(Working draft 37 – for comment – not for publication)
Cyberspace Law and Policy Centre, UNSW
Please send comments/corrections to David Vaile**, email@example.com
1. Articles, books, papers, submissions etc.......................................................................................................................... 3
Google Books................................................................................................................................................... 4
Google Books................................................................................................................................................... 4
2005 and earlier....................................................................................................................................................... 4
2. Legislation and interpretive materials......................................................................................................................... 4
US Legislation................................................................................................................................................... 4
US Bills............................................................................................................................................................... 4
Individual EU country legislation................................................................................................................... 4
South Korea...................................................................................................................................................... 4
3. Conventions, Treaties, International Agreements etc.............................................................................................. 4
4. Cases................................................................................................................................................................................. 4
5. Government reports and related materials............................................................................................................... 4
Other Reports.................................................................................................................................................. 4
6. Other resources.............................................................................................................................................................. 4
Technical aspects............................................................................................................................................ 4
Position statements etc. by peak organisations......................................................................................... 4
Smith, Nicholas. ‘Is a copyright registration system to prevent orphan works the way of the future?’ (27 January 2011), IP Whiteboard blog post referring to the EC Comité de Sages report. Available at:
Open Educational Resources IPR Support. Risk Management Calculator, interactive online risk assessment tool for works including orphan works (January 2011). Available at: ; see also media release, at: [helps assess risk of breach and compliance enforcement.]
Dahlberg, Brianna. ‘The Orphan Works Problem: Preserving Access to the Cultural History of Disadvantaged Groups.’ Southern California Review of Law & Social Justice 20 (2011), pp. 1–48. Available at SSRN:
de la Durantaye, Katharina. ‘H Is for Harmonization: The Google Book Search Settlement and Orphan Works Legislation in the European Union’, New York Law School Law Review, Volume 55, Number 1, (2010/11). Available at:
Baker, Jennifer (IDG News Service). ‘European Commission challenges Google Books: The EU's flagship digitization project takes on Google Books’ (11 January 2011). News coverage of Comité des Sages/Europeana Report. Available at: See also NYT
Gollin, Michael, Hinze, Gwen, and Wong, Tzen. ‘Scenario planning on the future of intellectual property Literature review and implications for human development’, in Wong, Tzen and Dutfield, Graham, eds. Intellectual Property and Human Development, Current Trends and Future Scenarios (2011), Cambridge University Press. Available at:
Remus, Titiriga. ‘Digital
(on Line) Libraries: Problems with Orphan Works and Works Out of Print –
Possible Solutions,’ (12 January 12 2011). Available at SSRN: [“An orphan work is a
copyrighted work for which is difficult or impossible to contact the copyright
holder. The out-of-print works are copyrighted works not commercially
available, as declared by the appropriate right holders, regardless of the
existence of tangible copies of the work as normally understood.
Both of the categories pose a number of problems related to the balance between the protection of the rights of the authors (or in general the copyright owners) and the access of public to original creations (as landmark of all copyright law). The paper examine different national solutions concerning the orphan works and out-of-print works.”]
ARC Centre of Excellence for Creative Industries and Innovation. Opening Australia’s Archives National Roadshow: Collective Minutes (September-October 2009), summary of meetings around Australia to discuss the Opening Australia’s Archives project. Available at: [Includes detailed discussion of libraries' concerns in relation to orphan works.]
Australian Copyright Council. ‘Big statements on copyright’ (29 November 2010), News and Policy blog post. Available at: . Refers to speech by Neelie Kroes European Commission Vice-President for the Digital Agenda, at ‘A digital world of opportunities’ Forum, Avignon, 5 November 2010. Available at:
Australian Copyright Council. ‘The Attorney General and the greens put copyright reform on the agenda,’ (29 October 2010) News and Policy blog post. Refers to report in Australian Financial Review, James Eyres, 24/9/10, p. 18; and Australian Greens Policy Initiative, August 2010; authorised by Senator Bob Brown Parliament House Canberra ACT. Available at:
Australian Copyright Council, ‘Response to Minister for Finance and Deregulation the Hon Lindsay Tanner MP & Special Minister of State and Cabinet Secretary Senator the Hon Joseph Ludwig, Report Of The Government 2.0 Taskforce, Engage: Getting On With Government 2.0,’ (February 2010), submission. See p.10 re: treating PSI separately from Orphan Works. Available at: [p.10: “The Copyright Council recognises that there may be value in investigating certain access issues raised by these cultural institutions (e.g. unpublished works, orphan works). However, any such consideration by the Government should remain entirely separate from the matter of access and re-use of PSI. We reiterate that the Government’s definition of PSI should exclude the creative works held by government-funded cultural institutions.”]
Copyright In Cultural Institutions (CICI). Flexible dealing and cultural institutions – Statement of Principles regarding the use of section 200AB of the Copyright Act (1968): an industry standard and user guide for the cultural sector (September 2010), CIC secretariat, National Library of Australia. Available at:
Dang, Khai and Fang, Dennis (Blake Dawson). ‘Ushering in the age of open content’, (9 February 2010), commentary on Gov 2.0 report "Engage: Getting on with Government 2.0" Available at:
Dawes, Matt. ‘Setting the Orphans Free’, Australian Law Librarian, Vol 18 No 4 (2010), 289. Available at:
Fitzgerald, Brian, Coates, Jessica, et al. Opening Australia’s Archives: Open Access Principles for Australian Collecting Institutions, Version 1 (December 2010), ARC Centre of Excellence for Creative Industry and Innovation and QUT Faculty of Law. See p.10. Available at: [a very high level principle statement, and some strategies for dealing with OW]
Gunn, Fiona (NFSA). ‘Industry standard for copyright orphans’ (30 November 2010), blog post, referring to CIC principles. Available at:
Morgan, Dr Owen.
(2010) ‘New Zealand Broadcasters and Orphan Works’ (29 July 2010), Fortnightly
Review of IP Media And Law, blog hosted by IPRIA and CMCL at University of
Melbourne. Available at: [A Bill currently before the
Commerce Select Committee of the New Zealand parliament addresses the problem
of orphan works held by broadcasters in their archives. - V Critical - “The other part, which is the subject of this
note, enables TVNZ to rescreen certain programmes held in its archives. The
purpose is to overcome the problem that some rights holders cannot be located,
therefore TVNZ cannot negotiate terms for rescreening and the programmes
languish in the archives.
Clause 10 of the Bill inserts a new Part 4A into the principal Act comprising sections 29A to 29S. Other provisions add a new Schedule and amend the Copyright Act 1994. In brief, the effect of these provisions is to permit TVNZ to screen archived works ‘free of charge’ on certain specified ‘delivery platforms’. Persons with an interest in an archived work lose ‘any rights and privileges’ they may have under contract or under the Copyright Act in relation to the screening of the work.“ “A Dangerous Precedent
Section 29D (1) provides that the ‘rights and privileges’ of persons with an interest in an archived work cease and are replaced by rights provided in the Bill (Rights to Compensatory Payment.).
There is some logic in permitting works to be rescreened where none of the rights holders can be located. However, this provision deprives all rights holders of their rights under both copyright and contract whether those rights holders can be located or not.
Copyright is an exclusive right that enables a right holder to determine the use of a work; and contractual rights and obligations are the subject of negotiations. This provision sets a dangerous precedent that strikes at the heart of intellectual property law by depriving the right holder of rights without any opportunity to negotiate or to appeal.“]
National Film and Sound Archive. Statement on Orphan Works (June 2010). Available at: [p.1: “The extension of the copyright term in Australia following the Australia-United States Free Trade Agreement and the fact Australia does not have a system of copyright registration has further exacerbated the orphan work problem. Works are in copyright for longer and, as a result, there is greater opportunity for them to become orphaned”]
National Film and Sound Archive. ‘Tracking Down the Copyright Holder : Hints and Tips’ (June 2010), information sheet. Available at: (from Feb 2011?)
