Amanda N. Wilson , Jet-setting Orphan Works: the Transnational Making Available of Works of Unknown Authorship, Anonymous Works, or Lost Authors

• Publication year: 2009

JET-SETTING ORPHAN WORKS: THE TRANSNATIONAL MAKING AVAILABLE OF WORKS OF UNKNOWN AUTHORSHIP, ANONYMOUS WORKS, OR LOST AUTHORS

INTRODUCTION

One of the problems plaguing international copyright law today is the lack of clarity and consistency among the laws of different countries.¹Because copyright law around the world continues to change with noted frequency, there is very little notice to copyright owners and authors as to the scope of protection afforded their works, as well as future notice to potential copyright users.²Nowhere is this problem more pervasive than in the laws concerning the transnational "making available" of orphan works.³

The term "orphan works" denotes those works in which "rightholders cannot be identified or, if they can be identified, they cannot be located . . . ."⁴An orphan work has also been defined as: a work protected by copyright but the current owner is unknown or untraceable by diligent search. The current owner of the copyright might be the author or other creator, some other first owner if the rights (such as the author's employer-when applicable) or a publisher) or any right holder who is presumed to be the right holder according to the legislation or contractual agreement or any successor of the first owner.⁵

In the United States and elsewhere, this occurs as a result of missing or inaccurate information at the registration-seeking phase of copyright protection.⁶Especially since the Berne Convention has abolished the requirement of any formalities before receiving copyright protection,⁷there is no provision mandating that copyright owners register specific details of their work in order to receive protection.⁸Berne Article 5(2) states that "enjoyment and the exercise of these rights shall not be subject to any formality."⁹Orphan work status can also result from older copyrights, which may not have been registered or were not submitted to an archival database, such as the Library of Congress for copyrighted works in the United States.¹⁰To stress the enormous extent of this problem, the British Library estimates that 40% of its copyrighted collection is comprised of orphan works.¹¹This means that many authors are not collecting licensing fees for the use of their works. It may also mean that some works are not being used or accessed at all because the author cannot be located. In the United States, some use of orphan works would still be permitted under a fair use analysis,¹²but the instances where fair use applies are rare and do not solve the issue.¹³For example, a newspaper could still report newsworthy expression from an orphan work, but a filmmaker could not adapt a screenplay by a lost author.¹⁴Now, "would-be users . . . must decide whether to renounce their projects or to incur the risk that the copyright owner will reappear once the exploitation is underway, and will demand both injunctive and substantial monetary relief in an ensuing infringement action."¹⁵

The issue of what law to apply to transnational disputes over copyright infringement is complicated, especially when it involves the transnational use of an already complicated group of works, such as orphan works, which may or may not have been used according to an appropriate scheme, such as a clearance search and/or payment of a licensing fee.¹⁶And then, what country's law should determine the correct "taking"¹⁷of that orphan work? The central

Id. A fair use analysis consists of a four factor statutory test, which must be analyzed to determine whether a particular use qualifies for this exception. See, e.g., Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 578 (1993). The first factor looks to the purpose and character of the use, meaning that transformative uses of a work are more likely to qualify as fair use, whereas superceding or commercial uses are less likely to qualify for the exception. Id. at 578-79. The second factor analyzes the nature of the copyrighted work. Id. at 586. Here, the court looks to see if the work is something traditionally covered by copyright (such as a fictional novel) or is something not traditionally covered by copyright law (such as a work more factual in nature). Id. The third factor is the amount and substantiality used in relation to the copyrighted work as a whole. Id. This means that if a user takes the majority of a work, or the heart of a work, he or she is less likely to qualify for the fair use defense to infringement. Id. at 587-88. The final factor in the test is the effect of the use on the market for the original work or the value of the original work as a whole. Id. at 590. This means that if the original author will be harmed in any way from the use, the new use is less likely to qualify for the fair use defense. Id. Although courts tend to discuss each of these factors in deciding whether a particular use qualifies, none of the factors are dispositive, and courts can weigh each factor's value as it wishes. Id. at 577-

