Category Archives: Orphan works

Copyright roundup 2 — Orphan Works

Recently the Copyright Office has held a series of roundtable discussions and comment periods on the subject of orphan works.  As seasoned readers will know, this has become a kind of movable feast, happening at regular but unpredictable intervals.  My suspicion is that the CO is under a lot of pressure from big rights holder groups to find some way to impose a collective licensing scheme for orphan works, and these periodic discussions and reports are an effort to stave off the importuning of the lobbyists.  Certainly Congress has shown very little interest in adopting an orphan works “solution,” and as more and more courts recognize that fair use can move us a long way towards productive uses of orphaned works without introducing the “tax for nobody” that would be imposed by an extended collective licensing scheme, that appetite is likely to decline even further.

Because the events seem to have so little payoff, I admit that I allowed the pressure of other work to cause me to largely ignore this iteration.  In the past I have helped Duke and other organizations prepare comments, but this time I left the heavy lifting to colleagues.  Fortunately their is a growing cadre of people able to advance the arguments in favor of fair use and the best ways to deal with the immense problem of orphan works, so my neglect was trivial.  But I still want to help my readers find some of the best commentary from this latest round of discussions.

From what I have heard, at least one of these roundtables generated a lot more heat than light, featuring some shouting and at least one direct threat of litigation from a rights holders’ representative.  But apart from the circus atmosphere, substantive issues were discussed, and a great summary of the more mature parts of the conversation can be found in this post from the ARL Policy Notes blog.

For the library community, the strongest support we get in these events comes from the superb work of the Library Copyright Alliance, which is supported by the ALA, the ARL and the ACRL.  The full set of comments prepared by the LCA and submitted on behalf of our profession is a wonderful introduction to the problem, why it matters so much to libraries, and the directions from which a solution might come.

Perhaps the most important result of this discussion, building nicely on the LCA comments, is this great set of comments about myths and misstatements regarding fair use.  These events sometimes seem like mere opportunities for lobbyists to tell tall tales to Congressional staffers and bureaucrats, and it is often necessary to try, after the fact, to set straight a very crooked record.  On the issue of fair use, Brandon Butler, Peter Jazsi and Mike Carroll, all from American University, do a great job of correcting the erroneous things that were said in these public events.  Their comments offer a clear vision of fair use as a coherent and reliable doctrine that has evolved logically over time, continuing to perform its core function even in periods of rapid technological change.  This is a great statement and should be required reading for every librarian and academic.

One sentence summary of the comments; fair use is neither unpredictable nor incoherent, as some have argued, but is an evolving doctrine that is relied upon safely by millions of ordinary people and can provide a strong foundation for the careful consideration of even mass programs of digitization.

Finally, as I said above, one of the purposes of these regular events seems to be to try to stumble towards an extended collective licensing scheme that Congress might consider, even though these schemes impose an unnecessary tax on users without benefiting legitimate rights holders and have not worked well in the nations that have tried them. These comments about ECL schemes from the Electronic Frontiers Foundation are also worth reading. They do an excellent job of briefly explaining the broad consensus that ECL is a poor solution to the orphan works problem.

 

Why is copyright different?

One of the most basic justifications for all forms of property rights, something every first-year law student is taught, is that these rights encourage the efficient use of property.  Because property (usually) is a scarce resource, exclusive ownership rights help encourage people who value and will use the property.  For the same reason, restraints on the ability to sell property are generally discouraged — we support the “free alienability” of property so that those who do not wish to fully exploit a piece of property will be able to transfer that land (as it usually is) to someone who will.  In short, the rules around real property exist because of the foundational belief that fields should be tilled and planted, and houses should be lived in.

In this context of why we have property rights at all, it is very easy to see and understand that the problem in copyright of so-called orphan works is a fundamental failure of the rights system itself.

In addition to rules that encourage property owners to sell that they do not intend to use, nearly all forms of property rights regimes also have doctrines that will take the property away from an owner who declines to exploit what he or she owns.  The classic doctrine that does this is adverse possession, which can actually transfer title to a piece of land from the owner to a person whose only claim is that he is using the property while the owner is not.  In North Carolina, for example, a person who openly possesses and uses a piece of land that is not her own for a period of at least fifteen years can ask the courts to transfer title to her.  That is, owners of real property can lose their ownership simply because they did not use the property.