National & State Libraries Australasia, NSLA position statement on copyright exceptions and limitations, v1.0 endorsed 10 March 2010. Available at: [“Orphan works: As many collection items fall under the category of ‘orphan works’ libraries have avoided using these works, fearing the risk of liability. NSLA supports the use of flexible exceptions, including s200AB to copy, communicate or reproduce (published or unpublished) orphan works in its collections.”]
van Dyk, Robyn (Australian War Memorial). ‘Digital preservation: the problems and issues involved in publishing private records online: the web publishing of the notebooks and diaries of C.E.W. Bean’, (2010), paper for VALA2010, the 15th VALA Biennial Conference and Exhibition, Melbourne. Available at: [“In 2003, the Australian War Memorial commenced a project to digitise the notebooks and diaries of C.E.W. Bean for preservation and with the intent to make the images publicly available via the website. The digitisation of the records was completed in 2004, but the project ground to a halt when the copyright of this material was examined more closely and the records were found be a complex mixture of copyright rather than Commonwealth copyright. For the Memorial, this project represents our first venture into publishing a large complex collection of private records online and also our pilot for publishing orphan works using s200AB of the Copyright Act.”]
Kimberlee. ‘ACTA - Australian Section by Section Analysis’ (2010)
Available at: [how ACTA creates obligations and procedures more onerous for Australians than for people in other countries - orphan works uses more constricted in Australia?.]
Arthur, Charles. ‘Digital economy bill rushed through wash-up in late night session: Government drops clause on orphan works but inserts amendment criticised as over-broad which could block sites based on 'intent'’, Guardian online (8 April 2010). Available at:
Library/various authors. ‘Driving UK Research? Is Copyright a help or a
hindrance? A perspective from the research community’, essays and submissions
collated by British Library (July 2010). Available at: [ Orphan works, currently
estimated to be in excess of 50 million works across the public sector in a
recent study: . “In this collection of essays, fourteen
researchers explain how the current copyright system inhibits their research.
This collection of essays, sourced from the education and research community, present varying views to the working and interpretations of the UK’s intellectual property laws. They are not intended to reflect nor endorse one another, but instead together present the ‘grassroots view’ of the UK’s copyright framework and ideas on how it could be updated to work in this new and changing environment. There is a consensus that the laws on copyright and their interpretation must be redefined in the context of a modernising world and developing research techniques.
Each of these authors and contributors to the knowledge economy, has encountered obstructions and barriers in their daily work when faced with understanding copyright regulations. They have made their own suggestions and proposals as to how the law can be modified in order to reflect the needs of today’s researcher. The British Library’s aim in compiling this collection is to contribute practical examples of how copyright affects the UK research community in the ongoing debate on our intellectual property framework.
The changes that contributors have proposed are their own and not the British Library’s. They cover a range of areas and include a wealth of ideas:
• calls for an extension to fair dealing provisions under UK copyright law to bring them into line with fair use doctrine in the US. One author addresses the difficulties of applying fair dealing provisions in the study of music and sound recordings.
• allowing the use of ‘orphan works’. One submission advocates that ‘orphan works’ be placed in the public domain.
• enforcing creators’ moral rights in order to preserve future creativity, and the need for exceptions to copyright law not being overridden by contract or by technical protection measures.
• addressing the issue of text mining and data indexing in the context of the barriers posed by the existing copyright regime
A key point that resonates throughout these essays is that the role of teachers, researchers and creative artists as well as rights holders must all be recognised within any new intellectual property framework.”]
British Library. ‘Press and Policy: Intellectual Property’ web site section (undated, accessed January 2011). [“We estimate that over 40% of in-copyright works are orphan works”].
de Zwart, Melissa, and Huang, Vicki. ‘The Digital Economy Act (UK) – preview for Down Under?’ (20 April 2010), blog post on Fortnightly Review of IP Media And Law, blog hosted by IPRIA and CMCL at University of Melbourne. Available at:
Goldenfein, Jake. ‘The Digital Economy Act 2010 (UK) and Orphan Works’ (20 May 2010), blog post on Fortnightly Review of IP Media And Law, blog hosted by IPRIA and CMCL at University of Melbourne. Available at:
Kendall, Malcolm. ‘The Copyright Problems of ‘Orphan Works’ for University Lecturers and Researchers’ Legal Information Management Vol. 10 No. 3 (2010) 158–161. Available at: or [guidance on how to establish whether a work is in fact an orphan work and examines efforts being made here and overseas in devising systems to make the search easier. AGIS: “Difficulties for academics in identifying rights holders - use of photographs - blanket licences - need for reasonable diligent search efforts to find the copyright owner - recommendations from The Gowers Review - voluntary copyright register - ARROW (Accessible Registries of Rights Information and Orphan Works)”]
Korn, Naomi and Beer, Emma. ‘In From the Cold: The Problem and Solutions for Orphan Works’, presentation for ‘Living with IPR – The web, the law and academic practice’ at JISC 2010 conference, London (8 April 2010). Available at:
Pallante, Maria. ‘Orphan Works, Extended Collective Licensing and Other Current Issues’, Columbia Journal of Law & the Arts, Volume 34, Number 1, (Fall 2010) p.23.
Aaron and Schultz, Jason, ‘Digital
Exhaustion’. UCLA Law Review, Vol.
58; Wayne State University Law School Research Paper No. 10-10; UC Berkeley
Public Law Research Paper No. 1669562 (2010). Available at SSRN: [primarily
arguing for a broader interpretation of the first sale doctrine to deal with
implications of digital distribution. p1:
“:This shift to a digital marketplace gives rights holders greater
control not only over the pricing and availability of their works but also over
the uses consumers can make with their purchases. That control constrains
consumer welfare on a number of levels. It pre- vents consumers from acquiring
or reselling works via secondary markets; it threatens their privacy and limits
their opportunities for innovation; and
P7: “[A. Four Documented Benefits of First Sale:] Second, first sale preserves public access to works that are no longer available from the copyright owner. These include works copyright owners have determined are no longer commercially viable, works withdrawn or suppressed by copyright owners for cultural or political reasons, and so-called “orphan works” where copyright owners are either unreachable or no longer exist. Since copyrighted works constitute a substantial portion of our cultural history, such preservation benefits society broadly.]
Sage, Joel. ‘Revenue Streams and Safe Harbors: How Water Law Suggests a Solution to Copyright's Orphan Works Problem’, Boston University Journal of Science & Technology Law, Volume 16, Number 2, (Summer 2010) p.294. Available at:
Ericson, Brooke. “Settling for Less? An Analysis of the Possibility of Positive Legal Precedent on the Internet if the Google Book Search Litigation Had Not Reached a Settlement.” American University Intellectual Property Brief (Spring 2010), 33–43. Available at:
Fry, Robin. ‘Forget the teenagers, we're all infringers now’, Copyright World No. 196, (December 2009/January 2010), pp. 34. [abstract: “Google Images -- collecting societies -- orphan works -- Google Books”]
Grimmelman, J “How to Fix the Google Book Search Settlement” (2009) 12 Journal of Internet Law, 10-20, at 14.
