Orphan Works Legislation: Real Time Bomb

So that should be easy.

Not Enough Debate

The Orphan Works legislation tries to solve, in a few pages, all the problems with works whose owners are difficult to find for the entire creative community ' and quite predictably misses volumes of nuance. The legislation mandates a largely unworkable morass. While the issue was studied by the Library of Congress in the Copyright Office's 'Report on Orphan Works' (Jan. 2006) in some detail, the legislation was barely discussed in public. Senators Patrick Leahy (D-VT) and Orrin Hatch (R-UT) and Representatives Howard Berman (D-CA) and Lamar Smith (R-TX) introduced their law on April 24, 2008 and their bills passed the relevant committees in the Congress in a matter of days; the Senate Judiciary Committee spent around five minutes debating the Leahy-Hatch bill.

The secretiveness surrounding the legislation soon faded as word of the bill went through the creative community online, although the mainstream media has not covered the issue in any meaningful degree. The Library of Congress, Google, Microsoft, Motion Picture Association of America and Recording Industry Association of America (RIAA) support the legislation. Opponents include the American Association of Independent Music, the National Association of Music Pub-
lishers, the Association of Independent Music Publishers and AFTRA, as
well as visual artists, photographers, and many others. The Illustrators Partnership alone has generated over 90,000 letters to Congress and well over 100 separate associations of illustrators and photographers aligned against the bill.

One can understand how the Library of Congress has a strong interest in limiting its exposure to troublesome claims by meddlesome small copyright owners, particularly in the case of the Library of Congress' interests in developing a digital library (including the Library of Congress' $155 million gift from Hewlett Packard heirs and $3 million gift from Google that together dwarf Congress' $82 million appropriation for these projects).

The lack of debate on the legislation highlights the concerns of the independent artist community. Independent artists usually own their own copyrights and are much harder to locate than major label artists ' which may explain why the RIAA supports the legislation that is so widely opposed by artists and independent labels.

The Opposition

Opponents of the legislation have released a host of position papers and statements regarding Congress' proposed law that are summarized below.

One Size Fits All. 'Orphan works' legislation is supposed to help 'altruistic' users, such as the Library of Congress ' a protection from statutory damages for museums, libraries and cultural archivists contributing to our culture. The idea was that these non-commercial sources would make available to the public those works whose authors cannot be found after a search by responsible people.

But the legislation now applies to both 'altruistic' and purely commercial users. (Google has testified at the Copyright Office that they intend to use 'millions' of orphan works.) The opponents of the legislation do not have much of a problem with 'altruistic' uses, but they do object to the same standard that is applied to the Library of Congress being applied to very large commercial interests, such as Google, with not much financial incentive to find the copyright owner. This is not to mention the beneficial effect on the Google print litigation that the bill might have.

Copyright Owners Must Sue to Enforce Their Rights. The infringer can fully exploit the orphan work and only has to pay 'reasonable compensation' if they ever get caught. That amount will be decided by a court if the copyright owner can afford the litigation. Without the big stick of statutory damages, why would an infringer ' particularly a corporate infringer ' make a reasonable deal with any rights holder who can't afford litigation? That means that an independent songwriter, publisher, label or artist is going to have to find a lawyer to take their case on a contingency that will require that lawyer to win a case in a totally new area of the law for which there is no precedent. And maybe ' maybe ' get an award of attorney fees years later.

Buying the 'Best Practices' Pig in a Poke. 'Best practices' are rules that are supposed to guide infringers conducting a search for copyright owners. The determining factor in whether the 'diligent search' requirement has any teeth at all is the 'best practices' that are to be determined by the Copyright Office in the current bill. The Register of Copyrights seems to be under the impression that the Copyright Office is uniquely positioned to hand down best practices guidelines. If the lack of attention to detail in the Orphan Works legislation is any guideline, the Copyright Office should have no role at all; moreover, given that the Library of Congress will benefit from the outcome of the 'best practices' process. There is no guarantee that any copyright owner will have any influence on the determination of best practices ' but the bill has an effective date of Jan. 1, 2009 regardless of whether best practices are in place.

No Limitation on Use. Orphan works can be used for anything, including a political advertisement, pornographic film or commercial. The infringer can also manipulate the work in a sample or mashup beyond recognition. The Orphan Works Act allows the infringer to claim a new copyright in the manipulated work and prohibits the original copyright owner from getting an injunction to stop the manipulated work.

No Limitation on Source Materials. The legislation does not prohibit infringers from starting their searches with source materials downloaded illegally. There is no requirement that the infringer use commercial copies of the works they want to search, so the legislation could easily allow an illegal copy to become legal if it is orphaned. Owners of live recordings are especially difficult to identify, so their works may become inadvertently orphaned.

No Notice Is Required. The infringer is not required to post a public notice of the orphan work with the Copyright Office. The Senate bill has no notice requirement; the House bill only requires the notice to be kept in a 'dark archive.' The 'dark archive' can only be penetrated with a court order. The only way a copyright owner would know that their work had been used would be if they happened to hear about or encounter the use.