Real property is not the only property rights regime that has such a doctrine.  Ownership over personal property can also be lost, through the doctrine of abandonment.  If I leave my bicycle in a local park for long enough, without any indication of my claim to it or my intention to ever use it again, I may have abandoned the bicycle and it could become the property of another person who finds it, claims it and uses it.  Although we do not usually think about it this way, property rights are a “use it or lose it” legal regime.

Perhaps someone will suggest that these use it or lose it rules make sense in the realm of tangible property, where scarcity is really a problem, but would be inappropriate for intangible, intellectual property.  But that distinction does not work, because two other intellectual property regimes, trademark and patent, also have “use it or lose it” rules.  A trademark owner can lose their rights in a mark through neglect — one must defend the ability of the mark to identify specific goods or services, or else the mark will be lost because it is not serving the purpose for which trademarks are granted.  And patent rights can likewise be lost, if the rights holder does not pay the regular maintenance fees that are required.

In fact, as far as I can tell, the only form of property interest that cannot be lost even if it is never used is copyright.  Unlike with land, chattels, trademarks, or patents, a copyright holder can hold on to their rights for nearly a century without using them at all, and still without losing them.  And it is this bizarre feature of copyright, which distinguishes it from all other forms of property rights, that creates the problem of orphan works.

Of course, our copyright law used to have the same kind of mechanism that exists in other property regimes; renewal of copyright served as a very simple way to indicate a continued intention to use the property right, and without renewal the right was lost.  With that renewal requirement, copyright stayed on a par with other forms of property.  But we removed that requirement when we joined the Berne Convention, which forbids “formalities.”  That probably made very little sense (and we have ignored other requirements of the Berne Convention in spite of our adherence to it in 1988) because it created the orphan works problem and undermined one of the most basic justifications — efficiency through use — for allowing exclusive property rights in the first place.

The best solution to the orphan works problem would simply be to reinstate the renewal requirement.  That could probably be done without violating our obligations under Berne, if the requirement was imposed only on rights holders who are U.S. citizens.  That would be only a partial solution, of course, but it would be better than the current situation and would address the oddity that copyright is a more ironclad right, at this point, than any other form of property rights.

There are also more “gentle” ways to address this problem.  Given the current situation, where we give copyright holders a grip on those rights that is stronger than any other form of property, it would be possible, and eminently fair, to ask them to voluntarily take a simple step to make their intention to continue using their property known to others.  A registry, or perhaps different registries for different genres of copyrighted works, would allow rights holders to assert their continued interest in their rights, and make it much easier for potential users of the work to find and contact the appropriate rights holder if they are seeking permission for their use.  This would be a very non-intrusive way to address the problem of orphan works, especially in the context where other forms of neglect of property can result in forfeiture.

If a registry regime were voluntary and did not carry the threat of forfeiture that exists in other property regimes, what kind of “teeth” could be built into a registration system?  The most sensible approach would be for judges, when considering a fair use claim over a piece of copyrighted work, to take into consideration the “find-ability” of the right holder.  If the rights holder has taken any positive steps to be known and locatable, a claim of fair use should have to meet the same threshold that is currently erected for such defenses.  But if the rights holder has done nothing, has “sat on their rights,” to use a old-fashioned phrase that is amazingly applicable to the current copyright system, then it should be much easier to establish fair use.

When Congress considered an orphan works solution a few years ago, it wanted to put the onus on users to search for the rights holder.  But when we put copyright in the proper context of other property rights regimes, it should be obvious that these obligations should be a two-way street.  All other property rights require some kind of indication that the rights holder will use the rights, or else they can lose them.  In copyright, it would be fair, and a very small burden, to require a similar gesture — inexpensive and easy – of continued interest on the part of the rights holder. This is especially true if the only consequence of failing to make that gesture would be easier use, rather than a loss of the rights.  Copyright would still not be on a par with other property rights in terms of encouraging, indeed demanding, efficient use of the property, but the balance would be redressed a little.

