Marooned in Storage: Rescuing Orphan Works

by Maureen Whalen

This article was published in Museum News September/October 2006.

How many times have we all been frustrated by this scenario? We try to get permission to use a copyrighted work but we are unable to find the person who can grant permission. Deadlines are looming and there is no progress on identifying or locating the rights holder. What to do? The curator wants to use the photograph as the iconic image for an exhibition, screening or lecture. The education department wants to include certain photographs from the collection about local history for a new K-12 program, including making copies for the lesson plan and student materials. The publishing group wants to create a book with letters, photographs and artists’ works created during World War II. You realize it would be better to have permission rather than rely on one of the limitations to owners’ exclusive rights, such as fair use. After all reasonable attempts to find the copyright owner—which required spending many hours of valuable and limited staff time—you simply cannot find anyone. Now what? Do you forego your plans and do something else because you might get sued for copyright infringement? Or do you take the risk and hope that no one comes forward who could stop the project until you negotiate and pay a license fee or even cause your museum to cease and desist from all further use of the work?  

Museums and other cultural heritage institutions such as libraries and archives have storage vaults filled with copyrighted works. Intellectual property laws, especially copyright, limit what people and institutions can do without permission of the rights holder. There are stiff penalties for those who proceed without authorization. Finding someone who can grant permission can be time consuming, expensive and often fruitless and frustrating. As a result, millions of objects and artifacts—orphan works—will be seen only if they are on display and will remain largely out of sight and out of mind during our lifetimes because museums cannot assume the risks of infringement by sharing these orphans through books, performances and websites. By the time such works are in the public domain, it is quite possible there will be little or no interest in them at all. Without a change in the law, we may never know these orphans.

Congress is considering legislation to address the orphan works problem. If passed, it will offer our nation’s cultural heritage institutions an opportunity to clean out the cabinets of curiosities and provide the public with access to copies of their contents in print and on the Web, even if we don’t know or can’t locate the copyright owner. Artists, writers and filmmakers, as well as scholars, historians, librarians, archivists and curators who cannot identify or locate copyright owners will have a relatively low-risk option to use, publish and distribute copies of orphan works. Copies of letters, manuscripts, photographs and other culturally significant material will no longer be locked up behind the gate of copyright. Rather, museums will be able to make orphan works accessible to the public, at least under certain circumstances, without having to choose either of two potentially high-risk alternatives: proceeding without permission or scrapping the project altogether. Copyright protection lasts for 70 years after the creator’s death, or the lesser of 95 years from publication or 125 years from creation for works-made-for-hire. That’s a long time. (A quick reference chart to help calculate copyright terms is available at www.copyright.cornell.edu/training/Hirtle_Public_Domain.htm) As people who work in museums, we are quite familiar with long-term care, with stewardship of objects and artifacts and the archival material that accompanies them. One hundred and twenty-five years is not long at all for many works in our collections. It is, however, quite a long period of time to keep track of copyright ownership information. Even under the best of circumstances, rights information is lost because people die and companies are sold, move or go out of business. Most frequently, many works simply lose commercial value over time. Thus the economic motivation for the rights holder to make herself known and to respond to rights inquiries diminishes until it may be gone completely.

Copyright information is lost as years pass and copyright term extension and the elimination of the legal formality to register copyrights exacerbate the problems in finding copyright owners. Recognizing this, the Copyright Office, at the request of Congress started a process in January 2005 to see if there was a legal solution to what has become known as the orphan works problem.

A Legislative Solution     

In January 2006, the Copyright Office issued a 207-page “Report on Orphan Works” (available at www.copyright.gov/orphan) that represents the culmination of more than a year of work. It involved consideration of more than 850 official comments filed by interested individuals and entities and two public roundtables—one in Washington, D.C., the other in Berkeley, Calif.—and a number of individual meetings held with representatives of various groups. The Copyright Office recommends a legislative solution and on page 127 of its report puts forth statutory language. Subcommittees of both the House and Senate Judiciary Committees held oversight hearings in spring 2006 on proposals for an orphan works legislative solution.  

