Orphan Works Explored

Editor’s Note: Of all the legal issues with which photographers are faced, perhaps none is so polarizing as “orphan works.” The U.S. Congress has taken note of the importance of modifying the current law, and new legislation is now in the pipeline. To help you make sense of the issue, Digital Photo Pro is putting together a series of articles on the subject, beginning with this one.

A short time ago, I received an e-mail out of the blue, inquiring whether I had covered a football game in 1987 as a stringer for the Associated Press.

In the e-mail, the photo coordinator at The Palm Beach Post indicated that one of the newspaper’s customers wanted to order a copy of the image of the winning coach celebrating with his team, which the newspaper had published more than 20 years ago. The coordinator was attempting to determine if I was the photographer, and if so, whether I still held the copyright to the image. There were two surprising aspects to this e-mail. First, that the photo coordinator managed to locate me based upon only the AP caption and credit that was originally transmitted with the image. Second, that I had received the e-mail shortly before legislation was introduced into Congress in an effort to resolve the “orphan works” problem.

According to the Copyright Office, “orphan works” describes the situation where “the owner of a copyrighted work 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.” The proposed legislation directed to this situation consists of Senate bill 2913, named the Shawn Bentley Orphan Works Act of 2008, and the companion House bill 5889, named the Orphan Works Act of 2008. From the point of view of a photographer concerned that his or her images may be used without authorization or consequence, it’s perhaps understandable that the “problem” might appear to be the product of an infringer’s imagination. Understandably, many organizations, including a number of those representing photographers, oppose the legislation.

A Real Problem?

If there’s any suggestion that the orphan works problem is real, such evidence comes from the Copyright Office’s Report On Orphan Works—prepared in response to a request from Vermont Senator Patrick Leahy and Utah Senator Orrin Hatch—and from the various letters submitted to the Copyright Office in connection with its review of the issue. The report, released in January 2006, concludes that the orphan works problem is real, and that “there is an identified need to address the ‘orphan works’ issue….” At the same time, the Copyright Office admitted that although it received “nearly 850 written comments…exactly how frequently the orphan works situation occurs is not entirely clear.”

According to the various university librarians who presented written testimony to the Copyright Office in connection with its orphan works review, the problem exists in connection with historical collections. For example, Sara Thomas, university librarian for Cornell, reported that one of Cornell’s collections includes more than 350,000 unpublished photographs that it would like to make available. However, “only 1% of the photographs have any indication as to who created the photograph, let alone any information as to the current copyright owner.” In another example, Brian E.C. Schottlaender, university librarian for the University of California, San Diego (UCSD), detailed how UCSD was able to make only 4,000 of the more than 100,000 photographs in the Scripps Institution of Oceanography Archives—a unit within one of UCSD’s 11 libraries—accessible over the Internet. Schottlaender’s written testimony suggests that UCSD has been unable to ascertain who created a majority of the photographs in its collection, much less who holds the copyright to those photographs.

Considering the ease with which EXIF and IPTC information can be removed from digital images lifted off the Internet, it’s easy to understand how a problem may genu-inely exist. If you’ve never performed a Google search on the copyright statement that ordinarily appears in your IPTC caption information, you may be in for a surprise. And, of course, the results of that search won’t reflect the number of images where the IPTC information—including your copyright statement—has been removed and the photograph has been posted on Facebook or some other social network site. When you also factor in the reality that advertisers and publishers are increasingly obtaining images from nontraditional sources like Flickr, it’s easy to see how an advertiser and/or publisher might have difficulty locating the copyright owner.

Getting To The Root Of The Problem
While Congress seeks a legislative resolution for orphan works, very little attention has been paid to the question of how the problem was created in the first place. Ironically, the problem was created by the same group that now seeks to fix the problem.

