Thursday, May 22, 2008

UPDATED: Orphan Works and Licensing Exclusivity

NOTE: There has been SIGNIFICANT discourse in the comments section of this post, which makes it well worth reading - AGAIN, in light of the insights by a number of folks.
-- John

I got to thinking the other day, about how many times I license an image to a client exclusively. I sign a contract. It's a rigid contract. Usually it's exclusive to the industry, sometimes it's a complete exclusive. I promise I won't license the work to anyone else that would dillute the client's brand for the work they commissioned me to make.

Here's an example of an image used in a multi-million dollar ad campaign (not by me though) for Nike:

When that photographer (who goes by the name of Boogie) doesn't submit this image to the Orphaned Works database, his work will quite possibly become orphaned. His background is noted here:
This Thursday is Nike Boots and Vault in Harlem will show an original photographic Exhibition by Boogie. Boogie is a Serbian immigrant with a body of work that’s graced the page of The New York Times, Time, Maxim, Playboy, and Rolling Stone. In his photography he not only captures a moment of life but nearly the whole story as well. Boogie’s well know for his incredible photos from the Bed-Stuy area of Brooklyn capturing the life of gangs of the area.

Boogie no doubt licensed to Nike the exclusive rights to use this (and others he made) for their campaign. They surely insisted that these images not be used to promote other footwear lines, if not all other uses, for the duration of the ad campaign.

A Google search for "boots gangs brooklyn" returns this image in the result. Hit that link to see it. Dragging the image to Photoshop reveals no metadata. There's no photo credit, and no corporate logo. When Nike sees this image being used for something else (this image is 490px wide, big enough for lots of web ads) they will naturally go to the photographer. Here's the way that conversation will go:
(Continued after the Jump)

Nike: Hey Boogie, you're in breach of our contract for licensing that image to Brand X for their ads. We had an exclusivity clause.
Boogie: Hey Nike, I didn't know anything about that. They're infringing my work.
Nike: You did register that work with the copyright office?
Boogie: Of course! I register everything.
Nike: Good. Now, let us know what's happening with this. We're very upset.
Boogie: I'm on it.
Boogie: Hi Brand X, you're using my photo that I shot for Nike in your own ad campaign. I didn't give you permission, and you stole it.
Brand X Rep: No, we didn't steal it. In fact, we did a search to find the image, and it came up in our web search. We tried to determine who's it was. In fact, we went to the databases that the copyright office set up so that we could search for it.
Boogie: But I didn't give you permission, and you didn't pay me either. Your using it puts me in breach of contract, and I could well lose not only them as a client, but a lot of money because their use isn't exclusive anymore.
Brand X: Sorry. We're using that in about 500 web ads to promote our "stay away from the gang life" messaging.
Boogie: You can't.
Brand X: Actually, we can. See, we did a diligent search for your work, and couldn't find you. Unfortunately for you, you can't stop us. We only have to make a good faith offer to you. We found this photo on Flickr, which we could have used when we did the same search, and this photo we found on iStockphoto, which would have cost us about $1. Since our only obligation is to come to a good faith resolution to this matter, we'll offer you five times that, or $5. Our accounting department will expect an invoice from you, and I'm not sure if you'll need to fill out a W-9, they know these things. We'll get you paid in 30 days.
Boogie: But by accepting $5 from you, that means I have accepted payment from you for your use, and I am thus violating the terms of the contract I signed with Nike.
Brand X: That's not our problem. You shouldn't have signed away exclusivity to these images in the first place. Don't you know there's really almost no such thing as exclusivity any more in this new Orphan Works Era.
Nike: Well?
Boogie: I can't stop them from using the photo. They're going to pay me $5 for their use of the photo, and I don't have a choice.
Nike: You're in breach of our contract. We paid you a lot of money for that image, both to create it, and for exclusivity, and now we want that our money back, plus damages for the dillution of our brand equity, and the confusion that those ads are now creating between their product and ours.
Boogie: But I didn't do anything wrong.
Nike: That's not our problem. You'll be hearing from our lawyers, and you better have a good one yourself, this is going to cost you.

How do you think the conversations will go for these:

That one above? That's Boogie's too, for the same campaign.

