A reaffirmation of the law regarding originality for copyright protection under US law

Jade McKellar

For a work to be protected by copyright, a modicum of originality is required. But would a blank form with some text be sufficiently original?

1709 Blog friend Jade McKellar (University of Southampton) discusses a recent decision of the Review Board of the US Copyright Office which confirmed that the answer is ... no.

Over to Jade:

"The United States Copyright Office Review Board affirmed the refusal the register to register a copyright claim to text in the work “Online California DMV Vehicle Registration” on the basis of insufficient creativity.

Some key principles considered by the Review Board relate to:

• Distinction between ideas and expression: Section 102(b) Copyright Act 1976 excludes protection for “any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work” and thus codifies the distinction originated in Baker v Selden, 101 U.S. 99 (1879) between ideas and expression in respect of copyright protection. Copyright protection is available for the expression of ideas, not for the underlying ideas themselves. 
• Merger doctrine (Baker v Selden): where there is one way, or a limited number of ways for an author to convey an idea, the author’s expression cannot be protected under copyright as it would prevent others from using that idea in other works. 

On the basis of these principles the United States Copyright Office has a presumption against the registration of blank forms. The Office’s Regulations preclude registration of “blank forms […] which are designed for recording information and do not in themselves convey information”.

The Copyright Office will examine a work of this type to determine if it contains “an appreciable amount of written or artistic expression” that can be separated from the work’s method of capturing information.

• Originality: A work is registrable it is an “original work of authorship fixed in any tangible medium of expression” 17 USC 102(a). For a work to be “original” it must be an independent creation of the author and contain sufficient creativity (Feist Publications Inc v Rural Tel. Serv. Co, 499 U.S. 340 (1991)). Only a modicum, or more than de minimis, quantum of creativity is necessary. There can be no copyright in a work where “the creative speak is utterly lacking or so trivial as to be virtually non-existent”. A mere simplistic arrangement of non-protectable elements does not demonstrate a sufficient level of creativity for protection (Coach Inc. v Peters, 386 F. Supp. 2d 495 (S.D.N.Y. 2005); Satava v Lowry, 323 F. 3d 805 (9th Cir. 2003)). A combination of non-protectable elements will only be eligible for copyright protection in instances where those elements are numerous enough and their selection and arrangement is original enough to constitute an original work of authorship. 

Background

Cartagz filed an application to register a copyright claim in ‘text, arrangement and layout of text’. This claim was later limited to ‘text’. The work for which registration was sought is represented below:

The United States Copyright Office refused to register the claim on the basis that blank forms and similar works are not protected by copyright. Cartagz requested that the office reconsider its refusal to register. The Office re-evaluated the claims in the First Request and reaffirmed its decision not to register the claim on the basis that the work did not contain sufficient originality or creative authorship. 

Cartagz requested pursuant to 37 CFR 202.5(c) that the Office reconsider its refusal a second time, on the basis that the Office had applied a higher creativity standard than warranted by copyright law, that following Harcourt, Brace & World Inc. v Graphic Controls Corp 329 F. Supp. 517 (S.D.N.Y. 1971). Blank forms have been registrable where they exhibit more than a de minimis amount of creativity, and that the work contains sufficient creativity to obtain copyright protection.

Analysis

The Review Board examined the work in light of the legal standards discussed. The work is a blank form designed to allow the user to record information. Under section 102(b) of the Copyright Act and the merger doctrine, blank forms are not typically subject to copyright protection unless they are shown to contain an appreciable amount of written or artistic expression distinct from the underlying method for recording information.

The Board considered whether the work contains such distinct written or artistic expression to warrant registration: 

• The work’s constituent elements were merely ‘words and shorts phrases, and, as such, are not copyrightable’ (37 CFR 202.1(a)).
• The work as a whole is not sufficiently creative to support registration. Works made by public domain elements may be copyrightable if the selection, arrangement and modification of the elements reflects choice and authorial discretion that is not so minor that “the creative spark is utterly lacking or so trivial as to be non-existent”. Cartagz’s work consists of very few elements, most of which are necessary incidents to allow users to record information, and thus the aggregation of words and phrases in the work lacks sufficient creativity to warrant registration. 

