By Dugie Standeford for Intellectual Property Watch
In an issue that may be rising internationally, legislation pending in the United States Senate and House to free up use of “orphan works” whose copyright owners cannot be found has won strong support from the recording, webcasting and library sectors but faces challenges from visual artists and the textile industry.

The Shawn Bentley Orphan Works Act of 2008 (S 2913) [pdf] and the Orphan Works Act of 2008 (HR 5889) [pdf], introduced on 24 April, require users of such materials to search diligently for their owners, and to compensate them if they are eventually found.

But the House version is less palatable to public interest groups than the “cleaner” Senate measure, Public Knowledge Director of Policy and New Media Alex Curtis said in a 24 April blog.

Meanwhile, the World Intellectual Property Organization and some members of the European Union appear to be taking the orphan works issue into greater consideration as well.

Both pieces of US legislation seek to ensure that users make a diligent search for copyright owners before using work claimed to be orphaned, and pay them reasonable compensation if they surface, unless the use is for scholarly, charitable, religious or educational purposes. The US Copyright Office must develop search guidelines and certify private-sector registry services for visual art.

Curtis said the Senate bill requires little modifying but the House bill “resembles more of a well-decorated Christmas tree” in favour of copyright owners. It requires users to register their search efforts in a “notice of use archive” housed at the Copyright Office. It is unclear whether the depository would be “dark” - meaning its contents would be disclosed only when a user is sued - or open, raising privacy and “copyright troll” concerns, he wrote. Users who fail to deposit their search results are considered infringers.

Users will be charged a fee to register their searches in order to fund the new administrative procedures, said Emily Sheketoff, executive director of the American Library Association’s (ALA) Washington, DC office. The requirement will be “burdensome and potentially extremely costly” to libraries engaged in mass digitisation projects where millions of titles are involved, she told Intellectual Property Watch.

Despite concerns over several provisions in the House bill, Public Knowledge and the ALA said they are pleased with Congress’s efforts so far.

Libraries like the fact that the bills provide a safe harbour from statutory damages for librarians and archivists if a reasonable search is conducted, Sheketoff said. In addition, she said, the legislation does not affect fair use. The measures are the “first pro-user change to the Copyright Law in almost two decades,” Curtis wrote.

The bills are an “important step” toward meaningful consideration of the needs of users and copyright owners, Recording Industry Association of America Chairman Mitch Bainwol said in a statement. The legislation is a “good first step as we consider how innovation is impacted by our copyright system’s lack of registration requirements coupled with strict liability and statutory damages,” said Digital Media Association Executive Director Jonathan Potter.

Visual Artists, Textile Industry Opposed

Illustrators, photographers and other visual artists, however, are mobilising to challenge the proposal.

“Our chief objective to these bills is that they’ve been written so broadly their effect can’t be limited to true orphaned work,” Illustrators’ Partnership of America (IPA) founder Brad Holland told Intellectual Property Watch. Forcing anyone who creates a visual work, whether professional or personal, published or unpublished, to register it with yet-to-be-created commercial registries will cause users to rely increasingly on the companies to perform a diligent search, he said. Unregistered works could then be infringed as orphans, he said.

The proposals will disproportionately affect visual artists because paintings, drawings and photographs are often published without contact information, credit lines can be easily removed by others, and pictures can be separated from the publications in which they appear, Holland said. And because visual artists often produce many more works than the most prolific author or songwriter, it will cost them more time and money to register and maintain tens of thousands of registrations, he said.

The legislation will create a “gold mine for opportunists” as commercial archives harvest newly-created “orphans,” alter them slightly to make “derivative works,” and then register them as their own “creative works,” Holland said. In addition, coercive registration may violate the Berne Convention, which bars requiring “any formality” as a precondition to copyright protection, the IPA, Advertising Photographers of America and Artists Foundation of Massachusetts said in 30 April comments to the Senate Judiciary Committee.

At the heart of the orphan works debate is the notion that old works whose authors have abandoned their copyrights and who cannot be located should be made available for the greater good of society, Corinne Kevorkian, president and general manager of the Schumacher Division of F. Schumacher & Co. said at a 13 March hearing by the House Judiciary Subcommittee on Courts, the Internet and Intellectual Property.

Such works arguably have no commercial value but are of cultural, historical or educational significance, Kevorkian said. Textile designs for home furnishings, by contrast, are created solely for commercial exploitation and can never be considered orphaned, she said. They are “not intended to be art,” she added.

The orphan works proposal will open the door to massive commercial theft, Kevorkian said. She urged lawmakers to exclude any pictorial or graphic work initially created for commercial exploitation or that was at any time commercially exploited. Kevorkian spoke on behalf of the National Textile Association, American Manufacturing Trade Coalition, Decorative Fabrics Association, Association of Contract Textiles and Home Fashion Products Association.

[Note: The House Judiciary Intellectual Property Subcommittee approved HR 5889 on 7 May.] The bills, which so far have fewer than a handful of sponsors each, have been referred to the respective judiciary panels. The Senate version could see a Judiciary Committee mark-up and vote as early as 8 May, a Democratic committee aide said.

WIPO, EU Developments

The ALA is a member of the Library Copy Alliance, which represents US libraries at WIPO and other meetings. At the next meeting of the WIPO Standing Committee on Copyright and Related Rights, the alliance likely will be part of a group sponsoring a “side event” on orphan works. “Member nations are interested in what we have developed here [US], and hopefully can use our legislation - if it passes - as a model,” said Sheketoff. The next SCCR meeting is scheduled for 3-7 November 2008.

Meanwhile, in its 24 August 2006 recommendation on the digitisation and online accessibility of cultural content and digital preservation, the European Commission asked member states to find ways to ease the use of orphan works, a Commission spokeswoman said.

Recent status reports show that Sweden, Finland, Denmark and Hungary are dealing with orphan works via an “extended collective licensing” arrangement which allows collective management societies in certain circumstances to issue licences on behalf of rights holders it does not formally represent, the spokeswoman said. Germany, Hungary and Denmark are in the process of adopting stronger regimes, she said. The problem is still under discussion in most EU nations, often in working groups treating orphan works with other copyright-related issues in the digital libraries arena, she said.

The Commission is supporting the work of sector-specific groups, including text, audiovisual, music/sound and visual/photography, that are trying to agree on what actions must be taken before a work is considered orphaned, she said.

Dugie Standeford may be reached at info@ip-watch.ch.