Museums participated in each phase of the process. The J. Paul Getty Trust, the Metropolitan Museum of Art and the Solomon R. Guggenheim Foundation submitted Initial Comments; the Los Angeles County Museum of Art (LACMA) sent a letter supporting the Initial Comments. A number of museums participated in the Reply Comments, including the Getty, the Met, the Guggenheim and LACMA, as well the Denver Art Museum, the Indianapolis Museum of Art, the Museum of Modern Art (MoMA), the Spencer Museum of Art, the United States Holocaust Memorial Museum and the Wolfsonian—Florida International University. The Whitney Museum of American Art and the Sheldon Memorial Art Gallery and Sculpture Garden, Lincoln, Neb., filed reply comments in support of the museum comments. Two representatives from the Getty participated in the Berkeley Roundtable, and representatives from the Guggenheim, MoMA and the U.S. Holocaust Memorial Museum met separately with the Copyright Office in October 2005 to explain the important impact an orphan works solution would have on museums’ ability to make many works in their collections more accessible to the public. Maria Pallante-Hyun, associate general counsel and director of licensing for The Solomon R. Guggenheim Foundation (Guggenheim Museum), testified at both the House and Senate subcommittee hearings on behalf of a coalition of 18 nonprofit groups and associations representing more than 144,000 museums, libraries, universities and archives, and more than 135,000 independent historians, educators and scholars—all of whom want to make productive use of orphan works.(1)

The Legislative Proposal  

Since January 2006, both the House and the Senate have been working with interested parties in an attempt to put together a consensus bill. Following the recommendations of the Copyright Office Report, the legislation introduced by Rep. Lamar Smith (D-Texas), H.R. 5439, limits the remedies (for example, the penalties or fees) that a copyright owner may claim when an orphan work is copied and distributed and the rights holder comes forth claiming infringement. There are four significant components to the proposed legislative solution:

1. The definition of an orphan work.
2. The requirement that the user conduct (and document) a reasonably diligent search to identify and/or locate the copyright owner.
3. The user should provide attribution to the author and copyright owner, if possible and as appropriate under the circumstances.
4. The remedies for the unauthorized use are limited.   

(H.R. 5439 can be found at http://frwebgate.access.gpo.gov)

What Is an Orphan Work?

In the report, the Copyright Office defines an orphan work as “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 House bill does not define an orphan work specifically; rather it also defines the situation in which a user cannot locate the copyright owner after a reasonably diligent search.  

What Constitutes a “Reasonably Diligent Search?”

The Copyright Office Report suggests, and H.R. 5439 requires, that prior to using the work, the user must perform a good faith, reasonably diligent search to locate the copyright owner. While the Copyright Office took the suggestions of many commenters and opted to leave what constitutes a reasonably diligent search up to the user and the rights holder communities, the House legislation is more specific. H.R. 5439 states that the search is “reasonably diligent” if it includes, at a minimum, review of information the Register of Copyrights will receive, maintain and make publicly available such as information sources, industry guidelines and statements of best practices to assist users in determining how to conduct and document a reasonably diligent search, and the use of reasonably available expert assistance and reasonably available technology, which may include, if reasonable under the circumstances, resources for which a charge or subscription fee is imposed.  

In the museum world, a reasonably diligent search might include (1) looking at the museum’s acquisition files, (2) checking the library catalog or curatorial files to see if there is information about the work in publications and databases, (3) investigating the Copyright Office registrations, and (4) doing Web searches, including checking with the various licensing groups representing artists and rights holders.  