When Congress created and passed the last major enactment of the copyright laws, the Copyright Act of 1976, it brought about a fundamental change in the law. Prior to the 1976 enactment, or more precisely, for works created before January 1, 1978, copyright was an opt-in system. Artists and authors who wanted copyright protection had to register and mark their works with a copyright notice. With the 1976 enactment, Congress radically and fundamentally changed the system from an opt-in system into an opt-out system. Under the current enactment, all works are afforded copyright protection unless expressly dedicated to the public domain (a recent court decision involving the ability of the owner of the copyright in open-source software to enforce its copyright suggests that even voluntarily placing the work in the public domain without an express dedication is insufficient to eliminate copyright).

To further complicate matters, a subsequent, minor modification to the Copyright Act to conform to international copyright laws eliminated the requirement that works be marked with a copyright notice or copyright symbol (©). For all works published after March 1, 1989, the use of a copyright notice is optional. Together, these changes create an atmosphere where a person desiring to use a copyrightable work must assume that all works, marked or otherwise, are protected by Copyright Law.

The situation is even more ironic considering that congressional concern regarding the orphan works problem seems to have arisen from the Copyright Term Extension Act—which extended Copyright Protection for numerous works that were otherwise soon to enter the public domain—and a related Supreme Court case determining the constitutionality of that Act. Had Congress not sought to extend the term of exclusive rights afforded to copyright owners, many works would have entered the public domain, and their status as orphans would have been irrelevant.

Proposed Legislative Changes
Perhaps the greatest single change that the orphan works legislation would make to the current Copyright Act is to curtail the damages that may be awarded for infringement. Under the current Copyright Act, a court is permitted to award statutory damages provided the owner of the copyright timely registered the copyright. The proposed legislation would effectively preclude an award of statutory damages provided the infringer performed a “qualifying search” in an effort to locate the copyright owner, and the copyright owner would instead be entitled to receive “reasonable compensation.” The proposed legislation also defines “reasonable compensation” to be the amount that the owner and infringer
would have agreed upon, assuming they were both willing to negotiate a price and further assuming that no infringement had taken place.

In all fairness, the definition of “reasonable compensation” isn’t terribly different from the concept of a reasonable royalty, currently the judicially accepted measure of damages for instances of indirect infringement (e.g., where a photograph is used without authorization to advertise a product or promote a business, but the revenues that the infringer generates aren’t derived directly from the sale of the copyrighted work) of works that weren’t timely registered (e.g., where the infringement started prior to registration). The problem, however, rests with the cost of proving “reasonable compensation”; invariably, resolution of the issue will involve a battle of experts, creating a situation where the cost of proving reasonable compensation may exceed the amount ultimately awarded.

The proposed legislation also provides what amounts to a grant of immunity to nonprofit educational institutions, museums, libraries, archives and public broadcasting companies. In the case of orphan works, such institutions won’t be required to pay “reasonable compensation,” depending upon how the copyrighted work was used and provided that the institution ceases infringing after receiving notice from the copyright owner. When viewed in the abstract, it’s easy to understand why this provision has drawn the ire of some photographers, who believe that Congress is giving certain institutions carte blanche to commit infringement. However, the reality is that under the current Copyright Act, these institutions already have what amounts to immunity, provided the institution had reasonable grounds for believing that its use constituted a “fair use.”

Beyond limiting damages, the proposed legislation includes concepts that will undoubtedly keep the current generation of lawyers busy, and perhaps even the next generation. For example, the concept of a “qualifying search”—a search that the infringer would perform in an effort to locate the copyright owner as a predicate to limiting the infringer’s liability to “reasonable compensation”—requires that one perform a diligent search “based upon best practices” and may also include use of subscription-based services. Unfortunately, there are currently no established “best practices” for locating the unidentified copyright owners of copyrightable works.

Even the basic procedure outlined in the proposed legislation is problematic. To claim the benefit of the limitation on damages, an infringer must perform a qualifying search, provide reasonable attribution, assert the limitation as a defense in a court proceeding and provide evidence when required shortly after the commencement of litigation. However, the limitation on damages doesn’t apply if the infringer fails to engage in good-faith negotiation “regarding reasonable compensation” with the copyright owner and “fails to render payment of reasonable compensation in a reasonably timely manner after reaching an agreement” with the copyright owner. While reasonable minds may differ, it’s difficult to conceive of a scenario, short of a copyright owner maintaining entirely unrealistic expectations and demands, where an infringer could satisfy the requirements necessary to claim the benefit of the limitation on damages and not resolve the matter prior to litigation.

