Analysis of the proposed solutions for the use of orphan works across the world

• Author: Kameran H. Al‐Salihi,Bzhar A. Ahmed
• Published date: 01 July 2020
• DOI: http://doi.org/10.1111/jwip.12156
• Date: 01 July 2020

J World Intellect Prop. 2020;23:350–374.wileyonlinelibrary.com/journal/jwip350

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© 2020 John Wiley & Sons Ltd

DOI: 10.1111/jwip.12156

ORIGINAL ARTICLE

Analysis of the proposed solutions for the use of

orphan works across the world

Bzhar A. Ahmed |Kameran H. Al‐Salihi

Department of Law, Soran University,

Soran, Iraq

Correspondence

Bzhar Abdullah Ahmedi, Department of Law,

Soran University, Soran‐Erbil, Soran,

Kurdistan, Iraq.

Email: bzhar.ahmed@soran.edu.iq

Abstract

This article analyses solutions proposed to the problem of

orphan works. Orphan works are copyrighted works

whose owners are difficult or impossible to identify and/or

locate after carrying out a diligent search. The first and

foremost aim of providing a solution for the problem of

orphan works is to regainthe goal of copyright protection,

which is to enable the public to access and benefit from

protected works. This article examines various solutions

that have been adopted by different countries. It also

analyses solutions that are under examination for in-

troduction into law, such as limited liability in the United

States. The authors reveal that the adoption of a solution

by any country requires careful study to introduce the

most appropriate approach. It was also found that solving

the problem of orphan works would benefit both users

and copyright holders.

KEYWORDS

adverse possession, centrally granted licences, exception‐based

model, extended collective licensing, fair use, google book search

settlement approach, limited liability, orphan works affirmative

defence, orphan works solutions, remedy tweaking, statutory

limitations

1|INTRODUCTION

As time passes, the problem of orphan works becomes more serious. Therefore, countries are paying more at-

tention to attempting to find a solution and, if they have already done so, they study the problem to improve the

situation. Consequently, different models have been proposed to solve the problem of orphan works. The most

common solutions are exception‐based models, centrally granted licences and extended collective licensing. There

are also other models under investigation, such as the limited liability solution in the United States.

Orphan works impede the clearance of copyright and related rights, can frustrate an entire reuse project, and

preclude scientific or cultural material from being used as building blocks for new works. To remove such an

impediment, it is vital to provide a solution to this problem in the copyright law of each country. The need to

address the problem of orphan works has already been recognised, such as in European countries and in the United

States (Gompel & Hugenholtz, 2010).

This article examines various types of solution. It argues that no one solution can be the best, but that it would

depend on the types of use that are made of these works.

1.1 |Exception‐based model

An exception‐based solution was recommended for the first time by the British Screen Advisory Council (BSAC) in

a paper arranged in response to the United Kingdom Gowers Review. The BSAC concluded that to solve the orphan

works issue in an effective and adequate way, there should be “a statutory exception to copyright, coupled with an

obligation”to compensate copyright holders who reappear after starting the use of orphan works. Under the

BSAC's proposal, individuals who want to use an orphan work shall have made their best endeavour to find the

copyright holder. The question of whether someone has made the “best endeavour”shall be judged on a case‐by‐

case basis. However, in any case, “best endeavour should not be measured against an absolute standard”(British

Screen Advisory Council, 2006, p. 15).

Moreover, a precondition must be met for the solution to apply, which is to mark the work as used under the

exception. That should notify a copyright holder who reappears of the use of the work under the exception and the

copyright holder will only be able to claim the “reasonable royalty”to which he/she is entitled for the use made,

rather than making a claim against the user to sue him/her for infringement. The parties concerned shall determine

the royalty by negotiation but, if they are unable to reach an agreement, the BSAC recommends that the UK

Copyright Tribunal be given the power to determine the amount of royalty to be paid by the user (Gompel &

Hugenholtz, 2010). In addition, each user shall take all necessary measures to retain sufficient records of the steps

they have made in their “best endeavour”to find the rightholder. Meeting these preconditions would provide

certainty for users in being able to make safe use of orphan works (Gompel, 2007, p. 694).

One of the advantages of this solution for a reappearing copyright owner is that he/she would be able to seek

reasonable reimbursement for the use made, without having to file a suit against the user in a competent court.

However, the copyright owner may take proceedings before the court only if the user is reluctant to pay reasonable

compensation (Gompel, 2007).

After the re‐emergence of a copyright owner, a user who wants to continue making use of the work should

start negotiating the terms and conditions of the use of the work with the rightholder in the usual way. Never-

theless, it should be kept in mind that in the case of integrating or transforming a work into a derivative work, it

would be unfair if the rightholder were able to deprive the user of further exploitation of the whole work simply by

refusing authorisation to make use of the work in question. The BSAC recommends that in such a case, the user

shall be permitted to continue making use of the work, provided that he/she pays a reasonable royalty and gives

adequate acknowledgement to the rightholder (Gompel, 2007).

This type of solution is also known as the “European Model,”because it has been adopted by the European

Union (EU) through issuing Directive (2012)/28/EU on the authorisation of uses of orphan works (Siso‐Calv, Avilez,

Marco‐Cuenca, & Cobo‐Serano, 2018). In accordance with this type of solution, specific use of orphan works is

allowed through copyright exemptions. Regard has to be made that a reasonable search must be performed by the

user to take benefit of the exceptions (Goldenfein & Hunter, 2017). Thus, under the exception‐based model, making

use of orphan works would not amount to an infringement of copyright if certain preconditions were met and it

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