Cartagz’s claim was limited to “text”. However, Cartagz additionally asserted that it intended to maintain a claim in “the selection, coordination, and arrangement of the specific textual and graphical content of the Advertisement as a compilation, which it believed would still be covered by its claim in ‘text.’”.

The Board noted that Cartagz did not register a claim in compilation in the initial application. However, the Board found that even if the compilation rubric were applied in examination of the work, sufficient creative compilation authorship to support registration could not be found. The work does not contain a sufficient amount of creative authorship in respect of the selection, coordination, and arrangements of the work’s constituent elements to warrant copyright protection.

The United States Copyright Office Review Board found that the work, comprising a minimal combination of words and short phrases, lacked the ‘modicum of creativity’ requirement expounded in Feist.

Significance

This decision has reaffirmed the distinction between protectable original expression of ideas and unprotectable underlying ideas in respect of copyright protection, and the criteria for original authorship and creativity. The Copyright Office followed its longstanding presumption against the registration of blank forms on the basis of these principles, and also confirmed the requirement for an above de minimis quantum of creativity in the assessment of the originality of a work.

Lets Get It On...Trial - Another Copyright Infringement Case for Ed Sheeran

Hayleigh Bosher writing on the IPKat

Readers may remember a previous post about an ongoing case in the UK against Ed Sheeran, in relation to his is song "Shape of You". Over the pond, Sheeran is accused of copyright infringement of Marvin Gaye's "Let's Get It On" in his song "Thinking Out Loud".

There are two on-going cases relating to "Let's Get It On" and "Thinking Out Loud", before Judge Louis L Stanton in the New York Southern District Court. Neither of the cases are brought by the Gaye Estate. The song was recorded by Marvin Gaye, but was written by Ed Townsend who owned 2/3rd of the royalties for the song when he died in 2003. 

The first is between Structured Asset Sales (SAS) and Sheeran, his co-writer Amy Wadge and their record labels. SAS is a beneficial owner of one-third of all of the copyright rights of Townsend in all of his catalogue of works, including “Let’s Get it On.”

The second case is brought by Kathryn Townsend Griffin (biological daughter of Townsend, adopted as a child by other parents), and the Estate of Townsend. The latest judgement in this case was filed yesterday, here's what happened: 

Background

Townsend filled a complaint for copyright infringement in June 2018. In response Sheeran denied copying and applied for a Summary Judgement to dismiss the case on the grounds that 

1) the scope of the copyright protection is limited to the sheet music as deposited; 2) the songs are not substantially similar; 3) that any alleged similarities are not protected as commonplace elements; 4) that the plaintiff Kathryn Townsend Griffin lacked standing to bring the case since she was adopted by other parents. 

1) The Scope of Copyright Protection 

Add caption

In support of the application for copyright infringement, Townsend submitted the sheet music for LGO. Sheeran argued that the LGO deposit defines the scope of protection, pointing to a previous case (Wolfe v. Zeppelin 905 F . 3d 1116, 9th C 2018) that held the deposit of the plaintiffs work, rather than the sound recording, defined the scope of protection, since the purpose of the deposit is to identify the work in which copyright is claimed.

Both parties agreed that the LGO deposit copy includes the composition's key, meter, harmony (chord progression), rhythm, melody, lyrics, and song structure, but Townsend argued that the composition is embodied on the Gaye recording.

This is important because, as the court noted, hearing the percussion and bass increases the perception of similarity between the works. At this stage, the court left this question open.

2) Are the Songs Substantially Similar? 

Under US law, to prevail on a copyright infringement claim, a plaintiff must establish that the defendant has actually copied the plaintiff's work; and that the copying is of a substantial similarity exists between the defendant's work and the protectible elements of plaintiff's. The test for substantial similarity is whether an ordinary observer, unless he set out to detect the disparities, would be disposed to overlook them, and regard the aesthetic appeal as the same.

In doing so the court considers, whether an average lay observer would recognise the alleged copy as having been appropriated from the copyrighted work. However, where a work has both protectible and unprotectible elements, the analysis must be more discerning, and involves extracting the unprotectible elements from the consideration. The Court then only asks whether the protectible elements, standing alone, are substantially similar.

In the present case, both parties submitted musicologist reports and agreed to some similarities between the songs such as the I - iii - IV-V harmonic progression, harmonic rhythm with anticipated

Ed Sheerans in the 
music video for TOL

second and fourth chords, melody , bass - line , and percussion. Parties dispute the similarity of the vocal melody, harmonic rhythm, harmony, bass-line and percussion. There is no claim of similarities between the lyrics or song structures.

