1709 Blog: for all the copyright community

Tuesday, 7 July 2015

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!

Monday, 6 July 2015

Who are the addressees of the InfoSoc three-step test? A new article

National courts as addressees
of the InfoSoc three-step test?!?
This question has probably haunted the minds and hearts of many 1709 Blog readers. 

This is because, unlike the three-step test in international copyright instruments, it is uncertain who the addressees of the test in Article 5(5) of the InfoSoc Directive are. Are they national legislatures only, or national legislatures and courts alike?

Mr Justice Richard Arnold and I have just completed an article [available here] on this very issue, that will be published by the Journal of Intellectual Property Law & Practice.

The title of our contribution is Are national courts the addressees of the InfoSoc three-step test?.

And here's the abstract:

"Directive 2001/29/EC (the ‘InfoSoc Directive’) contains an exhaustive list of exceptions and limitations that Member States are free to implement into their own copyright laws (save that the exemption for temporary copies is mandatory). Article 5(5) incorporates the three-step test and mandates that exceptions and limitations shall only be applied in certain special cases that do not conflict with a normal exploitation of the work or other subject-matter and do not unreasonably prejudice the legitimate interests of the rightholder. Unlike the three-step test in international copyright law, it is uncertain whether the three-step test in the InfoSoc Directive is addressed to national courts as well as the legislatures of the Member States.

Recent case law of the Court of Justice of the European Union (‘CJEU’) has provided guidance in this respect. Although the Court has held that Article 5(5) of the InfoSoc Directive is not intended to affect the substantive content of the exceptions contained in Article 5(1), (2) and (3) thereof, and hence cannot extend their scope, and has held that, if acts clearly fall within one of those exceptions, then they satisfy Article 5(5), it has also held that those exceptions must be construed in the light of Article 5(5). More significantly, despite holding that Article 5(5) takes effect only at the time that the exceptions are applied by the Member States, the CJEU has also held that the acts of the defendant in question must satisfy the requirements of Article 5(5). As such, it appears from the CJEU’s jurisprudence that the three-step test in the InfoSoc Directive is addressed at national legislators and courts alike.

The consequence of this is that, even in those Member States that have not transposed the language of the three-step test into their own legal systems, courts must determine not only whether the acts of the defendant in question are eligible for the application of a certain exception or limitation, but also whether they comply with the cumulative conditions set in the InfoSoc three-step test."

Friday, 3 July 2015

Did you RT a © today? Photographer Sues Infringers and Retweeters

A photographer is suing a beverage company which allegedly used without permission one of his photographs on social media. The case is interesting, as the photographer chose to sue not only the company and its employees and contractors, but also the social media users who republished the photograph on social media, by a retweet, or a pin. The case is Dennis Flaherty v. Big Red, 1:15-cv-00566.
Dennis Flaherty (Plaintiff) is a professional photographer, living in California. He claims that beverage company Big Red (Defendant) used without permission one of his photographs representing Fort Alamo at night, or a “near perfect copy” of it, to create social media postings marking the 179th anniversary of the Battle of the Alamo, which ended on March 6, 1836. Big Red is located in Texas and thus the photograph “conveys a meaning and a direct relationship” with its place of business. Plaintiff owns the copyright of the photograph and registered it with the Copyright Office.

Defendant allegedly added a watermark or logo of BIG RED on the photograph before posting it online and Plaintiff claims that, as such, Defendant placed its registered trademark on the photograph. Plaintiff provided screenshots of alleged social media use of this photograph by Defendant (see here for screen shot of use on Twitter and on Facebook). They show images of Fort Alamo at night, identical or very similar to Plaintiff’s own photograph, with some slight modifications such as deleting a flag pole. Plaintiff is seeking  statutory damages for copyright infringement.
 Posting on Social Media as Vicarious Infringement
Plaintiff is also suing John Does, employees or contactors of Big Red who were in charge of creating, monitoring, controlling and editing these social accounts, for vicarious copyright infringement, which “occurred because Defendants have or had a right and ability to supervise the infringing act, and received a benefit or a direct financial interest therefrom.” The complaint alleges that Defendants “received a direct financial benefit” from the infringing use of the photograph, as at was used to “draw…. customers, third parties, internet users, followers… to Defendants business activities.” Plaintiff is seeking actual, or, alternatively, statutory damages for vicarious infringement.

