Discussion on Orphan Works and Mass Digitization at US Copyright Office, March 10-11, 2014

The US Copyright Office held a two day roundtable event on the topic, “Orphan Works and Mass Digitization.” The two days were split into ten sessions, with extensive panels convened for each roundtable discussion. The meetings were held in the Montpelier Room at the Madison building of the Library of Congress, with the exception of the afternoon panels on the second day, which was held downstairs in the hearing room of the Copyright Office. Both days of the event were very well attended, and in fact, when the meeting was moved to the hearing room, the room was over capacity and they were not able to accommodate all who wanted to attend.

Karyn Temple-Claggett, Associate Register of Copyrights and Director of Policy & International Affairs at the Copyright Office, chaired the event and facilitated an in-depth and even handed discussion of the topics in each panel. There were sixteen panelists at the table for every session over the two days, and each panel had a broad range of representatives from all sides of the orphan works issue. For a complete list of participants, please see the attached file.

In the center, Jamie Love, KEI, on a panel during the event

Session 1: Need for legislation in light of recent legal and technological developments

The first session of the event debated the need for legislation to address the orphan works issue or whether recent court decisions and policies would suffice. The participants on this panel ranged from representatives of libraries, publishers, and writers to illustrators, independent music, and Wikimedia. James Love represented KEI in the discussion.

Although there was a wide spectrum of opinions on whether legislation was needed to deal with orphan works and their use, a unified message was heard from the library community. Across the board, those associated with libraries emphasized that legislation might not be the best solution at this juncture and that fair use was the best way to continue forward.

On the panel, KEI said that legislation along the lines of the 2006 bill, which limited remedies for infringement, would be useful, but of course, people could imagine legislative outcomes that were harmful, as regards access to works, and that everyone’s positions on legislation would depend upon what they thought the Congress would actually do. KEI was opposed, for example, to extended licensing systems that require the public to pay money to collection societies, when the author or right holder of work could not be identified, and would not receive the money. Orphan works legislation should be designed to expand access to the permitted uses of orphan works. Love said that the issues were different for different types of works and different uses of works –music, photographs, text intended for commercialization, and text never intended to be commercially exploited, all might have different solutions. KEI discussed the DMCA approach, where the Library of Congress can create exceptions through rulemaking, driven by proposals that address specific and sometimes narrowed needs, might be a good model for moving forward on Orphan Works legislation, if the approach eliminated the flawed 3-year sunset provision for exceptions in the DMCA, and if the legislation had a good terms of reference.

KEI also brought up the TPP, ACTA and TTIP negotiations, and said that provisions in trade agreements that lock-in long copyright terms, and new TRIPS plus norms for damages and injunctions, will undermine progress on efforts to expand access orphan works. KEI said the Library of Congress should oppose those provisions in the inter-agency coordination reviews of these secret trade negotiations.

On the issue of formalities, KEI said that there was more flexibility than some may think. The obligations regard formalities in the Berne Convention do not apply to related rights, such as sound recordings, and the WTO would allow formalities more broadly after 50 years from publication.

Session 2: Defining a good faith “reasonably diligent search” standard

The next panel of the day centered on defining what would constitute a reasonably diligent search, either under best practices in conjunction with fair use or in possible future legislation on orphan works. Outlooks on search standards ranged from embracing free market solutions in the form of companies that might arise to carry out searches to leaving it to the communities of different types of works (print, photography, film, music) to determine best practices for their discipline.

Jack Lerner, of the USC Intellectual Property and Technology Law Clinic, said that there hasn’t been an issue with the current best practices. Lerner also warned against intervening in the market stating that, “we don’t want to end up with the photocopy guidelines from the 1970s…that don’t get used.”

The moderator from the Copyright Office raised the example of the EU directive on orphan works, explaining that under the directive, once a search is done and is unsuccessful, a record is made and can be referenced by those seeking to use the same work. Although some advocated the registration of orphan works searches, the question also arose as to who would manage the registry and how it would work. However, as David Hansen noted in the panel and then also tweeted, “Lots of praise of EU directive approach to search. No mention that many EU libraries find the OW directive virtually useless #orphanworks” (@DigLibCopyright)

Session 3: The role of private and public registries

This roundtable looked at what could be done to the current system to help improve the orphan works situation. The overall consensus of the discussion that whatever form a registry took, and whether for the creator or user, any registry option had to be simple, searchable, and interoperable with a variety of applications. As to whether the registry system should be a public or private entity, concerns were raised as to the validity of data in private registries and facilitating sharing that information with the public but it was noted that private registries might be able to nimbly adapt to market and industry changes.

Session 4: The types of works subject to any orphan works legislation, including issues specifically related to photographs

Considering the unique challenges posed by orphaned photographs in the internet-era, the Copyright Office opened this panel by asking whether photos should be excluded in a possible orphan works legislation or if works of all mediums should be included. Although coming from a variety of subject areas and motivations, most panelists felt that if any orphan works legislation should arise, it should be all encompassing. Those that represented libraries and archives highlighted that their organizations do not make use of works as individual items, but rather as collections, and as such it would render them incomplete and piecemeal to separate out photographs from other works.