OR this one, also cropped (and note, the cropping can be done by the user, or by others and then the images can be released without owner information or company logos) that was Microsoft's ad with a photo-illustration of penguins, poking fun at Linux:

Or this one, also from Microsoft, where (before the white-line cropping) it was an ad for their Silverlight product:

I could go on, and on, and on. Licensing exclusivity to your work could place you in a legal quagmire that will shutter your business. This applies to magazine work, newspaper work, and, of course, ad work.
Related Posts:

Please post your comments by clicking the link below. If you've got questions, please pose them in our Photo Business Forum Flickr Group Discussion Threads.


Anonymous said...

Best post I've seen that illustrates the potential damage we could suffer due to the orphan works legislation currently before congress.

Outstanding John.

Anonymous said...


I'm Canadian so, I don't follow news on changing laws and legislation as it relates to Copyright in the US however, I'm aware of this "orphan works" thing and, while I think I have a cursory understanding of what's going on, what I don't understand is, I thought copyright laws in every country were governed by the terms of the Berne Treaty and that these changes would violate the Berne Treaty and the Agreement on Trade Related Aspects of Intellectual Property.

If I understand it, say I license an image to a client for web usage and then some junior art buyer in the US right clicks on it and saves to their hard drive just because they like it. Six months later, that person is gone and a new art buyer finds the image on their hard drive and decides it's perfect for something they're doing. They do whatever search is "required" and can't find me so, now it's an orphan work?

Why should I have to register my work with the offices of a foreign country for fear of having that work hijacked? Can I even register it as a foreigner? What if every country in the world said "we have a registration process so, if you don't register your work with us, anyone in this country can use it as they wish?

I can't believe this is the case. There must be something I'm missing or not aware of here, surely there is some sort of control in place in the global economy to prevent this chaos from happening? Is the US really going to enact a law that violates an international treaty on the matter? Is it possible the people considering passing this law are not aware they're already party to a treaty to prevent this?

What am I missing here?

Unknown said...

Hey John,

I'm also wondering about what it means for people finding casual photos and using them for their ad campaigns, even if there is no model release. Are there any protections we photographers need to now take?

Anonymous said...


I'm as concerned about Orphan Works as you, however you're overlooking a key point of how Google Image Search works.

Google Image Search also links the URL's of the site where the images are posted. The person researching this image would therefore see that the photo was part of Boogie's gallery show at the Nike Boots Vault in Harlem.

This would mean that the researcher would have to now not only search for "Photographer Boogie", "Photographers named Boogie"and "Boogie" but also " Nike Boots Vault in Harlem", "Nike" and the URL where the photo appeared.

Google may actually be more of a solution than a problem.

Brian Smith said...
This comment has been removed by the author.
Brian Smith said...


A good way to illustrate how Google Image Search actually eliminates potential orphaned images is to do a quick Google Image search for "John Harrington".

Looking through a few results, I must say I was shocked to discover that Thomas Crapper didn't actually invent the toilet - rather it was Sir John Harrington...

John Harrington said...

yes, any search engine could help, however the database/registry search would satisfy diligent search requirements, and further, as was noted by another commenter, one person could find it, and 6 months later a new employee could find it in a 'image resources' folder without knowing its source, and use it.

Anonymous said...

Two thoughts crept into my head, part of a nightmare, on "Orphan Works". The first, the registry is alleged to be a solution, allowing user to find and get permission for use of an image. But, perhaps it has another use? Very simply, an end user doesn't want to pay anything and has multiple options on the photograph that can be exploited. Run a search, and eliminate all images that or photographers who bothered to list their work on what will now be the first hurdle in a "diligent" search.

Then eliminate those images and make sure you use the work that isn't covered. The commercial registry, by noting which works have known owners, allows you to merrily strip mine intellectual property, and with almost no fear of liability, just adopt an orphan!

My other sweat inducing and pillow gagging vision came as I realized that, at a time when I thought we'd gotten the government out of our bedrooms, it has now crept into our studios. The name of the legislation should be seen, not as the warm and fuzzy Orphan tag used by our academic opponents, but is more appropriately an "An Act to Legislate Creative and Innovative Works so that they can be Exploited for the Good of Business and Increase Profits of Industry".

Leif Skoogfors

Anonymous said...

It seems to me that you have not breached your contract with your client just because there is an infringement. The photographer in the hypothetical scenario does not license the work, it is used without permission. In fact the user and the photographer do not know of each other's existence. The agreement that you mention is an agreement to refrain from licensing the work to anyone else, not to accept liability for things beyond your control.

