Sunday, June 1, 2008

Orphan Works - A Unique Set of "Myths" and "Facts"

Recently, the well meaning folks at Public Knowledge purported to demystify the Orphan Works bills, suggesting their own series of "Myths", and offering up "facts" (Orphan Works Myths and Facts). The problem is, the PK folks just can't have their own set of facts. To that end, we've taken the opportunity to "bust", correct, clarify, shoot holes in, or otherwise offer a contributing attorney’s criticism of the PK "Facts".

PK posited Myth #1: The bills would take away copyright protection from every work a visual artist ever created!
The bills do not take away artists’ rights. The bills set a limit on damages for users of a copyrighted work where the copyright owner could not be found, despite a search conducted in accordance with detailed guidelines that the bills lays out. Under these guidelines, lack of identifying information on a work would not be an excuse to use a work. After such a diligent search, in the unlikely event that an owner came forward after the use had started, the user would have to pay him a “reasonable compensation” for the use. The owner would also be entitled to an injunction in situations where the work was not incorporated into a new work. The bottom line is that good faith users are shielded from liability, and owners are paid if they surface.
A Far more accurate take: The bills do take away the right to statutory damages for infringement in the case of false negatives. False negatives are very likely in the case of visual arts and other copyrights as most of the available databases either don’t cover a particular category of copyright at all (such as visual art) or require a metadata search (which has been rejected by many courts, including Judge Patel in the Napster case). The bills do not require “detailed guidelines”, just “best practices” which have yet to be determined and won’t be determined before the law would go into effect (1/1/2009)).
(Continued, after the Jump)

PK posited Myth #2: The bills would mandate registration of all visual arts in expensive, private registries.
Neither bill contains such a mandate. Owners’ failure to register would not absolve users of their search obligations. The purpose behind the “visual registries” provisions is to help artists keep ownership information associated with their works and to help users find owners. In order to achieve this purpose, the bills contemplate the development of electronic databases of visual works in the market place. The bills do not require artists to use these services, nor do they require the services to charge a registration fee. Services that operate in the current marketplace, and provide services free of cost, could easily evolve into the visual registries contemplated by the bills. The bottom line is that the bills aim to encourage the market to solve a problem to help owners be found, but the bills do not require owners to register with these services.
A Far more accurate take: It is true the neither bill requires a mandatory registration as that would be a clear violation of Berne, NAFTA, TRIPS, WIPO and WTO treaties. The substantive effect of the bills, however, which is what must be considered, is that the likelihood of false negatives increases exponentially if works are not registered in a searchable database. That means that artists must take the risk that if they are not digitizing their entire catalogs they will be orphaned.
PK posited Myth #3: Unavailability of statutory damages means that owners cannot get compensated.
Both bills would require a user to pay a reasonable compensation to an emerging owner. This compensation is defined as the amount the parties would have agreed upon had they negotiated a license before the use began. If a user refuses to negotiate with the emerging owner in good faith or pay the compensation within a reasonable time, both bills currently provide that the user would be liable for all the remedies currently available under copyright law including statutory damages, which could be as high as $150,000 per work. Statutory damages of this sort are really punitive damages, and since owners will be reasonably compensated to be “made whole,” user communities have proposed limiting damages to at most paying the owner’s attorneys fees. A user’s desire to avoid having to go to court and pay double attorneys fees (his own and the owner’s) would provide a good incentive to any user to negotiate an appropriate license. Thus, the bills would provide a fail-safe means of ensuring that owners get compensated.
A Far more accurate take:What is missing from this “Fact” is that the liability only arises if the user is (a) found by the copyright owner, and (b) sued by the copyright owner. Public Knowledge may not like statutory damages and pejoratively describes the standard of 100 years as “punitive”, but statutory damages are a right of artists that is being taken away by this bill. There is nothing in the current marketplace that would suggest that users intend to behave within the proscriptions of the law. If infringement is this rampant WITH statutory damages, imagine what it will be like WITHOUT statutory damages as a stick.
PK posited Myth #4: The bills would institute registration formalities in contravention to international treaty obligations.
The bills impose no new registration requirements on owners. While existing law does not require owners to register their works to claim copyright, it does obligate owners to register their works prior to infringement in order to receive statutory damages. The orphan works bills do not mandate any additional registrations beyond current law, neither to the Copyright Office nor to registries certified by the Copyright Office. To qualify for protection under the bills, a user may have to search both of these sources for the information about the owner. However, a user’s obligation to search these resources does not create any requirement on owners to register their work.
A Far more accurate take:The substantive effect of the bills is to require registration and will almost assuredly be found to violate Berne. The registration burden is entirely on the copyright owner—the user is not even required to give constructive notice of the infringement by filing with the Copyright Office—which likely is a violation of 17 USC 205.
PK posited Myth #5: Under the proposed new bills, since the entirely of an infringed work can be included in a derivative use, then the copyright of the derivative will amount to a copyright of the original.
A derivative is based off the original, but that does not allow the user (who is also the owner of the derivative) to somehow take over the copyright of the original. Nor would the bills allow the user to claim any additional rights from the original work.
A Far more accurate take:There should be no new copyright afforded to a “derivative” without the consent of the copyright owner. These bills change the law as it applies to derivative works, and takes away the copyright owner’s right to consent to any derivative.
PK posited Myth #6: Any user could fake a “dilligent search” and use the orphan works limitatin to infringe. Couldn’t a bad actor falsify the records of their search?
Orphan works legislation does not make an owner more vulnerable to bad actors, nor will it make infringement any easier for bad actors. A user that fakes a diligent effort would be considered a bad faith user, and would be on the hook for the full panoply of remedies under copyright law. If a user is going to claim this orphan works limitation, he’s going to have to plead it up front in court, and again up front in the discovery process. This prevents him from hiding information or prolonging discovery. Also, the “pleading with particularity” requirement means that the infringer’s lawyer must sign his name to the fraudulent conduct. Even in worst case scenario, where a court does not find fraud, the owner still recovers reasonable compensation. The fact that the infringer must pay reasonable compensation makes fraud extremely unlikely. Why perjure yourself in federal court about conducting a search, when you’ll still be required to pay compensation. If you’re going to lie, you’re best off claiming that you never copied the owner’s work in the first place, and any similarities between your work and his are coincidental.
A Far more accurate take:It is more likely that many actors (good or bad) will simply lose their records or be unable to prove how they’ve complied with whatever search requirements there are once a copyright owner comes forward. The point isn’t that the “bad actor” will falsify search records, it is that the message of the statute is “search just hard enough not to find the copyright owner”. Since the bill would permit more than one set of “best practices”, anyone—including Public Knowledge--could develop a set of “best practices” for a diligent search that would be worthless if the point is to find the copyright owner. The concern is not that someone will lie to avoid liability, it’s that the bill allows them to steal fair and square because it is so one sided and out of touch with commercial realities.

