|
The enormous wealth of creative material available on the internet has been both a boon and a burden to the advertising sector. While you can source the perfect design, photo or audio-visual footage to use in (or inspire) your creative, it can cause a nightmare in terms of rights clearance. All too often it is simply not clear who owns all the necessary rights.
Ultimately, advertisers wishing to use “orphan works” (i.e. works whose rights-holders cannot be traced) have had to face the choice of risking an action for infringement (but perhaps mitigating the position by setting aside a pot for a notional licence fee) or simply abandoning use of the orphan work in favour of an alternative work whose rights-holders can be identified and located.
Successive Governments have shied away from legislating to resolve the problem of orphan works, both for conceptual reasons (because facilitating the use of work without author permission undermines the monopoly right granted by copyright) and also because of the difficulty in defining when a work should be categorised as an orphan work.
Recently, however, the advent of mass digitisation of assets and the opportunity to manage such assets presented by the technological advances has led to a rethink of the law in this area, which could ultimately revolutionise rights clearance.
When is a work categorised as an orphan work?
Is a creative work an orphan work simply because it does not have an accreditation published on the face of the work or prominently at its source? Should out-of-print books automatically be deemed to be orphan works? The photographic and book-publishing sectors’ response to these particular questions is a vehement “no”. What if you know the name of the creator of the work but simply can’t find him or her? For any legislation to succeed in creating a workable scheme to license orphan works, there needs to be certainty as to the definition of an “orphan work”.
In May 2011 the EU published a draft Directive [i] proposing a way of enabling European institutions to make use of orphan works for their public-interest missions, for example by means of digitisation, indexing and preservation. While not directly enabling the licensing of orphan works to commercial organisations, it expresses a method of defining orphan works which is likely to be extended into any system of licensing for commercial purposes. In short, a work is an orphan work under the Directive if a “diligent search” of “appropriate sources for the category of works in question” reveals no identifiable rights-holder or (if identifiable) the rights-holder cannot be located by the diligent search.
The issue then arises as to what the “appropriate sources” are likely to be. The Directive gives suggestions as to appropriate sources for different categories of copyright works; for example, for photographic works it would be necessary to consult ARROW (Accessible Registries of Rights Information and Orphan Works), [ii] any databases of organisations such as the AOP and BIPP and the databases of picture agencies. This is intended as guidance only, and the intention is that each member state will specify its own “appropriate sources” in local legislation.
Once a work is categorised as an orphan work in one state, it is suggested that there be mutual recognition of that status by all member states. This is potentially problematic in the current system of territorial copyright. The institution making the work available through its database may have checked its own country’s appropriate sources and found a work to be an orphan work, when in fact it is recorded in the database of another member state; the onus would then be on the owner to challenge the orphan categorisation, and indeed the Directive recognises such a right of challenge. The British Copyright Council, in its orphan works licensing proposals in the UK, makes it clear that, to amount to a “diligent” search, any search must take place across the sources of the country of the work’s origin (or with which it has the closest connection).
Orphan works legislation in the UK
In a June 2011 report on UK intellectual property law commissioned by the current Government (the Hargreaves Review), [iii] the Government was urged to take the initiative rather than waiting for implementation of an EU solution and to legislate to enable the licensing of orphan works. In September 2011 the Government responded positively [iv] and promised to draw up a licensing scheme by autumn 2011. The scheme is yet to emerge, and there are plainly a few practical hurdles to surmount, not least of all nominating the appropriate resources. For instance, would it be necessary to consult the databases of all picture agencies to find the status of a photograph?
In addition to the call for legislation Professor Hargeaves suggested the creation of a Digital Copyright Exchange as a central hub for the marketing of copyrights. This is not posited as a potential Government project – that way lies “a nightmare of IT procurement followed by the birth of a white elephant” according to Hargreaves – but Government is urged to set the conditions and incentives for commercial entities to fund and create the appropriate marketplace. The Government supports the idea of a Digital Copyright Exchange or “something like it” and is currently considering how such a complex project is best taken forward. If it is viable, the hope is that the exchange will be the one-stop appropriate source, with all other databases ultimately linked into it.
Licensing orphan works
If a diligent search of the appropriate sources (or in future perhaps of only the Digital Copyright Exchange) does not reveal any registered rights-holder for a work (or reveals a rights-holder who cannot be located), then the Government proposes to grant a licence of the orphan work for a nominal royalty. The suggestion is that, if the rights-holder subsequently comes to light, the rights-holder can register the rights with the exchange (if able to prove ownership/control) and negotiate directly with the user for any future use of the work, but will have no claim for past use.
The British Copyright Council has proposed [v] that existing collecting societies’ remits be extended so that they could grant the appropriate orphan-works licences for the types of works that they manage and, in the absence of a relevant collecting society, the Copyright Tribunal should assume responsibility.
Conclusion
As a result of the Directive and of other Hargreaves recommendations, the amount of available orphan works is set to increase exponentially. Merely unlocking the works contained in UK public archives will, at a conservative estimate, make 25 million more such works publicly accessible. Where such institutions have already classified works as orphan works it should be possible to obtain a licence of any individual work classified as such for only a nominal fee, possibly with minimal updating searches.
As for clearing of individual works, the search process will be no less onerous than at present, until such time as the Digital Copyright Exchange is fully operational. The difference will be that, once the legislation is in place and after carrying out a search that complies with the diligence requirements, it will at least be possible to reduce the immediate risks by obtaining a licence for current usage. Rights-holders may emerge once use of an orphan work becomes public and may try to hold users hostage for future usage rights, but they will first have to overcome the hurdle of proving ownership or control.
Finally, it should be noted that the only clearances contemplated by the proposals considered above are clearances of copyright. For many works the rights, if any, of the models or other subjects of the work will be unchanged. And that is an entirely separate legal question.[vi]
Nicola McCormick
357
Simkins' early warning bulletins are for general guidance only. Legal advice should be sought before taking action in relation to specific matters. Where reference is made to Court decisions facts referred to are those reported as found by the Court. Please note that past bulletins included in the Archive have not been updated by any subsequent changes in statute or case law.
<< back to articles & bulletins
|