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Orphan Works

By Jack M. Balkin

In a New York Times op-ed last week, Larry Lessig denounced a pending major reform of copyright intended to solve the problem of "orphan works." Yet Public Knowledge, a leading public interest advocacy group normally aligned with Lessig on such issues, welcomes the proposed legislation (with a couple tweaks). What's this all about?

"Orphan works" are works whose copyright owner cannot be found without expending prohibitive search costs. Orphan works have become a serious impediment to a broad range of expression. As the U.S. Copyright Office points out:

Scholars cannot use the important letters, images and manuscripts they search out in archives or private homes.... Publishers cannot recirculate works or publish obscure materials that have been all but lost to the world. Museums are stymied in their creation of exhibitions, books, websites and other educational programs, particularly when the project would include the use of multiple works. Archives cannot make rare footage available to wider audiences. Documentary filmmakers must exclude certain manuscripts, images, sound recordings and other important source material from their films.

The inability to locate copyright owners also prevents book archive projects like Google Book Search and the Open Library from displaying the full text of all but a fraction of in-copyright books.

The orphan works problem is due largely to sweeping changes in copyright law in the past 30 years. Copyright used to be an opt-in system. Authors had to claim copyright by affixing a copyright notice on copies of published works and were required to register for copyright with the Copyright Office. In addition, copyright lasted for only 28 years from publication unless the copyright owner filed for renewal for a second 28-year term. The vast majority of works were not renewed: A 1961 Copyright Office study found that fewer than 15% of registered copyrights were renewed, and for books the figure was only 7%.

Today, no copyright notice, registration, or renewal is required, and copyrights last for the author's life plus 70 years. Moroever, unlike property rights in land, copyright transfers need not be recorded. As a result, there is no central registry for searching copyright title. Finally, copyrights are now infinitely divisible. A novelist can assign the North American trade book rights to A, the North American paperback rights to B, the North American electronic distribution rights to C, the North American sequel rights to D, the North American serial rights to E, the North American motion pictures to F, the rights in other countries to other entities, and so on. So it is not enough to know ?who owns the copyright.? Rather a user must know who owns the particular right that the user needs to license.

The legislation working its way through the House and Senate proposes to address the orphan works problem by providing that a copyright infringer who undertakes a ?diligent,? but unsuccessful effort to locate the copyright owner must only pay ?reasonable compensation? if the copyright owner shows up. To determine whether the infringer has met the test of ?diligent effort,? a court must consider a number of factors, including whether the infringer?s search was ?reasonable and appropriate? under the circumstances and whether ?the infringer employed the applicable best practices maintained by the Registrar of Copyrights.? Libraries, museums, nonprofit educational institutions, and other specified entities need not pay any compensation so long as they make the requisite diligent effort to find the copyright owner. No infringer may continue to distribute the work without permission after the copyright owner appears. However, users who have recast, transformed, adapted, or integrated the infringed work with ?a significant amount of the infringer?s original expression," such as incorporating a short clip into a documentary film, may continue to use the work upon payment of reasonable compensation for that use and proper attribution of the copyright owner.

Larry Lessig rightly points out the diligent effort requirement imposes a significant and costly burden on many potential users of orphan works. Indeed, given the nebulous, multifactor, case-by-case test for determining whether a search meets the diligent effort test, many would-be users, ranging from documentary film makers to digital archives, will simply desist from incorporating or copying orphan works rather than face the risk of infringement damages and injunction. Lessig thus proposes that, with a couple exceptions, copyright owners be required to register their work after 14 years to continue to receive copyright protection. By putting the onus on copyright owners to register, users can easily look to central registries to find who, if anyone, owns the copyright they need to license. Lessig, in essence, proposes a step back in the direction of the opt-in copyright that prevailed until the 1976 Copyright Act.

Lessig?s proposal makes eminent sense, although even it does not solve a problem that lies adjacent to orphan works: the frequent inability under current law to discern whether old copyright transfers and license agreements assign the rights to exploit the work in a new media unknown at the time of the transfer and thus whether the transferor or transferee has the authority to grant a license to a third party to use the work in such a new media. For example, for millions of books it is unclear whether the author or publisher holds the electronic distribution and display rights. Accordingly, Google can?t clear those rights to display the text in Google Book Search absent agreement of both the author and publisher, or their successors, or a judicial determination.

Public Knowledge?s embrace of the proposed legislation strikes me as a position more in touch with the grim reality that Lessig?s proposal stands little chance of enactment and that the proposed legislation might be better than leaving the orphan works problem as it is today. Yet to my mind the proposed legislation would not be much an improvement ? and, if enacted, will cut off possibilities for further reform ? unless it is modified to reduce the uncertainty of the diligent effort test and the burden imposed on those who must search for copyright owners. The proposed legislative framework should require that copyright owners bear some responsibility for making themselves readily locatable. At the very least, the legislation should providing that copyright owners who fail to register their copyrights and record copyright transfers on a publicly available, searchable digital registry bear the burden of proving that the infringer failed to make the requisite diligent effort.

Full post as published by Balkinization on May 26, 2008 (boomark / email).