The Judge noted that the key, tempo, meter, and genre of the two compositions are similar , but are unprotectable elements. Sheeran pointed to other elements - song structure , lyrics , and tone - to highlight the difference in "total concept and feel" between the works; submitting that TOL is characterised by somber, melancholic tones, about long-lasting romantic love, whereas LGO is a "sexual anthem that radiates positive emotions and encourages the listener to get it on".

In light of which, the judge held that the question whether TOL is substantially similar LGO should be determined by trial rather than summarily.

3) Is it Infringement or Are The Parts Taken Common Place?

Sheeran argues that the similar elements between the songs are not protected as commonplace elements. The parties dispute whether the basic I - iii-IV- V chord progression used in LGO is common place, or was commonplace prior to LGO. Townsend conceded that Sheeran's expert identified at least thirteen songs that predate LGO that use the same chord progression, and that it appears in at least two guitar method books. However, they noted that only a dozen or so were identified that contained this chord progression prior to LGO. 

Who you calling common place?
Photo: Isola greca

The parties also dispute whether the harmonic rhythm of that four-chord progression - the second and fourth chords being "anticipated" or placed ahead of the beat - is protectable. Sheeran says its a common place technique, Townsend claims its distinctive.

Both disagreements precludes summary judgment since the question of whether the elements warrant copyright protection is a factual question to be determined at trial.

4) Does the Plaintiff Have Standing?

Sheeran argued that the plaintiff Kathryn Townsend Griffin lacked standing to bring the case since she was adopted by other parents. However, the judge agreed followed the decision of the Superior Court of California which previously ordered that Kathryn was an intestate heir of Townsend

and thus entitled to 30% of the royalties from his music.

Lets Get It On Trial, Summary Judgement Denied

The summary judgement was denied because the judge said that the questions relating to the these issues needed to be decided by trial. This is common since the issue of substantial similarity is frequently a fact issue for jury resolution in the US.

A jury might side with either view; it may be impressed by footage of a Sheeran performance which shows him seamlessly transitioning between LGO and TOL. However, a jury could find several similarities between the two songs and therefore find Sheeran to be infringing.  

The case is very similar to another that the Gaye family bought against Robin Thicke and Pharrell Williams, where they succeeded in claiming "Blurred Lines" copied "Got To Give It Up". As a result, the Gaye family received a pay out of $5 Million and 50% of future royalties. So if Sheeran looses he could be face the same level of damages.

No wallflower: Paper Goods Company Sues Wal-Mart Over Spanish Rose Design

A paper goods company from Florida, Rifle Paper, filed a copyright infringement suit against Walmart in the U.S. Middle District of Florida Court. Hat Tip to Sarah Burstein who posted the complaint online. The case is Rifle Holdings, LLC v. Wal-Mart Stores, 6:17-cv-02105.

Plaintiff creates and sells all kind of paper goods such as cards, calendars, and stationary. It sells them in its Florida store, online and in several department and retail stores as well. The products have been featured in several magazines, and Plaintiff actively promotes them on social media.

Plaintiff owns by assignment the copyright of a design created by Anna Bond, the “Spanish Rose Design”, which is registered with the U.S. Copyright Office. The pattern features small and big roses, some in red, others in pink, with a black center, surrounded by leaves and baby’s breath. The background of the print is dark blue.

The protected work, the Spanish Rose design  

This design has been used on several of Plaintiff’s products, including a phone case, a greeting card, a notebook, and other cards sold throughout the U.S. since 2013. The design has also ben licensed to fashion company Paper Crown, owned by former television actress Lauren Conrad.

The complaint alleges that Beco, a company designing and manufacturing home-textiles goods sold at Wal-Mart under Wal-Mart’s brand “Mainstays”, copied the Spanish Rose Design in several products which were then sold at Wal-Mart. Plaintiff claims that the designs at stake are similar, but for a change of color for the roses, and leaving out details from the original design, such as the baby’s breath. The allegedly infringing pattern was then used on sheets, covers, boxes, plates, shower curtains, even furniture. The pattern is sold with a dark blue background and with a white background.