Limitations on Search Technology. The legislation requires the infringer to make a 'reasonably diligent search' for the copyright owner ' unsupervised and self-policed. This search will inevitably include privately owned databases and registries, as copyright owners have not been required to register for copyright protection since 1988, so the Copyright Office registration database is of little utility. However, the technology simply does not exist to conduct exhaustive and accurate searches for sound recordings, songs and especially audiovisual or visual works.

Paradox of Approval. Record companies often give their artists approval over licenses. Because there is no restriction in the legislation on the kind of use that can be made of an orphan, it is likely that even if a copyright owner found the orphan and wanted to negotiate 'reasonable compensation' with the infringer, the copyright owner would be under a contractual prohibition to grant the use permitted under the safe harbor and so would be unable to negotiate for reasonable compensation even if they wanted to. Moreover, if the work was a recording that had been made under a union collective bargaining agreement, the copyright owner would be required to pay residuals if approving the use, whether or not 'reasonable compensation' was decided to include this cost. The legislation ignores both these likely outcomes.

As of this writing, it seems that Sens. Leahy and Hatch, and Reps. Berman and Smith believe they have the votes to pass this watershed legislation and are unmoved by the hundreds of thousands of creators who object to the Orphan Works legislation. So it appears destined to become law.

It is difficult at this point to anticipate how best to advise creators what their rights are under the Orphan Works legislation. It seems reasonable to advise that registration in as many databases as possible is clearly required to avoid being inadvertently 'orphaned' given the legislation's de facto registration requirements.

Aside from that, the intent of Congress clearly seems to be changing toward undermining the rights of creators to an even greater extent than they already have in recent years with legislation such as the Digital Millennium Copyright Act.

The federal 'Orphan Works' legislation (S2913 and HR5889) creates an entirely new law favoring the 'opt in' fundamentalists who prefer as many copyright formalities as possible, thereby increasing the likelihood that works will fall ' intentionally or unintentionally ' into the public domain. Some have characterized the import of the Orphan Works legislation as creating a new rateless compulsory license, or at
a minimum a 'safe harbor' for libraries (such as the Library of Congress), museums, public broadcasters and universities, as well as commercial entities.

Orphan Works A-Z

The 'elements' of the Orphan Works Act is that the new law would permit: (a) anyone (b) who cannot find (c) a copyright owner after (d) a self-policed (e) 'reasonably' (f) 'diligent search' (g) in accordance with 'best practices' (h) to exploit that work (i) in any manner (j) for anything (k) all without compensation (l) to the copyright owner (m) other than 'reasonable compensation' (n) as determined by a judge under a 'willing buyer, willing seller' standard (o) in a U.S. federal court (p) where the judge need only refer (q) to non-mandatory licensing guidelines (r) and comparable licensing fees for comparable works or the same work (s) which may not include statutory damages (t) or attorneys fees or (u) injunctive relief in most cases (v) all without public notice to the copyright owner (w) or any independent judgment or permission granted (as in Canada) by an independent government body representing the copyright owner who cannot be found or their heirs. The Act applies (x) to all copyrights (foreign and domestic) (y) and de facto requires registration in yet-to-be created databases (z) that many international lawyers believe will violate the Berne Convention in a significant enough way to cause the European Commission to bring the United States before the World Trade Organization arbitration panel with this law as they did with the Fairness in Music Licensing Act (for which the U.S. is still paying reparations we are told).

So that should be easy.

Not Enough Debate

The Orphan Works legislation tries to solve, in a few pages, all the problems with works whose owners are difficult to find for the entire creative community ' and quite predictably misses volumes of nuance. The legislation mandates a largely unworkable morass. While the issue was studied by the Library of Congress in the Copyright Office's 'Report on Orphan Works' (Jan. 2006) in some detail, the legislation was barely discussed in public. Senators Patrick Leahy (D-VT) and Orrin Hatch (R-UT) and Representatives Howard Berman (D-CA) and Lamar Smith (R-TX) introduced their law on April 24, 2008 and their bills passed the relevant committees in the Congress in a matter of days; the Senate Judiciary Committee spent around five minutes debating the Leahy-Hatch bill.

The secretiveness surrounding the legislation soon faded as word of the bill went through the creative community online, although the mainstream media has not covered the issue in any meaningful degree. The Library of Congress, Google, Microsoft, Motion Picture Association of America and Recording Industry Association of America (RIAA) support the legislation. Opponents include the American Association of Independent Music, the National Association of Music Pub-
lishers, the Association of Independent Music Publishers and AFTRA, as
well as visual artists, photographers, and many others. The Illustrators Partnership alone has generated over 90,000 letters to Congress and well over 100 separate associations of illustrators and photographers aligned against the bill.

One can understand how the Library of Congress has a strong interest in limiting its exposure to troublesome claims by meddlesome small copyright owners, particularly in the case of the Library of Congress' interests in developing a digital library (including the Library of Congress' $155 million gift from Hewlett Packard heirs and $3 million gift from Google that together dwarf Congress' $82 million appropriation for these projects).

