EU’s Attempt to Address the Thorny Orphan Works Problem

The Orphan Works Directive 2012/28/EU was published in the Official Journal of the European Union on 27 October 2012. This post provides an overview of the main provisions set forth by the Directive and describes the approach used by the European institutions in a first tentative step towards tackling the modern issues concerning the use of orphan works, particularly in connection with mass-digitalization projects.

The problem with exploitation of orphan works

Orphan works are works of any kind of art (such as books, newspapers or magazine articles, films, etc.) which remain protected by copyright, but whose authors and/or right holders cannot be identified or, even if known, cannot be tracked down.

This situation is a significant obstacle for those persons, companies, institutions or entities that seek to make such works available to the public. Before the adoption of the Directive, the impossibility of identifying or locating the author of the orphan work normally led to a situation of stall. The organization interested in making use of the work was unable to obtain a license and consequently unwilling to use the work, due to the fear of eventually being charged with copyright infringement.

With the advent of the Internet era and with the rise of large-scale digitalization projects (such as Google Books and Europeana) the issues concerning the availability to the public of orphan works came under the spotlight.

In many countries, the regulations concerning the free use of orphan works remain largely ill-defined, preventing public access to artistic heritages that remain buried in the archives of cultural organization, such as libraries, foundations or museums.

Evidence of the large impact of this phenomenon, in terms of percentages of existing orphan works, is widespread. In particular:

  • According to research published by the European Commission (the “Vuopala Study”), a conservative estimate put the number of orphan books across Europe at 3 million.
  • Another study (“In from the Cold”, carried out by the Joint Information Systems Committee) found 13 to 50 million orphan works existing in UK, approximately 5-10% of works in library collections. Moreover, the study concluded that “extrapolated across UK museums and galleries, the number of Orphan Works can conservatively be estimated at 25 million, although this figure is likely to be much higher.”
  • The British Library (in its “Seeking New Landscapes” study) reported figures showing that, of the overall number of “potentially in-copyright works 43% were orphan works, equating to 31% of the total sample.”
  • Finally, the Association des Cinémathèques Européennes survey found that orphan works held by its member archives was 12%, but the presumed number of orphan works was even higher and estimated to 21%.

The legislative path that led to the adoption of the Orphan Works Directive

Several initiatives and projects inspired the Directive:

After a period of consultations with interested parties, on 24 May 2011 the Commission published the Blueprint for Intellectual Property Rights to boost creativity and innovation, together with the Proposal for the Directive accompanied by its Impact Assessment on the cross-border online access to orphan works.

The draft legislation reflected the text of the Commission’s Proposal, with two further provisions added: (1) the provision of a compensation should the right holder show up, and (2) limited cases in which revenues can be generated from the use of an orphan work.

European Commissioner Barnier welcomed the final adoption of the Directive and described it as a “significant achievement in our efforts to create a digital single market. It will enable easy online access for all citizens to our cultural heritage . . . this Directive is one more step in making licensing and online access to cultural content easier.”

The contents of the Orphan Works Directive

The main goal of the Directive 2012/28/EU is to harmonize the protection and regulate the use of the orphan works throughout the European Union.

1)   The definition of orphan works and their mutual recognition across Europe

The crucial provision of the Directive is Article 2, which sets forth the definition of orphan works.

First, the Directive applies only to certain categories of works, i.e.:

  • works in the print sector (books, journals, magazines and newspapers);
  • cinematographic and audio-visual works;
  • phonograms;
  • works embedded or incorporated in other works or phonograms (e.g. pictures in a book).

Notably, significant categories, such as stand-alone photographs and other images, remained uncovered from the scope of the Directive.

Second, the work must have been first published, or in defect of publication, first broadcasted in a Member State. The Directive also applies to unpublished works (such as letters, manuscripts, etc.), but only under certain conditions.

Third, the work must be still protected by copyright.

Fourth, the organization that seeks to make use of the work must conduct a diligent search to find its copyright holder(s). Article 3 of the Directive specifies that this search should be carried out within the Member State of first publication or broadcast (but for limited exceptions), prior to the use, in good faith and relying on sources, such as databases and registries, appropriate to the category of works. Such sources will be determined by each Member State, in addition to those basic sources already indicated by the Directive. Only if the actual unavailability of the copyright owner is ascertained, can the work be defined as orphan.

Once all the above requisites are met, the work is granted the status of “orphan work,” which will be mutually recognized in all Member States. Such status will continue to exist unless a right holder shows up and puts an end to it.

If diligent search protocol is not followed, Recital 19 of the Directive clarifies that the remedies for copyright infringement in Member States’ legislations will remain available.

2)   Rights clearance of orphan works, limited beneficiaries and uses

Under the Orphan Works Directive, organizations listed under Article 1 (i.e. publicly accessible libraries, educational establishments and museums, archives, film or audio heritage institutions and public-service broadcasting organizations, established in the Member States) will be allowed to use the works acknowledged as orphan works contained in their collections.

However, the permitted uses will be limited to “aims related to their public-interest missions, in particular the preservation of, the restoration of, and the provision of cultural and educational access to, works and phonograms contained in their collection.” (Article 6)

3)   Orphan works’ information database

A further objective of the Directive is to create a European database capable of cataloging and containing all the information available about the works identified as orphan. For this purpose, Member States are required to ensure that the beneficiary organizations keep records of the diligent searches they carried out and provide information and updates regarding such searches and the identified orphan works to the competent national authorities.

The data shall be stored in a single publicly accessible online database established and managed by the Office for Harmonization in the Internal Market.

4)   Collective works

In the case of collective works, it is possible that not all the authors are actually unknown. In this event the organizations will be required to seek permission or obtain a license from the author that is known before the work, only partially orphan, can be exploited in accordance with the Directive.