Plaintiff first noticed this use in October 2017 and sent Beco a cease-and-desist letter to Wal-Mart, which informed its manufacturer of the matter (the letter is reproduced in the complaint as one of the exhibits). The allegedly infringing products continued to be sold at Wal-Mart stores and Plaintiff filed this copyright infringement suit.

Fabric and paper designs are protected by U.S. copyright, unlike fashion designs, and the Spanish Rose has been dully registered. It is undoubtedly original enough to be protected by copyright. Therefore, the crux of the case will be whether the Spanish Rose design has indeed been copied. Also, not all acts of copying are actionable, as some elements of the designs may not be protected by copyright, whereas they are mere ideas or concepts, or are using elements which are the public domain.

How much copying is infringing?

In a 1960 fabric design case, Peter Pan Fabrics, Inc. v. Martin Weiner Corp, famous judge Learned Hand wrote that “[t]he test for infringement of a copyright is of necessity vague,” adding that “[i]n the case of designs, which are addressed to the aesthetic sensibilities of an observer, the test is, if possible, even more intangible.”

In our case, Plaintiff will be easily able to prove that defendant had access to the designs, which are sold in stores around the U.S. and thus will not have to demonstrate that the original work and the alleged infringing work are “strikingly similar.”

Instead, it will have to prove that there are “substantial similarities” between the work protected by copyright and the allegedly infringing work.

Courts use different substantial similarities tests, depending on their circuit. Florida is in the 11^th Circuit, which finds substantial similarity "where an average lay observer would recognize the alleged copy as having been appropriated from the copyrighted work."

In order to decide whether the protected elements of two works are substantially similar, courts in the 11^th Circuit  “compare the various components of the two works, but are mindful that lists of similarities are inherently subjective and unreliable, particularly where the lists contain random similarities, and many such similarities could be found in very dissimilar works”,  Baby Buddies, Inc. v. Toys" R" UsBaby Buddies, Inc. v. Toys" R" Us, Inc.

Proving or denying copying is no bed of roses. Will Wal-Mart try to settle? Stay tuned…

Not every pattern is protected by copyright, even if creating it involved many choices

The Review Board of the U.S. Copyright Office (the Board) recently reviewed a second request by T.W.N. Industries (TWN) for reconsideration of the Registration Program’s previous denial to register two of its patterns. On October 25, 2017, the Board again denied registration to one of the patterns, Gold Wood, but granted registration to the Staggered Carbon Pattern.

TWN’s patterns are designed to be used by applying them to an object, such as an airplane interior for example.

The Board described the two patterns as such:

“Staggered Carbon is a geometric pattern consisting of repeating rectangular bands of different sizes, shapes, and textures, arranged in a woven pattern. The bands are two distinct gray-colored patterns. One band is dark gray with vertical lines, and the other band is light gray with darker gray lines.

Gold Wood is a two-dimensional graphic design consisting of a repeating pattern of striated gold and cream vertical lines, made to resemble a light wood grain. “

The U.S. Copyright Office had originally denied in September 2016 copyright registration to both patterns, informing TWN that they lacked the minimum amount of creative pictorial, graphic or sculptural authorship necessary for a work of visual arts to be protected by copyright. 

Deemed Worthy of Copyright Protection 

TMW then asked the Copyright Office to reconsider its refusal, and  explained the creative process used for both patterns, which both necessitates the use of up to three layers within Photoshop, and were hand-drawn using different brushes and strokes.

The Copyright Office again denied registration, as “the elongated rectangular bands” which made up the Staggered Carbon pattern “are a common and familiar shape” and the lines making up the Gold Wood pattern were also “a common and familiar shape” and thus could not be protected by copyright. The Copyright Office also found that the Gold Wood's features were not "combined in any way that differentiates them from their basic shape and design components," and were a "simple configuration" not protectable by copyright as "the work as a whole consists of vertical lines in shades of gold and cream.”

TMW asked the Copyright Office to reconsider its refusals for a second time, as allowed by 37 C.F.R. § 202.5 (c), claiming that both works were original enough to be protected by copyright, which bears the question: what is originality under U.S. copyright law?

What is originality under U.S. copyright law?