There's a lot of misinformation floating around about these bills. I can't say it enough - READ THE BILLS. Here's the links: ( S.2913 and H.R. 5889). If they don't make sense, re-read them. Try to find loopholes that you yourself could exploit, and then realize that someone somewhere is going to monetize whatever loopholes you find - and quite possibly with your creative endeavors!

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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.


Guy Mason said...

It looks like you've done a good and fair examination of the myths here, although I think this doesn't consider the real purpose of the bill. I like your advice to look for loopholes and see how they can be exploited.

Anonymous said...


The purpose of the bill versus the reality of the exploitations that will occur if it passes are entirely different. People steal images today. This bill will eliminate one of the key deterrents that exists today by limiting the statutory and punitive damages available to an author. This will only serve to increase how much image theft occurs and by whom. It is called crowd sourcing and will increase if this bill passes. That is why we must identify loopholes and make them widely known and try to prevent this legislation from becoming law. The needs of history preservationists and archivists (libraries and museums, etc) can be met in changes to "fair use" rules.

Dale said...


I've been reading your blog for over a year now, and have come to thoroughly enjoy doing so.

However, you made an omission that seems slightly problematic, in that you cite the comments in this posting as coming from a "contributing attorney," but I don't see any information identifying who this person is. It would be lovely to have his/her name, so as to lend that much more credibility to the commenter.

It might be that I've missed it, but I've re-read three times looking specifically for this info...unless you yourself wrote the criticism and are also an attorney (albeit one who focuses on his successful photography business much more than his law practice)...but I'm not sure this is the case.

Have a great day!


John Harrington said...

Dale --

Thanks for writing. I am not an attorney, but the contributing attorney wishes to remain anonymous, and I am respecting that request.

-- John

Unknown said...

My name is Caren. I have a credit card website that offers a lot of credit cards for various purposes. I would like to have my website reviewed in one of your posts. Please let me know if you are interested and how much you charge via email
Thank you for your time,

Anonymous said...

A recent email received concerning the Orphan works bill. Note the third major paragraph, last sentence

"The bill now also requires the user of an orphan work to search for all persons and entities that can license the intended use of the work before they may use it."

Email Letter follows unedited.
Dear Mr. Fishback:

Thank you for writing about S. 2913, the "Shawn Bentley Orphan Works Act." I appreciate hearing from you.

America's copyright industry is one of our most important economic engines, and giving artists the incentive to produce their works is vital to our country. As I am sure you know, the creative process is so important that our Founding Fathers put copyright protection into the U.S. Constitution. That is why I feel so strongly that we must continue to give copyrighted works the protection they deserve.

I understand your concerns regarding certain provisions in this bill. I believe that all artists should be able to maintain their right to be compensated for their hard work, and I worked with Senator Patrick Leahy (D-VT) to make improvements to the bill that would further protect the rights of visual artists. The bill now also requires the user of an orphan work to search for all persons and entities that can license the intended use of the work before they may use it.

On May 15, 2008, the Senate Judiciary Committee, of which I am a member, unanimously approved the orphan works bill. Please know that if the Senate considers this legislation any further I will be sure to keep your thoughts and concerns in mind.

Again, thank you for writing. If you should have any further comments or questions, please do not hesitate to contact my Washington, DC staff at (202) 224-3841.

Sincerely yours,
Dianne Feinstein
United States Senator

argv said...

Late to the party here, but I've had this page bookmarked for a long time in anticipation of posting a cogent response. That response turned into my own blog post on the subject, which offers a historical perspective:

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