Your blue ribbon business client recently purchased a historic estate with an imposing manor house and a number of old out-buildings. In fact, you referred the matter to your no-mistakes real estate partner who helped close the deal for the client. A few weeks after the closing, as you’re wrapping up a meeting with your client about an employee issue, he mentions that his wife discovered some old photographs in one of their “new” out-buildings. The client is thinking about getting the photographs “touched up” to use them in a marketing campaign. As he settles back in his chair to stay awhile, you see the question coming. “What do you think?” he asks. “Can I use the photographs to market my business?”

You don’t practice intellectual property law, but you’re fairly sure that your client has posed a question of copyright law (patents, trademarks and trade secrets just don’t strike you as applicable). Assuming your impression is correct (this is a copyright issue), can your client use the apparently anonymous photographs without permission?[2]  Permission is always a pretty safe bet if it can be had, but a critical piece of federal legislation is pending that may significantly change U.S. copyright law and how you respond to a scenario like this client’s.

Like any good lawyer, you answer your client’s question with a question. Did he notice any dates or names on either side of the photographs? “It says ‘James H.’ in the corner of one of the photographs.” The client also recalls, “I didn’t see a date or other information, front or back.”

Assuming there is nothing accompanying the photographs that might provide additional clues as to James H.’s identity, it appears that you are dealing with an Orphan Work – a creative work that is lost to its copyright holder through lack of registration, death, passage of time, and a variety of other factors.[3] 

You tell your client that you’ll do what you can to identify “James H.” before he does anything with the photograph. A title search of the manor house and property does not reveal “James H.” The previous owner never heard of “James H.” and wasn’t aware of the photographs. You try your hand at checking registered works at the U.S. Copyright Office, but to no avail.[4]  You can only guess that “James H.” may have been the photographer, or he might be the subject of the photograph, but you just can’t be sure. You finally agree with your client that it’s unlikely that anyone will care about the old photographs and since it’s been impossible to locate “James H.”, you give your client the green light to proceed with his marketing plan.

With your blessing, the client wastes no time spending large sums making the “James H.” photograph a prominent feature of the marketing campaign. A few months later, he is served with a federal complaint that alleges copyright infringement for using the “James H.” photograph without permission.

What went wrong? Is there really a colorable cause of action against your client for dusting off an old photograph, which you at least took steps to identify?

Copyright
U.S. Copyright law grants protections to authors of “original works.”[5]  These protections extend to “original works of authorship,” published and unpublished, when fixed in a tangible form of expression.[6]  In other words, a copyright is the right to copy a work.[7]  Subject to certain exceptions and subsequent actions, a copyright belongs to the author who created the work. “Copyrighted” works may include pictorial works, literary works, musical works and various other tangible works.[8]  Problems, such as the use of the “James H.” photograph, arise when the author cannot be located.

Orphan Works
Nearly every day in the United States, what appear to be anonymous or “orphaned” works are used unwittingly, or, perhaps equally as often, purposefully by others. For instance, a researcher using images and manuscripts from archives or private homes to write a book may not be protected by various defenses such as “frair use” and “first sale doctrine.”[9] Evident from the following exposition, such use of unidentifiable works without permission pits two disparate interests against each other; to wit, artists and virtually everyone else. The fight is so acrimonious that the United States House of Representatives and Senate have entered the fray in an attempt to strike a balance between protecting an unlocatable artists’ interests in their “orphaned” works and those wishing to use the orphan works, presumably to advance the useful arts.[10] 

The House and Senate have each proposed legislation that attempts to address the Orphan Works enigma.[11]  The 2008 legislation allows, for instance, for restricted use of Orphan Works whereby the author can step in and stop an unauthorized use, and possibly receive a reasonable royalty or damages for the unauthorized use. However, the proposed legislation limits the materialized author’s remedies, so that the potential of a Copyright infringement lawsuit does not chill the use of Orphan Works. For instance, there will be no statutory damages or attorneys fees imposed against the user of the Orphan Work if, among other things, the user undertook a “qualifying” search (i.e., a reasonably diligent, good faith search) to locate the owner and could not find the owner.[12]  Ironically, then, the proposed legislation encourages the public to use supposed orphaned works without authorization.

Competing Interests — Fading Art
Some artists vehemently oppose the 2008 House and Senate legislation because they believe that the legislation “legalizes theft!”[13]  For example, Mark Simon, writing for Animation World Magazine, alleges that the pending Orphan Works legislation will only benefit “those who want to make use of our [artists’] creative works without paying for them and large companies who will run the new private copyright registries.”[14]  Mr. Simon’s fear may not – in its entirety – be unfounded because the U.S. Copyright Office does appear to be adverse to setting up and maintaining such registries, leaving the task to private enterprise.[15] 

Many archivists see the problem through a different set of lenses than Mr. Simon. The Center for the Study of the Public Domain at Duke Law School (“CSPD”) reported to the U.S. Copyright Office that hundreds of thousands of orphan films are “literally disintegrating,” but estimated that the costs of copying reels of pre-1951 nitrate based film, for instance, could exceed $243 million (in 1995 dollars).[16]  The dilemma that CSPD poses is that “Libraries and archives…[though having] limited rights to copy deteriorating works…cannot allow the public to use the work.”[17]  Unfortunately, libraries and archives typically cannot afford to preserve everything in their purview, and those who might be better positioned to save obscure materials – such as languishing films that may be “beneficial to our national heritage”[18]  – are not allowed to copy and preserve. Additionally or alternatively, those parties risk a crippling copyright infringement lawsuit if they do copy and restore old films and the like, whether for profit or for philanthropic reasons.