Ji, Yuan. ‘Why the Google Book Search Settlement Should Be Approved: A Response to Antitrust Concerns and Suggestions for Regulation.’ Albany Law Journal of Science and Technology, forthcoming (2010). Available at SSRN:
McGee, Matt. ‘Photographers Group To Sue Google Over Book Deal,’ (6 April 2010) Search Engine Land web site news item. Links to American Society of Media Photographers litigation documents. Available at:
Pitt, Karen (CAL). ‘Google Book settlement: the sky is not falling’, Australian Intellectual Property Law Bulletin (newsletter) Volume 22 No 10 (May 2010) (1). Available via LexisNexisAU. [http://www.lexisnexis.com.wwwproxy0.library.unsw.edu.au/au/legal/results/pubTreeViewDoc.do?nodeId=TAACAAHAAC&pubTreeWidth=23%25]
Pomerantz, Aryeh L. ‘Obtaining Copyright Licenses by Prescriptive Easement: A Solution to the Orphan Works Problem’, Jurimetrics, Volume 50, Number 2, (Winter 2010) p.195.
Sag, Matthew. ’The Google Book Settlement and the Fair Use Counterfactual.’ New York Law School Law Review 55 (2010) The DePaul University College of Law, Technology, Law & Culture Research Series Paper No. 10-001. Available at SSRN:
Samuelson, Pamela. ‘Academic Author Objections to the Google Book Search Settlement’ (February 16, 2010). Journal of Telecommunications and High Technology Law, Forthcoming; UC Berkeley Public Law Research Paper No. 1553894. Available at SSRN:
Strategic Advisory Board for Intellectual Property Policy [UK] (SABIP). Google Books: A policy panel event (February 2010), proceedings of forum. SABIP, London. Available at: See also . [ p.1: “The aims of the event were:
• To consider the economic, cultural and political advantages and disadvantages of the Google Books initiative;
• To consider the existing solutions and possible interventions for the public and private sector; and
• To consider the implications for the future of digitisation in the UK and in Europe.
SABIP’s policy recommendations are:
1. Doing nothing is not an option. The proposed settlement raises many fundamental legal, cultural, economic, political and societal issues. If the settlement does go ahead, it will have profound effects in the US and therefore it will probably in turn affect thinking, if not markets, in Europe. Even if the settlement does not go ahead it has unleashed many issues related to mass digitisation. It is of vital importance therefore that the Government, building on Digital Britain, considers how best to encourage putting more digital information online. This is also a high priority for Europe and a new digital agenda paper has been published which is looking to simplify copyright clearance.
2. UK copyright law, as it currently stands, is unlikely to facilitate mass digitisation. Following the decision not to include a provision for orphan works in the Digital Economy Act 2010, the Government should consider whether amendments could be made to existing copyright law to facilitate mass digitisation allowing more digital information to be made available online, and how the orphan works challenge should be resolved. The current copyright framework has, for the analogue world, many elements that take account of the wider public interest. These need to be adapted to the digital world in the light of the desirability and probable inevitability of mass digitisation.
3. Policy-makers should investigate and assess the costs and beneﬁts of mass digitisation, the potential for public/private partnerships, and the extent (if any) to which an element of public ﬁnancing might be needed. The Government should also consider the value of new and ‘open’ information models.
4. If a purely privately funded model is chosen, policy-makers should examine the regulatory options to guard against potential abuse of a dominant market position.
5. In order to maintain the world class status of the UK’s educational institutions, publishing and creative industries, and the role of the English language internationally, UK policy-makers should guard against being overtaken by events and should consider how the UK can best help to drive the public policy debate at European and international levels.
 The term ‘orphan works’ is used to describe works protected by copyright in circumstances where the copyright holder cannot be traced - even after a diligent good faith search has been carried out - and hence the copyright work cannot be used without infringing copyright. Any use of a work that is considered to be ‘orphan’ runs the risk that a copyright owner may come forward at a later date, and take legal action for unauthorised use of their work.”]
Viana, Liza Porteus. ‘US Congress pushes through IP legislation before departure’, Intellectual Property Watch Vol. 5 No. 10, (October 2008) pp. 5–6. [abstract: Three new IP bills passed in US Congress -- Prioritising Resources and Organisation for Intellectual property Bill 2008 -- copyright protected without registration -- counterfeiting penalties -- enforcement personnel and resources -- Intellectual Property Enforcement Coordinator -- orphan works -- copyright protection for works where owner is not known -- Webcaster Entitlement Act 2008 -- royalties for internet radio]
Clifford Chance. ‘The Single Market Act: 50 measures to boost the EU economy’ (November 2010), client briefing paper. Available at:
Colin, Caroline. ‘Registers, Databases and Orphan Works’, in Derclaye, Estelle. Copyright and Cultural Heritage: Preservation and Access to Works in a Digital World (2010) Edward Elgar: London, p.28. Available at Google Books:
European Writers’ Council on Orphan Works. Public Hearing on Orphan Works, paper for Panel 1 – ‘Orphan Works – Challenges and Opportunities’, (26 October 2009) European Commission Internal Market and Services DG, Knowledge-based Economy Copyright Unit Brussels. Available at:
‘Intellectual Property issues and Europeana, Europe's digital library, museum and archive’, Legal Information Management 10(3) 2010:
174–180. doi:10.1017/S1472669610000678 [AGIS: “Digitised content
from Europe's museums, archives, libraries and audiovisual collections - online
availability of cultural material - Europeana's objectives - Open Source code -
metadata - barriers to access - Europeana Public Domain Charter - orphan works
- collective licensing.”
“Abstract: Europeana is the focus of a number of IPR issues. The portal provides access to three sets of assets: the Open Source code base, the authority-controlled metadata and the digitised content. Europeana has integrated metadata standards across the heritage domains and will now licence the metadata as a resource for the development of linked data and semantic web applications. The main rights issues concern the digitisation of public domain content and orphan works. Digitisation of out-of-copyright analogue material does not create new rights and the Europeana Public Domain Charter provides guidelines for the sector. An inhibitor to digitisation is the problem of orphan works, now under review by the European Commission.”]
Riis, Thomas and Schovsbo, Jens. ‘Extended Collective Licenses and the Nordic Experience - It’s a Hybrid but is It a Volvo or a Lemon?’ Columbia Journal of Law and the Arts 33 Issue IV (2010): 1–26. Available at SSRN:
van Gompel, Stef & Hugenholtz, P. Bernt. ‘The Orphan Works Problem: The Copyright Conundrum of Digitizing Large-Scale Audiovisual Archives, and How to Solve It.’ Popular Communication - The International Journal of Media and Culture 8 no.1 (2010): 61–71. Available at: (preprint), and
Crews, Kenneth D. (Director, Copyright Advisory Office, Columbia University) ‘Copyright Exceptions and Statutory Diversity: The WIPO Study of Exceptions for Libraries and Archives’, Proceedings of the Annual Congress of the International Association for the Advancement of Teaching and Research in Intellectual Property Munich, Germany, 21–23 July 2008. Available at SSRN:
Dreyfuss, Rochelle C, Leenheer Zimmerman, Diane and First, Harry (eds). Working within the boundaries of intellectual property: innovation policy for the knowledge society (2010), Oxford, Oxford University Press. See in particular: Katz, Ariel. ‘Copyright Collectives: Good solution but for which problem?’ Chapter 13, pp 395–430; and Besek, June. ‘Enabling Digital Preservation by Expanding the Library Exceptions in the US Copyright Act: The Section 108 Study Group’ Comment, p 431–444.
*Lifshitz-Goldberg, Yael. ‘Orphan Works’ (May 2010), WIPO Seminar. Available at:
Owens, Andrew. Copyright and the Orphan Works Issue (Laws and Legislation), (2010) Nova Science Publishers.