Under 17 U.S.C. § 102(a), U.S. copyright protects only "original works of authorship." The threshold for a work to be original is, however, quite low. As explained by the Supreme Court in Feist Publications, Inc. v. Rural Telephone Service Co., Inc. , “[t]he sine qua non of copyright is originality. To qualify for copyright protection, a work must be original to the author. … Original, as the term is used in copyright, means only that the work was independently created by the author (as opposed to copied from other works), and that it possesses at least some minimal degree of creativity.”

Thus two cumulative conditions are necessary for a work to be protected by copyright:

-          It must have been independently created by the author and

-          It must possess at least some minimal degree of creativity

A combination of unoriginal elements can be original enough to be protected by copyright

The Board noted that [s]ome combinations of common or standard design elements may contain sufficient creativity with respect to how they are juxtaposed or arranged to support a copyright… [but that] not every combination or arrangement will be sufficient to meet this test.”

It quoted the 2003 Satawa v. Lowry 9^th Circuit case, where the court explained that, while

“a combination of unprotectable elements may qualify for copyright protection… not … any combination of unprotectable elements automatically qualifies for copyright protection. Our case law suggests, and we hold today, that a combination of unprotectable elements is eligible for copyright protection only if those elements are numerous enough and their selection and arrangement original enough that their combination constitutes an original work of authorship.”

The Board also quoted § 906.1 of the Compendium of U.S. Copyright Office Practices on Common Geometric Shapes, which explains that “the U.S. Copyright Office will not register a work that merely consists of common geometric shapes unless the author’s use of those shapes results in a work that, as a whole, is sufficiently creative.”

Staggered Carbon is original enough to be protected by copyright

The Board found that “the combination of elements in Staggered Carbon - namely the different textures on the bands, as well as their arrangements - exhibits copyrightable authorship,” and was original enough to be protected, quoting Feist, where the Supreme Court held that only a ‘modicum’ of creativity is necessary for a work to be original.

However, only the “specific combination of textures” created by TWN are protected by copyright, not the “standard designs and other unoriginal elements.”

Gold Wood is not original enough to be protected by copyright

But even though the Board recognized that Gold Wood had been independently created, it was not creative enough to be protected by copyright, as “it consists of simple, minor variations on common shapes arranged in an obvious and uniform manner.” The Board explained further that Gold Wood “is made up of only a very few elements (monochromatic lines in a few shades of gold” arranged in an unoriginal manner (densely and with only minor and repeating variations throughout the pattern).” As explained in § 313.4(J) of the Compendium of U.S. Copyright Office Practices, “a work consisting of a simple combination of a few familiar symbols or designs with minor linear or spatial variations, either in two-dimensional or three-dimensional

form, cannot be registered.”

TWN argued that it had to make “specific choices from endless alternatives of shapes” to create Gold Wood. But the Board explained that “it is not the possibility of choices that determines copyrightability, but whether the resulting expression contains copyrightable authorship.”

Tattoo Copyright Infringement Suit Dribbles On

Readers of this blog may remember that Solid Oaks Sketches filed a copyright infringement suit against Take-2 Software, the maker of the NBA 2K video game, claiming that its reproduction of several tattoos worn by famous basketball players was copyright infringement. The case is still ongoing in the Southern District of New York, and defendants filed this month a motion for judgment on the pleadings, where they argue that the use was fair use. HT to the Hollywood Reporter.

Solid Oaks bought the copyright for the tattoos of Eric Bledsoe, Lebron James, and Kenyon Martin, which were created by several tattoo artists. These players appear in the NBA 2K game, complete with their tattoos. Solid Oaks claims this is copyright infringement. Take-2 argues that the use is de minimis and fair use.

A real-life depiction

The tattoos “only appear on the players on which they were inked in real life, not other real-world players or fictional characters” (p. 13). Indeed, the NBA 2K game, which is updated every year, depicts over 400 current and retired NBA players “realistically. …These depictions have realistic facial and physical features… They wear jerseys and sportswear with the numbers, colors and logos of their teams. The game even depicts NBA-branded socks” (p.9).

The tattoos at stake were each created specifically for the players. As explained in the motion, “[e]ach tattoo was created as a custom tattoo intended only for the player on which it was inked… Thus, they are imbued with special meaning for the players. For instance, Solid Oak admits that “Child Portrait Tattoo Artwork” depicts LeBron James’s son… Similarly, “330 and Flames Tattoo Artwork” depicts the number 330, which is the area code for Mr. James’s hometown” (p. 12).

