In Berne Convention, Copyright, Copyright Act, Orphan Rights, Orphan Works, TRIPS

Legal analysts are debating Orphan Works legislation in terms of statute law, but many seem unfamiliar with how we actually license art in the marketplace. As a result, they find our opposition to the bill hard to understand. Some of their questions are good ones and deserve a direct response.

Q: How realistic is it to fear that recent photographs and illustrations will actually be declared “orphan works” and used with impunity?

A: Very realistic. If a picture is unmarked, the average user will have no way to tell if it was made 30 years ago and has been abandoned or if it’s the work of an artist with an active business, but who, for various reasons, the user simply couldn’t find.

Q: Then why shouldn’t artists be required to mark their works so users can find them?

A: Three reasons:

First, the Berne Convention forbids the requirement of formalities such as marking.

Second, trade practice requires that images routinely be published without identifying information, artists’ signatures or marks may be illegible, and information on art can be removed by others.

Third, try to imagine every daily newspaper, magazine, brochure, letterhead or annual report with every single photograph, portrait, illustration, line drawing and graphic mark covered with artists’ identifying information. No magazine would permit it, and artists who demanded it in their contracts would likely be shunned as contributors.

Q: Countless photographs and illustrations go unused because their owners can’t be located. Why do visual artists object to a system that would give others access to this unused content?

A: Using another’s property (whether or not you assume they’re using it themselves) is not a right. You don’t have a right to use someone else’s car just because it’s parked somewhere and you can’t find them to ask how much they’d charge you to use it. Moreover it should not be an owner’s obligation to monitor the use of his car by unknown persons, track down those who might have used it, then accept whatever fee they say it’s their policy to pay whenever they use the cars of people they can’t find. Why should copyright, which is an even more personal form of private property than a car (because an artist’s copyright is self-created property) be any different?

Q: But the Orphan Act says if the owner surfaces they will be fairly compensated.

A: A rightsholder whose work has already been exploited will have no leverage to negotiate a fee higher than the user is willing — or able – to pay.

Q: But the artist has the possibility of stopping an infringing use if it is appropriate to do so.

A: It violates an artist’s exclusive property right to legalize infringement, then tell him he can stop the misuse of his property after the fact. No property owner should have to go to Federal court to have decisions made for him that are his to make in the marketplace.

Q: Illustrators say that the incentive to register works is a violation of the Berne Convention. But we currently have a system where one must register in order to pursue full legal avenues for copyright infringement. That’s been on the books for the two decades since the US joined Berne and no one has challenged that as a “formality.” Don’t you still have copyright protection without registering?

A: Yes, and that’s the chief difference. Under current law, you receive basic copyright protection even if you don’t register your work. Under Orphan Works law your work could be declared an orphan even if you have registered it. Current US law may test the limits of Berne by demanding registration for full protection, but it doesn’t violate the principle of Berne by legalizing infringement, as the Orphan Works Act would do.

Q: lllustrators claim the bill as written allows the new user to copyright all of the new, derivative work, not just the infringer’s contribution.

A: Under current law, the right to create a derivative work is one of an artist’s exclusive rights. Section 103(a) says a user can’t copyright a derivative image that he’s infringed. QUOTE: “[P]rotection for a work employing preexisting material in which copyright subsists does not extend to any part of the work in which such material has been used unlawfully.”—-000-.html#a

But this bill includes a new exception to that. It allows infringers to make and copyright derivatives. QUOTE: “Notwithstanding section 103(a), the infringing use of a work in accordance with this section shall not limit or affect the copyright protection for a work that uses the infringed work.’’

This seems quite explicit: If the entirety of an infringed work can be included in a derivative use, then the copyright of the derivative will amount to a copyright of the original. This would be a de facto capture of new exclusive rights by the infringer.

Here’s how this provision could be abused. Infringers could harvest orphans and make simple alterations to the work – change background colors, add seagulls to a sunset, crop details out of paintings. Then they could obtain copyrights on the altered work as derivatives. If one of the infringed artists were to alter his own work in the same manner, he’d infringe the infringer’s copyright to that image. The infringer’s copyright would be “thin,” so he might not be able to collect damages from the artist, but in theory he’d be able to get an injunction to stop the artist from making the same alteration.

That this could happen is not mere conjecture: According to the Advertising Photographers of America, “Within two weeks of the issuance of the Orphan Works Report, nearly all of the domain names associated with orphan works were registered by commercial interests.”

Q: The Illustrators’ Partnership says the Orphan Works Act would interfere with business transactions. Can you give an example?

A: Yes, by “limiting remedies,” the Orphan Works amendment will create a no-fault license to infringe. If you were an artist, consider a hypothetical legal action you might be forced to bring in the future:

In the 1990’s, you licensed a series of pictures for one-time use in a corporate annual report. In such cases, copyright notice and credits are most often omitted by art directors for annual reports, and almost always for advertisements in spite of the wishes of the artist to preserve his credit. You registered your copyright in the work as part of a group registration, the title of which was based on the annual report. You subsequently licensed some of these pictures for exclusive use in various ads in the United States, and you make it a practice never to license your work for inexpensive or distasteful products.

But let’s say an infringer finds the annual report. He likes your pictures, sees no credit and does a “good faith” search that fails to identify you as the owner of the copyright. He begins selling cheap t-shirts bearing your art. Under current copyright law, your remedies would include statutory damages, attorney’s fees, impoundment and injunction for this flagrant infringement – because it’s damaged your exclusive right to license your work in high-end markets. But in an orphan works action, your remedy would be what? Reasonable compensation for use of your work on cheap t-shirts. And even that would be limited to whatever maximum the court might set and would be constructed not to deprive the infringer of the profits he made “in reliance” on his so-called failure to locate you.