Torsen, Molly and Anderson, Jane, for WIPO. Intellectual Property and the Safeguarding of Traditional Cultures: Legal Issues and Practical Options for Museums, Libraries and Archives (2010), WIPO. See in particular Part II, Chapter 2 ‘Orphan Works’ pp.34–37. Available at:
World Intellectual Property Organization (WIPO). Intellectual Property Handbook: Policy, Law and Use (2004), 2nd ed. WIPO, Geneva, 262. [copyright protection in its signatory countries must not be subject to any formality of registration, deposit or the like]
WIPO, ‘Theme V: Making Orphan Works Available: a Licensing Solution?’, a session at the forum Facilitating Access to Culture in the Digital Age - WIPO Global Meeting on Emerging Copyright Licensing Modalities (5 November 2010). WIPO, Geneva.[includes audiovisual keynote from Prof Larry Lessig at: and audio of session discussions, PPT from Magdalena Vinent, President, International Federation of Reproduction Rights Organizations (IFFRO) at: ]
Australian Digital Alliance, Australian Libraries Copyright Committee, Joint submission of the ADA and ALCC to the Government 2.0 Taskforce regarding the ‘Engage: Getting on with Government 2.0’ Draft Report (December 2009). Available at: [See para 42 et seq for orphan works problems. 45 for Flexible dealing/200AB. Para 60 for recommendations.].
Copyright Agency Ltd, “Getting Permission to Copy” (March 2009). Website FAQ. Available at:
Copyright Society of Australia. ‘Australia and the Future of Copyright: proposals for new approaches’, Seminar with Professor Adrian Sterling (3 June 2009).See also Sterling’s paper at
Crisp, Philip. IP Practice Policy and Reform - Issues for
Universities (2009). Australian Government Solicitor. See ‘Digitisation and
the problem of ‘orphan works’’ at p. 23. Available at: [p. 24. Identifies three
options for public institutions, of which the third is safest, most common but
“— incur transaction costs in making inquiries to identify and locate the copyright owner and negotiate a permission, which in most cases are out of proportion to the utility of the copying or other use and the amount of remuneration that would flow;
— proceed with digitisation which is a ‘technical’ infringement, on the premise that if a copyright owner comes forward it will be possible to negotiate a permission after the event, i.e. take a ‘risk management’ approach;
— omit the material in question from the digitisation project, thus limiting the completeness and utility of the digital repository and depriving the material of an audience.”]
Fitzgerald, Anne and Pappalardo, Kylie.. Report to the Government 2.0 Taskforce: Project 4: Copyright Law and Intellectual Property (2009). Accessible via: or at: [how to deal with orphan works and s 200AB, and recommendations]
Fitzgerald, Anne. ‘Open access policies, practices and licensing : a review of the literature in Australia and selected jurisdictions’ (2009) School of Law, Queensland University of Technology, Brisbane. Covers Government Information Licensing Framework (GILF) project. Available at:
[*]Greenleaf, Graham. ‘National and International Dimensions of Copyright’s Public Domain (An Australian Case Study)’ SCRIPTed 6 no.2 (2009): 259–360 [Unlocking IP 2009 special edition]. Available at: [examines the meaning and implications on the public domain and public rights in terms of copyright. The article also examines how these rights can be used to stimulate innovation and enhance national culture. It further proposes that Australia, at least, requires a law reform review with the copyright public domain as its focus. The changes to the copyright laws over the last decade have been about strengthening copyright, rather than stimulating Australia’s public domain and this article is conveying that we should be trying to get the most out of both methods of stimulating innovation.
Main effect of international agreements has been to restrict what can be included in a national public domain according to international law. The Berne Convention for the Protection of Liberty and Artistic Works of 9 September 1886 and its amendments are the main factor responsible for determining the size of national public domains.
Developments particular to Australia that have influenced the shape of its public domain and the existence, scope and effectiveness of public rights under Australian law include:
Limits to copyright subsistence
Exceptions to copyright
Extinguishment of rights
Voluntary public licenses
De facto public rights
Effectiveness supports and constraints
Examples of where Australia’s copyright public domain needs more attention from the legislature, government policy and business and civil society initiatives in order to maximise contribution to Australian innovation and culture:
Scope for further exceptions to copyright;
Legal deposit’s role in the public domain;
Finding missing rights-holder (orphan works)
Enabling open content licensing to thrive
Maximising value of open source software
Coexistence of collecting societies and public rights
Re-usable government works
Public rights in publicly-funded research
Problem of orphan works:
Problems arise where the author of a work cannot be identified, or cannot be located, with the result that a license to use a work cannot be sought. This poses as a major impediment to all publishing industries and those requiring copyright permissions for performances or display.
Another issue is where the time of conception of a work is unable to be determined, the copyright for that work will be perpetual
Solutions/Possible solutions to problem of orphan works:
The USA has a voluntary register of copyright works and their owners operated by the Copyright Office.
Should Australia create a voluntary register like the USA?
Alternative approach by the US Copyright Office –
said they should have a right to use an orphan work, with attribution, subject
only to a potential liability to pay reasonable compensation for use if the
owner did subsequently emerge”
re Rimmer’s 6 options: “Perhaps there are even more potential models than those identified by Rimmer, depending on how factors such as the following are combined: (i) whether orphan works can be used without application to some tribunal; (ii) how a test of diligent search is framed; (iii) whether the search must involve publication of a notice; (iv) whether use of the orphan work must carry a notice that it is being used, or use must be registered; (v) whether allowed use of an orphan work should be payment-free, or carry some liability for a compensatory payment; (vi) whether any liability for payment should be contingent, only arising if a rights-holder comes forward; (vii) whether any payment upon use is required; and (viii) whether collecting societies should have any role in collection and disbursement of payments.”
Solutions: “My own inclination is to then suggest a positive answer to all of the following questions:
Should legislation allow use of orphan works after a “reasonably diligent search for the copyright owner” or some similar test, without any further application or bureaucratic requirements?
Should there also be required, as part of any diligent search, some form of public notice that the author of the orphan work was being sought?;
Should any uses of the orphan work be required to carry a notice disclosing this and advising whom the author or author’s representatives should contact, or some registration of its use? (The most obvious alternative is that the Copyright Tribunal or some Court or Tribunal be empowered to issue licences to use orphan works, on application and based on a set of statutory criteria.)
Should there be provision for reasonable remuneration to be paid to authors/creators or their estates if they subsequently come forward after becoming aware that their works have been so used? The more difficult question is then whether such remuneration should (a) only be paid at all if and when the previously missing author comes forward or (b) be required to be paid in to some trust fund as soon as the orphan work is used; or (c) be paid to some collecting society in anticipation that the owner of the orphan work might come forward“]
*McCausland, Sally. ‘Getting public broadcaster archives online: Orphan works and other copyright challenges of clearing old (but in copyright) cultural material for digital use.’ (2009) 14 Media Arts Law Review 2 p. 140. Available on LexisNexis or at SSRN:
McDermott, Eileen. ‘The changing face of copyright’, Managing Intellectual Property No. 188, (April 2009), pp. 60–74. [abstract: MIP copyright survey -- 2009 -- orphan works -- recording artist and radio broadcasting -- top copyright firms -- Australia -- Belgium -- China -- France -- Germany -- India -- Hong Kong -- Italy -- Japan -- Netherlands -- Singapore -- South Africa -- South Korea -- Spain -- Sweden -- Taiwan -- United Kingdom -- United States.]
[*]Rimmer, Matthew. ‘Wikipedia, Collective Authorship, and the Politics of Knowledge, in Christopher Arup & William Van Caenegem.’ Intellectual Property Reforms: Fostering Innovation and Development, Edward Elgar, 2009. Abstract at SSRN:
Rimmer, Matthew. "Discussant on Copyright Law and Orphan Works", Copyright Future, Copyright Freedom, Old Parliament House, Canberra, 27-28 May 2009.