Defendant argues that Plaintiffs “seek to hinder the ability to depict people as they appear in real life” (p.6), and that Plaintiff is contending that these famous basketball players must now seek its permission each time they appear in public, in films, or when being photographed.

Use is de minimis

Defendant is arguing that the use of the protected work is de minimis. “[T}rivial copying does not constitute actionable infringement” Newton v. Diamond, 388 F.3d 1189, 1193.

There are 400 players available in the video game, and so the tattoos only appear when the three players featuring the tattoos which copyright is owned by plaintiff appear in the game. Also, the tattoos appear very small in the game and thus are very difficult to see. For Defendant’s the tattoos “are just one of the myriad of elements that makeup NBA 2K” (p.13).

Use is fair use

Defendant is also arguing that it “is not a rival tattooist that has replicated a creative design and inked it on a new person. Rather, its use is completely different in a massive, highly creative video game featuring a virtual world that only uses player tattoos to realistically capture how the players actually look. Each of the factors that courts consider supports a finding of fair use.”

Defendant reviewed each of the four fair use factors and argued that each of the factors is in its favor.

The first factor, the purpose and character of the use, is in Take-Two’s favor because it “uses the Tattoos for a different purpose than that for which they were originally created. While the Tattoos originally were created as the NBA players’ self-expression, Take-Two uses them merely to replicate how the players appear in real life.”

The second factor, the nature of the copyrighted work, should also be in Defendant’s favor because “Take-Two uses them to depict the world accurately.”

The third factor, the amount and substantiality of the portion used, should be in Defendant’s favor because the “use was reasonable given that its purpose was to depict real life accurately, and using any less of the Tattoos would defeat that purpose.”

The fourth fair use factor, the effect of the use upon the potential market, should be in Defendant’s favor because Plaintiff “admitted that it is contractually prohibited from inking the Tattoos on other people, meaning that Take-Two’s use cannot harm that market.”

What about right of publicity?

This is a copyright infringement suit and the players are not parties in the suit. However, one could imagine that they could file a suit against the owner of the copyright of their tattoos for tortious interference in contractual relations, if not owning the copyright of their tattoos would prevent them from licensing their likeness. On the other hand, one can argue that the owner of the copyright has the right to be financially compensated if the work is reproduced, especially for in a commercial venture.

These players are celebrities, but our likeness is more and more used for marketing purposes. A few thousand followers on social media may land us all a lucrative marketing deal. If we sports tattoos but do not own their copyright, should we secure a license before posting selfies? As Jack London once said [on Twitter]: Show me a man with a tattoo and I'll show you a man with an interesting copyright license.

CCIA releases white paper on US copyright reform

As 1709 Blog readers may be aware of, debate is currently being undertaken in the US regarding possible reforms in the area of copyright. Among other things, the House Judiciary Committee could see substantive copyright reform legislation introduced before the end of this year.

To participate in such a discussion, a few days ago the Computer and Communications Industry Association (CCIA) released a white paper on Copyright Reform for a Digital Economy along with a webinar by author and CCIA Vice President Matt Schruers.

As reported in the relevant press released, according to Mr Schruers “Technological innovations have changed the U.S. economy by rapidly reducing the cost of content creation, distribution, and discovery. In an information economy, copyright reform is no longer a conversation about a few specific industries; it’s a conversation about how we regulate most of the nation’s industry — including many of our most successful export sectors. As policymakers consider reform measures, they will need to accommodate new technology and provide business certainty within the constraints of a complex existing copyright system and international obligations”.

Orphan works in the US: getting rid of “a frustration, a liability risk, and a major cause of gridlock”?

Rike Maier

What is going on with orphan works in the US? The 1709 Blog is delighted to host a thoughtful guest contribution by Rike Maier, a PhD researcher at Humboldt University Berlin and researcher at the Humboldt Institute for Internet and Society.

Here's what Rike writes:

“Just a couple of weeks ago, in June, the US Copyright Office published a comprehensive (234 page!) report on the topic of orphan works and mass digitisation. The report deals with the questions of whether legislation is needed to tackle the orphan works problem and, if so, what that legislation should look like.

But let’s back up. 