Band-Aids® And Bubble Gum…
Perhaps the greatest problem with the proposed legislation is that it seeks to use stopgap measures—what might best be described as Band-Aids® and bubble gum—to repair a larger and more fundamental problem with the current copyright system. Since the problem stems, in large part, from the shift from an opt-in to an opt-out system, creating a new limitation that may or may not be applicable, depending upon the circumstances, is hardly a long-term fix.

In an op-ed piece published in The New York Times, Stanford law professor Lawrence Lessig suggested an alternative solution. Instead of further complicating the copyright system, Professor Lessig suggests revising the current system to make copyright protection automatic for a period of 14 years. If, after 14 years, the copyright owner wants to continue receiving full protection, the owner will have to register the work with an “approved, privately managed and competitive registry.”

While intriguing—and it may be merely coincidental, but the first U.S. Copyright Act granted a term of 14 years that could be renewed for a second 14-year term—Professor Lessig’s approach isn’t without flaws. First, such a change would create more of a rift between U.S. and international copyright laws than currently exists. Second, the approach ignores the historical basis for the entire copyright system and the fundamental bargain struck between the copyright owner, the government and the public. In order to better understand the nature of this bargain, a brief history is necessary.

Perhaps the greatest single change that the orphan works legislation would make to the current Copyright Act is to curtail the damages that may be awarded for infringement.

A (Very) Brief Lesson In History Or “Once Upon A Time…”
As Senators Leahy and Hatch acknowledged when they requested that the Copyright Office undertake a review of the orphan works problem, they were concerned that the current Copyright Act might be depriving the public of access to orphan works. The root of the public’s interest in copyrighted works may be found in the very origins of the congressional power that authorizes Congress to enact copyright laws.

When John Adams wrote the Massachusetts Constitution in 1779, he included a rather unique provision entitled “[t]he Encouragement of Literature, etc.” Recognizing the importance of education, science and the arts as “being necessary for the preservation of…rights and liberties,” Adams empowered Massachusetts’ state government to promote these interests—the public’s interests—through, inter alia, the granting of rewards. Adams would later admit that the entire provision was the result of a burst of inspiration and was surprised that it was approved unanimously and without amendment.

Although Adams wouldn’t have a direct hand in writing the United States Constitution, he undoubtedly had a profound influence on it. Many of the ideals embodied in the Massachusetts Constitution, including the emphasis on promoting science and the arts, were ultimately incorporated into the United States Constitution. It’s for this reason that Congress has the power “to promote the progress of science and useful arts, by securing for a limited time to authors and inventors the exclusive right to their respective writings and discoveries.” Newly empowered, Congress wasted no time in passing the nation’s first copyright law, the Copyright Act of 1790.

The Quid Pro Quo
It has long been recognized that the incentive to those who created copyrightable works—the exclusive rights—are intended to benefit the public by making copyrighted works available to the public after the exclusive rights expire. As Chief Justice Charles E. Hughes, Sr., wrote in the U.S. Supreme Court’s 1932 decision of Fox Film Corp. v. Doyal, “[t]he sole interest of the United States and the primary object in conferring the monopoly lie in the general benefits derived by the public of the products of [the copyright owner’s] creative genius.” Chief Justice Hughes’ rationale was con
sistent with the legislative history of the then-current Copyright Act of 1909. Indeed, when Congress considered the Copyright Act of 1909—the last major enactment prior to the Copyright Act of 1976—it recognized that exclusive rights confer “a benefit upon the public that outweighs the evils of the temporary monopoly.”

It’s public interest that mandates the deposit of a copy of the work when a copyright owner registers a copyright. The deposit copy ensures that the public will ultimately have access to the material registered.