Bruce Lehman, representing the American Society of Medical Illustrators, stated however, that medical illustrations should be excluded and more generally that all illustrations should be excluded since the purpose of the use is important and in this case it is always for commercial use.

Jamie Love, KEI, and Bruce Lehman, American Society of Medical Illustrators and former Assistant Secretary of Commerce and Commissioner of the US Patent and Trademark Office

The panelists stressed that if legislation were to be enacted it would need to strike a delicate balance, being both simple and straightforward as well as taking into consideration all types of works. Throughout the discussion though, representatives from the libraries and archives continued to reassert that fair use was the proper way to address orphan works at this point.

Session 5: Types of users and uses subject to any orphan works legislation

The final panel of the first day of the roundtable focused a great deal on the types of uses that would be subject to any potential orphan works legislation. Manon Ress represented KEI in the discussion.

Although most of the participants agreed that separating out commercial versus non-commercial in any potential legislation would be important, the problem then arose as to how one would define commercial use. Drawing a distinction between commercial and non-commercial could be difficult. Krista Cox of the Association for Research Libraries stated (in reference to commercial use considerations), “any narrow carveouts could reduce the value of the legislation.”

KEI highlighted that the critical thing for any legislation is keeping the focus on access, “It’s important to find a path to access to orphan works that reconciles both commercial and non-commercial uses.”

Session 6: Remedies and procedures regarding orphan use

Day 2 of the Orphan Works and Mass Digitization Roundtables began with a discussion of possible remedies for orphan works offenses. James Love represented KEI at the table. In examining a reasonable compensation model, participants considered possibilities for registration as well. Elizabeth Townsend Gard of Tulane University outlined three key components that could help address the orphan works problem. She suggested that registration by the creators should be a key component, as well as recording searches by those seeking to use orphan works, and then from the point of registering a work, a fixed period of copyright protection from a record of a search.

KEI pointed out that in terms of international conventions in this area, the Berne Convention says nothing about remedies but rather trade agreements are where you run into issues on standards and norms on injunctions. Love stated that,

“ACTA and the TPP are changing international norms on damages in an aggressive way. There are major challenges in dealing with damages and formalities not because of international conventions but because of secretive trade agreements. You should encourage the USTR to open up negotiations that you can see how they are undermining what you’re trying to do here at the Copyright Office.”

KEI suggested possible tweaks in language on damages, including that damages take into account whether or not the work was ever intended to be exploited commercially, and the period of time since it was ever exploited commercially.

Later in the session, Michael Weinberg of Public Knowledge reminded the group that it is important to focus on what the remedy would be seeking to address and warned that, “If there are problems with the registration system, creating punishing damages are not the way to deal with them.”

Session 7: Mass Digitization, generally

The session on mass digitization was a relatively contentious discussion with some debate on fair use arising between panelists. In beginning the discussion, Michael Carroll of American University and Creative Commons defined digitization as scanning a work, literally format shifting, which is fair use. Jan Constantine of the Author’s Guild attacked that definition, saying that format shifting constituted infringement and in addressing those who are not libraries and digitize works, “just you wait for the next lawsuit.”

Moving on from the disagreement over fair use, Corynne McSherry of the Electronic Frontier Foundation highlighted that the works in question were previously out of print or orphaned and that there was presumably no commercial value before the organization seeking to use the work sought its owner. She expanded on the comment acknowledging that perhaps the new use creates a commercial opportunity, but that there was not prior commercial value for these works.

Corynne McSherry, Electronic Frontier Foundation, and Michael Carroll, American University and Creative Commons USA

Jerker Ryden, representing the National Library of Sweden, spoke on the EU orphan works directive. He reminded the participants that in determining the directive that many options were possible (including extended licensing) and that they had chosen the option that encouraged the most access. Access in particular was important for the EU’s policies as they sought to enable improved cross-border access to works.

Session 8 & 9: Extended Collective Licensing and Mass Digitization; Structure and mechanics of a possible extended collective licensing system in the US

Both sessions 8 and 9 of the roundtables addressed the possibility of extended collective licensing and what form licensing could take in the US system. Panelist after panelist is the sessions expressed doubt over the implementation of an extended collective licensing (ECL) scheme in the US. Jim Mahoney stated that ECLs forced down prices, Brandon Butler said that ECLs were slow to adapt to market changes and that they were damaging to fair use, and Casey Rae referred to ECLs as ‘putting the cart before the horse.’ Others like Lauri Rechardt said that ECL wasn’t needed as voluntary licensing was already sufficient and Ben Sheffner said that any collective licensing system needs to address specific markets and that a mandatory licensing scheme would and should be of last resort.

Brandon Butler, American University Washington College of Law

In considering the structure of any possible ECL in the US, Lehman spoke in support, but noted that it would have to be formally established by law. He said that we have long experience with collective licensing in the US but that for the most part it has been a system created on an ad hoc basis. A mandatory licensing system would be new ground for the US and if it were to be instituted, the critical point would be to ensure that the rights holders receive the money from the collective.

Colin Rushing of the SoundExchange said that the Copyright Office would need to ensure to engage all stakeholders in the process, and that the key principles of the licensing body would have to be transparency, efficiency, and accuracy.