*Simes, Laura. ‘The flexible dealing provision for Australia's cultural and educational institutions’ (2009). Paper for Unlocking IP 2009 conference at UNSW Law Faculty, April 2009. Available at: . This paper is broadly based on A User’s Guide, below.
*Simes, Laura. A User’s Guide to the Flexible Dealing Provision for Libraries, Educational Institutions and Cultural Institutions: Section 200AB of the Copyright Act 1968 (Cth) (2009), Australian Libraries Copyright Committee and the Australian Digital Alliance with the assistance of the National Library of Australia, Kingston ACT. Available at ADA: .
Warren, Margaret (State Library of Queensland). ‘Getting the orphans out of the orphanage: risk management and orphan works at the State Library of Queensland’ (20 January 2009), paper for Information Online 2009 conference, ALIA. Available at:
Williams, Mark. ‘Copyright and the pseudonymous or anonymous author : the right to remain other’ Copyright Reporter 27 (3) (October 2009), Australian Copyright Council, pp. 63–81. [AGIS abstract: “Commercial and non-commercial concerns in the area of copyright law related to content which has no known author - problem of orphan works - ownership of commercial celebrity in trade mark and character merchandising environments - protection of rights and power of the author - implications for defamation and privacy laws - moral neutrality - historically used for non-literary works such as Law Reports, semi-official bulletins, compilations of data - Indigenous rights and folklore - comparisons with other jurisdictions - Berne Convention obligations need to be enacted in Australian legislation - winning 2009 GC O'Donnell essay.”]
Wilson, Jennifer. ‘The digital deadlock: How clearance and copyright issues are keeping Australian content offline’ (August 2009) white paper commissioned by Screenrights and the AFTRS Centre or Screen Business. Available at:
‘Orphan works and transformative works: the UK government responds to the
European Commission's green paper Copyright in the Knowledge Economy’, Copyright World No. 191, (June 2009) pp.
15–16. Also in Entertainment Law Review,
Volume 20, Issue 2, (2009) p.61. Available via
WestLaw International. [
abstract: Background to the Green Paper -- government response -- orphan works -- licensing -- legal solution -- transformative use exception for user-generated content.
The recent Green Paper on Copyright in the Knowledge Economy began a Europe-wide consultation on the exceptions to copyright as set out in the Directive on the harmonisation of certain aspects of copyright and related rights in the Information Society. In this article, Euan Lawson of Michael Simkins LLP examines the Green Paper with particular reference to the proposals on orphan and transformative works.]
Trust and Strategic Content Alliance
(JISC, British Library, BBC, National Health Service, Becta, and Museums,
Libraries and Archives Council). In from
the Cold: An assessment of the scope of ‘Orphan Works’ and its impact on the
delivery of services to the public (April 2009), report on research
project, JISC UK. Available at: [In recognition of the substantial obstacles created by Orphan Works
across the public sector, as well as the lack of a statistically viable evidence
base to underpin any potential solutions, the
have been working together on a joint initiative to assess the impact of Orphan
Works on the delivery of services to the public. The ‘In from the Cold’ project
is the first research of its kind surveying the extent of Orphan Works across
the UK’s public sector, drawing on international responses as well as qualitative
data from over 80 UK-based public sector bodies.”
“4. Extrapolated across UK museums and galleries, the number of Orphan Works can conservatively be estimated at 25 million, although this figure is likely to be much higher. [...]
6. The types of works likely to be Orphan Works are those with little commercial value, but high academic and cultural significance and where rights holders, if traced, would usually be happy for their works to be reproduced. User generated content, works by amateur or local artists and works by artists using aliases were also mentioned as at risk of being Orphan Works.”
7. A number of factors were identified as leading to Orphan Works, including:
−− Insufficient information identifying the copyright owner
−− The owner of the copyright could not be located
−− The copyright holder has died and there is no further information about ownership of the rights]
Bibb, Megan. ‘Applying old theories to new problems: how adverse possession can help solve the orphan works crisis’, Vanderbilt Journal of Entertainment and Technology Law, Volume 12, Number 1, (Fall 2009) p.149.
Hirtle, Peter B. Chapter 3, "Duration and Ownership of Copyright," in Copyright and Cultural Institutions: Guidelines for Digitization for U.S. Libraries, Archives, and Museums, by Peter B. Hirtle, Emily Hudson, and Andrew T. Kenyon (Ithaca, NY: Cornell University LIbrary, 2009) available for purchase at: , and free download at:
Peters, Marybeth (the Register of Copyrights). ‘The “Orphan Works” Problem and Proposed Legislation’, Statement of The Register of Copyrights before the Subcommittee on Courts, the Internet, and Intellectual Property, Committee on the Judiciary, United States House of Representatives, 110th Congress, 2nd Session, March 13, 2008. Available at:
Tune, Cydney. ‘Legal issues for photography’, Copyright World No. 193, September 2009, pp. 15-17. [Lack of copyright notices on photographs -- muddled ownership rights -- freelance photographers -- conflicts between photographers and publishers -- ease in capturing instantaneous images -- orphan works -- emerging rights of publicity -- First Amendment concerns]
Andrews, Ryan. ‘Contracting Out of the Orphan Works Problem: How the Google Book Search Settlement Serves as a Private Solution to the Orphan Works Problem and Why it Should Matter to Policy Makers’, Southern California Interdisciplinary Law Journal, Volume 19, Number 1, (Fall 2009) p.97.
[*]Barton T, ‘Saving Texts From Oblivion:
Oxford U. Press on the Google Book Settlement’, The Chronicle of Higher
Education, (29 June 2009).
Available at: [Technological advancement
is resulting in digitised materials being a core source of research, leaving
many print-only materials overlooked and unused. In an effort to curtail this, an Oxford
University team engaged in a project to enable online access to thousands of
Numerous complex issues such as the issue of orphan works were encountered by an Oxford University team in an attempt to transform these books. Similar issues were also encountered by Google.
Eventually after four years and two lawsuits, Association of American Publishers, the Author's Guild, and Google have proposed a settlement where “lost books of the last century can be brought back to life and made searchable, discoverable, and citable”. This settlement can be seen as a step-forward for orphan works legislation. This settlement affords Google the authority to scan in-copyright books and inserts in the United States, maintain an electronic database of books, and make various uses of the Books as specified in the settlement. For out-of-print nooks and, if permitted by rightsholders of in-print books, Google will be able to sell access to individual books and institutional subscriptions to the database, place advertisements on any page dedicated to a book, and make other commercial uses of books. At any time, rightsholders can change instructions to Google regarding any of those uses. Through the Book Rights Registry, Google will pay Rightsholders 63% of all revenues from these uses. The settlement also provides for cash payments to Rightsholders of Books and Inserts that Google scans prior to September 4, 2009. If it succeeds, readers will gain access to a huge amount of previously lost material, publishers will be able to distribute the works, and authors will find new readers.
If/when this settlement is finalised, for the Book Rights Registry to allow others to have at least the same ability as Google’s exclusive rights to use orphan works. Main point here being that Google must not be given omnipotent power to exploit orphan works
Publishers will probably be unhappy about copyrighted material being made available for free (for security of their revenues). The settlement would result in a compromise for all stakeholders but publishers must realise that it ultimately advocates the issue of copyright]
Elinson, Z. “Fate of Orphan Works Stirs Opposition to proposed Google Books Settlement” New York Law Journal (2009). Available via Legaltrac. [McAus]
Fraser, E. “Antitrust and the Google Books Settlement: the Problem of Simultaneity” (draft paper, 23 June 2009) pp. 1–26, at 8. Available at: [ transaction costs “unimaginable” if Google had undertaken licensing of all books included in its Library Project.]
