Tag Archives: orphan works

DMLA Legal Update: Copyright Office News & New York State Right of Publicity Bill

2015 has already been a busy year for the U.S. Copyright Office. They have been publishing policy reports, issuing Notices of Inquiry (“NOI”), conducting various studies, and participating in congressional hearings about copyright law reform.

The Copyright Office recently released a 234-page report entitled “Orphan Works and Mass Digitization,” followed by an NOI seeking comments about a potential extended collective licensing pilot program to facilitate the digitization of collections of books, photographs, and other materials for nonprofit education and research purposes. The Office is also in the process of conducting a study about the extent to which the Copyright Act’s bundle of exclusive rights satisfies the requirement under the WIPO treaties that member countries recognize copyright holders’ “making available” and “communication to the public” rights.

In addition to these activities there is currently a discussion draft of proposed legislation pertaining to the Copyright Office circulating in the House of Representatives, and the Office has issued an NOI specifically concerning the legal challenges facing visual artists and the licensing industry.

Proposed Legislation for Copyright Office Reform

Earlier this month House representatives Judy Chu and Tom Marino released a discussion draft of the Copyright Office for the Digital Economy Act (“CODE” Act). This Act comes after more than a year of Congressional hearings on the status of U.S. copyright law. It would establish the Copyright Office as an independent agency with its director appointed by the President. It would further bring the Copyright Office into the 21st Century vis-à-vis reforms to the registration process and the deposit requirement. The purpose of these reforms would be to facilitate a streamlined registration process, as well as establish a meaningful public record of copyrights. You can read the final version of the discussion draft here, and a section-by-section overview of the bill’s key points here.

DMLA supports this bill and looks forward to the continued discussions about the proposals.

Copyright Office Visual Works Notice of Inquiry

In April the Copyright Office issued an NOI calling for comments about the challenges to monetizing and licensing, registering, and enforcing copyrights in visual works such as photographs, illustrations and graphic artworks. This NOI is a critical opportunity for DMLA and our members to voice the concerns of content creators and the licensing industry over the current state of copyright law in the U.S. DMLA is drafting a response that will focus on the legal and practical barriers faced by copyright holders and licensors and reiterate support for the proposed Copyright Small Claims Court, address issues with notice and take-downs and the difficulty in the registration system.

The response to this NOI is due July 23, 2015. DMLA is working in collaboration with other visual artists associations in preparing a response to this NOI. Individual members are encouraged to provide a response as well. For more information visit the Copyright Office webpage dedicated to this NOI.

New York Right of Publicity Bill

Early this month legislation that would amend New York’s right of publicity statute to retroactively extend rights to deceased personalities was introduced as companion bills in the State Assembly and Senate. Similar legislation was introduced several years ago by the Strasberg Estate, which owns Marilyn Monroe’s publicity rights. That bill was defeated with the help of a coalition of rights holders associations who principally voiced concern over the lack of an expressive works exemption. The language of the bill was vague and would encourage litigation and interfere with image licensing. The DMLA, MPAA, New York State Broadcasters Association, New York News Publishers Association, and several others coordinated a letter writing campaign to voice the concerns of rights holders in the film, publishing, broadcasting, and licensing industries. We are happy to report that the bills were not put to vote before the end of the legislative session on Friday, June 26th. This does not necessarily mean the fight is over, however, and it is likely that similar legislation will come up during future legislative sessions. We will keep an eye on any new efforts to introduce a retroactive right of publicity bill.

Maria Pallante’s Testimony before the House Judiciary Committee

Maria Pallante is the current Register of Copyrights and Director of the United States Copyright Office. Her testimony today before the House Judiciary Committee was, as expected, full of ideas for modernization of the copyright office which she sees as a top priority.

Maria also suggests that various issues including Music Licensing, Small Claims, Felony Streaming, Orphan works, Resale Royalty, Section 108 reform, improvements for persons with print impairment, and presumptions regarding section 1201 exceptions, have been studied by the Office and are ripe for legislative action. Her testimony additionally identifies other issues where the Office will conduct further study, and issues as to which the Office suggests action is needed but must occur in the courts or by other means.

Her remarks also included the announcement of the creation of The U.S. Copyright Office Fair Use Index. This Fair Use Index is a project undertaken by the Office of the Register in support of the 2013 Joint Strategic Plan on Intellectual Property Enforcement of the Office of the Intellectual Property Enforcement Coordinator (IPEC). Fair use is a longstanding and vital aspect of American copyright law. The goal of the Index is to make the principles and application of fair use more accessible and understandable to the public by presenting a searchable database of court opinions, including by category and type of use (e.g., music, internet/digitization, parody).

You can access the entire testimony here.

On Using Orphan Images

by Doug Brooks  With Permission of Visual Connections Blog                                                              Initially Published on Visual Connections Blog

Question: When is it okay for me to publish (or otherwise use) an orphan image

Answer:    Never* (notice the asterisk)

We all know that copyright is there to protect creative works from being used without the permission of the rights holder.  That’s good, that’s solid, we can all appreciate the message. Licensing an image for use, therefore, is fairly straightforward as you need only find the image, contact the rights holder and obtain the permission you seek.