Id. problem here is that the choice of law could significantly affect the outcome of the case because countries differ as to the level of protection they give orphan works and, more generally, any copyrighted work.¹⁸For example, Dutch law dictates that an employer owns all rights in works created by its employees in the course of their employment, whereas German law dictates that the company cannot exploit the work without the employee's consent.¹⁹One can see how this might create confusion for a Dutch company wishing to exploit a work-for-hire in Germany.²⁰In general, most countries' laws provide that before using an orphan work, some kind of reasonable search efforts must be made to locate the orphan work's author, and a potential user must either secure permission or pay for the use.²¹A problem arises when users cannot find the author, continue with their infringing use regardless, and the author suddenly emerges and sues for infringement.²²

Currently, the international copyright regime does not cover the specific case of orphan works, leaving potential users baffled as to how to make use of an orphan work transnationally.²³As it stands, the international copyright regime is composed of both the individual national copyright laws of each country, as well as the international and multilateral treaties that establish the

International Treaties: Reconciling Differences to Create a Brighter Future for Orphans Everywhere, 23 minimum standards of protection for those national copyright laws.²⁴One of the most important international copyright treaties is the Berne Convention for the Protection of Literary and Artistic Works ("Berne Convention"), which was originally signed in 1886 and most recently revised in Paris in 1971.²⁵

The Berne Convention is a non-self-executing treaty, which means that it must be implemented by national legislation in order to have effect.²⁶The World Intellectual Property Organization ("WIPO"), a specialized agency of the United Nations in Geneva, Switzerland, administers the treaty.²⁷

The other treaty that significantly affects international copyright law is the Agreement on Trade-Related Aspects of Intellectual Property ("TRIPS"), which was established in 1994.²⁸Unlike the Berne Convention, TRIPS is "expressly linked" to the World Trade Organization ("WTO") and international trade issues.²⁹Because of this, any country that wishes to be a member of the WTO must also adhere to the minimum standards of copyright protection set forth by TRIPS.³⁰The other primary advantage of TRIPS is its enforcement mechanism, a Dispute Settlement Body, established under the auspices of the WTO.³¹This judicial body enables member states to bring claims for violations of TRIPS directly to a WTO institution and provides the "threat of trade sanctions under the WTO."³²

Although the Berne Convention and TRIPS seem to provide a well- established base for international copyright law, they have not provided for many of the situations that may arise in the field of international copyright, particularly orphan works.³³Given the world's advancing globalization, namely that the Internet and other technology provide a means for widespread infringement, amendments and additions to these treaties are necessary. Nowhere is this more apparent than in the case of orphan works, which neither Berne nor TRIPS mention explicitly.³⁴Thus, as the international copyright regime currently stands, it is not clear how and where orphan works claims should be adjudicated.³⁵

Although the United States has proposed legislation to deal with the use of orphan works, this Comment will not examine whether this legislation is useful or in compliance with international treaty obligations.³⁶Nor will this Comment suggest changes or additions to the United States's proposed legislation in order to make the United States consistent with the approaches of other countries. Rather, this Comment will focus on which country's law should apply to both the initial "taking"³⁷of the orphan work, as well as what law should apply as to a subsequent copyright infringement claim.

International treaties, such as TRIPS and the Berne Convention, and caselaw will be analyzed in order to suggest a solution to this current choice-of-law quandary. Because countries differ as to the stringency of the searches required prior to using an orphan work, as well as the amount of damages available to a recently surfaced rightholder, the choice of law could seriously affect the decision reached by a court.³⁸In discussing and analyzing which country's law should apply to both the initial use of the orphan work as well as disputes that may arise concerning that use, this Comment will also discuss some of the policy concerns and theoretical approaches to copyright law and the goal of achieving a balance between protecting copyright owners and allowing the public access to information.³⁹

Part I of this Comment will discuss the lack of a universal system for determining the necessary steps required for securing...