The lack of debate on the legislation highlights the concerns of the independent artist community. Independent artists usually own their own copyrights and are much harder to locate than major label artists ' which may explain why the RIAA supports the legislation that is so widely opposed by artists and independent labels.

The Opposition

Opponents of the legislation have released a host of position papers and statements regarding Congress' proposed law that are summarized below.

One Size Fits All. 'Orphan works' legislation is supposed to help 'altruistic' users, such as the Library of Congress ' a protection from statutory damages for museums, libraries and cultural archivists contributing to our culture. The idea was that these non-commercial sources would make available to the public those works whose authors cannot be found after a search by responsible people.

But the legislation now applies to both 'altruistic' and purely commercial users. (Google has testified at the Copyright Office that they intend to use 'millions' of orphan works.) The opponents of the legislation do not have much of a problem with 'altruistic' uses, but they do object to the same standard that is applied to the Library of Congress being applied to very large commercial interests, such as Google, with not much financial incentive to find the copyright owner. This is not to mention the beneficial effect on the Google print litigation that the bill might have.

Copyright Owners Must Sue to Enforce Their Rights. The infringer can fully exploit the orphan work and only has to pay 'reasonable compensation' if they ever get caught. That amount will be decided by a court if the copyright owner can afford the litigation. Without the big stick of statutory damages, why would an infringer ' particularly a corporate infringer ' make a reasonable deal with any rights holder who can't afford litigation? That means that an independent songwriter, publisher, label or artist is going to have to find a lawyer to take their case on a contingency that will require that lawyer to win a case in a totally new area of the law for which there is no precedent. And maybe ' maybe ' get an award of attorney fees years later.

Buying the 'Best Practices' Pig in a Poke. 'Best practices' are rules that are supposed to guide infringers conducting a search for copyright owners. The determining factor in whether the 'diligent search' requirement has any teeth at all is the 'best practices' that are to be determined by the Copyright Office in the current bill. The Register of Copyrights seems to be under the impression that the Copyright Office is uniquely positioned to hand down best practices guidelines. If the lack of attention to detail in the Orphan Works legislation is any guideline, the Copyright Office should have no role at all; moreover, given that the Library of Congress will benefit from the outcome of the 'best practices' process. There is no guarantee that any copyright owner will have any influence on the determination of best practices ' but the bill has an effective date of Jan. 1, 2009 regardless of whether best practices are in place.

No Limitation on Use. Orphan works can be used for anything, including a political advertisement, pornographic film or commercial. The infringer can also manipulate the work in a sample or mashup beyond recognition. The Orphan Works Act allows the infringer to claim a new copyright in the manipulated work and prohibits the original copyright owner from getting an injunction to stop the manipulated work.

No Limitation on Source Materials. The legislation does not prohibit infringers from starting their searches with source materials downloaded illegally. There is no requirement that the infringer use commercial copies of the works they want to search, so the legislation could easily allow an illegal copy to become legal if it is orphaned. Owners of live recordings are especially difficult to identify, so their works may become inadvertently orphaned.

No Notice Is Required. The infringer is not required to post a public notice of the orphan work with the Copyright Office. The Senate bill has no notice requirement; the House bill only requires the notice to be kept in a 'dark archive.' The 'dark archive' can only be penetrated with a court order. The only way a copyright owner would know that their work had been used would be if they happened to hear about or encounter the use.

Limitations on Search Technology. The legislation requires the infringer to make a 'reasonably diligent search' for the copyright owner ' unsupervised and self-policed. This search will inevitably include privately owned databases and registries, as copyright owners have not been required to register for copyright protection since 1988, so the Copyright Office registration database is of little utility. However, the technology simply does not exist to conduct exhaustive and accurate searches for sound recordings, songs and especially audiovisual or visual works.

Paradox of Approval. Record companies often give their artists approval over licenses. Because there is no restriction in the legislation on the kind of use that can be made of an orphan, it is likely that even if a copyright owner found the orphan and wanted to negotiate 'reasonable compensation' with the infringer, the copyright owner would be under a contractual prohibition to grant the use permitted under the safe harbor and so would be unable to negotiate for reasonable compensation even if they wanted to. Moreover, if the work was a recording that had been made under a union collective bargaining agreement, the copyright owner would be required to pay residuals if approving the use, whether or not 'reasonable compensation' was decided to include this cost. The legislation ignores both these likely outcomes.

As of this writing, it seems that Sens. Leahy and Hatch, and Reps. Berman and Smith believe they have the votes to pass this watershed legislation and are unmoved by the hundreds of thousands of creators who object to the Orphan Works legislation. So it appears destined to become law.

It is difficult at this point to anticipate how best to advise creators what their rights are under the Orphan Works legislation. It seems reasonable to advise that registration in as many databases as possible is clearly required to avoid being inadvertently 'orphaned' given the legislation's de facto registration requirements.

Aside from that, the intent of Congress clearly seems to be changing toward undermining the rights of creators to an even greater extent than they already have in recent years with legislation such as the Digital Millennium Copyright Act.