When it comes to using images whose owner is unknown (in the vernacular, an orphan image), publishers and other image users are fearful to use the image, as the rightful owner may come forward and, well, sue their pants off.

There have always been issues with images becoming disassociated from their owner, and thus “orphaned”.  In the early days, film images would be paper mounted, sealed in a plastic envelope or some other protection that carried the owner’s name, contact information and © legend.  The Internet has caused an explosion of images to become effectively orphaned as files become stripped of metadata (if they ever had metadata), file names are changed by users to accommodate their work flow, or any of a number of other reasons. While removing that “copyright management information” (in whatever form) from images is prohibited under the Digital Millennium Copyright Act, it remains the case that images that have been carefully identified by the image owner are routinely stripped of their identity to become orphans in a sea of images. Equally as horrible, image users locate images they really want to use, but can’t find the path to licensing the images.  The image owner can’t license their image, the image user can’t license the use of the image AND the general public can’t benefit from exposure to the image.  Everyone loses.

The Orphan Works Act of 2008 (HR 5889) has the intent of leveling the playing field by allowing image users to use orphaned images without the threat of huge punitive damages.  Unfortunately, to date, the bill has not offered the image rights holder a reasonable path to reassert their copyright in the orphaned image. In fact, as of the last incarnation of the bill, the image owner would have to jump through costly legal hoops to take the image infringement to court, prevail over the infringer’s objection that a “good faith” search for the author was made, and then go through a process to reclaim their orphaned image as their own. Not so good. Adding insult to injury, once an orphan publishes, every other image user is able to extend less effort finding the owner.  Instead, they can point to the first orphan use as an indication that due diligence had been done by other(s) and the owner could not be found.

The Orphan Bill as we know it is in the House Judiciary Committee and it is hard to know when it might emerge or in what form.

The idea of creating a fair and reasonable Orphan Bill is, in many respects, a wonderful idea as it would allow millions of images that are disassociated from their owners to be used.  But what is fair and reasonable?

I would suggest that fair and reasonable would allow a ‘user’ to publish a work after doing due diligence to find the rightful owner.  I can’t define ‘due diligence’ in this short piece so please allow me to move forward simply saying ‘due diligence’.  The user should be able to move forward without fear of unreasonable punitive damages should the rightful owner come forward.  That’s a sticking point.  What if the rightful owner would not have allowed the use of the image due to a social or personal belief?  What if the image owner were opposed to a political use or having their image promoting a social issue such as abortion, birth control, drugs, alcohol or sexual orientation?  Image rights holders control the copyright to their image and that means they control how it is used. Unless of course, the image is ‘declared’ orphaned. Maybe you see a solution to the ‘opposed’ issue, I don’t.  Having documented this issue for your consideration, allow me to leave that conundrum on the table and move on.

Let’s tackle the use of an orphan image where the image owner would have been happy to license the image for the use that was made. The image owner is first straddled with the responsibility of discovering the ‘use’ and then seeking a fair settlement.  I don’t see a way around that.  I do see the opportunity for something like the Orphan Bill to set a process by where a fair price is set for the use and the image owner has a clear and easy path to reestablishing their copyright in the image.  A fair price for the use would vary by several factors.  The use itself, one might look at a selection of stock agencies and what they would charge for the use itself as well as the industry status of the image creator, I find it easy to understand how an image created by a top dollar industry pro would be valued higher then an image created by someone just starting out.  I can also see a penalty charged to the user if the rights owner can document clearly that the use violates a personal or philosophical belief.  This would encourage those who have a ‘controversial’ use to look further for an image that they are able to clear the necessary rights. Let’s leave the comparison there. There needs to be an opportunity for the unique circumstances of the specific use, and the status of the creator, to be considered in the fair assessment of a retroactive licensing fee and that likely will need to be arbitrated by qualified people.  If arbitration were made the legal solution it’s possible all parties would find themselves a bit ‘unhappy’ but dealing with a reasonable outcome.  For the moment, I’d vote for arbitration.

In my opinion, the image user really needs to consider the backend liability and measure that against the value of the image they wish to use.  This step, in of itself, will cause many users to find substitute images for some orphans while moving forward using others.  As it stands now, image users are liable for damages when they use an image that has not been properly licensed.  That’s the reason why the Orphan Bill was first introduced, to protect users from huge punitive damage settlements.  The holdup in passing the Bill, so far, and only as the result of massive objections from the copyright holder’s side, is that it does not offer a level playing field for users and copyright owners to come to settlement, fairly.

As we move forward image creators and/or copyright holders will need to do more to protect their creative property.  There are solutions currently in our midst and others under development. Here are a few worth looking into:

Digital watermarking is a process by which a unique identifier is embedded within an image, not the metadata, and can’t be removed. Services, like Digimarc (digimarc.com), are available that allow images, that have been digitally watermarked, to be found by bots that tirelessly search the Internet.  Reports come to the image owner and any image found may be checked against licenses that have been made. Obversely, an image may be checked to see if it contains an imbedded identifier that will lead it ‘home’. This may one day soon become a part of a users routine due diligence.

