.
(c) Nothing in this section shall affect rights, limitations or defenses to copyright infringement, including fair use, under this title.
(d) This section shall not apply to any infringement occurring after the date that is ten years from date of enactment of this Act.
I haven’t seen much commentary on the report as yet, and as far as I know it hasn’t been proposed as legislation. It’s a better proposal than I might have expected and would yield at least some relief for works that are stuck in the twilight zone of semi-eternal copyright protection even though their owners have no expectation of further use or reward.
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