An orphan work is a work protected by copyright whose rightsholder is unidentifiable or untraceable, making it impossible to seek out a license. This means that a large percentage of works [in Europe, for instance film archives estimate that around 20% of works in their collections are orphans (note that these are however covered by the Orphan Works Directive)] cannot be used legally, if the intended use is not already covered by one of the existing exceptions and limitations to copyright. 

While the issue was discussed most prominently in the context of books and mass digitisation, the orphan works problem has frustrated various kinds of potential users around the world. In Europe, the topic received a lot of attention and is the subject of an entire directive, ie the 2012 Orphan Works Directive. The exception this directive introduces, however, is quite narrow and many commentators have questioned its effectiveness. That is particularly because it requires users to conduct a diligent search for rightsholders that many institutions consider too time-consuming and too costly.

Across the Atlantic, lawmakers and scholars have followed European developments closely. Several attempts at passing orphan works legislation in the US (in 2006 and 2008) remained unsuccessful. Prominent scholars (see eg here) noted that it would be sensible to just rely on the existing fair use doctrine to deal with orphan works, especially for libraries’ digitisation projects. Fair use, the most important exception and limitation to US copyright, is open-ended and allows courts to consider several factors to decide whether the use is fair or whether it constitutes a copyright infringement. The orphan works status could be taken into consideration at several levels, eg in relation to the nature of the copyrighted work or the market factor (as a clear case of market failure).

Despite these arguments, the Copyright Office decided to review the topic of orphan works and started another series of public roundtables in 2014. These roundtables brought together a number of experts and diverse stakeholders, and were designed to advise Congress on potential legislative solutions (all transcripts and videos available here).

In its report, the US Copyright Office published its findings on the topic, and also considered the experiences other countries (and the EU) have made with orphan works legislation thus far. Interestingly, the recommendation the US Copyright Office makes is at its core a limitation of liability. That basically means that a reappearing rightsholder cannot claim full damages that would usually be available to him in case of a copyright infringement – if the infringer considered the work to be an orphan (details below). The Copyright Office rejects the idea of relying only on fair use or best practice statements, and also does not want to introduce a new exception to copyright (as we did in Europe). Rather, it goes back to the idea – limitation of liability – it had already lobbied for in the past. In fact, many aspects of the report are similar to the Shawn Bentley Orphan Works Act of 2008, which eventually failed in the House of Representatives.

Core elements of the legislation proposed in the US Copyright Office’s report…

… specifically for orphan works

A good overview of the criteria the US Copyright Office considers important for future legislation can be found on the 1709 blog. The main idea set forth in the report is to limit a reappearing rightsholder’s monetary relief to a “reasonable compensation”. One major element we know from the European approach also made its way into the US proposal: the diligent search requirement combined with a notice of use [the diligent search was already part of previously proposed legislation in the US, but not the notice of use requirement]. However, going much further than the European exception, the US proposal would also allow derivative uses and would limit injunctions for these types of uses (as long as the infringer pays a fee and provides attribution). Interestingly, and also new to the US orphan works proposals, this limitation on injunctions would not apply if the use of the work “would be prejudicial to the owner’s honor or reputation, and this harm is not otherwise compensable”.

The US Copyright Office’s main argument for rejecting a solution that only relies on fair use is that courts have “yet to explicitly address how to apply fair use to orphan works” and that “because of its flexibility and fact-specific nature” fair use jurisprudence is “a less concrete foundation for the beneficial use of orphan works than legislation.”

… for mass digitisation projects

The second part of the report deals with something entirely new to the US system: extended collective licensing (ECL) for mass digitisation projects. Here is how the US Copyright Office explains what ECL is:

“In an ECL system the government ‘authorizes a collective organization to negotiate licenses for a particular class of works (e.g., textbooks, newspapers, and magazines) or a particular class of uses (e.g., reproduction of published works for educational or scientific purposes)' with prospective users. By operation of law, the terms of such licenses are automatically extended to, and made binding upon, all members of the relevant class of rightsholders including those who do not belong to the collective organization unless they affirmatively opt out. ECL differs from compulsory licensing in that private entities, rather than the government, establish royalty rates and terms of use. In that respect, ECL 'is thought to be beneficial because it preserves the freedom to contract more so than alternative compulsory license schemes.'”

