by Pawel Kamocki
Introduction
Mass digitization projects (such as Google Books, Europeana and Gallica) drew the attention of lawmakers to the issue of orphan works, i.e. works whose rightsholders cannot be found. Such a situation makes the reproduction and distribution of the work impossible, since the rightsholder’s authorization is required under copyright law; unauthorized use of a work constitutes copyright infringement. A report estimates that this problem affects about 40% of books in the British Library, and up to 90% of the photographs in the London Metropolitan Archive; therefore, it represents a major challenge which also affects academic research.
Orphan Works Directive
The first major report on orphan works was published in 2006 in the United States, but so far no statutory solution has been adopted in the US. The European Parliament acted more promptly: on 25 October 2012 (just seventeen months after the publication of the first draft!) it adopted the Directive 2012/28/EU on certain permitted uses of orphan works. The text has been implemented into German law by the Law of 1 October 2013. The provisions on orphan works are found in sections 61 to 61c UrhG.
New copyright exception
According to recital 20 of Directive 2012/28/EC, the legal framework regarding orphan works is indeed an exception to copyright which completes the list of exceptions in art. 5 of Directive 2001/29/EC. Therefore, its application is subject to the three-step test, an international rule according to which copyright exceptions can be adopted in certain special cases, provided that they do not conflict with a normal exploitation of the work and does not unreasonably prejudice the legitimate interests of the author. Accordingly, the German legislator has implemented the Directive 2012/28/EC in Section VI of the German Copyright Act, containing the list of copyright limitations.
Notion of orphan work (what is an orphan work?)
According to this new framework, a work is considered an orphan work if none of the rightsholders in that work is identified or, even if one or more of them is identified, none is located despite a diligent search. A closer study of the Directive and its national transpositions reveals that the work in question must be published, and the first publication must take place on the territory of a EU Member State. This excludes from the scope of the notion of orphan works unpublished manuscripts, but also works originally published outside the European Union.
Case of multiple rightsholders (what if there are multiple rightsholders?)
If a work has several rightsholders (eg. several authors) and only some of them cannot be identified or located, the work can still be considered partially orphan. The use of such a work is subject to the approval of those rightsholders who have been identified or located; in relation to the remaining rightsholders, the work is considered orphan.
Subject-matter (which works are concerned?)
The Directive 2012/28/EC does not apply to all orphan works, but only to works "published in the form of books, journals, newspapers, magazines or other writings" as well as cinematographic, audiovisual works and phonograms contained in the collections of publicly accessible libraries, educational establishments or museums as well as in the collections of archives or of film or audio heritage institutions. Therefore, it can be noted that the scope of orphan works regime is defined more by the support in which the work is fixed (eg. a book or a newspaper) than on the category of the work itself (eg. literary or graphic). As a result, graphic works (images, photographs, drawings, engravings, ...) included in books, magazines and newspapers are also concerned by this framework. This results from an express provision of Art. 1 (4) of Directive 2012/28/EC. Art. 10 of the Directive contains a review clause according to which the European Commission shall issue an annual report (starting from 2015) concerning the possible inclusion of other categories of works ( "in particular photographs and other images that exist as independent works") in the scope of the Directive.
Beneficiary institutions (which categories of users are concerned?)
Orphan works may only be used by certain institutions (publicly accessible libraries, educational establishments and museums, archives, film or audio heritage institutions and public-service broadcasting organisations, established in an EU Member State - jointly referred to as “beneficiary institutions”) in the collections of which they are contained. As a result, for example, a university can not invoke the provisions on orphan works to use a book that is contained in the collection of any library (because virtually every book can be found in some library!). It seems, however, that the directive authorizes the use of orphan works within the framework of a public-private partnership (eg. a partnership between a university and a private research institute). It should be noted that research institutions (outside of universities) are not concerned by the Directive.
Permitted uses (what uses can be made of concerned works?)
Orphan works can be reproduced (in the sense of art. 2 of Directive 2001/29/EC) without permission of copyright holders, but only for the purposes of digitization, making available, indexing, cataloguing, preservation or restoration. They can also be made available to the public (in the sense of Art. 3 of Directive 2001/29/EC), but can not be distributed by sale or otherwise (in the sense of Art. 4 Directive 2001/29/EC). The moral rights of the authors of orphan works (like paternity and integrity) have to be respected. In addition, an orphan work may be used by a beneficiary institution solely in order to achieve aims related to its public-interest missions.
Therefore, universities can use orphan works in their educational mission, but also in their research mission. Any use for profit is forbidden, but beneficiary institutions are allowed to generate revenues in relation to their use of orphan works in order to cover their expenses for the reproduction and communicating the works to the public. It is not clear whether the cost of the diligent search of rightsholders can also be covered by these revenues.
Unfortunately, modifications (making of derivative works) of the orphan works are not allowed (see s. 62 UrhG), as a result, the orphan works framework is of very little use for language research.
Important condition: diligent search (what is diligent search?)
Diligent search of copyright holders is necessary for a work to be considered orphan. Such diligent search must be conducted in relation to each individual work before it is used. Logically, they should be carried out first of all in the Member State where the first publication of the work took place (or in the Member State in which the producer of an audiovisual work or a phonogram is located), but also in other countries if there is evidence to suggest that relevant information on rightsholders is to be found in those countries. The diligent search must be conducted in good faith (i.e. with a genuine intention to find the rightsholder); during the diligent search, at least the appropriate sources (determined by each Member State; for Germany, see the annex below) shall be consulted. The beneficiary institutions are required to keep records of their searches and inform the competent authority in their country (in Germany - Deutsche Patent- und Markenamt), indicating the intended uses of works. This competent authority shall then forward the information to the Office for Harmonization in the Internal Market, so they can be stored in a special database. The fact that a work is listed in the database seems to be sufficient for the work to be considered orphan.
What if rightsholders reappear?
The reappearance of the rightsholder puts an end on the status of an orphan work. The beneficiary institution is obliged to cease all use of the work as soon as the holder proves his copyright ownership. In such a case, the rightsholder should receive fair compensation for the use that has been made of their works.
Conclusion
Orphan works represent a large portion of university libraries’ collections. In particular, PhD and Master theses are considered "gray literature", often concerned with the orphan works problem. The phenomenon can also affect magazines, dictionaries, encyclopedias and other scientific writings, if their publisher goes bankrupt or is bought by another company, without IPR issues being properly addressed in the acquisition process.
From a researcher’s perspective, the framework is important because it allows, in certain circumstances, for digitisation and making available of certain works that would otherwise be doomed to oblivion. However, in our view, the adopted solution is very disappointing, mainly because it concerns only certain categories of works. What about research datasets stored in electronic form, which can also become orphaned? What about the software which becomes obsolete so fast, not only least because of its support (it is not easy, and it will be more and more difficult, to recover data from 8” disks used in the 1970s). What about the orphan books published outside the European Union? At present, these categories of works, if their rightsholders cannot be identified or located, cannot lawfully be used, unless the use falls into the scope of another copyright exception.