1 December 2008
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In 2008, the US Congress considered two Bills that were intended to limit the consequences of using an “orphan work” without permission. American visual artists and photographers, in particular, expressed a great deal of concern about the implications of the Bills.

Neither Bill has become law, but they could set precedents for Bills that may be introduced in the next Congress, which is due to convene on 6 January 2009.

The information on this page covers the issues causing concern and explains why, in our view, as US orphan work provision would have a limited effect on Australian copyright owners.

We have assumed that readers of the information on this page are familiar with the principles of copyright law: see www.copyright.org.au/information.

The problem with orphan works

An 'orphan work' is a work that is protected by copyright but whose owner cannot be identified and/or located. This can raise problems for people wanting to use the work, as you can't get permission if you can't find out who the copyright owner is, or you can't contact them. If you're in this position, and can't rely on one of the special exceptions in the Copyright Act, using the material will infringe copyright and you risk legal action if the copyright owner finds out.

Some users of copyright material have long argued that there should be a mechanism by which they can use an orphan work, without risk of being sued for infringement, if they can demonstrate they have taken appropriate steps to try and identify or locate the copyright owner. For example, many museums and similar organisations would like to make digital repositories of their collections or make them available online, but in many cases it is difficult or impossible to identify the owner of copyright in an old or ephemeral artefact.

Some copyright owners, on the other hand, are concerned that orphan works legislation could affect their ability to control their work and to earn a living from it. This is especially the case for photographers and creators of other images, films and animations, since such material can easily become orphaned, especially if it is distributed over the internet. These concerns were widely publicised as a result of the proposed changes to US law.

Governments in several countries have looked at this issue and introduced or proposed ways to deal with it. Canada introduced a scheme in 1988 under which people can apply to the Copyright Board for a licence to use works whose owner they cannot find. In 2006, the Gowers Report on Intellectual Property, in the United Kingdom, recommended that an orphan works provision be included in a European Union harmonisation directive.

Issues governments need to address in such policies include:

• How can you make sure the scheme only applies to works for which the copyright owner genuinely cannot be found (and is not misused to avoid paying licence fees)?
• What steps should the user have to take to be able to rely on an orphan works scheme?
• What should happen if the copyright owner becomes aware of the way his or her material has been used and wants to stop it or be paid compensation?

For a detailed discussion of issues surrounding orphan works, and a comparison of other countries' approaches, see Ian McDonald's article 'Some thoughts on orphan works'.

What's happening in Australia?

There are many exceptions to copyright infringement in the Copyright Act. None of them allows the use of a work without permission merely because it is an orphan work. There is an exception that allows the publication of old unpublished orphan works held in libraries, provided certain conditions are met. In some cases, an exception may be more likely to apply if the work is an orphan work. This can be the case for section 200AB, an exception available to educational institutions, libraries, collecting institutions and people with a disability.

The previous government announced in February 2006 that the Commonwealth Attorney-General's Department would conduct an inquiry into orphan works. There has been no further announcement about orphan works since then, but 'orphan works' was listed as an area of responsibility for the New Technologies Section of the Copyright Law Branch of the Attorney-General's Department in the Department's January 2008 e-newsletter AGD e-News on Copyright.

If an inquiry does go ahead, it is likely that the Department would release an issues paper and seek responses to it. Any announcements are likely to be posted on the Copyright section of the Department's website (go to www.ag.gov.au/copyright and click on 'Issues & Reviews').

The US Bills

Two bills relating to orphan works were introduced into the US Congress in April 2008 (one into the House of Representatives and one into the Senate). There are links to the bills on the US Copyright Office website at www.copyright.gov/legislation. They are The Orphan Works Act of 2008 and the Shawn Bentley Orphan Works Act of 2008 (in the US, unlike in Australia, titles of bills refer to 'Act' rather than 'Bill'). To become law, a bill must be passed by both Houses in identical form.

On 26 September 2008, the Senate voted unanimously to pass Bill No S.2913 but it did not progress further. Because of time constraints, including those imposed by financial crises and the presidential election campaign, neither Bill has passed through both the Senate and the House of Representatives in identical form to become law. However, either of the Bills, or a similar Bill, could be introduced in the 111th Congress commencing in January 2009.

The two bills were similar in form, but not identical. Neither would have introduced an exception or defence for orphan works, but would rather limit the remedies a court can award against a person who infringes copyright by using an orphan work. The effect is, nevertheless, to substantially reduce the rights for orphan works.

Remedies are orders a court can make against an infringer. They include an injunction (an order that someone refrains from doing something, or does something), damages (including compensation for loss caused by the infringement) and account of profits (compensation based on the profits made by the infringer). In the US, unlike in Australia, remedies also include 'statutory damages': an amount per work that a court can award without considering the actual loss to the copyright owner and/or gain to the infringer. In some cases, statutory damages can exceed the copyright owner's actual loss, or the infringer's profits.

Both bills would have limited the remedies a court can award for copyright infringement against someone who:

• has made genuine (documented) attempts to identify and contact the copyright owner, but is unable to locate him or her;
• attributes the copyright owner (where he or she can be identified);
• uses a notice with the orphan work indicating that it was used in reliance on the orphan work provisions; and
• if contacted by the copyright owner, negotiates reasonable compensation in good faith, and pays the compensation 'in a reasonably timely manner'.

The bill before the House of Representatives would also have required the user, before using the material, to file a 'notice of use' at the US Copyright Office, describing the attempts made to find the copyright owner and the ways in which the material is to be used. Copyright owners could search the archive to find out about use of their material under the orphan works scheme. The bill before the Senate did not have this requirement, and thus provided significantly less protection for copyright owners.