Keeping it simple, or how to solve the Berne problem, part 2

My first post about the Berkeley orphan works conference focused on what we had done to create the massive orphan works problem we now face, and what mistakes we should avoid in the future as we try to solve it.  Now I get to be a little more positive and discuss some of the suggestions I heard (all of the PowerPoints are now available) for solving the problem that seem quite workable.  The overarching theme, I think, is keep it simple; rely on small legislative changes or solutions that can be implemented at the trial court level, rather than on big ideas.

Perhaps the foundational presentation focusing on a simple approach was from Jennifer Urban, one of the Directors of the Samuelson Law, Technology and Policy Clinic, who simply laid out the argument that use of orphan works most often will be fair use.  Her principal innovation in the fair use analysis was that it should begin, in this case at least, with looking at the second fair use factor, the nature of the original work being used.  The second fair use factor is not often asked to do much work, in my opinion, and attentive readers of this blog will know that I have suggested before that more emphasis be put there in regard to academic works.  Professor Urban’s argument about orphan works focused on the second factor for a similar reason — by starting there we could more clearly focus on the incentives for creation of a particular type of work and understand that there is no incentive to be gained for the creator or publisher of a true orphan work by charging a toll for use.  Indeed, Urban moved from the second to the fourth factor, an easy transition in this argument, and pointed out that an orphan work represents a complete “market failure” in which the economic impact factor clearly favors fair use.  So the simplest solution to the orphan works (or Berne) problem is just to recognize that the tools to facilitate beneficial uses of orphans already exist in U.S. law.

A proposal that meshed nicely with this approach was made by Professor Ariel Katz, from the University of Toronto, who suggested that courts could merely “tweak” the remedies for infringement to support uses of orphan works by taking into account, at the remedy stage, whether or not a reasonable search for a rights holder was done by the user prior to use.  If a court found that such a search was done, and no rights holder found, then damages could be waived or reduced to a reasonable fee for the use.  This suggestion can be seen as complementary to Professor Urban’s, since a fair use argument, if successful, could avoid a finding of infringement and, even if the judge did not accept fair use, a second step, adjusting the remedies, could still avoid the inefficiency of penalizing a beneficial use of an orphan work.  It would also provide an incentive for rights holders to take steps to be findable, which would protect their potential remedies and increase the likelihood of an efficient transaction over the proposed use. Taken together, theses two proposals require no legislation at all and could significantly improve the efficiency of the system by which culture replicates itself and develops.

Perhaps the most enlightening part of Professor Katz’s talk, however, was his analysis of the thinking that stands in the way of an elegant solution to the problem of orphan works.  He spoke about how the “permission first” mentality has become a  kind of “dogma” which blinds many to the possibility of simple and sensible solutions.  By focusing on the idea that all uses must be permissive, even if that permission comes from a licensing organization and does not benefit the work’s creator, we treat reuse of culture as a kind of “sin” and set up a licensing model that parallels the medieval system of indulgences. “The coin in the coffer rings and an orphan work from idle purgatory springs!” This approach is inappropriate and deeply inefficient when we speak of cultural creativity, which is inevitably cumulative and can be seriously undermined by a “permission first” attitude.

A different analogy was drawn by Professor Lydia Loren of Lewis & Clark School of Law, who preferred the term “hostage work” to the language of orphans.  She focused on the parallel with real property law and the doctrines on abandonment and waste.  As she said, there is a public interest that the law has long recognized in preventing what is called “permissive waste,” whereby a property owner allows the property to fall into disuse and become unproductive.  Such property, whether real or intellectual, is then held hostage to an exclusive right of ownership that is not being responsibly exercised.  In real property, we have doctrines like adverse possession and abandonment that will simply take that ownership right away when the waste is harmful to society.

Regarding “hostage” works of intellectual property, Professor Loren suggested that the incentive for creation had clearly already worked, since the work had come into being, but that the incentive to disseminate that work — to share it for the cultural benefit of all — had failed.  In light of that failure, “waste” should be prevented in a way that benefits the public.  Her fascinating suggestion was that the user of such a work should be protected from liability for infringement (if a rights holder arises), but only if the user has made a copy of the work available in openly accessible form.  Thus the public interest is served, by the accessible copy, yet the user can still make whatever use she wants, even a commercial one.  A rights holder that arises later might be able to stop that use, but the public has still benefited and the waste caused by a period of abandonment has been prevented.