Image recognition has come a long way.  Tin Eye (tineye.com) is one company that provides image recognition software that one uploads an image to.  The image is then searched for across the Internet.  If the image is found the URL locations of any use are reported may provide a link back to the rights holder.  This is another way users may do a portion of their due diligence in trying to locate a rights holder.

Image registries will be hugely valuable resources as rights holders are able to register their images as they are created and also retroactively. Case in point, PLUS Registry (useplus.org), years in development will soon be a global online resource connecting registries worldwide, images, rights holders and rights information.  PLUS is something to know about and I believe it’s in our near future.  It is well worth your time, as a user or a rights holder, to stop by useplus.org and check it out.

*So, the original question was, When is it okay to publish (or otherwise use) an orphan image?

Knowing now some of the issues surrounding the use of an orphan image I’m revising my answer to be, never… or when your company counsel says it’s okay.

© 2014 Doug Brooks, All Rights Reserved

DougBrooks-150x150

Doug Brooks has extensive experience in the field of picture research and licensing, including his leadership of an intrepid group of acquisitions editors at one of the largest general interest book publishers in the United States.  Today, he is a co-founder and co-director at the Image Research Team providing image and video services to publishers and museum exhibition developers. As a photographer, he continues to shoot for the stock market and he serves as an officer on the National Board of Directors of the American Society of Picture Professionals (aspp.com). He may be found at The Image Research Team and LinkedIn.

http://imageresearchteam.com

http://www.linkedin.com/profile/viewid=4950451&locale=en_US&trk=tyah&trkInfo=tas%3ADoug%20%2Cidx%3A2-°©‐1-°©‐2

http://aspp.com

Copyright Office: Notice of Public Roundtables and Request for Additional Comments

The Copyright Office will host public roundtable discussions and seeks further comments on potential legislative solutions for orphan works and mass digitization under U.S. copyright law. The meetings and comments will provide an opportunity for interested parties to address new legal developments as well as issues raised by comments provided in response to the Office’s previous Notice of Inquiry.

The public roundtables will take place on March 10-11, 2014, in the Copyright Office Hearing Room, LM-408 of the Madison Building, Library of Congress, 101 Independence Ave. SE, Washington, D.C. 20559. The roundtable discussions will be held from 9:00 a.m. to 5:00 p.m. on both days.

The schedule for the roundtables, which includes the dates and times for specific topics, is set forth below. As shown in the schedule, the roundtables have been divided into nine distinct sessions. If you are interested in participating in one or more of the roundtable sessions, please complete and submit the participation form no later than February 24, 2014.

Due to space constraints, the Office cannot guarantee that it will be able to accommodate every request. To maximize the number of viewpoints presented, the Office will accept only one representative per entity as a participant in a particular session (but an entity may request to have different representatives in different sessions).

The Office also will provide members of the public with the opportunity to observe the hearings. Note, however, that space is limited due to the size of the hearing room. The Office will admit observers on a first come, first serve basis.  To allow for a diverse audience, we ask that entities limit any observers to one per session.

The Office is making arrangements to transcribe the proceedings and will post the transcripts on the Office website. Additionally, the Office is seeking further public comments on orphan works issues, including those to be discussed at the public roundtables. A comment form will be posted on this site no later than March 12, 2014.  Comments must be submitted no later than April 14, 2014.

Sessions and hearing schedule

The public roundtable discussions will be divided into nine sessions addressing distinct topics. Below is the schedule and information as to which topics will be discussed at particular sessions.

TIME

DAY ONE (MARCH 10, 2014)

9:00 – 10:15 Session 1: The need for legislation in light of recent legal and technological developments
10:15 – 10:30 Break
10:30 –  11:45 Session 2: Defining a good faith “reasonably diligent search” standard
11:45 – 12:45 Lunch
12:45 – 2:00 Session 3: The role of private and public registries
2:00 – 2:15 Break
2:15 –  3:30 Session 4: The types of works subject to any orphan works legislation, including issues related specifically to photographs
3:30 – 3:45 Break
3:45 – 5:00 Session 5: The types of users and uses subject to any orphan works legislation

 

TIME

DAY TWO (MARCH 11, 2014)

9:00 – 10:15 Session 6: Remedies and procedures regarding orphan works
10:15 – 10:30 Break
10:30 –  11:45 Session 7: Mass digitization, generally
11:45 – 1:00 Lunch
1:00 –  2:15 Session 8: Extended collective licensing and mass digitization
2:15– 2:30 Break
2:30 –  5:00 Session 9: The structure and mechanics of a possible extended collective licensing system in the United States

Background

The Copyright Office is reviewing the problem of orphan works under U.S. copyright law in continuation of its previous work on the subject and to advise Congress on possible next steps for the United States. The Office has long shared the concern with many in the copyright community that the uncertainty surrounding the ownership status of orphan works does not serve the objectives of the copyright system. For good faith users, orphan works are a frustration, a liability risk, and a major cause of gridlock in the digital marketplace. The issue is not contained to the United States. Indeed, a number of foreign governments have recently adopted or proposed solutions.

Nancy Wolff, PACA Counsel, will represent PACA at all sessions.