H.R. 5439 states that paid experts, such as Thomson & Thomson, Corbis or other subscription services, should be used to conduct the search if reasonable under the circumstances (emphasis supplied). On its face, this language does not make the use of paid experts mandatory, but museum community representatives fear that it could have the de facto effect of making the use of paid experts a “best practice,” so that the failure to use such experts could weigh toward a finding that a search was not “reasonable.” As such, this requirement could actually serve as a deterrent to the use of orphan works by museums, since most nonprofit collecting institutions have neither the resources nor the need to supplement their in-house research expertise with outside consultants. Accordingly, museum representatives have argued strenuously against any reference in the statutory language to the use of paid professional services.        

If orphan works legislation is passed, the museum community should consider developing guidelines tailored to museum collections with information sources for a reasonably diligent search.

What Attribution Information and Notices Must Be Included?

H.R. 5439 requires that the creator of the orphan work and the copyright owner be identified, if possible and as appropriate under the circumstances. Museums support attribution of the creator. It is part of what museums do when they make works accessible. Identifying the copyright owner might be more problematic. First of all, it would not be an orphan work if one could identify and/or locate the copyright owner with certainty. Moreover, a huge part of the problem is not that anonymous makers created the works; rather the problem is that accurate copyright information is not available. The legislation conditions the requirement to identify the copyright owner with the phrase “if known with a reasonable degree of certainty based on information obtained in performing the reasonably diligent search.” Therefore, a museum will have to consider carefully what it knows and what information it provides about a copyright owner when using an orphan work.

What Are the Remedies for Unauthorized Use of Orphan Works?

The Copyright Office’s remedies approach generated a lot of discussion during the legislative negotiations. While most interested parties agree that orphan works are a problem and a legislative solution is desired, there were many different opinions as to what is a fair and reasonable remedy if the rights holder comes forward.  

Museums fought hard for a safe harbor that would allow cultural heritage institutions to use orphan works for a limited period of time without fear of unbudgeted financial exposure if a copyright owner emerges and claims infringement. While the risk of minimal damages for the use of one orphan work once in a while is manageable, the use of hundreds of orphan works regularly could expose an institution to enormous financial liability. Museums saw the potential of an orphan works legislative solution as a way to use and repurpose many works at a time and this made the museum community unique among the user communities who were largely focused on the risk of using one or two works from time to time. Under the museums’ safe harbor proposal, if the rights holder comes forward and makes a claim of infringement after the use commenced, and the museum had complied with all of the prerequisites for using an orphan work including a reasonable diligent search, the museum could continue to use the work for a limited period of time without owing any compensation to the rights holder(s). Seven Los Angeles cultural institutions—the Hammer Museum, the Japanese American National Museum, the Los Angeles County Museum of Art, the Los Angeles County Museum of Natural History Foundation, the Museum of Contemporary Art, the Skirball Cultural Center and the UCLA Fowler Museum of Cultural History—sent a letter to Rep. Howard Berman (D-Calif.) explaining why the safe harbor needs to apply to museum publications, even if there is a charge for them.

Other commenters suggested that money damages should be paid for all uses but capped at a certain amount and others thought reasonable compensation should be paid under all circumstances. Most commenters felt that injunctive relief—requiring the good faith user of the orphan work to cease using it even if reasonable compensation would be paid—was not appropriate, although due to sovereign immunity, there may be some situations where injunctive relief is allowed.

The Copyright Office recognized the potential for museums, libraries and archives to provide large-scale access to orphan works. It incorporated a limited safe harbor under which a copyright owner could claim reasonable compensation except when the work is used without any purpose of direct or indirect commercial advantage and the use ceases expeditiously after receiving notice of the claim of copyright ownership.  

The House legislation similarly adopted a safe harbor subject to satisfying a three-part test: (1) the orphan work is not used for any purpose of direct or indirect commercial advantage; (2) it is used primarily for charitable, religious, scholarly or educational purposes; and (3) the use ceases expeditiously after receiving notice of the claim of ownership, unless the copyright owner proves that the user of the orphan work earned proceeds (emphasis supplied) directly attributable to the infringing use. The legislative history will have to be consulted to get a better understanding of what Congress meant by “proceeds.”  

