DIGITAL LIBRARIES: SOLUTION or PROBLEM FOR ORPHAN WORKS
The definition of an orphan work includes any type of work subject to copyright protection, in which its author or his/her successors in title (rights holders) are not known or if known are not able to being located. This is the meaning given by the Directive 2012/28/EU of the European Parliament and of The Council of 25 October 2012 on certain permitted uses of orphan works (hereinafter Orphan Works Directive or OWD) that according to its Article 2 in order for a work to be taken as an orphan work there should have been an inconclusive “diligent search” beforehand. The appointed reasons for the existence of orphan works are, for example, the difficulty in finding the relatives of the deceased author, the bankruptcy of a company or even the situation where an author does not want his/her work to be copyright protected.
This is a big problem as copyright term is extended and when one takes into account that only in the UK there are around 13 million orphan works according to a survey. In an estimate of the British Library for example, it is around 40% of all printed works. The existence of this problem is due to the lack of copyright registration and also the difficulty in keeping track of ownership, with special concern to photographs and sound recordings.
The problem arises when the licence and agreement scheme looses its importance determining that the market is therefore inefficient. If a work is orphan it is not possible to seek permissions or licences to use the content, and therefore it cannot be used or performed without legal risk: As it is not possible to obtain permission for use, there is at least the risk of civil infringement or criminal liability if there is commercial use. The other consequence could be the simply the unwillingness to search for the right holder of such works because the costs of locating them are greater than the potential value of the licence for the licensee.
These forgotten works are now much more able to be useful to a greater part of the population as digitisation and access to internet is now common in an internet era. The concern arrives when now it is much easier to make profit out of orphan works, agreeing or not this highlights the necessity for legislation in this ambit. An example can be seen in the US Author’s Guild v Google case from 2011. It is important that these works can be accessed and used , either for educational and scientific purposes but also to foster innovation by giving access and knowledge to influence people to create new works.
There are therefore two legislative ways that have been undertaken. The first is the mechanism of creating a statutory exception (or limited liability) for orphan works use after following some requirements (ex. diligent search) – e.g. OWD. The other case is the creation of an authority entity – UK – or a collective management organisation – Denmark – that will issue licences after requiring some steps to be taken by the person/body who is asking for the. This licences are taken without the permission of the rights holders by acknowledging the importance of this works for the society.
The legislation process began in both EU and US in the beginning of the 2000’s with the emergent problem of digitisation of books and digital libraries. In 2012 the EU OWD was enacted and in 2013 the Enterprise and Regulatory Reform Act ( hereinafter The ERR Act) was also enacted in the UK and amended the Copyright, Designs and Patent Act 1988 (hereinafter CDPA) by adding S.116(5) and S.116A – 116D by virtue of S.77(2) and (3) of the ERR Act. In the US there are currently no legislation enacted although there were some attempts in 2008 with the Orphan Works and the Shawn Bentley Orphan Works Bills following the 2006 US Copyright Office report with requirements for legislation concerning orphan works.
Both the Directive and the ERR Act refer to the term “diligent search” as the test to be applied in order to get the status of an orphan work. While S. 116A(3) of the CDPA does not include any definition of “diligent search”, Article 3 of the Directive requires the diligent search to be made in good faith and in respect of every and each work by searching appropriate sources, at least the ones listed in the Annex to the Directive. Recital 14 of the Directive also highlights the need for harmonisation on the meaning of this term and it has been argued that member states might refer to the guidelines established as part of the i2010 digital library initiative. The subject matter under which these provisions are applied cover all published or unpublished works (Article 1(3) of the Directive), including related rights (phonograms) in the UK while the EU excludes from that, stand- alone photographs from protection. A good lobbying was done by photographers in this respect. The Directive applies to works that were first published or broadcast within the EU due to the principles of subsidiarity and proportionality laid down in Article 5 of the TFEU. On the other hand and although limited to the territory of the UK, the scheme resulting from ERR Act includes foreign works (non-UK and non-EU).
A problem can arise given the fact that published and unpublished works are covered as to wether moral rights can put it into question, specially where the author cannot waive them and still has the right to decide wether he wants to see his/her work published. A mention should be done to the compliance with the Berne Convention has it has been argued that the “legitimate interests of the author” can include the interest in determining wether the work should be publicly disclosed.
The beneficiaries of this legislative scheme for orphan works determined by the Directive according to Articles 1 and 6(2) are publicly accessible libraries, educational establishments, museums, archives, film or audio heritage institutions and public service broadcasting organisations and the exception only applies to non-commercial activities. However commercial exploitation can exist to the extent that in only serves the purpose of covering costs of digitisation and making available to the public. On the other hand, S.116A of the CDPA does not preview any restriction regarding beneficiaries and the licences can be used for commercial and non-commercial activities. The Directive states in Article 6(1) that the rights covered by this exception are the right of reproduction and the right of making available to the public. If the right of distribution is involved, for example when an entity wants to make available downloads of works then a licence for the distribution right is required. In the UK, S.116A does not define the permitted uses which results in a presumption that the creation of derivative works, for example is permissible. An objection should be made here where the IPO as the authorising body finds the subsequent work as derogatory and refuse authorisation, by virtue of the moral right of integrity of the copyright owner. The IPO and the OHIM are the bodies that maintain an orphan works register which will increase the chances of any rights holders being found.
In the US, despite the fact that no legislation has been enacted, the proposals cover some aspects that can be seen in the EU and UK systems. The diligent search is also a requirement, although with variable standards according to the work in question. A “reasonable compensation” will be due in case the author reappears although this is not true when the beneficiaries are non-profit entities such as museums, educational institutes, museums, library and archives. The mechanism adopted by the proposals is a limited liability to goof faith infringers.
The issue of existing Extended Collective Licence (ECL) schemes operating in between collecting management organisations (CMO’s) and a category of users should be addressed in the context of orphan works. First, when they exist and cover orphan works – obviously non-members of the CMO – then the ECL prevails and no licence is required for the use of such work, for example in the UK where a licence is necessary to use an orphan work. The fact that there is an operating ECL for specific orphan works does not preclude the issue of licences regarding the same works which means that they are both cumulative. It is acknowledged that ECL brings some benefits in what
regards orphan works, such as the direct access of this works and its already usefulness for society. Although we have own concerns regarding ECL schemes specially in what regards the “opt- out” provisions by placing the onus on authors who are the ones that have to come forward in order to protect their rights remembering, for example, the Google case where they were seeking for the ability to expropriate the rights of copyright owners who have not agreed to transfer those rights. This is not a big problem in the US as CMO’s have a limited importance and ECL’s are not viable solutions.
In what regards a compulsory licensing scheme as it was argued by some scholars, among other benefits, “it would help minimise search, transaction, and administrative costs for users, incentivise investment in orphan works projects, and provide the flexibility necessary to bring major archival and restoration projects up to scale. This is can be helpful in countries such as US that currently does not have any other possible solution. It does not seems necessary in the case where other less burdensome solutions exist, such as in the UK via licensing or ECL.
Overall, We believe that the orphan work’s solutions found by the EU and the UK are important for the access to knowledge, education and science, specially the approach taken by the ERR Act as adopting the mechanism of licensing. We also think the upcoming digital libraries are a powerful tool to achieve those goals. My concerns rely on the extended commercial exploitation that can be made out of orphan works. Despite the fact that the rights holders are not identified it does not seem fair nor reasonable to me allow people or companies to use works that were created by someone else and that are still under the protection of copyright to make money out of it as if it was their own creativity, personality and labour behind.
Nischal Arvind singh-Chevening & HSBC Scholar
LLM (QMUL UK), LLB (DU)
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