Orphan copyrights 2008


I wrote recently about the tempest over a bill that had been introduced in Congress two years ago, which would establish some boundaries and procedures for how to deal with “orphan works” (works that are copyrighted, but the owner can’t be located… read the previous article for more background on the subject). The furor was a bit overblown, in part because - contrary to what the Chicken Littles were saying - the bill was not before Congress; it had died in committee and had not been reintroduced.

Well, it’s back.

The Orphan Works Act of 2008 has been introduced in both the House and Senate. (In the Senate it’s called the Shawn Bentley Orphan Works Act of 2008, named by sponsor Orrin Hatch to honor a 41-year-old former staffer who died of cancer.) The two bills are very similar, with the House version (H.R. 5889) including some provisions which appear to have been added in response to fears by copyright holders, but aren’t in the Senate version (S. 2913). Each house of Congress will make additional changes to their bill over the course of its life, and if both of them pass, a committee of the two houses will wrangle a compromise version and send it to the president to sign into law.

The bill’s sponsors are Senators Patrick Leahy (D-VT) and Orrin Hatch (R-UT), and Representatives Howard Berman (D-CA), Lamar Smith (R-TX), John Conyers (D-MI), and Howard Coble (R-NC). As you can see, it has some bi-partisan backing, and these particular Congressfolks include some heavy hitters in the judiciary committees, so the bill has a reasonably good chance of passing. If I had to make a prediction, I’d expect the final version to look more like the House version, since it’s more friendly to copyright owners, and those are the people (or corporations, rather) that have the better lobbyists in Washington. But I’ll try to describe them both.

Limitations on Remedies

The bill would add a section to the copyright law currently on the books, putting specific limits on what “remedies” a copyright holder could get if he discovered that someone was using one of his works without permission. In general he would have the same rights as before, unless the infringer (I’m going to assume it’s a woman, so I can use gender-specific pronouns as a shortcut here) can demonstrate that she was unable to locate the owner and therefore concluded that the work was an “orphan”: a copyright-protected work with no surviving owner.

This bill doesn’t actually create a class of works that are officially “orphans”. Unlike when a work falls into the Public Domain (which is permanent), just because someone successfully uses the Orphan Work defense today doesn’t mean someone else can use it for that work tomorrow. This bill is all about the process of someone trying in good faith to identify the owner, and using that process as a partial defense if the owner turns up later. When the owner is identified, his copyrights remain intact.

The Orphan Defense

To qualify for protection under this bill, the copyright infringer would first have to prove “by a preponderance of the evidence” that she “performed and documented a qualifying search, in good faith, for the owner” and couldn’t locate him. “Preponderance of evidence” is the usual standard in civil cases, and simply means that she has to convince the court that her account of what she did to locate the owner is more likely to be true than false; she doesn’t have to prove it “beyond a reasonable doubt”. But the burden of proof is still on her. One of the key things here is that she has to document her search. If she doesn’t, she won’t have the preponderance of evidence on her side, and she’ll lose.

But that’s not all she’d have to do. Under the House bill, she’d have to file a “notice of use” with the Copyright Office. Under either bill, if she was able to identify the owner (but couldn’t locate him to get permission) she’d have to give him attribution for the work. (How this would be done depends on what kind of work it is. If she was using an orphaned comic book character, it would presumably mean stating “Heroman was created by John Q. Doe” in the credits.) Whether she identified the creator or not, she’d have to include a symbol (apparently to be determined later) that indicates that she’s using a presumedly-orphan work.

In order to use the Orphan Defense when the case went to trial, she’d have to declare that up front, and provide all the documentation of her search before the case went to trial. That’s to prevent her from first trying to claim that she didn’t infringe on the owner’s copyright, then trying to claim that yes, she did rip off his work, but she did a thorough search for him before she did it, as a “plan B” to limit her legal liability. In other words, she can’t use a variation on the Bart Simpson Defense of “I didn’t do it, and nobody saw me”; she can’t have it both ways.

Furthermore, when the owner first contacts her and points out that she’s infringing on his work, she has to negotiate “in good faith” for how much to pay him for it, and she has to make “reasonable compensation in a reasonably timely manner”. If she fails to do either of these, she gets no protection.

Qualifying Search

That’s all about what she has to do in court. What does she have to do before she uses someone else’s work? The bill says she has to make a “qualifying search” which includes “a diligent effort to locate the owner of the infringed copyright.” More specifically, the court will consider whether her search efforts were “reasonable and appropriate” and whether she acted based on what she found. It will consider whether she followed the “best practice” guidelines for how to conduct a search, which will be published by the Register of Copyrights. And it will consider when she did the search (i.e. was it shortly before she used the work?)

The bill specifically states that she can’t use the fact that there’s no identifying information on the work she copied as proof that the owner couldn’t be located. She has to try.