Without the deterrent of statutory damages and attorneys fees – and without a permanent injunction against repeat offenses by the same t- shirt seller, this experience would now act as an incentive for the infringer to exploit other uncredited (and therefore, effectively orphaned) images by other artists. He’s discovered that infringing art is just a rational business decision. In turn, this would inspire yet other infringers.

Q: But right now it’s pretty easy for somebody to infringe your work and hope you don’t find out.

A: Yes, but current law almost certainly deters rampant infringement because the present remedies make infringement risky.

An infringer might guess that a particular work he wishes to use is unregistered. He might also guess that if he uses it without permission, no one will know. He might well guess correctly. But he can’t be sure. This uncertainty is the only mechanism the law now provides to enforce copyright compliance. There is no Copyright Office Police Force, no Copyright Bureau of Investigation. As creators, we have to police the infringement of our work ourselves and the full remedies currently available are the only weapons we have to do it with.

Q: But wouldn’t the Orphan Works bill improve this situation for artists by placing the burden of proof on the infringer to show he had performed a diligent search?

A: Only in legal theory. In real life, the burden of proof would be quite relative because no statute can conceivably define the merits of all the myriad arguments that infringers could use to claim they’ve made “a reasonably diligent search.” On the other hand, the law would place an impossible burden of diligence on rightsholders, because no artist will ever have the resources to police infringement of his work, which can occur anytime, anywhere in the world.

Q: But artists and photographers have been suffering intellectual theft for years. Why haven’t they unionized to fight this?

A: Because that would violate the law. The National Labor Relations Act does not allow independent contractors to unionize. Only employees can unionize and employees who create intellectual property create it in the name of — and for the benefit of- their employers.

Q: Then have visual artists considered creating registries to protect their work?

A: Let’s run down the basic problems with registries:

First, it would violate Berne to make artists rely on registries to protect their copyrights.

Second, even if you developed a registry, users couldn’t track millions of unmarked pictures without image recognition technology.

Third, image recognition technology is still in its infancy; this law would take effect in two years.

Fourth, even when this technology becomes available, hundreds of millions of images will still have to be deposited in a registry in a digital format before users could find them with a search engine. Many of these pictures will have been created since 1976 when the current copyright act was passed. That law promised artists their work would be protected even if it was not marked and registered. If the Orphan Works bill becomes law, any unmarked picture created since 1976 will become a potential orphan in 2008. Can legal scholars justify exposing to infringement millions of legitimate works created in compliance with existing law on the grounds that some of the images might be orphans?

Fifth, any foreign artist whose work would otherwise be protected by Berne would find his work a potential orphan in the US. These artists, many of whom don’t speak English, would be forced to monitor US registries to see that infringers haven’t laundered their work into the public domain, protected by a law unique to the US.

To sum up: Identifying the artist of an unmarked image requires a registry that has more than the artist’s contact information and list of works. Creating digital archives spanning 30 years of past work is an immense chore for artists who have to meet daily commercial obligations. Artists, like other creators, are trying to meet the organizational, financial and legal challenges necessary to create voluntary licensing systems. But it takes time, investment, and creative organization to achieve these goals.

Q: Then what would it take to persuade photographers and illustrators to support orphan works legislation?

A: Here’s what we said in oral testimony before the Senate, April 8, 2006: “We believe the orphan works problem can be and should be solved with carefully crafted, specific limited exemptions. An exemption could be tailored to solve family photo restoration and reproduction issues without otherwise gutting artists’ and photographers’ copyrights. Usage for genealogy research is probably already covered by fair use, but could rate an exemption if necessary. Limited exemptions could be designed for documentary filmmakers. Libraries and archives already have generous exemptions for their missions. And if their missions are changing, they should abide by commercial usage of copyrights, instead of forcing authors to subsidize their for-profit ventures.”

Q: But wouldn’t the Orphan Works Act strengthen the credibility of copyright law by showing that our copyright system can continue to work in a digital age? It would remove one arrow from the quiver of copyright foes, and make it harder to ignore copyright law by claiming it isn’t practical any more.

A: Just the opposite. This bill would be retroactive, betraying all those artists who for 30 years didn’t do what the law didn’t require. Those artists could now see their copyrights cast to the winds. You don’t engender respect for the law by betraying those who have observed it.

Q: But remember what we’re trying to do with orphan works legislation. We’re trying to gain access to content that currently goes unused, while ensuring that if the owner surfaces they will be fairly compensated and have the possibility of stopping use if it is appropriate to do so.

A: The fundamental problem with the Orphan Works Act is that it’s drafted so broadly its use cannot be confined to real orphaned work situations. It will create a class of works that are not orphans but which will be caught in an orphan works net. This will open the door to widespread abuse. Artists will have to depend on vigilance and luck to detect infringements, then identify and locate infringers. If they don’t accept an infringer’s version of “reasonable compensation” they’ll be forced into the courts, perhaps not once or twice in their careers – but on a regular basis.

The Orphan Works Act will create a problem which it says can be solved by creating an entirely new branch of the Federal judiciary to deal with the problem. First, this is illogical. Second, the law is a blunt instrument and should be used only as a tool of last resort. Lawmakers cannot draft laws so precisely as to replace free market decisions. This is why we should not drive an entire class of market transactions into the courts, as the Orphan Works Act would do.

– Brad Holland and Cynthia Turner, for the Board of the Illustrators’ Partnership

This may be republished, posted or forwarded in its entirety to any interested party.

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