IP Cases & Articles

Orphan copyright works: little orphan Annies?

Copyright protects original creative and artistic works from the infringing act of unauthorised copying. The copyright owner must give consent to copying for a copier to avoid infringement.

In the United Kingdom, copyright springs into existence when a work is created; there is no need for registration. While this is very convenient, it means that there is no officially recorded copyright owner. This can make it difficult for a person wishing to use a copyright work to obtain the necessary consent. In some cases the owner simply cannot be found, and the aspiring copier faces the undesirable choice of not reproducing the work or committing infringement. Copyright works in this circumstance are known as orphan works.

A conservative estimate of 91 million orphan works in the UK has been made. The UK Government is addressing this significant issue by proposing an orphan works licensing scheme. The Enterprise and Regulatory Reform Act 2013 allowed a scheme to be established, with the details of its implementation to be determined. Also, a deadline of October 2014 exists for European Union (EU) countries to enact national law in line with EU Directive 2012/28/EU on permitted uses of orphan works. Thus, UK draft regulations The Copyright (Licensing of Orphan Works) Regulations 2014 and The Copyright (Certain Permitted Uses of Orphan Works) Regulations 2014 have been proposed, and are currently the subject of a public consultation published by the UK Intellectual Property Office (UKIPO).

UK orphan works scheme

The orphan works licensing scheme intends that a party wishing to reproduce a work protected by UK copyright must undertake a diligent search to find the owner and seek permission for copying. If the owner cannot be found by this search, the party can apply to the authorising body (which will be the UKIPO) for a licence to reproduce the work. The authorising body can grant a licence and charge a licence fee under terms like those typically applied to similar non-orphan works. Licences can cover a range of commercial and non-commercial uses but will be nonexclusive and apply only in the UK. The fees will be held in trust for payment to the proper rights owner should they ever claim the work. An orphan works register will be maintained to aid diligent searches and hopefully reunite some orphans with their owners.

Some other countries already have orphan works schemes. In drafting the regulation, the UK Government has used as a model the Canadian scheme, which has been operating since 1990. A significant difference proposed is that, while Canada only licenses published works, the UK scheme is to cover both published and unpublished works (such as is already done in India, for example).

Requirements of the EU Directive

The EU Directive intends that bodies with a “public-interest mission”, such as museums and libraries, will be able to digitise certain categories of orphan works in their collections and make them available to the public for non-commercial use, without infringing copyright. Like the UK scheme, a diligent search for the rights owner is required, after which an application for exception can be made to the competent authority (which in the UK will likely be the UKIPO). The Office for Harmonisation in the Internal Market (OHIM, which administers European Community trade marks and registered designs) will maintain a database of these orphan works. The diligent search must cover specified sources, which vary for different types of work. Mutual recognition across EU member states is proposed, under which a subsequent applicant interested in an orphan work in the database can rely on the previous search. A difference from the UK scheme is that no licence fee is payable when the exception is granted. Instead, if a rights owner returns and claims an orphan work, the body using it must pay fair compensation.

The consultation

The consultation is seeking views on the detail of the draft regulations, and also on particular points of importance. For the UK orphan works licencing scheme, these include:

  • What should be done with collected licence fees which are never claimed by the rights owner?
  • Should there be a time limit for a rights owner to claim ownership and receive the fees?
  • What form should any appeals process take?
  • How much use do you anticipate making of the scheme?

For the EU orphan works exception, questions include:

  • Which sources should be covered by the diligent search?
  • How should the fair compensation be determined?

If you think that these issues may affect you or your business, be aware that the consultation period ends on 28 February 2014. You can respond to the consultation via the UKIPO website (see the ‘more information’ link below).

More Information

UKIPO copyright works: seeking the lost. Reference 2014-001. Launch date 10 January 2014. Closing date 28 February 2014: http://dycip.com/ukipocopyright

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