18 September 2019 - Article
With any work of art originating in the United States, the copyright owner – usually the artist or artist's estate (not the buyer of the physical artwork) – controls its reproduction, distribution, adaptation and public display. Of course once the artwork's copyright expires, the work enters the public domain and anyone can make use of the artist's image without obtaining permission. But what if, for example, you wish to put an image of a painting you own on a holiday card or incorporate a vintage photograph you buy at a flea market into a humorous video that you post on YouTube? How do you establish if the image is available and that you won't face a lawsuit for copyright infringement?
Revisions in United States copyright law, specifically the 1976 Copyright Act, and the United States accession to the Berne Copyright Convention, make it more difficult to determine whether a pictorial, graphic or sculptural work is protected by copyright. Under current US law, copyright vests in the artist the moment the work is fixed in a tangible medium of expression. Works first published on or after March 1, 1989 (when the United States acceded to Berne) need not contain a copyright notice and in addition, works need not be registered with the U.S. Copyright Office. Finally, the basic term of copyright, now lasts for the lifetime of the author plus 70 years.
The Issue of Orphan Works
These factors have all contributed to the proliferation of “Orphan Works.” – An Orphan Work is a work that is protected by copyright, but whose copyright owner cannot be identified and located. The volume of such Orphan Works has caused Congress in recent years to be concerned that their questionable ownership might needlessly discourage prospective users from incorporating such works into new creations which would contribute to culture and to public dialogue.
The Two Pending Bills
There are, currently, two bills pending, respectively, before the Senate and the House of Representatives: The Shawn Bentley Orphan Works Act of 2008 (S. 2913) and The Orphan Works Act of 2008 (H.R. 5889). Both bills currently provide that in order to use an Orphan Work, the prospective user must identify the Work, conduct a good-faith, diligent search for the Work's copyright owner and (failing to find this party) file a notice of use with the Copyright Office prior to using the Orphan Work. The notice of use must include information such as the name of the prospective user, a description of the Work, its intended uses, and a summary of the search and certification that a good-faith diligent search for the copyright holder was made. Any actual use of an Orphan Work must be accompanied by a symbol or notice to be designated by the Copyright Office.
The Copyright Office would be required to establish and maintain a public archive holding all notices of use. If the copyright owner surfaces and makes a claim, the user would be obliged to negotiate and pay the copyright owner a reasonable compensation for the use. If negotiations are unsuccessful, then a court will determine the level of compensation payable to the copyright owner. If — and only if — the user has complied with all legal requirements, his or her maximum liability would be limited to a “reasonable” level as fixed by the court. The normal penalties for infringement, which can include actual damages and profits, and in some cases an injunction against use and destruction of the infringing work, would not apply.
To facilitate the search for copyright owners of pictorial, graphic and sculptural works, the legislation would require the establishment of databases that would permit the search and identification of the art works by reference to visual images as well as text, and would require security measures to protect against the unauthorized access or copying of such images. Presently, it is often too difficult to locate owners of Orphan Works because such works are usually untitled or have more than one title, which prevents a search for the artist by name, and are frequently not registered with the Copyright Office in any event.
Users that are non-profit institutions (including museums, libraries and archives) would be exempt from liability if their use were made primarily for educational, religious or charitable purposes and they promptly ceased to use the Orphan Work upon notification from the copyright owner. Moreover, the copyright owner would only be entitled to any proceeds the user had received directly attributable to the infringing use. Under the current bills, all existing defenses, including fair use, would not be affected by the legislation.
Reaction to the Bills
The most vociferous objections to passage of either of the proposed bills come from over 60 art licensing organizations united by common interest and known collectively as “Artists United Against the U.S. Orphan Works Acts.” In July 2008, several of these organizations jointly proposed amendments to the House Bill, The Orphan Works Act of 2008. In particular, they proposed: (i) that the U.S. Copyright Office – rather than privatized competing companies — maintain a publicly searchable electronic database of works of visual art, and (ii) that the U.S. Department of Justice — rather than the Register of Copyrights – study the issue on the advisability of implementing a more effective system of litigation to accommodate infringement claims including small-value claims.
It should be noted that copies of all visual images that have already been registered with the Copyright Office (more than 12 million) are archived in the Library of Congress which is in the process of digitizing these images for a digital library project. This ongoing process could leverage the existing centralized registration system to support one of the objectives of each of the pending bills in a far more efficient and cost-effective manner than the establishment of numerous competing registries. As to the study of possible revisions to the current copyright litigation system, an examination of this issue is more appropriately performed by the Department of Justice as it would be advising Congress on matters related to the federal court system.
Each of these bills, of course, is a work-in-progress – as there is now little time to process each of the two bills through, respectively, their Committees, the full House and Senate, and then harmonize them into one law for the President's signature, it is doubtful that there will be Orphan Work legislation enacted this year. But stay tuned: the next Congressional body may produce some very interesting modifications to the pending bills.