You breach a contract because you fail to do your part- and someone else infringing on your copyright is not the same as you not living up to your end of the agreement.

But, as mentioned above, pursuing a settlement with the infringer might get sticky. When you settle, you might have effectively licensed the image. So, a photographer in an exclusive agreement might be better off not pursuing an infringement with an orphan works claim. Not exactly a good result.

If OW becomes law, we will all have to change some of our practices and contract language to address issues like this.

Anonymous said...

While I agree that the proposed OW laws will throw several monkey wrenches into the gears of copyright law for no good reason, it's not quite so bleak as all that. Contract law provides for various defenses to breach of contract which are caused by later changes of law. Any good license should contain a Force Majeure clause, for instance, and I'd say that you'd have a very good argument that Congress mandating you grant a copyright license even though you'd already exclusively licensed the image was eligible. You could even claim impossibility - since the law now makes it impossible to guarantee an exclusive license, you'd have a good argument there, too. Unfortunately, most of these defenses might require you to return part or all of the licensing fees anyway, but it's not like they could just haul you into court and say, "He said he wouldn't license this to anybody else and he did! Off with his head!"

Also, the first time your scenario played out, *I* would ask Nike if they wanted to join the suit either to block the proposed mandatory copyright license or to prove up value - if a multibillion dollar company thought the image was worth $100K to license, that's very strong evidence that the infringer's argument to RF pricing is invalid. Might work, might not, but especially in the first few cases I'd expect to see big licensees either joining or subsidizing defenses to protect the value of their licenses. I expect big licensees will also have quite a bit to say about how the proposed databases will work.

Don't get me wrong: I hate the whole thing. However, I see it more as the IP Attorneys' Full Employment Act of 2008 than as the End of the World for Photographers Act of 2008.


Anonymous said...

Google images is not the answer to orphan works. Quite the opposite. Google will be the means by which millions of works are forcibly orphaned and virally propagated.

By simply harvesting images from the web, removing identifying information and publishing them anonymously to image sharing sites, supporters of the copyleft will circumvent copyright protections by injecting protected works into the universe of orphan works en masse.

From there, users will download these works, conduct a failed search for the owner in seconds using free automated search services, and will then be entitled to make unlimited use of the works with impunity.

In addition, the requirement that all orphan works be marked as orphans when used will allow anyone seeking free content to search Google images for orphan images. Usage of orphans will spread virally and exponentially, virtually eliminating any opportunity for rights holders to successfully seek out and obtain compensation from each user.

Remember that only one degree of separation is required to orphan a work. If you encounter an unattributed photograph on a website and send a message to the webmaster asking for information, and if you either receive an “I don’t know” reply or no reply at all, that work is an orphan, provided that you satisfy other search requirements. Your work is also an orphan if I find it on my own hard drive and can’t remember where I found it.

Don’t place faith in the diligent search requirement. It is difficult enough to find an owner when you wish to do so. It is incredibly easy not to find someone when you don’t want to find them -- eg, when you stand to save hundreds or thousands of dollars in licensing fees simply by failing to locate a rights holder, and/or when you wish to limit the fees of the rights holder to the equivalent of a microstock rate, and/or when you with to prevent a rights holder from stopping your use of an image once it is discovered. If there are multiple registries to search, you are going to search the worst performing registries – those that have the fewest image registered and those that employ the worst image recognition technology, or no image recognition technology at all.

I could orphan your entire portfolio right now, simply by removing identifying information and publishing the images to a photo sharing site, which will be spidered by google images, picked up by others, and spread virally throughout the global network. Then anyone could use any of your images for any purpose (except on useful objects). In addition, other artists will be able to appropriate your work, alter it, and then register copyright in the work, and then exhibit this work as their own, even offer it as stock, without crediting you.

This is orphan works.

Anonymous said...

When contemplating exclusivity, it is important to consider that under copyright law, upon creation of an image, the author of an image has the exclusive right to distribute, reproduce, display, adapt and perform that image. The meaning of “exclusivity” in that context is clear – the rights holder possesses exclusive control over the use of the image by other parties. The rights holder may then grant usage rights, either on an exclusive or non-exclusive basis, allowing other parties to make use of the image.

In this way, the rights holder may, for a limited time, benefit from licensing that work before it is released into public ownership at the expiration of copyright.

