Posted by Admin Saturday, March 24, 2012 5:07:00 PM

by Brenda L. Speer

A bill addressing orphan works was introduced into the Senate in April 2008. It was known as the Shawn Bentley Orphan Works Act. The proposed legislation was passed by the Senate on September 26, 2008, but was never passed by the House.

The Orphan Works Act stirred up controversy at its introduction. Why?

Well, first, we should understand what an Orphan Work is. Copyrights in an original work of authorship arise at the moment of creation. The owner has exclusive rights in the work for reproduction, distribution, preparation of derivative works (modification of the original work), public display and public performance .If someone other than the owner wants to use that original work, then permission must be obtained from the owner of the original work. The owner is usually the author, but ownership in an original work can be transferred by the author to another (just like ownership in any property).

In 2006 the US Copyright Office did a study on the issue of orphan works and made recommendations to Congress based upon the study. An Orphan Work was defined in the report as one whose copyright owner “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.” Perhaps an Orphan Work’s owner cannot be identified, because the work does not have a notice (which is not required under current law), and cannot be located, because the owner is no longer alive (person) or in existence (company).

How do works come to not have notice? It depends on the circumstances. Before the Copyright Act of 1976, it was a requirement that copyright notice be posted on or with the published work, for example: © 1975 Creative Author. If notice wasn’t posted, then copyrights could be lost. Copyright notice was not required on unpublished works. Since 1976, copyright notice is not required to be posted on works.

A work without notice could be a post-1976 work that never had notice. The work could be a pre-1976 unpublished work that wasn’t required to have a notice and, therefore, didn’t. The work could be one which has had its notice removed either unintentionally for a variety of reasons, or intentionally by an infringer. (Note: It is unlawful to remove copyright notice from a work.)

The notice is a way for potential users to know and locate the author or owner of the work to request permission to use the same. What happens if there is no notice? Then determining ownership can be a challenge.

Many years ago I had a client who wanted to reproduce a platter with a western design on it. The platter had copyright notice of a company stamped on it. A search of the US Copyright Office records didn’t turn up a registration. (Registration is not a requirement for a claim of copyrights in a work, but is required to enforce copyrights against infringers.) A search on the company turned up information that it was defunct.

So what happened to the copyright assets in the platter when the company dissolved? Did the rights get transferred to a shareholder? Did another party buy them? Who knows, because the trail went cold. I advised the client that reproduction of the platter without permission could expose it to a claim of copyright infringement later by whomever was the owner now. Given the trail was so murky, from a practical standpoint it was probably a small risk the owner would come forward (if the owner even knew it was an owner), but a risk nonetheless. My client opted not to reproduce the platter.

The Orphan Works Act had provisions in it that, if it were in effect, would have allowed my client to reproduce the platter, with reduced liability for infringement, provided certain actions were undertaken prior to the reproduction.

One of the actions to have been required was that the user/infringer must undertake and document a “qualifying search” to try to locate the owner. Provided a “qualified search” had been made, then the infringer reduced its liability for a claim of copyright infringement later brought by the owner.

In my view, and that of those opposed to the Act, the “qualified search” provision itself posed plenty of unanswered problems and issues that would be left to interpretation by the courts. However, for purposes of discussion, let’s assume a “qualified search” was made and the other required actions were complied with by the infringer. If a “qualified search” was made, then the remedies the owner would have against the infringer are limited under the Orphan Works Act.

There were several aspects in the Senate Bill that, in my opinion, would have been staggering, objectionable changes to existing copyright law. Orphan Works are a valid issue to address, but the proposed remedy was far worse than the ailment.

The subtitle of the bill was apt in terms of exposing the true objective of the bill: “To provide a limitation on judicial remedies in copyright infringement cases involving orphan works.” These limitations weighed heavily in favor of the infringer and would have been extremely detrimental to the copyright owner.

Under the current Copyright Act, an owner whose work is infringed can pursue several remedies against the infringer:

(1) monetary damages, either (a) statutory damages up to $150,000, or (b) actual damages;

(2) injunctive relief to (a) stop the infringement, (b) forbid future infringement, (c) impound the infringing work, and/or (d) destroy the infringing work;

(3) attorney fees; and

(4) costs of suit.

The Orphan Works Act would have eliminated actual and statutory damages, injunctive relief, attorney fees and costs of suit. The copyright owner would have had only one form of new relief: “reasonable compensation.” Under the current Copyright Act, the benefit of the statutory damages provision is that some meaningful monetary relief can be awarded to the owner, because actual damages (or “reasonable compensation”) often are nominal.

To add insult to injury, the Orphan Works Act stated that “reasonable compensation” was “the amount on which a willing buyer and willing seller in the positions of the infringer and the owner of the infringed copyright would have agreed with respect to the infringing use of the work immediately before the infringement began.”

Gee, thanks, Congress. That would have left the copyright owner holding the bag for the cost of enforcing its rights against an infringer, with no ability to stop and prevent future infringement, and with what may have been nominal monetary compensation for the infringement. The elimination of attorney fees, costs, and actual and statutory damages would have chilled any incentive for a copyright owner to sue an infringer. A law suit against an infringer would have involved a lot of unrecoupable time, money and emotional energy on the part of the owner, yet resulted in only a monetary slap on the wrist of the infringer.

As if that was not enough, the bill would have eliminated injunctive relief! What that would have meant is that the owner couldn't have forbidden the infringer from continuing the infringement! Wow, the infringer could have infringed for a nominal monetary penalty (payment of “reasonable compensation” for the infringement) and kept right on doing what it had been doing. This would have put the owner in the untenable position of doing business with the infringer, whether the owner wanted to or not.

Then the Orphan Works Act further provided that if the infringer created a derivative work, the infringer got to have a copyright in its infringing derivative work to boot! What?! Sounds to me like the infringer would have been getting away with theft. It would have been the equivalent of saying:

I can take your home movies (may be they went viral on the web and there’s no longer any identifying information associated with the video and, therefore, it’s orphaned),

Put them in a documentary (I create a derivative work),

Then, after you successfully sue me for using your movies without your permission (remember, you get no attorney fees or costs of suit for enforcing your rights),

I merely pay you a reasonable fee for the use of the movies (you can’t get actual or statutory damages, and the “reasonable compensation” probably will be nominal, because your home movies probably don’t have much, if any, commercial value),

I can continue to use the movies in the documentary (you have no injunctive relief remedy to stop me from continued use), and

I can claim ownership of and copyrights in the documentary!

So, yes, in my opinion, Orphan Works most definitely need foster parents to care for them. The current Copyright Act, although it may be burdensome to a would-be user/infringer, does foster the interests of Orphan Works. Had the proposed legislation been enacted, exploitation of Orphan Works with almost complete impunity would have become the new rule of copyright in the creative wild frontier.


© 2009, 2012 BL Speer & Associates

BL Speer & Associates
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