Mr. Simon and other artists, particularly photographers, are critical of the proposed legislation because they believe that the proposed search registries (to be used to make those “good faith searches” mentioned above) will be run by companies who have no dog in the fight. Rather, the artists believe that such companies will shake down starving artists for a registry fee for the privilege of protecting works that artists insist are already protected under U.S. Copyright law. If the artists don’t comply with the new registry requirement, Mr. Simon and others fret that an infringed artist’s legal recourse will be so limited as to be nearly useless in comparison to present remedies under the U.S. Copyright law.

On the other hand, there are some artists – even disgruntled ones – who agree that the Orphan Works problem is a very real one. These artists at least agree with archivists that legislation of some sort is needed right away – before Civil War photographs, silent films, Depression-era jazz recordings, and paper manuscripts bite the dust.[19] 

What to Do? What to Do?
It seems unlikely that our elected officials will solve the Orphan Works problem anytime soon. While we wait another year or two for Congress to start drilling … into the Orphan Works legislation, that is… an attorney faced with a James H.-type question might want to advise his or her client to document their good faith search efforts for an author of an apparently anonymous work.

More specifically, in the case of the “James H.” client, let’s assume that you, the attorney, could have a “do-over.” An alternative strategy might be to advise the client to avoid the photographs altogether, to suggest that the client create something original, and/or to publish an account of the photograph and how it was found as a way of searching for James H. In fact, tell the client to turn it into a story and publish it with a credit line and a copyright notice to protect his copyright in the story!

Authors, in addition to marking their works, might be well advised to splurge on an application for a U.S. Copyright Registration. To put this in perspective, the typical work registered in 2008 costs less than $50.00 (excluding attorney fees, as you might imagine), while a timely application ultimately may preserve significant remedies under U.S. Copyright law. So, file early, file often. Most importantly as regards Orphan Works, a U.S. Copyright Registration coupled with proper copyright markings on a work should prevent someone from characterizing the work as an Orphan Work, thereby preserving some potent infringement remedies to the author, even after the House and Senate “improve” existing law.

_________________________
 [1] Klosowski is a shareholder of Turner Padget Graham & Laney P.A. where he concentrates in intellectual property law – patents, copyrights, trademarks, trade secrets and related litigation. 
 [2] For simplicity, this discussion is limited to copyright law and sets aside personal property conveyance issues and any other potential issues.
 [3] See http://www.copyright.gov/orphan/.
 [4] See The "Orphan Works" Problem and Proposed Legislation: The Register of Copyrights before the Subcommittee on Courts, the Internet, and Intellectual Property, Committee on the Judiciary, 110th Cong., 2nd Sess. (March 13, 2008), available at http://www. copyright.gov/docs/regstat031308.html, (statement of Marybeth Peters) (“In reality, the Copyright Office does not have and is not likely to obtain the resources that would be necessary to build a database of works that are searchable by image . . . ”)
 [5] 17 U.S.C. § 102 (2000).
 [6] Id.
 [7] See “Copyright Basics,” U.S. Copyright Office, Circular 1, Rev. 07/2008, U.S. Government Printing Office 2008-320-958/60,119, available at http://www.copyright.gov/circs/circ01.pdf. Copyright is a personal property right, which can be transferred by an author to another; therefore, the term author has a meaning in Copyright law that is distinct from the term owner, but for shorthand purposes, this paper refers to author (or artist) only, although owner may apply in certain contexts beyond the scope of this paper.
 [8] 17 U.S.C. § 102(a) (2000). 
 [9] See The "Orphan Works" Problem and Proposed Legislation: The Register of Copyrights before the Subcommittee on Courts, the Internet, and Intellectual Property, Committee on the Judiciary, 110th Cong., 2nd Sess. (March 13, 2008).
 [10] U.S. CONST. art I, § 8, cl. 8. (Congress has the power “to promote the progress of science and the useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.”) 
 [11] See Orphan Works Act of 2008, H.R. 5889, 110th Cong. (2008) and The Shawn Bentley Orphan Works Act of 2008, S. 2913, 110th Cong. (2008).
 [12] See Orphan Works Act of 2008, H.R. 5889, 110th Cong. § 2(514)(b)(1)(A) (limiting remedies in a civil action brought for infringement of copyright in a work) (2008).
 [13] Simon, Mark, Mind Your Business: You Will Lose All the Rights to Your Own Art, July 30, 2008, http://mag.awn.com/?ltype=pageone&article_no=3065.
 [14] Id.
 [15] See Peters, supra note 4.
 [16] “Access to Orphan Films,” pp. 1-2, Duke Law School, March 2005, available at http://www.law.duke.edu/cspd/pdf/cspdorphanfilm.pdf.
 [17] Id. at 4 (citing 17 U.S.C. § 108 (2000)).
 [18] Peters, supra note 4, at 1.
 [19] The Stock Artists Alliance Orphan Works Blog, July 30, 2008, http://www.orphanworks.blogspot.com/

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