Retweeting as Contributory Infringement

Plaintiff also claims that Defendants induced copyright infringement by distributing the photograph to third parties, that is, social media users who retweeted, pinned or liked the original social media post containing the infringing photograph. Plaintiff claims that, as such, they “stood in the shoes of the Plaintiff and licensed the image to Twitter,” citing Twitter’s Terms of Service which provide that by submitting content, users provide Twitter with a royalty-free license, thus allowing the social media site to make one’s tweets “available to the rest of the world and let others do the same.” Plaintiff is seeking actual, or, alternatively, statutory damages, for contributory infringement as well.

It is very unlikely that Plaintiff will be awarded any damages from any social media user. Plaintiff claims that the contributory infringement was intentional, but proving that it is would be impossible. As noted by Plaintiff himself, the photograph bore the Big Red trademark. As such, social media users were likely to believe that the use was legal, even if they knew that the copyright of the photograph was owned by Plaintiff, as he could very well have licensed it.
But this case got me thinking about copyright small claims courts. If such courts are ever established in the United States, would copyright owners sue social media users who had republished infringing material? Let’s say that social media users would ‘only’ face, for instance, a $50 fee awarded in a small claim court for having retweeted or pinned infringing material. Granted, only people posting under their real name could effectively be sued. But Facebook has a “use only your own name” policy, which is enforced, and many Pinterest or Twitter users post under their real name as a way to promote themselves and to build relationships and contacts. Fearing that retweeting a particular tweet may or may not lead to a fee would certainly have a chilling effect on speech, especially if the fees start to add up. Retweeting an ad may not necessarily contribute much to the marketplace of ideas, but the ad in our case meant to commemorate an historical event, and showcased one of the most famous U.S. monuments.

However, some may argue that having a way to make social users pay a fee for unauthorized use of protected work may eventually lead to people thinking twice before using images found online. The debate is likely to heat up if the issue of copyright small claims courts takes central stage in Congress (not likely for now).

 Image is courtesy of Flickr user Thomas Hawk under a CC BY-NC 2.0 license.

Thursday, 2 July 2015

Charles Dickens and copyright reform: a direct descendant writes ...

The latest issue of the Authors' Licensing and Collecting Society's ALCS News features an entertaining article by Lucinda Hawksley, "Charles Dickens, Copyright Pioneer", which you can read and enjoy here.  Lucinda is not only an author in her own right: she may have a genetic predisposition to write, being the great great great-grand-daughter of Charles Dickens himself. The article looks particularly at Dickens' battle for recognition of the rights of foreign authors in the then-unsympathetic United States.

This blogger notes that Charles Dickens' interest in intellectual property was not confined to copyright reform.  He was also concerned at the cost and inconvenience of obtaining a patent, as evidenced in his "Poor Man's Tale of a Patent" (here) and in his blistering attack on the inefficiency of the civil services, as epitomised by the Circumlocution Office, a lightly disguised version of the Patent Office from which Daniel Doyce struggled in vain to secure protection for his invention in Little Dorrit.

Wednesday, 1 July 2015

Box office receipts and the PRS tariff: consultation period extended

Another media release that slipped this blogger's attention when it arrived is a joint statement by PRS for Music and the Concert Promoters’ Association, headed "PRS for Music to extend consultation on Tariff LP". The release concerned
" ... an extension on the consultation period for Tariff LP which is applied to ticketed live popular music events such as concerts and festivals. Originally Monday, 8 June 2015, the deadline for responses is now 30 September 2015.

