Sunday, February 05, 2006

Copyright Office Orphan Works Report

The Copyright Office's Orphan Works report, found here, has generated some comment, some overseas, including Kim Weatherall's Austrialian blog, who compares it favorably to the Australian Copyright Council's proposal (linked on her site). Among the domestic comments on the report are ones by Public Knowledge and Joe Gratz.

The report is the result of concern by the Copyright Office over the adverse impact on those who wish to use works whose owners cannot be located after a good faith, reasonably diligent search. Congress shared this concern and requested the Office prepare a report, which it did. The report is a very impressive effort in a short time period. Having written two such reports while a Planning Policy Advisor to the Register (the report on technological changes to motion pictures, and the report on Architectural Works), and having done almost all the spade work on a third (the Droit de suite report), I have first hand knowledge of the efforts it takes to get such a report out, as well as for the role such studies play. Bravo.

The Copyright Office is unique in many respects, in this context for being both concerned with policy but not making it. The body that makes the policy is the Congress, and hence the role of the Office is to faithfully lay the issues out and to make recommendations. The current report, the work of Jule Sigall along with Oliver Metzger, Matt Skelton and Rob Kasunic, performs this task quite admirably.

As with all such recommendations, there will be those who are disappointed that their recommendations were not adopted and some who are relieved more sweeping changes were not suggested. The report is, however, principally a discussion document, one for Congress to evaluate to determine first if it believes a legislative inititative is warranted, and if so, what its initial form should take. If legislation is proposed, there will be plenty of opportunity for all to have their say and attempt to shape the final product. The proper way to view the report, therefore, is as an excellent vehicle with which to advance the debate. (The law review article I wrote with Judge Posner which discusses a role for fair use may be found here).

The report is candid in setting out the origins of the problem. Those origins lie not with the Sonny Bono term extension, but with the 1976 Act, which abandoned the renewal scheme of the past, created an automatic system of copyright, set a unified term measured by the life of the author, and greatly reduced the importance of formalities. The 1988 Berne Convention implementing legislation did away with most of the remaining formalities. We are now fairly close to a formality free, automatic system of copyright. The result is that the chaff-separating done by past systems isn't in existence. The report correctly notes that that past system also threw into the public domain works that people did care about tremendously, but which ran afoul of very thorny formalities. From my days in the Copyright Office, I am aware of cases where widows lost copyright for a timely filing of a renewal application, but with the wrong name spelled out as the claimant. Those who have not practiced under the 1909 Act tend to underestimate how easy it was to lose copyright.

The 1976 Act attempted to prevent such losses, and for good reason. There is a substantial argument, however, that in doing so, that Act failed to contemplate the substantial negative impact on the use of works that people did not care about, hence the orphan report. It is a fact of life that through treaty obligations, the U.S. has considerably less room to fix the orphan works problem, but the Office has made a constructive start. In terms of the office's recommendations, a basic divide was whether to require payment. The Office said yes. There is then the question of injunctive relief. Taking a page perhaps from the 1994 GATT implementing legislation, the Office separated out derivative works, making such works generally free from injunctions. I question, however, why the lack of injunctive relief should be limited to derivative works: film restoration, for example, is expensive and may well not result in a derivative work. It may be better to eliminate all injunctive relief. Indeed, having to pay a reasonable royalty and be subject to injunctive relief seems inconsistent: I can see people investing in a project and salting away rainy day money for such compensation, but why would you invest in a project if you were subject to an injunction?

The Office's statutory recommendations are:


(a) Notwithstanding sections 502 through 505, where the infringer:(1) prior to the commencement of the infringement, performed a good faith, reasonably diligent search to locate the owner of the infringed copyright and the infringer did not locate that owner, and(2) throughout the course of the infringement, provided attribution to the author and copyright owner of the work, if possible and as appropriate under the circumstances,the remedies for the infringement shall be limited as set forth in subsection (b).

(b) LIMITATIONS ON REMEDIES(1) MONETARY RELIEF(A) no award for monetary damages (including actual damages, statutory damages, costs or attorney’s fees) shall be made other than an order requiring the infringer to pay reasonable compensation for the use of the infringed work; provided, however, that where the infringement is performed without any purpose of direct or indirect commercial advantage, such as through the sale of copies or phonorecords of the infringed work, and the infringer ceases the infringement expeditiously after receiving notice of the claim for infringement, no award of monetary relief shall be made.

(2) INJUNCTIVE RELIEF(A) in the case where the infringer has prepared or commenced preparation of a derivative work that recasts, transforms or adapts the infringed work with a significant amount of the infringer’s expression, any injunctive or equitable relief granted by the court shall not restrain the infringer’s continued preparation and use of the derivative work, provided that the infringer makes payment of reasonable compensation to the copyright owner for such preparation and ongoing use and provides attribution to the author and copyright owner in a manner determined by the court as reasonable under the circumstances; and(B) in all other cases, the court may impose injunctive relief to prevent or restrain the infringement in its entirety, but the relief shall to the extent practicable account for any harm that the relief would cause the infringer due to the infringer’s reliance on this section in making the infringing use.

(c) Nothing in this section shall affect rights, limitations or defenses to copyright infringement, including fair use, under this title.

(d) This section shall not apply to any infringement occurring after the date that is ten years from date of enactment of this Act.


Anonymous said...

Why would the suggested legislation have a 10-year sunset? Or am I reading (d) incorrectly?

William Patry said...

I don't understand the sunset either: its not like things will change in a manner that will make the problem go away.

Anonymous said...

The report explains the reasons for proposing a sunset provisions at 5 places. At p. 14 it says, "Second, we recommend that the provision sunset after ten years, which will allow Congress to examine whether and how the orphan works provision is working in practice, and whether any changes are needed."

At p. 102 it says, "Finally, to the extent it turns out that, in practice, the orphan works amendment has prompted inappropriate and damaging publication of unpublished
works, we have recommended a sunset provision which would require Congress to reauthorize
the amendment, and these issues can be revisited at that time or earlier if the problems arise earlier." At p. 110 it says, "If a more formal system for developing criteria turns out in practice to be warranted, that issue can be revisited during reauthorization at the time of the legislation’s sunset provision.

At p. 113 it says, "In sum, it is our conclusion that recommending such a registry at this time would
be premature. We believe the truly “ad hoc” system – where users simply conduct a reasonable search and then commence use, without formality – is the most efficient way to proceed. As noted below, however, we also propose a sunset provision to allow Congress to reexamine the question after ten years to see if additional mechanisms like a user registry might be more practical and beneficial." And at p. 121 it says, "Second, we recommend that the provision sunset after ten years, which will allow Congress to
examine whether and how the orphan works provision is working in practice, and whether any changes are needed."

In short, the Office recognized that there are a number of choices that could be made in setting up an orphan works regime, and that after a few years of experience with the new regime it would make sense to take stock and decide whether modifications are advisable. It's not always easy to get Congress to revisit such issues, but a sunset provision tends to force the issue.

William Patry said...

Those are excellent reasons, but there is also no reason Congress wouldn't be motivated to make adjustments if that proved necessary. Sunsets are not themselves a reason to make changes and do not inherently require them or even rethinking.

It is true that once legislation is passed there may be a tendency to think the problem has been solved and to forget about the issue, whereas a sunset at least requires a decision to let something die or continue, but I don't see (hence my earlier comment about not understanding)what about orphan works makes them so special that they are singled out? For example, why wasn't term extension sunsetted?

William Patry said...

Here is a link to a study of the issue by a student at George Mason law School,