TechKnowledge No. 117

Save the Orphan (Works)

By Timothy B. Lee
June 30, 2008

Copyright law is designed to encourage the production of creative works by giving the creator of a work the exclusive right (subject to certain limitations) to decide who may make copies of the work and at what price. Musicians, writers, photographers, and other creative professionals rely to a greater or lesser degree on copyright to earn a living.

Yet most copyrighted works have a short commercial life. Only a tiny fraction of books, songs, movies, and software are so successful that they enjoy multiple printings and continue to sell well for years after their release. The rest generate revenue for only a few years before they fall into the obscurity of publishers’ back catalogs.

But many works continue to have cultural and historical value long after they cease to be commercially valuable. There are vast archives of out-of-print works that could be used by historians, artists, and others to learn about the past and to re-use in creative new ways.

Unfortunately, two recent changes in copyright law have severely hampered our ability to make productive use of older works. First, Congress has repeatedly extended the length of copyright terms. In 1998, Congress extended the term of most extant copyrights to the life of the author plus 70 years. As a result, the normal process whereby older works fall into the public domain has been stopped; today many works created more than 80 years ago are still under copyright.

Second, Congress has eliminated what are called copyright “formalities.” Until the 1970s, authors needed to register their works with the copyright office, affix a copyright notice to every copy they printed, and renew their copyrights after a fixed period of time. These requirements were a small price to pay for the exclusivity of copyright protection, and they ensured that anyone could determine with reasonable certainty whether a given work was under copyright and who the copyright holder was. Unfortunately, between 1976 and 1992, Congress phased out these requirements. Federal copyright protection is now granted automatically when content is fixed in a tangible medium of expression, and no copyright notice or renewal is required to keep them.

The result has been a growing “orphan works” problem-millions of works that cannot be copied by anyone because their copyright holders cannot be found. Ironically, the problem has arisen just as the Internet and other digital technologies could have given older works a second lease on life. For example, Google is now scanning hundreds of thousands of out-of-copyright works for the public to access online. Unfortunately, the fear of copyright liability prevents any such use of orphan books whose writers and publishers have long since passed from the scene. Any business that began copying works-even those that have long been out of print-without first tracking down the copyright holder could face enormous liability.

The best way to solve the problem would be to reverse the bad policies that caused the problem in the first place: shorten copyright terms and reinstate copyright formalities. But the United States is prevented from introducing formalities by a bar on them in the Berne Convention, and shortening copyright terms is likely to be a political nonstarter for the foreseeable future.

An alternative is to create new protections for those who conduct a good-faith search for the owner of a copyrighted work but come up short. One good proposal comes from Jerry Brito of George Mason University’s Mercatus Center and Bridget Dooling, former editor in chief of the Federal Circuit Bar Journal, who have suggested the creation of a new “orphan works” defense to charges of copyright infringement.

Under their proposal, someone wanting to use an orphan work would be required to conduct a search for the copyright holder. If he or she found the copyright holder, they would need to negotiate a license, as under current copyright law. If the copyright holder could not be found, the new user would be permitted to use the work without fear of crippling liability. If a copyright holder subsequently emerged, the defendant could assert an “orphan works” defense and have an opportunity to prove that he or she had conducted a “diligent search” for the copyright holder.

The courts would conduct a fact-specific inquiry to determine if a diligent search had been conducted, guided by a non-exhaustive list of statutorily defined factors analogous to copyright’s four fair use factors. A copyright holder who subsequently emerged would not be able to claim the draconian “statutory damages” -as much as $150,000 per infringing use-that are normally available to aggrieved copyright holders. Instead, the copyright holder would be entitled to royalties set by statute for any unsold copies of the work.

This proposal would facilitate greater use of copyrighted works that are now sitting idle on the shelves of the nation’s libraries. It would have the additional virtue of encouraging copyright holders to voluntarily observe the traditional copyright formalities of marking their works and registering them in databases maintained by the Copyright Office or private parties. These steps would make it easier to find them, which in turn would make it harder for people to assert the orphan works defense. The result could be the de facto reintroduction of formalities in a more flexible, decentralized form.

Orphan works legislation based on recommendations by the Copyright Office has been introduced in both the House and the Senate. It is similar to the Brito-Dooling proposal with two important differences. First, it offers only limitations on liability-not an affirmative defense-for copying orphan works. Second, it requires the filing of a notice with the copyright office for each proposed use of an orphan work.

The Brito-Dooling approach is superior in both respects. Merely reducing liability may leave in place a significant chilling effect on the use of orphan works. And if the user of an orphan work can prove performance of a good-faith search for the copyright holder, it seems unfair to impose any damages for works that have already been sold.

A particular weakness of the Copyright Office proposal is the paperwork burden on users of copyrighted works, whose creativity is easily chilled. If a filing with the copyright office is required of them, prudent creators seeking to enjoy confidence in the application of the orphan works defense to themselves may feel the need to hire lawyers to help them prepare the filings. Given that the purpose of orphan works reform is to make orphaned works widely available for re-use, imposing unnecessary paperwork is counterproductive. This is doubly true when we consider that in most cases, no copyright holder will ever come forward.

Nevertheless, the legislation would be an important step toward mitigating the orphan works problem. There is currently a great deal of value locked up in the nation’s libraries and archives, and the proposal would allow people to begin unlocking it.

Timothy B. Lee is an adjunct scholar at the Cato Institute in Washington, DC. To subscribe, or see a list of all previous TechKnowledge articles, visit TechKnowledge Newsletter - Technology and Telecom Studies.