Hirtle, Peter. ‘Google Book Settlement, Orphan Works and Foreign Works’, LibraryLaw Blog, 21 April 2009. Available at: [The books scanned by Google from US and European library collections include a number of works from non-American authors; some/Hirtle? estimate as many as 3 million of the 7 million scanned books. In Gollan et al 2011]
*Lang, Bernard. ‘Orphan Works and the Google Book Search Settlement – an International Perspective’ (23 August 2009); published in New York Law School Law Review Vol. 55 (2010/11), pp. 111–155. Available at: . [“Abstract : The orphan works aspects of the Google Book Search settlement are analyzed with respect to international treaties on copyright. We argue that the exploitation of orphan works can only be permitted under some exception or limitation to exclusive rights. However, exceptions or limitations have to satisfy the constraints of the three-step test, and we further argue that the proposed settlement does not, since it does not take into account new models of exploitation of works, such as open access, that have become "normal" in the digital world. This analysis is then extended to non-orphan in-copyright works, for which the opt-out solution of the settlement agreement conflicts with the no- formalities requirement of the Berne Convention, taking into account the historical and practical intent of this requirement. We also show that, unless they are illegitimately granted the right to enforce payment on orphan and unregistered works – and this could undermine the legitimacy of copyright itself with the public – the parties to the settlement will have a vested interest in limiting access to the searchable on-line Books Database identifying books, thus severely curtailing its usefulness.”]
Lang, Bernard. ‘Copyright's New Clothes — after H. C. Andersen — ... or is it Old Clothes?’, presentation for panel: ‘How to best recognize Orphan Status’, European Commission, Public Hearing on Orphan Works, Brussels (26 October 2009). Available at:
[*]McCausland, Sally. ‘Googling the archives – ideas from the Google Books Settlement on solving the orphan works problem in digital archive projects’, Unlocking IP Conference, National and Global Dimensions of the Public Domain, University of New South Wales, 17 April 2009, also in 6 no.2 (2009) SCRIPTed 377 - 389. Available at: [Google Books Settlement – Google has digitised millions of ‘archival’, or out of print books and made them searchable online. Defence of fair use under US copyright law.
Fairness hearings set for October 2009? – FIND
The ‘opt-in’ system is a product of the Berne Convention. This creates problems for the implementation/feasibility of any ‘opt-out’ system.
In context of digital archive projects, libraries, cultural institutions, commercial enterprises, research institutions or interest groups, struggle with orphan works and other copyright clearance issues.
In this particular contest: Google, American Authors Guild and Association of American Publishers.
International conventions – where does this fit in? Berne Convention in particular defines sort of foundation modern copyright sits on at present.
Summary of past proposals:
‘Diligent search’ model (Canada and Japan) – requires the would-be user to attempt to locate a copyright owner by carrying out certain prescribed or ‘reasonable’ activities. Problems with this model include: delay and transaction costs.
‘Reduced risk’ variant of ‘diligent search’ subsequently put forward in US Congress bills. This is the idea that a user who makes reasonable efforts to locate the owner of a copyright work is entitled to certain legal immunities against copyright remedies and legal costs if the owner later comes forward and objects to the use. However, while this reduces legal risk, it does not reduce transaction costs. These bills did not pass Congress, and now appear to be in limbo.
The Google Book Settlement
‘opt-out’ system, which reverses the default position of copyright by placing the onus on copyright owners to uphold their rights, for example to state their unwillingness for the book to be searchable on the archive.
Settlement would remove the risks of using orphan works – there is no requirement to perform reasonable steps to find the author, and not only can they use the books for free, but they can keep any revenue made by exploiting the books.
However, copyright holders who are part of the Settlement can remove books or exclude certain specific uses on an on-going basis. They can get some share of the revenue made from exploitation of their works.
If the Settlement ratified by court, it will only directly affect Google. However, author discusses whether Google Book Settlement-type schemes can be made more generally accessible in the public interest.
Theoretical proposal for a public licensing scheme:
Collective licensing scheme, in particular, ‘universal’ licences that permit use of all copyright material falling within a class of rights even where copyright owner does not authorise use
There is no need for the user to make enquiries as to owner of the copyright before the use occurs; attempts to locate the user are done by the appointed collective management organisation.
Unclaimed revenue is held on trust for a certain period while attempts are made to locate the owner, once the rights-holder is found, they are invited to become a member to receive payment.
Nordic countries, ‘extended collective management schemes’ could even apply to
copyright owners not members of the organisation, subject to opt-out by
Abstract: ‘Many large scale digital archive access projects, whether undertaken by libraries, cultural institutions, commercial enterprises, research institutions or interest groups, struggle with orphan works and other copyright clearance issues. Under the default “opt-in” system prevailing under the Berne copyright treaty framework, each copyright owner must be located and give permission before their material can be digitised and made available for online uses. This imposes significant transaction costs and legal risks, and the public interest in access to cultural material is compromised. Various legislative solutions have been proposed, particularly in relation to orphan works, but no comprehensive solution has emerged. Legal developments around Google’s activities in pursuit of its “Library Project” now offer new ideas. The Google Books Settlement is the provisional settlement of copyright infringement action brought against Google by the American Authors Guild and the Association of American Publishers. The case concerned the legality of the Library Project through which Google has digitised millions of “archival”, or out of print, books and made them searchable online. Google’s controversial defence to copyright infringement is that its actions constitute fair use under US copyright law. The settlement is not yet judicially approved and fairness hearings are set for October 2009. However, if approved, it will be groundbreaking. It achieves, via class action rules, a rule switch from opt-in to opt-out – creating a unique safe harbour for Google to commercially exploit millions of books without first searching for owners and seeking their individual permissions. In practical terms, it will vastly increase digital access to in-copyright, out of print books. This paper considers whether legislative reform based roughly on this model could be applied to other digital access projects seeking to unlock cultural archival material.’]
Ringnalda, Allard. ‘National and International Dimensions of Copyright Law in the Internet Age Harmonizing exemptions: The Case of Orphan Works’, European Review of Private Law, Volume 17, Number 5, (2009) pp. 895–923. Available via Kluwer Online. [Abstract: Despite international and European cooperation, copyright law remains a predominantly national affair dominated by national policy. The article examines if this framework is up to the challenges presented by the Internet. Two problems are found: the laws of all the receiving countries apply to an Internet publications and these laws often differ substantially. This is so because states wish to remain free to draft national copyright policy and apply it to their public sphere. As a consequence, exemptions from copyright protection are not harmonized. Using the example of digital libraries and the problem of copyright-protected works whose right holders are unknown or unlocatable (so-called orphan works), the article demonstrates how divergence of laws impairs Internet-related use of copyrighted materials. As these orphan works cannot legally be used, an exemption from copyright protection may be warranted. However, to facilitate online distribution, an international approach is required. This article discusses the possibilities of such an approach by means of choice-of-law and harmonization and unification of copyright law in the European Union.]
van Eechoud, Mireille, et al. ‘Orphan Works’, Ch 7 in Harmonizing European Copyright Law: The Challenges of Better Lawmaking (2009), Kluwer Law International, Netherlands.