The extension has been granted following the Concert Promoters’ Association’s (CPA) stated interest in conducting its own research in response to PRS for Music’s consultation documentation which was announced on April 13. The extension will allow the CPA and other industry groups to respond comprehensively to the consultation. PRS for Music welcomes the industry-wide commitment to engaging in this process. The CPA represents 45 members and 14 associate members that are active promoters of live music concerts, concert tours, events and festivals.

The extension is also supported by the following industry bodies in the live sector: Association of Independent Festivals, Association of Festival Organisers, British Association of Concert Halls, Music Venues Trust, National Arenas Association, National Open Air Events Association, Society of London Theatre/UK Theatre, Night Time Industry Association and The Event Services Association/Event Industry Forum.

The aim of the consultation is to conduct a comprehensive review across the live music industry to ensure that PRS for Music operates an appropriate tariff for its customers and members.
This tariff is applied to ticketed live popular music events such as concerts and festivals performing songs composed by PRS for Music songwriters and composers. The tariff was originally set in 1988 and works out at 3% of gross box office receipts per event. A separate tariff, Tariff LC, which applies to live classical music concerts, is not within the scope of this consultation.

Further details can be accessed from the PRS website here.

The CopyKat - easy on a Wednesday

It takes quite a number of hands to create a motion picture - camera operators, set designers, lighting directors, the director and the cinematographer to name but a few. Quick on the heels of the en banc decision by the majority of the 9th Circuit in the 'Innocence of the Muslims' case which held on further appeal that the contribution of an actor cannot be copyrightable because "defining a 'work' based upon 'some minimal level of creativity or originality' ... would be too broad and indeterminate to be useful",  the 2nd Circuit Court of Appeals has now ruled that individual contributions can't be recognized as works of authorship insofar as becoming independently copyrightable. The opinion from Circuit Judge Robert Sack on 'Heads Up' director Alex Merkin's claim says "We have never decided whether an individualʹs non‐de minimis creative contributions to a work in which copyright protection subsists, such as a film, fall within the subject matter of copyright, when the contributions are inseparable from the work and the individual is neither the sole nor a joint author of the work and is not a party to a work‐for‐hire arrangement," he writes. "We answer that question in the negative on the facts of the present case, finding that the Copyright Actʹs terms, structure, and history support the conclusion that Merkinʹs contributions to the film do not themselves constitute a 'work of authorship' amenable to copyright protection." More here.

The Supreme Court has declined to hear the case between Oracle v. Google, sending the long-running case back to a lower court where Google will have to argue that it made fair use of Oracle's copyrighted APIs. A ruling in favour of Oracle could give some technology firms "unprecedented and dangerous power" over developers by making it substantially more difficult for upstarts to create new software according to the Electronic Frontier Foundation says - unless of course fair use laws so turn out to protect the use of APIs.

Jacobus Rentmeester has failed in his claims of (i) copyright infringement; (ii) vicarious copyright infringement; (iii) contributory copyright infringement; and (iv) a breach of the Digital Millennium Copyright Act (DMCA) against Nike, which stem from his iconic picture
of basketball star Michael Jordan in his Olympic warm-ups in 1984 for an issue of Life Magazine. The case is Rentmeester  v Nike Inc., (No.3 : 15-cv-00113-MO). In his decision, District Judge Mosman granted Nike Inc.’s motion to dismiss Rentmeester’s claims - all of the details on the IPKat here.

Torrentfreak reports that a court in Nanterre in France has ruled that a magazine publisher violated French copyright law by running an article offering some top tips on how to access illegal sources of music and movie content online, including the 'low down' on the best torrent clients, and guidance that Google is the pirate's friends because "with some clever keywords and in a handful of clicks you will fill your hard drives with joy and laughter". The publisher of  computer magazine Téléchargement was fined 10,000. Torrentfreak say that under French law it’s forbidden to “knowingly encourage” the use of software that’s clearly meant to infringe copyrights, with a maximum prison sentence of three years and a €300,000 fine. (I am sure the FrenchKat an correct me if this is wrong!).  SCPP took action after the magazine's cover featured a pirate skull and advertised “the best software and websites to download for free.”