With these principles in mind, the problem with the system Professor Lessig proposes—and even with the current opt-out system—becomes apparent. A system where a copyright owner enjoys the benefit of the bargain—the exclusive rights—without ensuring that the work is made available to the public, ultimately ignores the fundamental public interests for which the copyright laws were created.

Considering the proposed orphan works legislation against this background, the legislation appears to be an attempt by Congress to treat a symptom without addressing the underlying problem. While the legislation, if passed, may provide a limited or temporary solution, the legislation doesn’t address the larger issue of ensuring that the public interest is protected.

Photographers’ Organizations Speak Out

Although voiced for different reasons, a number of the organizations representing photographers have released public statements regarding the proposed orphan works legislation, by and large, voicing their disapproval for the proposed changes.

In May, National Press Photog-raphers Association (NPPA) President Tony Overman wrote the chairman of the House Committee on the Judiciary, advising that “[w]e cannot in good conscience support this bill.” Overman also urged NPPA members to write their representatives.

A release from the Advertising Photographers of America (APA) offers insight into why it is opposing the proposed legislation. According to APA, the proposed legislation “does not achieve the goal as we believe was originally intended, and instead provides a distinct road map for the infringement of contemporary works by living artists worldwide. If left unchanged, this legislation has the potential to destroy the businesses and livelihoods of thousands of photographers, other visual artists, as well as the collateral small businesses that serve the industry, and are depending on, creators.”

According to various organizations’ websites, the viewpoints expressed by NPPA and APA have been joined by others, including the Editorial Photographers and Stock Artists Alliance.

Taking a similar, but perhaps more guarded approach, in May, the American Society of Media Photographers (ASMP) publicly announced that the “Senate version of the Orphan Works legislation does not provide even the minimum protections that ASMP considers necessary for photographers,” and urged its members to contact their senators. However, ASMP issued an updated statement in mid-July, indicating that it was still working with lawmakers in an effort to bring about changes to the House version of the legislation. As with ASMP’s earlier statement, the organization continued to encourage its membership to contact their senators and to voice their disapproval for the pending legislation.

More Changes On The Horizon?
It’s perhaps still too early to draw any conclusions regarding the proposed legislation. As indicated by the ASMP’s releases, the legislation in the House is still under revision. Thus, there’s no way to know what the final legislation will look like, much less assess the impact it may have on photographers.

While there’s work left to be done on the legislation, the significant public interests implicated by the orphan works issue make it highly unlikely that it will be left unresolved indefinitely. Photographers should closely monitor the progress of the legislation, as whatever is ultimately passed into law will have an impact on the way in which copyrights are enforced.

The Shawn Bentley Orphan Works Act of 2008

On September 26, 2008, the Senate passed the Shawn Bentley Orphan Works Act of 2008 (S.2913) by unanimous vote. The legislation now has been sent to the House, where representatives will determine whether to accept the bill as-is or to attempt to reconcile the differences between the Senate and House versions.

A significant difference between the Senate and House versions is the inclusion of a registration requirement in the House version. This would require anyone seeking to avoid liability for copyright infringement to file a Notice of Use with the Copyright Office prior to using an orphan work. The passage of the Senate bill without this requirement doesn’t bode well for its inclusion in the final orphan works legislation.

According to information that the American Society of Media Photographers (ASMP) received from House of Representatives staff members, “Members of the House of Representatives are being bombarded with messages from people in the library community urging them to adopt the language of the Senate orphan works bill.”

ASMP now has publicly called for its members to focus their efforts on communicating with their Representatives immediately as “tomorrow may, literally, be too late.”

With the passage of the Senate bill, the orphan works legislation has taken a major step toward becoming law. Despite the protests of various organizations representing photographers, the legislation could very well become law by the time you read this.

Samuel Lewis is a Board-Certified Intellectual Property law specialist and partner at Feldman Gale, P.A., in Miami, and a professional photographer who has covered sporting events for a quarter century. He can be reached at slewis@feldmangale.com or slewis@imagereflex.com.

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