Reding, Viviane (EU Commissioner for Telecoms and Media). Digital Europe – Europe's Fast Track to Economic Recovery (9 July 2009) The Ludwig Erhard Lecture, Lisbon Council, Brussels. . Available at: [“Let us be very clear: if we do not reform our European copyright rules on orphan works and libraries swiftly, digitisation and the development of attractive content offers will not take place in Europe, but on the other side of the Atlantic. Only a modern set of consumer-friendly rules will enable Europe’s content to play a strong part in the digitisation efforts that has already started all around the globe. (The Commissioner’s emphasis)”]
De Beer, Jeremy, and Bouchard Mario. ‘Canada’s “Orphan Works” Regime: Unlocatable Copyright Owners and the Copyright Board’ (1 December 2009). Copyright Board and Department of Canadian Heritage. Available at:
Crookson, Michael. ‘Image Recognition Technology and Orphan Works Solutions’, Landslide (American Bar Association), Volume 1, Number 6, (July/August 2009 ) p.50.
Wilson, Amanda N. ‘Jet-Setting Orphan Works: The Transnational Making Available of Works of Unknown Authorship, Anonymous Works, or Lost Authors’, Emory International Law Review, Volume 23, Number 2, (2009) p.783. Available at:
Xalabarder, Raquel, for WIPO. ‘Voluntary Individual Licensing’ in Study On Copyright Limitations And Exceptions For Educational Activities In North America, Europe, Caucasus, Central Asia And Israel (5 November 2009), SCCR/19/8, WIPO Standing Committee On Copyright And Related Rights, Geneva, pp. 126-127. Available at:
Berryman, Jennifer and van de Velde, Janice. ‘Information Access Plan: Rights Management Discussion Paper’, Paper 13 for National & State Libraries Australasia, Re-imagining Discovery Services workshop, State Library of Victoria, 4 February 2008. Available at:
Cutler, Terry. Venturous Australia - building strength in innovation, Report on the Review of the National Innovation System (2008). See Chapter 7 in particular, esp. recommendations about improving access to cultural collections, esp. Recommendation 7.14, p. 171. Available at:. See also Review web page, including related work, at:
[*]Greenleaf Graham. ‘Unlocking IP to stimulate Australian innovation – An Issues Paper’ UNSW Faculty of Law Research Series Paper No. 2008-44 (2008);  UNSWLRS 44. A submission to the Review of the National Innovation System chaired by Dr Terry Cutler. Available at SSRN: or
Hunter, Alix, and MacNeill, Kate. ‘Art on the outside: Thoughts on legal aspects of institutionalised art production’, (2008) 13 MALR 468. Available via LexisNexis AU.
Illustrators Australia. ‘US Orphan Works Bill” (2008), referring to submissions by Illustrators Partnership of America to US Congress.
‘Information Policy’, Chapter 7, National Innovation System review report ( 2008).
Woods, Stephanie. ‘Creative commons : a useful development in the New Zealand copyright sphere?’. Canterbury Law Review (14) 2008: 31-63. Available via AGIS Plus Text. [p. 58: Notes intended role of CC in avoiding orphans.]
British Copyright Council. Annex: Orphan works and other orphan material: the BCC proposal (28 November 2008). Available at: [intro: p1. “This is the reply of the British Copyright Council to points raised in the UK IPO paper “Orphan works – potential solutions” 23 September 2008 (“the UK IPO paper”).”]
British Screen Advisory Council (BSAC), submission to the New Inquiry by the All Party Intellectual Property Group: Has Gowers Helped or Hindered Enforcement of IP Rights? (September 2008). Available at
*Sterling, Adrian. ‘Orphan works and other orphan material: Amendments to U.K. Copyright, Designs and Patents Act 1988 -- The “legitimated use” system’ (21 November 2008). Paper circulated at 8th IBC Annual International Copyright Law Conference, London, 4/5 December 2008; proposal adopted by the British Copyright Council and included in the Council’s Response to the EC Green Paper on Copyright in the Knowledge Economy, and submitted by the Council to the UK Intellectual Property Office. Available at:
Sterling J.A.L. World Copyright Law 3rd edition (2008), esp. paras 12.32–12.37.
American Society of Media Photographers. FAQ: ASMP's Position on Orphan Works (2008). Available at: and . [commentary on the legislation, information on its history and a comparison of changes made to the Bills during the legislative process]
Bronder, Vigdis. ‘Saving the Right Orphans: The Special Case of Unpublished Orphan Works’, Columbia Journal of Law & the Arts, Volume 31, Number 3, (Spring 2008) p.409.
Heller M, The Gridlock Economy – How Too Much Ownership Wrecks Markets, Stops Innovation, and Cost Lives (2008) Basic Books, New York. [In Fitzgerald & Pappalardo 2009]
Henning, Darrin. ‘Copyright’s Deus Ex Machina: Economic Fostering of Orphan Works through Reverse Registration’, 55 J. Copyright Soc’y U.S.A. 201 (2008). Available at: [problems with all previous versions of orphan works legislation]
Lipinski, T.A. ‘Green Light for Grey Literature? Orphan Works, Web-Archiving and other Digitization Initiatives – Recent Developments in U.S. Copyright Law and Policy’. In: Tenth International Conference on Grey Literature: Designing the Grey Grid for Information Society (2008) Conference Proceedings. Available at: or [This paper reviews recent legislative and case developments in the area of copyright law affecting the collection, preservation including digitization and dissemination of grey literature. Alternative frameworks for crafting a legislative solution to impediments the copyright present to these uses are discussed. This includes review of pending legislation targeting the problem of so-called “orphan works” offering a limitation on the monetary damages or injunctive relief the copyright owner may be granted and another pending proposal aimed at relaxing the anti-circumvention prohibition of section 1201 that would allow access to compilations consisting primarily of public domain works that are protected by technical protection measures. The recent SECTION 108 STUDY GROUP REPORT also contain recommendations related to preservation (reproduction) and dissemination of both analog and borne-digital works, including a new provision for internet archiving. Finally, recent case law supporting the archiving of various online sub-literatures is reviewed, such as the disputes over caching and archiving by Google and the TurnItIn plagiarism combating service. Short of a legislative solution, the procedural elements affecting copyright enforcement are assessed to determine the legal risk in use of grey literature. These proposals and cases are analyzed and critiqued, with assessment towards solving the copyright issues related to the preservation and use of various grey literatures. Policy failures as well as successes in the United States can assist policy makers in other countries when contemplating copyright issues related to preservation and use of grey literature.]
US Library of Congress. International Study on the Impact of Copyright Law on Digital Preservation (July 2008), A joint report of The Library of Congress National Digital Information Infrastructure and Preservation Program. Available at: .
Jakobsen, Søren Sandfeld, Nielsen, Ruth, Riis, Thomas, Savin, Andrej and Østergaard, Kim. Comments on the Commission's Green Paper on Copyright in the Knowledge Economy (December 1, 2008). Available at SSRN:
OCLC Online Computer Library Center. WorldCat Copyright Evidence Registry (2008). Pilot. Available at: and
Australian Copyright Council. ‘Information Sheet G096 Copyright Amendment Act 2006’ (January 2007). Available at:
Atkinson Ben. The True History of Copyright: The Australian Experience 1905–2005, (2007) Sydney University Press.
Christie, Andrew. ‘Cultural Institutions, Digitisation and Copyright Reform’  UMelbLRS 13; Intellectual Property Research Institute of Australia Working Paper No. 09.07 or (2007) 12 MALR 279. Available at: or , or from LexisNexisAU.
(Senior Legal Officer, Australian Copyright Council). ‘Some Current Copyright
Issues’ (Dec 2007) 28 Incite 12 pp.
27–28. Available via AGIS+. [ p. 27: “Currently, using orphan works may
infringe copyright. (In some cases, copyright will have expired, but you may
not be able to work this out if you don’t know who the creator is.)