The House bill includes a provision that’s missing from the Senate version, for a “Notice of use archive”, where someone who’s going to use an orphan work would be required to describe what she’s doing: describe the work she’s copying, what she knows about the owner, what she did to find him, how she’s going to use it, etc. It isn’t clear who would have access to this archive, with the bill saying only that it would be determined by the Copyright Office.

Failure to meet all of these requirements would mean that she’d be subject to the same legal repercussions as she is today.

Pictorial Works

The bill calls for the creation of a pictorial database that would make it easier to search for the owners of works that aren’t easily Googled. Actually it’s more correct to say that it tells the Copyright Office to write up the specs for such a database, which would be used to certify databases (plural) as meeting the standards for a qualifying search. So it sounds like they’re talking about privately-run databases, rather than one operated by the Library of Congress. That’s a little troubling, but not surprising given the mindset among so many in Washington that the government should outsource whatever it can to the private sector.

Both versions of the bill would have these new rules go into effect in 2009, but put a later date on applying them to pictorial works. The Senate bill would delay them until either: two or more of these databases are online and available, or 2011. The House bill would extend that to 2013.

Punishment and Limitations on Punishment

All of this provides the infringer with a defense against a copyright infringement suit, but it’s only a partial defense. Under this bill, the infringer would still have to make “reasonable compensation” for her use of the work, unless she could demonstrate that she’s a not-for-profit entity used the work purely for traditional not-for-profit purposes (e.g. education), didn’t profit from the work, and stopped using the work as soon as the owner told her to “cease and desist”.

The court can issue an injunction prohibiting her from continuing to use the work, unless she’s done something more than simply reproducing it. For example, if she’s taken the character of Heroman and written new adventures for him, she’d be permitted to continue publishing those adventures, with proper compensation and credit to the character’s creator. So in effect, once the horse is out of the barn, he can’t be corralled back into it. But as I said before, this right to continue using the character isn’t a universal one. Only the person who did the original search and came up empty can do it; I can’t come along and do my own Heroman adaptations as well… especially since at this point the owner of the character has been clearly identified.

Blogosphere Criticism

I’ve seen all sorts of wild criticisms of this bill in blog and message board “warnings” about it. Few of them seem to be familiar with the bill itself, or even copyright law in general, which is unfortunate.

Many of them accuse it of creating a situation which already exists under current copyright law. For example, opponents complain that under this bill, copyright holders would have to be constantly on the lookout for infringement to have any hope of catching someone trying to sneak by under these rules. Well, that’s how copyright works today. They also complain that the court - not the creator - would determine after the fact what a “reasonable” fee is for the use of the material. That’s how it works today as well.

Others insist that it would be easy for the infringer to bluff her way through an Orphan Defense. While the bill doesn’t spell out in detail what the requirements for a qualifying search are (a valid criticism of the bill), it’s clear enough from the language of the bill that some real care and effort will be necessary. After all, the “prosecutor” in these cases is going to be the person whose work has been infringed, not a disinterested district attorney, so it’s safe to say that he’ll present a spirited challenge to her claim that she performed a “diligent” search for the work’s creator, and not let her get off with a shrug and “I tried”.

Bottom Line

There are some additional bits and bobs in this bill, which aren’t especially relevant to the subject of this site (comics and the law), but that’s the gist of it, as briefly as I could make it. I think it’s a Good Thing.

These versions of the bill eliminate some of the things that creators didn’t like about the 2006 bill, and provide a reasonable framework for dealing with the problem of missing owners. Back when renewals were still required, only about 15% of copyrights were renewed, which means that 85% of them were effectively abandoned after only 28 years. But under current copyright law there’s no need to renew them, so 100% of works created 28 years ago are under ironclad copyright, and will remain that way until 2075… even if there’s no one alive who claims them. That’s an utterly pointless restriction, and it’s bad for the development of our shared culture. With the Public Domain frozen at 1923, an exception for abandoned and orphan works is the only way those works will be used in the foreseeable future.

I think that a sober reading of this bill reveals a system that would work. It would give some protection to people who seriously try to locate the owners of works they wish to use, and it would still give recourse to those owners when/if they discover that they’ve been prematurely declared “dead”. I’d rather see the pictorial database kept under direct government administration, or at least have some assurances that it will be kept free of charge or have some solid caps other than “what the market will bear” on the fees, both to search and to register. But on the whole, it seems fair all around, with no gaping holes that would gut the whole copyright system, as some opponents of the legislation seem to believe.

Further Reading

Of course the devil is in the details, and if this is something that concerns you, I recommend reading through the bills to look for dangerous loopholes or unfair give-aways to one group or another (which commonly get added in committee).

Here are two rather different perspectives on the new legislation: Public Knowledge, and Illustrators’ Partnership, and a more balanced one from the American Society of Media Photographers.

One Response to “Orphan copyrights 2008”

  1. Todd Says:

    There’s a fairly extensive analysis of the bills, which addresses the good, the bad, and the ugly myths about them on Tom’s MAD Blog.

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