By surgically removing the rights holder’s ability to control the use of his/her protected works, the orphan works legislation strikes a significant blow to the foundation of copyright protections for visual artists. Even those artists who take every reasonable step to protect their work --- embedding metadata, adding visual copyright notices, etc., will find their works injected in the orphan works universe by others, whether intentionally or unintentionally.

While such efforts to identify one’s works will certainly decrease the likelihood of a work becoming orphaned, all such works are vulnerable, and there is no means by which a rights holder can reliably protect a work from entering the orphan universe --- short of filing the work away, without every allowing any party to view or access the work.

Here are just a few related issues:

First Use: The right to “first use” of a photograph in any medium holds significant value. Once a rights holder licenses first use of an image in a particular medium to any party, the rights holder obviously loses the ability to license first use in the medium to any other party. With the passage of the orphan works legislation, every image is a potential orphan, and any such image may be used in any medium and for any purpose (excepting useful objects), by anyone who fails to find the rights holder. When an infringer leverages the orphan works amendment to make use of an image in a particular medium, the rights holder then forever forfeits the right to license “first use” in that medium to any party. Whether that unauthorized use is on a poster, a book cover, a billboard, or any other medium, the use robs the rights holder of his/her exclusive rights to license “first use.”

Guarantee of Exclusive Use: Upon passage of the amendment, all rights holders can reasonably know and expect that their works will be used by others without their permission under the amendment. Thus, a rights holder cannot reasonably guarantee to any party that an image is not simultaneously in use by a competitor or other party. Nor can the rights holder reasonably maintain an accurate usage history for any image. The reality is that under the orphan works amendment, at any one time, thousands of parties may be making use of any image that has ever been distributed. This will be common knowledge. A rights holder will be unable to offer to guarantee exclusive use to any party. It is true that a rights holder could guarantee a customer that the rights holder will not knowingly grant a license violating that exclusive license. However, this guarantee will ring hollow, as the rights holder will have no ability or right to prevent others from using his/her works simultaneously. In addition, the rights holder would be unable to accept “reasonable compensation” from a third party for orphan works use conflicting with an existing exclusive license, as this would comprise the granting of conflicting rights. Further, given that the rights holder forfeits the right to stop the infringer from continuing to make use of the image (once such usage commences, and if the rights holder has altered the image or integrated it with other content), the rights holder would in effect be accepting compensation for continued usage in violation of an existing exclusive license.

Rights of Publicity: identifiable persons appearing in an image used as an orphan work will almost certainly hold the rights holder responsible for reckless disregard in exposing such works to the orphan universe, especially where rights holders fail to ensure that their work is attributed when reproduced. Whether or not the rights holder is ultimately responsible, rights holders will find themselves named as co-defendants in legal actions for violation of right of publicity.

Anonymous said...


I plan to register all of my images from now on and to get using Save-For-Web on my web site. I will now only upload smaller jpegs with embedded data.

Sometime soon, I will remove all of the images from my site, Photoserve, Workbook Online and replace them with images that carry some my metadata.


Anonymous said...

David wrote:
"I plan to register all of my images from now on and to get using Save-For-Web on my web site. I will now only upload smaller jpegs with embedded data."

David, these are important steps in protecting your work. The embedded metadata will allow well intentioned potential users to contact you to request permission, in the event that the metadata is not removed (intentionally or unintentionally) after the image leaves your hands.

The copyright registration will be of significant value to you in some instances of infringement, but will be of little or no value in the event that an infringer makes use of your images under the orphan works amendment and follows the required orphan works procedures.

The orphan works amendment will wipe out your right to statutory damages, attorneys fees, self determined usage fees, and the prevention of the use of your work for purposes that you find objectionable on any grounds, whether personal, religous, social, moral, political or otherwise. Also, as a practical matter, the amendment also removes injunctive relief (your ability to stop the infringement) and your ability to disgorge profits (to identify and receive the infringers profits related to the infringement of your work). Moreover, your copyright registration will not serve to allow potential orphan works infringers to us any search mechanism to identify you as the owner of any image after your metadata is removed (and it will be removed).

However, in instances where you have an uncommon name, and where the infringer has access to your name and spells it correctly when searching copyright office records, your registration may allow infringers to find one of your registrations (whether related to or unrelated to an image). In that event, they will not be able to easily identify the iamges associated with your registration, but they might be able to contact you using information gleaned from your registration – if that information remains accurate at the time of the search, which may be many years in the future.