In each bill, if the criteria were met, a copyright owner could have claimed 'reasonable compensation' for the use, but not other forms of damages, such as statutory damages. Nor would an injunction have been available if the user had already begun creating a new work incorporating some of the orphan work. Finally, the copyright owner would not have been able to recover the legal costs of the action.

No compensation could be claimed if the user was a nonprofit educational institution, library or archives, or public broadcaster using the material for primarily educational, religious or charitable purposes, provided it promptly stopped using the material after receiving notice from the copyright owner.

There are links to the bills, and information about the US Copyright Office's inquiry into orphan works, at www.copyright.gov/orphan.

Why were the proposed changes controversial?

The main groups arguing against introduction of an orphan works scheme in the US are creators of photographs, visual art and other images. Some of these groups oppose any orphan works scheme; others thought that a scheme would be introduced and tried to minimise any damage to copyright owners. The latter approach was adopted by the American Society of Media Photographers, which provides commentary on the legislation, information on its history and a comparison of changes made to the bill during the legislative process, at www.asmp.org/news/spec2008/orphan_update.php. For an outline of the debate between photographers, see 'Photo advocates divided over orphan works' at www.pdnonline.com.

One of major issues was whether the criteria for the application of the orphan works provision includes sufficient safeguards for copyright owners. The bills provided for the establishment of electronic databases of artistic works, to be certified by the Register of Copyrights. The kinds of searches a user would need to do to rely on the orphan works provisions would include searching such databases. Some commentators argued that all a user would need to do would be to search the electronic databases, and therefore any images not registered with such a database would be considered orphaned. This, however, does not appear to be the case.

The bills required the user to 'perform and document a qualifying search, in good faith' for the copyright owner. A 'qualifying search' is defined as 'a diligent effort', and a number of specific requirements were outlined in the bills. These included following 'Best Practice' guidelines, which were to be provided by the US Register of Copyrights. Searching an image database would have been necessary, but in our view unlikely to be sufficient, on its own, to meet the requirements of the orphan works provisions.

A further issue concerns the 'notice of use' which, if the House bill were passed, would have required users of orphan works to file a notice with the Copyright Office, as outlined above. If the Senate bill were passed, the user would not have been obliged to file notice, and the copyright owner would have faced much greater difficulties finding out about the use and taking legal action.

What would a US orphan works provision mean for Australian artists and copyright owners?

If an orphan work scheme is introduced in the US, it will affect activities that take place within the US, regardless of where the material was created. This means that someone in the US who wanted to use your work, and could not locate you to get permission, might be able to rely on the orphan works scheme.

The legislation would not affect activities taking place in Australia.

The legislation (if either of the Bills have been passed) would not have:

• allowed anyone to use your work without permission if it were reasonably possible for them to identify and contact you;
• allowed anyone to use your work without permission if they contacted you but you refused permission or asked for a higher licence fee than they were prepared to pay; or
• required you to register your work in order to protect it.

If the House bill had been passed, you could find out whether someone had used your work in reliance on the “orphan works” provision by checking the archive of “Notices of Use” at the US Copyright Office. You could then contact the person and they would have to pay you reasonable compensation. You might also be entitled to take legal action to prevent them making further uses of your work. However, if their use of your work involved incorporating it into a new work, you might not be able to stop such use. Nor would you be able to claim “statutory damages” for infringement (although statutory damages cannot be claimed in any case unless the work has been registered with the US Copyright Office).

If either bill had been passed, a user who could not show he or she had made “diligent” attempts to contact you, or failed to negotiate or pay you compensation, could not rely on the orphan works provisions.

Compare this with the current situation: how would you find out about infringing use of your work in the US? If you found that someone in the US had infringed your copyright, what would you do? Do you currently register your works at the US Copyright Office? (If not, you could not claim statutory damages anyway.) There are difficult practical and legal issues involved in detecting, and taking legal action for, copyright infringement in another country. The introduction of an orphan works provision (at least if it includes a “notice of use” provision) is unlikely to make these difficulties significantly worse for Australian copyright owners.

What can you do to prevent your work from being 'orphaned'?

Put your name on your work. The most important, but in some ways simple, way to protect your work, is to make sure that anyone with access to it can easily find out who owns the copyright and, ideally, how to contact you. This won't stop unscrupulous people, of course, but at least it gives people who want to do the right thing a way to identify and contact you. In addition, putting your name on your work makes it easier to prove who owns copyright, including in court, if this is ever in dispute.

Use the 'copyright notice'. It is a good idea to put your name on your work in the form of a 'copyright notice'. The copyright notice is internationally recognised form of identification. It consists of the symbol © (or the word 'copyright') + the name of copyright owner + the year of first publication (or the year of creation for unpublished works). You may also provide information such as contact details or a website URL.

Make yourself contactable. Bear in mind that people trying to find copyright owners may contact professional organisations or collecting societies, so being a member of the relevant ones may help.

Embed information in digital files. If your work is in digital form, consider embedding copyright and contact information in the file as well as using the copyright notice. In the case of images, consider using watermarks, captions and meta tags.

Use access-control or copy-control measures. Depending on the type of work you create, and how you are using it, you may also want to consider using technological measures, such as password protection, to prevent unauthorised access and/or copying.

Consider registering your work with government agencies such as the US Copyright Office. Most countries (including the US) are party to one or more of the major copyright treaties, and must therefore give automatic copyright protection to Australian material. However, some countries, including the US, have government-run registration systems. If your work is distributed in one of these countries, registering it can provide certain benefits (such as statutory damages if you sue for copyright infringement in the US), and can assist with proving ownership of copyright in Australia. Beware, however, of privately run registration systems: registering with these may provide no benefit.

Search for and act on infringements. If your work is widely distributed online, you could also do a periodic internet search for infringing copies. One photographer claimed to have recovered £27,000 after a single night of searching the internet for infringing uses of his work.