And finally, LA-based domain registrar Namecheap has been ordered to hand over the personal details of one of its customers, a person suspected of being involved in the ongoing attempts to keep Grooveshark - or at least a music service using that name - online. The action was brought by the Recording Industry Association of America (RIAA).

Online-only art auctions: more bad news for artists?

In "Goodman and de Pury launch web-only auctions with promises to keep down fees", Roland Arkell, in the Antiques Trade Gazette, here, describes a new business model which has some repercussions for copyright too. The article explains that
"[t]wo senior members of the international auctioneering profession launch separate online-only ventures this week. Tim Goodman and Simon de Pury are embracing the digital revolution, looking to challenge a centuries-old business model with a footloose approach to selling art and antiques at auction. Goodman's Fine Art Bourse (FAB) hopes to gain traction in the market via an innovative pricing model. Meanwhile de Pury's eponymously titled firm is promising to reduce buyer's fees to 15%.

The headline statistic at FAB is that they will charge vendor's and buyer's fees of just 5% with a 72-hour packing and shipping service - so often a barrier to entry for bidding online - 'free' for both buyers and sellers. They add that transaction charges will be exempt of sales taxes or artist resale royalties, as sales are processed through headquarters in Hong Kong  ..."
It's not just the avoidance of artists' resale rights that will be of interest to copyright-sensitive readers. The production of glossy art auction catalogues provides an opportunity for the artist to charge for the reproduction of his or her work -- but if a web-only auction means web-only marketing, those deliciously desirable must-have catalogues, which have value as reference works in their own right and are held by art libraries for such purposes, may also be a thing of the past, replaced by a screenful of thumbnail images, perhaps.

Thanks go to John Walker for drawing my attention to this development.

Tuesday, 30 June 2015

Sirius settles pre-1972 sound recordings claim in USA

US satellite broadcaster Sirius XM has reached a settlement with all three major record labels  over the long-rumbling pre-1972 copyright dispute in the US, which has been highlighted in the actions brought by Flo & Eddie of the band the Turtles in New York, California and Florida. The recording Industry Associatoin of America (RIAA) claim settlement also includes ABKCO – the owner of classic Rolling Stones copyrights – and the claimants (Capitol Records LLC, Sony Music Entertainment, UMG Recordings Inc, Warner Music Group and ABKCO) have jointly been awarded $210m as part of a settlement with Sirius. In a statement, Sirius said: “The settlement resolves all past claims as to our use of pre-1972 recordings owned or controlled by the plaintiffs and enables us, without any additional payment, to reproduce, perform and broadcast such recordings in the United States through December 31, 2017. As part of the settlement, we have the right, to be exercised before December 31, 2017, to enter into a license with each plaintiff to reproduce, perform and broadcast its pre-1972 recordings from January 1, 2018 through December 31, 2022.” That license should ensure that the majors, at least, are compensated for the performances of pre-1972 copyrights on Sirius in the States within the five year period. Sirius said: “The royalty rate for each such license will be determined by negotiation or, if the parties are unable to agree, binding arbitration.”

Michael Huppe, chief executive officer and president of the sound recording rights collection society SoundExchange said: “While it unfortunately required a lawsuit to make SiriusXM do the right thing, we are pleased that these legacy artists are finally getting the respect – and compensation – they deserve for the use of their music.

Welcoming the settlement, the head of the labels trade body in the USA, the RIAA, Cary Sherman, told reporters: "This is a great step forward for all music creators. Music has tremendous value, whether it was made in 1970 or 2015. We hope others take note of this important agreement and follow Sirius XM's example" - the 'others' no doubt a pointed reference to rival service Pandora. Flo & Eddie's litigation is ongoing, and it now has class action status meaning artists and labels not covered by the RIAA's deal will benefit if the duo ultimately prevail.

Sirius said that, between them, Universal, Sony, Warner and ABKCO control “approximately 80% of the pre-1972 recordings we have historically used”.