5)   Beneficiary organizations’ permitted revenues and freedom of contract

Under the Directive’s provisions, beneficiary organizations are allowed to produce revenues from permitted use of orphan works. However, those revenues shall be generated for the sole purpose of covering the costs the organizations will bear in order to digitize and make available the orphan works to the public.

The organizations will remain free to enter into agreements (in particular public-private partnership agreements) in the pursuit of their public-oriented missions.

6)   Right holder’s compensation

Finally, the Directive regulates the eventuality in which a right holder of an orphan work may turn up and put an end to the orphan work status. In such a circumstance, the organization will owe right holder a fair compensation for the use that the beneficiary organization has made of the orphan work.

The level of this compensation shall be decided by the Member State in which the orphan work has been in use.

Reactions and potential revision in 2015

Lidia Geringer de Oedenberg, Polish Social-Democrat Member of the European Parliament, praised the potential benefits of the adoption of the Directive, affirming that the new legislation provides public institutions with “legal certainty so they are not afraid of using orphan works.”

On the contrary, other Members of the European Parliament, such as Christian Engström, of the Swedish Pirate Party, expressed disapproval. Engström strongly criticized the excessive restrictions imposed on the number of its potential beneficiaries and the use of orphan works, particularly the complete ban on any commercial exploitation of such works. Moreover, while the organizations will be prevented from generating profits from the use of the orphan works, they will be facing financial risk related to the possible reappearance of the rights holder.

Many other members of the European Parliament, even those voting in favor, shared the same critiques regarding the Directive and, since the latter did not strive to address those issues, they referred to it as “not ambitious enough.”

In addition to restrictions on commercial exploitation, David Hammerstein of the TransAtlantic Consumer Dialogue, as well as representatives from Knowledge Ecology International (KEI) described as key shortcomings of the Directive provisions that limit potential beneficiaries and the possible retroactive financial liabilities brought by the compensation provision. They also criticized the financial burden of the reporting requirements imposed on the organizations.

The Electronic Information for Libraries (EIFL) in its Guide for libraries on the Directive noted the shortcomings in definition of “diligent search,” to the extent that it does not provide for different standards appropriate to the different circumstances of the work.  EIFL also criticized the exclusion from the scope of the Directive of stand-alone photographs and images.

EIFL concluded that, given all the limitations imposed and the various deficiencies spotted, as it is the Directive “will be useful only for small scale, niche project.” The new EU legislation has thus failed to realize its main “aim to facilitate large-scale digitalization of Europe’s cultural and educational heritage (Recital 1)” and “libraries in EU Member States must wait until the review in 2015 to seek improvements.”

Article 10 of the Directive leaves a door open for future actions by the Commission, upon submission of a report by the end of October 2015 with proposals for amendment. Member States have until 29 October 2014 to implement the Directive’s provisions at the national level. Only then we will have the first feedback on its implementation.

Orphan works issue in United States: new developments and proposed solutions

In United States, the debate surrounding the orphan work question has gained momentum over the last decade. Several initiatives and proposals for a solution came in succession.

Since 2005, the Copyright Office has sought orphan works legislation from Congress. At the beginning of that same year, the Copyright Office solicited comments from the various stakeholders and, later on, announced its intention to held public roundtable discussions regarding orphan works. As a result, in January 2006, a Report on Orphan Works was published.

In 2008, Congress carried out its first, and so far also last, concrete attempt to address orphan works through a legislative action. The Shawn Bentley Orphan Works Act was approved by the Senate, but never passed in the House of Representatives, and died.

The text of the Act provided for a revision of the United States Code copyright law provisions on infringement and remedies. The Act, if passed, would have limited the remedies available in case of a copyright infringement concerning an orphan work. According to the dead legislation, a “good faith” user was required to perform, before using the orphan work, “a reasonably diligent” search to locate and identify the owner of the copyright. In case the orphan work rights holder had reappeared, had the user complied with such research requirements, the remedies provided against the latter would have been limited to a “reasonable” compensation. As long as the user had performed the “reasonably diligent” search before making use of an orphan work, no relieved statutory or punitive damages would have been granted.

Stanford Law Professor Lawrence Lessig described this attempted reform as “an amazingly onerous and inefficient change, which would unfairly and unnecessarily burden copyright holders with little return to the public.”

U.S. Copyright Office has continued to look for solutions, and, on October 22, 2012, in order to “advise Congress as to possible next steps,” solicited more comments on the orphan works problem, obtaining hundreds of responses both from individuals and organizations. As observed by the Library Copyright Alliance, the large diversity of opinions so far received by the Copyright Offices demonstrates that it will be extremely challenging to build a consensus over this issue.

Discussions on the orphan works question came up repeatedly also in the context of litigation. A recent Bolt post covered the litigation involving Google Books mass-digitalization project. On November 14, 2013, Judge Chin found Google’s practices of digitalizing books and displaying snippets of those scans in online Google Books searches lawful under the copyright law “fair use” doctrine.

This outcome provides support to the view shared by David Hansen, Kathryn Hashimoto, Gwen Hinze, Pamela Samuelson, and Jennifer Urban in Solving the Orphan Works Problem for the United States that fair use doctrine will serve as the main player in providing the U.S. with a “workable and cohesive” approach to the orphan works problem. However, the final word on this question has yet to come, as Author’s Guild has announced their plans to appeal the decision.

Cite as: Daniele Ferrone, EU’s Attempt to Address the Thorny Orphan Works Problem, Berkeley Tech. L.J. Bolt (November 26, 2013), http://btlj.org/?p=3119.
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