Some experts at the roundtables had spoken up against introducing ECL, arguing that it does not fit within the US copyright system, that poses the risk that averse users will license rather than to rely on fair use, or that a lot of money would be generated that is non-disbursable. So far, the US Copyright Office has not set forth a formal legislative proposal for ECL. Rather, it wishes to explore a pilot program that would be (at least initially) limited to certain types of published works and certain types of users and uses. Overall, the addressees look a little like the beneficiaries of the EU orphan works exception: libraries and archives that fulfil their non-profit goals and digitise their collections (literary works, embedded pictorial or graphic works, photographs).

... Hopefully

Where the US Copyright Office’s ideas may work better than the EU approach

Apart from the overall different approach (limitation of liability rather than exception), the scope of the proposed orphan works legislation is also much broader than that of the Orphan Works Directive. While only certain cultural heritage institutions benefit from the EU directive for reproductions and making works available to the public, the US proposal for orphan works would apply to all types of users and all types of uses. Therefore, private actors like Wikimedia or documentary filmmakers that the EU directive does not privilege could also rely on the proposed US legislation to, for example, make derivative works.

Similarly, while the EU directive is limited to certain types of works (ie books and other writings, audiovisual and cinematographic works, and embedded works), the US proposal would cover all types of orphan works, including even orphan photographs. These tend to raise a lot of concerns on the side of rightsholders, in the sense that photographs may be unduly considered orphan. When orphan works legislation was passed in the UK (a much broader licensing scheme that applies in parallel to the European mandated exception and is also not limited to certain types of works), some commentators were even alarmed that the UK “abolished copyright”. In the US, photographers also voiced the most concerns, for example, that on the Internet, their works often get separated from the rights information. These issues, however, did not sway the US Copyright Office. It referred photographers to databases and projects such as the PLUS registry or the UK Copyright Hub that help users to identify rightsholders of photographs. And, in “the unlikely but unfortunate event that a work of visual art is erroneously claimed by a user to be ‘orphaned,’ and cognizable damages to the owner result, a small claims tribunal” should be set up.

That the scope of the proposed US legislation is much broader may already make the orphan works legislation less of a niche project than the EU directive. Some aspects, such as the orphan works proposal also applying to unpublished works, would likely never be possible in Europe. The fact that the US Copyright Office acknowledges that the diligent searches are not feasible for libraries’ and archives’ mass digitisation projects also seems to be an important lesson learned from the European experiences.

Some disappointed stakeholders and still time for comments

However, not everybody is excited about the orphan works part of the report, particularly the search and notice of use requirements. This aspect makes some potential users as unhappy as the search requirements in the Orphan Works Directive make their European colleagues. For example, the Association of Research Libraries noted in an issue brief that the “notice of use is a burdensome requirement that will require time and resources and could significantly undermine the usefulness of the legislation”. As such, it would prefer to rely on fair use and best practice statements. The issue brief thus highlights that the time-consuming search and notice of use requirements may deter as many (or more) users than does the legal uncertainty that comes with fair use. Some commentators let out their frustration even more directly, and called the proposal “ridiculous” and “doubling down on the problem itself”.

While it seems understandable that the search requirements are time-consuming and complex, it does appear to be that big a burden to then also document this search. Particularly, because: 1) this documentation has the advantage of allowing possible rightsholders to see that their work is considered an orphan; and because 2) a bit different from the situation in Europe, the US proposal only sees the documentation as a “mechanism for isolated uses”, and plans a different regime for mass digitisation projects [Member states can however introduce legislation for mass digitization projects on their own, Recital 4 in the Orphan Works Directive states that the “Directive is without prejudice to specific solutions being developed in the Member States to address larger mass digitisation issues, such as in the case of so-called 'out-of-commerce' works”] (even though this again is limited to certain types of works, see above). One advantage that could come with a searchable notice of use register – ie avoiding duplicate searches – is however denied by the US Copyright Office. “[E]very prospective user must satisfy the diligent search requirement independently”, and checking the notice of use registry will not be sufficient.

We will see if this proposal will be more successful than its predecessors. It certainly has promising elements, even though some stakeholder believe the search and notice of use requirements will continue to make orphan works a source of frustration.

In the meantime, for all those who have some ideas to share about implementing the ECL pilot program, it’s time to comment! The Copyright Office has published a Notice of Inquiry and accepts written comments until 10 August 2015."

Thanks so much Rike for such a great and detailed analysis!