Direct or indirect commercial advantage appears in the Copyright Act in various places, including Section 108, the library and archive exception. In the orphan works context, it will be important how this phrase is interpreted and it will be a problem if direct or indirect commercial advantage is found to include situations in which any charge is made for the media or context in which the work is used. Under the latter interpretation, reasonable compensation would be required even if the media, such as a book, or the context, such as a poetry reading, is subsidized by the museum and the inventory or price were determined for cost recovery only—that is, without trying to make a profit, but simply to cover expenses. If the definition of what constitutes “direct or indirect commercial advantage” includes all activities for which the museum charges a fee, it would have a chilling effect on uses of orphan works for scholarly and educational projects that do not and are not expected to break even, let alone generate any significant revenue.  

The Copyright Office approached orphan works as a solution to make it less risky to put digital surrogates of copyrighted works on the Web. For this reason, the concept of expeditiously ceasing the use is at least technologically possible for Web projects, but it is much more difficult when the work is included in a book or other fixed media. In this latter situation, the museum would have two options: negotiate reasonable compensation in order to continue distributing the tangible copies of the work or cease distribution of the print or fixed-media materials. While the idea of ceasing distribution is unsatisfactory, it does provide museums with an option for minimizing unbudgeted financial exposure, notwithstanding that it results in destruction of materials.

Reasonable compensation is another thorny aspect of the remedies question. H.R. 5439 states that the owner of the copyrighted work has the burden of establishing the amount that a reasonable owner and user would have agreed to with respect to the use of the work immediately before the infringement began. In considering how reasonable compensation might be determined, one important factor to be considered is the amount of other license fees paid to copyright owners of similar reputation and stature for similar uses, including whether other rights holders waived license fees for these similar uses.      

Other Important Elements of the Legislation

The House bill proposes a two-year delay between passage of the legislation and the effective date of the law. This will give all interested parties, including the Copyright Office and large-scale access providers such as museums, time to prepare resources and best practices for reasonably diligent searching. It will also give rights holders time to consider options for making their identities and locations better known.

Nothing contained in the orphan works legislation will affect any rights, limitations or defenses to copyright infringement, including fair use. The House bill limits injunctive relief for new works that are derived from or incorporate orphan works.

Conclusion

On May 24, 2006, the Subcommittee on the Courts, the Internet, and Intellectual Property of the House Judiciary Committee marked up H.R. 5439, the Orphan Works Act of 2006. As the 109th Congress comes to a close, it seems unlikely there will be any action on this bill in this session. Given the almost universal consensus about the orphan works problem and the widespread agreement among the user- and rights-holder communities on many aspects of the legislation, it is expected that an orphan works bill will be reintroduced in 2007.

The public has much to gain from passage of orphan works legislation. Reducing the risks of using copyrighted works when the rights holder cannot be identified or located will make it possible for collecting institutions such as museums, libraries, archives and historical societies to make copies of vast amounts of important and culturally significant artifacts and objects accessible to the public. No longer will the risk of enormous monetary damages or criticisms that cultural institutions ignored or disregarded the law keep them from using old and new technologies to provide better, faster and cheaper access to works in our collections. We are hopeful that Congress will act swiftly to pass a balanced and workable legislative solution to the orphan works problem.

Maureen Whalen is associate general counsel for the J. Paul Getty Trust. She is a member of the Section 108 Study Group, convened by the Library of Congress in 2005 and charged with updating the copyright law’s library and archives exception for the digital environment. The author would like to thank Maria Pallante-Hyun of the Guggenheim Museum, and Nancy Adelson of the Museum of Modern Art for their help preparing this article.

Notes

1. The testimony was presented on behalf of the American Association of Law Libraries, the American Association of Museums, the American Council of Learned Societies, the American Historical Association, the American Library Association, the Art Library Society of North America, the Association of American Universities, the Association of Research Libraries, the College Art Association, the Medical Library Association, the Society of American Archivists, the Special Libraries Association, and the Visual Resources Association.