By, Rose Ann Joseph

An orphan work, as the name suggests is a copyrighted work, but for which, there is no detectible right holder. Before classifying a work as ‘orphan’, the person who is seeking to use this material should not only diligently attempt to trace the owner of the copyrighted work but also emerge unsuccessful in their endeavour. The “orphan work problem”, as it is commonly called, hampers the likelihood of putting to use this material in a manner that is beneficial to both the stakeholders. Moreover, “anyone using an orphan work does so under a legal cloud, as there is always the possibility that the copyright owner could emerge after the use has commenced and seek substantial infringement damages.” [i]

An approach taken by countries such as the UK[ii], USA and India with regard to the orphan work problem is to provide a Licensing Scheme. Section 31A of the Copyright Act provides for licensing of orphan works in India.[iii] In the UK, the licence will take effect as if granted by the missing owner and last for a period of up to 7 years.[iv]

Orphan works have been a problem since time immemorial, but it has been more so in this era of digitization, especially with respect to books. Now what is digitization of books and what effect does it have on orphan work?  To quote author Mary Murell, “digitization is an early twenty-first-century infrastructural project of the web by which elites seek to remediate the existing infrastructure around printed books into a new one centred in computer networks.”[v] This conversion of books into a digital platform, is seemingly harmless and well-intentioned, but it comes with a set of copyright issues.

First of all, the digitization we are talking about is large scale, in the sense, it’s not a few hundred books, but millions of them. Procuring the consent of the copyright holders of each of these books in itself is a herculean task, let alone the books that come under the category of ‘orphaned work’.

This problem of “mass digitization” perhaps came to light after an attempt for the same was made by Google in 2004, which led to a set of infamous litigations which went on for 11 years.[vi] As part of this ambitious project, which is christened ‘Google Books’, the company aimed to provide digitized versions of books to partner libraries. Users have the option to download books that are in the public domain, whereas, in the case of copyrighted books, they are offered a snippet. On the face of it, this doesn’t sound like a bad idea, in fact, it is a brilliant idea, as it only seeks to extend the accessibility to a larger number of people, but the problem arises when Google, in their endeavours to accomplish this, failed to obtain the prior consent of the authors or publishers of these books. As a result, in September 2005, Authors Guild, a US-based organisation for writers, along with a group of authors filed a class-action lawsuit against Google for copyright infringement.[vii]

In their efforts to resolve this issue, the parties reached a settlement agreement in 2009, in which Google proposed to establish a “Book Rights Registry”, which once established, would maintain a database of right holders and administer the distribution of revenues from the exploitation of the scanned books.[viii] If no one came forward to claim their revenues, as in the case of orphan works, the funds would be utilised to cover the expenses of searching for the copyright owner or be donated to a literary-based charity. Even with its worthy objectives, this settlement was still not free of speculations, as it was opined that, “the agreement would confer significant and possibly anticompetitive advantages on a single entity – Google.”[ix] Furthermore, the court was not fully convinced how this settlement would resolve the problem of orphan work, which led Judge Denny Chin to conclude that, “the question of who should be entrusted with guardianship over orphan books, under what terms and with what safeguards, are matters which are more appropriately decided by the Congress than through an agreement by private, self- interested parties.”

However, in November 2013, the court after considering fair use factors came to the inference that “Google provides significant public benefits”[x] and constitutes fair use.

Even though the court ruled in favour of Google, the beneficial uses of works may be inhibited not because the right holder has claimed his rights or because of disagreements between the parties, but due to the fact that the user simply cannot identify the owner in order to determine the terms and conditions under which he uses the work.[xi]

It is a well- known fact that the precariousness related to the ownership of orphan work defeats the very purpose of copyright laws. For genuine users, orphan work is a cause of frustration as they run the risk of an infringement suit, and by relinquishing the use of these works, a huge chunk of worlds cultural heritage embodied in copyright-protected works may not be exploited and may, therefore, fall into a so-called “20th century digital black hole”[xii]

In this era of outstanding digital technologies with endless possibilities, the orphan work problem is perhaps the greatest obstacle to creating new work that could be the outcome of appropriate exploitation. In other words, an orphan work remains (an orphan) more or less futile as long as its owner doesn’t show up and this needs to change for the better.

[i] ORPHAN WORKS AND MASS DIGITIZATION, A Report of the Register of Copyrights (June 2015), United Sates Copyrights Office. Available at https://www.copyright.gov/orphan/reports/orphan-works2015.pdf.

[ii] UK ORPHAN WORKS LICENSING AND EU DIRECTIVE ON ORPHAN WORKS, Intellectual Property Office, United Kingdom. Available at https://webarchive.nationalarchives.gov.uk/20140603094416/http://www.ipo.gov.uk/hargreaves-orphanmyth.pdf.

[iii] Copyright Act, 1957, § 31A, No. 14, Act of Parliament 1957, (India).

[iv] Dinusha Mendis, Orphan Works COPYRIGHTUSER.ORG,  https://www.copyrightuser.org/understand/exceptions/orphan-works/.

[v] Mary Murell, Out of Print: The Orphans of Mass Digitization, CURRENT ANTHROPOLOGY, Vol.58 (2017). Available at  https://www.journals.uchicago.edu/doi/pdfplus/10.1086/688868.

[vi] Authors Guild, Inc. v. Google, Inc. (Google II), 954 F. Supp. 2d 282, 286-87 (S.D.N.Y. 2013).

[vii] ORPHAN WORKS AND MASS DIGITIZATION, A Report of the Register of Copyrights (June 2015), United Sates Copyrights Office. Available at https://www.copyright.gov/orphan/reports/orphan-works2015.pdf.

[viii] Id.

[ix] Id.

[x] Authors Guild v. Google, Inc., No. 13-4829 (2nd Cir. 2015)

[xi] ORPHAN WORKS AND MASS DIGITIZATION, A Report of the Register of Copyrights (June 2015), United Sates Copyrights Office. Available at https://www.copyright.gov/orphan/reports/orphan-works2015.pdf.

[xii] Maurizio Borghi & Stavroula Karapapa, Copyright And Mass Digitization: A Crossjurisductional Perspective 70 (2013).

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