It is true that the removal of rights metadata under some circumstances may violate the DMCA, but in the orphan works universe, with your images distributed virally and outside of your control, it will not be possible to determine the point at which metadata was removed, nor will it be possible to identify the person that removed it.

Unfortunately, the only truly effective protection against usage under the orphan works amendment will be a visible watermark across the face of the image, bearing your name and contact info. This should not discourage you from routinely registering your copyright, which provides significant protection against infringements other than orphan works infringements.

Anonymous said...


Thank you for the information. It sounds like you have spent many hours on this and I appreciate your taking the time to help us all.

Do you think the APA approach is going to work? It sure feels like the right way to address this issue. It bothered me that ASMP reversed course during the hearings, first saying to not write your Congressman than a week later, to write them.

Maybe I can put my name in the Canvas area around the image. Make each image a little bit larger with a white canvas.

Thank you for your time and passing on the information.


Jam.La.Montagne said...

Thanks for this but sadly blind greed is exactly that. So if you want to protect your images, lock them away

Anonymous said...

John, excellent blog article. And it proves one more time how people embrace the ostrich strategy when confronted with something beyond their understanding. Instead of acknoledging the harsh reality of the hypotetical dialogue they ramble about how things should be so they won't have to bother thinking about the issue any more. And this is what corporate lobbists look for when pushing legislation like this - lazy geeks sitting on their behinds doing google searches instead of sending letters against the new project.

as for the silk dude - you're just a misinformed troll. copyleft means something else, and same goes for the rest of your text as well.

Anonymous said...

How could anyone sign a contract to license an image that has a catch all indemnity clause? Think about it, isn't that why publishers have these clauses precisely because they know exactly what will happen when the sitter and their legal team in tow, comes to the publisher and says why is this image being used with misappropriation. I think that's one advantage to this bill, just like the points being made about exclusivity. How can image makers be held liable for any unauthorized appropriation and subsequent misuse when the orphan Works leaves that door open. Put the onus back on the publishers.

Anonymous said...

lon lon -- troll? perhaps. but misinformed, I think not. I have a suggestion. If your opinion is different than mine, why don't you set down your bucket and spade, step out of the schoolyard sandbox for a moment, cut the name calling, and identify the points in my posts that you believe are incorrect. Perhaps you'll find that we are in agreement. Perhaps not.

The orphan works legislation as introduced this session promotes a bastardized compulsory copyleft licensing scheme. In stating this I am not indicating that copyleft licensing schemes are anti-copyright. Copyrleft licensing allows rights holders to use copyright to share their work. The orphan works amendment forces rights holders to share their works, by allowing anyone who finds an image to do whatever they want with that image, as long as they fail to find the rights holder. The legislation also prevents the rights holder from setting his/her own fees for such use, prevents the rights holder from stopping the use (in most circumstances), and removes other protections afforded rights holders under copyright law. The amendment would allow infringers to create derivatives which may in turn be shared and commercially exploited by the infringers and others. As to the origins and promoters of the bill, we need to look beyond those who have legitimate rationale (libraries, museums, scholarly publishers, home users) to the real source -- certain extremists that have attached themselves to various movements promoting the reduction of copyright protections. Certain professors at american university, and certain dear friends of Zoe Lofgren. While we've seen certain folks among them come out in opposition to the bills, this is only because they believe that the bills don't go far enough, and might harm their efforts to introduce legislation intended to drastically reduce copyright protections. Also of course, Google is a major force behind the bill. I'm out of time, but as you've indicated that all of my posts are misinformed, I invite you to take issue with specific points that you deem incorrect.

Unknown said...

Orphan works cannot work under the current international copyright treaties can it?
So how can it even be considered?
How would I as someone who doesn't live in the US prevent people in the US from using my work without my permission?
As far as I know I would ordinarily have to go through the US justice system.

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Unknown said...

SEO対策(けんさくエンジンさいてきか)とは、ある特定の検索エンジンを対象として検索結果でより上位に現れるようにウェブページを書き換えること。またそ の技術。サーチエンジン最適化とも言われる。英語の "Search Engine Optimization" の頭文字を取ってSEOとも言われる。最適化の対象になる検索エンジンは、Googleであることが多い。これは、海外(特にアメリカ)において Googleのシェアが高いことによる。日本ではYahoo!サーチの利用者が多いため、Yahoo!サーチ対策も重視されている。

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