These proposals gave me some reason to believe that we could make progress on the orphan works problem without needing large legislative changes, which almost never make copyright law better, and without actually shirking our commitments under the Berne Convention and TRIPS Agreement.  However unfortunate some of the effects of implementing those treaties in the U.S. has been, solutions to the worst damage done are still at hand.

How to solve the Berne Problem, part 1

The conference on Orphan Works & Mass Digitization, hosted by the Law School at the University of California, Berkeley last week, was exciting — at least to the 230 copyright geeks like me who attended — and filled with well-researched papers.  The three White Papers that were prepared by the Samuelson Law, Technology & Public Policy Clinic (written by former Duke Scholarly Communications Intern David Hansen) are well worth reading.  In this first post I want to look at a basic terminological issue and then focus on two general observations from the event.  In a subsequent post I will describe three specific suggestions made by conference speakers for solving the orphan works problem.

It is the phrase “orphan works problem” itself that sparked terminological debate.  Several speakers were uncomfortable with that expression, and an alternative – “hostage works” – seemed to gain some traction among participants.  But the suggestion that really got to the root of the issue was that we should refer to the proliferation of works still in copyright protection but for which no rights holder can be located as the “Berne problem.”  This is appropriate because the problem was so severely exacerbated by U.S. adherence to the Berne Convention in 1988 and the legislative changes that that decision required.  Four steps contributed significantly to the problematic situation we are currently in:

  1. The move to automatic protection, which often makes people into rights holders against their will and without their knowledge,
  2. Copyright term extension, which inevitably makes heirs or successors-in-interest into rights holders, again often unawares,
  3. The end of the renewal requirement, so that rights holders no longer have a chance to indicate their continued interest in a work; thus no “abandoned” works move any longer into the public domain,
  4. The end of the registration requirement, which now makes locating rights holders so much more difficult.

The combined effect of these changes to U.S. copyright law, all accomplished between 1978 and 1989, has been to create a huge class of orphan works.  So it is not surprising that many of the suggestions for how to deal with the problem pushed toward reversing or mitigating some of these changes.  Registries, for example, were a common theme; under these various proposals to create registries to assist in finding copyright holders for different types of works, we would simply be recreating (hopefully more efficiently) the registration database of the Copyright Office, which once could claim mandated comprehensiveness but unfortunately can do so no longer.

The first observation from the conference is that nearly all of the speakers (except the industry representatives and Registrar of Copyright Maria Pallante) seemed to think that legislation to solve orphan works is probably impossible and likely a bad idea.  The political climate in Washington makes attention to copyright issues unpalatable, and the proposal we saw several years ago was unattractive to many of the speakers.  Instead of newly created legislative schemes, potentially with burdensome and impractical requirements, many of the speakers looked for small changes that could be accomplished either in common law – by action of the courts, that is – or by simple legislative amendments to portion of the law as it currently stands.  In our next post we will examine some of these more modest suggestions.

Closely related to this distrust of the legislative process as a path for solving orphan works was a clear distaste, again expressed by multiple speakers, for solutions that would create a regime of extended collective licensing (ECL).  Such ECL programs would, of course, require a complex legislative enactment, and examples where such programs are in place were widely considered failures on a practical level; a professor from Canada, which has such a plan, was especially clear that this is not a workable option.  On the level of policy, an ECL scheme, where potential users of orphan works apply to some government-authorized board for permission and pay a fee, was denounced as economically inefficient.  The purpose of legislative licensing schemes is to facilitate the transactions so that users can find owners and owners benefit from the uses.  With orphan works, of course, there is no owner to be found so no transaction like this is actually facilitated.  Instead, the fee that would be paid to some collective organization would amount simply to a tax on use, with no economic benefit or incentive for creators at all.  One speaker refer to this sort of approach as similar to the medieval practice of selling indulgences, based on a dogmatic conviction that all unauthorized uses are a form of “sin.”  Any program based on such a foundation, rather than on solid economics, incentives for creation and cultural development, would be bad policy from the copyright point of view.