If you want to use an orphan work, you will have to make what we call a ‘risk assessment’. That is, you make a guess about whether the copyright owner, if she or he finds out about your use of the images, is likely to object, and if so, how you would be able to resolve the issue (for example, how much you would have to pay as a licence fee). You then decide either to take the risk and use the images, or not use them. “
“Basically, the policy options are:
create an exception to infringement for use of orphan works provided the user can show, if challenged, that he or she has taken adequate steps to identify the copyright owner
establish a procedure by which someone wanting to use an orphan work must apply to an independent body which can grant permission if appropriate steps have been taken, or
leave the situation as is.
The first two options might include provision for payment — either to the copyright owner if they show up, or to an appropriate collecting society, to be held for the copyright owner.”]
Greenleaf, Graham, Maurushat, Alana, Vaile, David, Bond, Catherine and Paramaguru, Abi. ‘Not a Fair Trade: Australia's TPM Protection and AUSFTA-Inspired Reforms’ (2007). UNSW Law Research Paper No. 2007-19. Available at SSRN:
[*]Hudson, Emily; Kenyon, Andrew T. ‘Without Walls - Copyright Law and Digital Collections in Australian Cultural Institutions’ (2007) UMelbLRS 6. Available at: and as SCRIPT-ed, Vol. 4, No. 2, 2007, U of Melbourne Legal Studies Research Paper No. 240, available via SSRN: . [uses recent experience in Australia to discuss copyright’s impact on digitisation, and to explain why and how copyright has influenced the cultural institution . It also describes therecent introduction of a flexible exception in Australia for some activities by cultural institutions.
The digitisation era has allowed cultural institutions to pursue their goals through the provision of public access (‘without walls’) to cultural collections (access being the modus operandi of most, if not all cultural institutions).
While digital technologies have enhanced the ability of institutions to provide access to their collections, the need to comply with copyright has constrained decision-making about online content. Importantly, such restriction does not always seem necessary to protect the interests of creators and copyright owners.
This situation could prompt reform of at least three types: amendment of copyright law, in particular statutory exceptions; reform of licensing practices, especially collective licensing whether of voluntary or statutory form;** and development of new curatorial practices and risk management strategies. **Eg Australia has elaborate statutory licensing for some educational activities in Copyright Act 1968 (Cth) part VB.
Lack of relevant copyright exceptions, amongst other things (such as difficulties in licensing process and underdeveloped risk management), has strong impact on what material is available for digitisation and publication. The only two relevant exceptions to cultural institutions are fair dealing and the libraries and archives provisions. On top of the above exceptions, two new exceptions -the flexible exception for cultural institutions and other users (defined under s 200AB Copyright Act)
Section 200AB of the Copyright Act can allow a use of copyright material by educational institutions, libraries, collecting institutions and people with a disability, where the use is not covered by other specific exceptions in the Copyright Act.
There are no statutory licensing regimes for cultural institutions.
Traditional models of licensing fail due to the problem of orphan works. This and the above point suggest that the selection of works for public digitisation is often driven, in whole or in part, by the ease of copyright compliance.
Cultural institutions, as discovered in the field
work in the article, are generally risk averse which further negatively impacts
the selection of works for public digitisation.
To develop copyright law, policy and management practices that reflect variations in the interest of copyright owners, creators and users]
Hudson, Emily and Kenyon, Andrew. ‘Digital Access: The Impact of Copyright on Digitisation Practices in Australian Museums, Galleries, Libraries and Archives’. U of Melbourne Legal Studies Research Paper No. 300; UNSWLJ 30 No.1 (2007), 12–52. Available at SSRN: or or
Paramaguru, Abi. ‘Save the Orphans!’, House of Commons blog post (12 February 2007), ‘Unlocking IP’ project, Cyberspace Law and Policy Centre, UNSW. Available at:
Rimmer, Matthew. ‘The iPod Act: changes to Australia’s copyright laws, 01 March 2007’, Australian Intellectual Property News, (2007) Issue 255, 1 March 2007. Available via CCH Intelliconnect.
Kimberlee and Brennan, David J. ‘Has
copyright protection gone too far?’, Managing
Intellectual Property No. 174, (November 2007) pp. 74–76. Available via
Hein Online. [
abstract: Copyright legislation in Australia -- debate on effectiveness -- 2006 amendments to Copyright Act -- very limited exceptions for use by public -- orphan works -- anti-circumvention laws -- enforcement -- expansion of criminal penalties -- financial penalties -- bias in judiciary -- complexity of law -- Stevens v Sony.
p.74: ““Accommodations made for other users suffer a similar proliferation of qualifications. For example, a new exception to copyright infringement, section 200AB, was allegedly introduced to give flexibility to public-sector organizations like universities, schools, libraries and archives when maintaining libraries or archives, giving educational instruction, or assisting the disabled. Again, however, the exception is so bounded about by restrictions as to be both incomprehensible and useless. Few institutions will go through the process of establishing, before a court, that they are the right kind of user, acting for the specified purpose and non-commercially, are not seeking to avoid a statutory licence, and that their use constitutes a special case, not conflicting with a normal exploitation of the work, nor unreasonably prejudicing the legitimate interests of the owner. Imagine the legal bills.
Equally striking are the reforms that didn't happen. Despite the obvious inappropriateness of copyright protection for orphan works with no identifiable owner, no attempt was made to deal with the issue.”]
White, Benjamin. ‘No idea is an island: rights clearance of sound recordings by the British Library’, Copyright World No. 167, (February 2007) pp. 24–26. [abstract: Marketing a product involves interconnections with rights holders -- i-tunes -- importance of intellectual property (IP) to the economy -- value of IP in the education sector -- British Library -- Archival Sound Project -- African Writers' Club collection -- Transcription Centre -- myriad rights -- difficulties of tracing rights holders -- St Mary-le-Bow public debates collection -- unclear rights situation -- Data Protection Act -- trends -- growth of online projects -- Google -- Microsoft -- digitisation of material -- best efforts permission process -- Orphan Works.]
‘Killing the orphans’, Journal of
Intellectual Property Law and Practice. Vol. 2 No. 10 (October 2007),
editorial, pp. 633-634. Available at: [Abstract:
Orphan intellectual property works -- orphan drugs -- orphan copyright
works -- use of orphan works by publishers -- need for a code of practice to
govern use of orphan works. “The more
law-abiding commercial sectors are calling for the use exploitation of orphan
works to be legitimised, whether on payment of a notional royalty into a fund
to be collected by the copyright owner in the event that such a person should
come forward and prove entitlement to receive it or on some other basis.
Various solutions have been mooted in the USA, which appears to favour a
compromise that does not take the use of orphan works outside the scope of
infringement but reduces the consequences for unauthorised users. Canada has
already implemented its own official scheme, which is by all accounts little used
and unlikely to serve as a model.
Less law-abiding commercial sectors, of which the newspaper and periodical industry is probably the best example, take a more practical view. The odds are that, if the would-be licensee cannot obtain clearance for an orphan work and goes ahead and uses it, nothing adverse will happen. The vast majority of copyright owners in orphan works have simply vanished and will never appear. There is no Society of Orphan Works Owners to protect their interests. Even if they have not vanished but are alive and well, the chances of them discovering that an infringement has taken place are slim. And where they do detect an infringement, the wrongful act is unlikely to attract any serious sanction, particularly where the work and the infringement are of trivial commercial value. “]
Brannon, P, ‘Reforming Copyright to Foster Innovation: Providing Access to Orphaned Works’ 14 Journal of Intellectual Property Law 145 (2006–2007).
Hetcher, Steven. ‘Orphan Works and Google's Global Library Project’, Wake Forest Intellectual Property Law Journal, Volume 8, Number 1, (Winter 2007) p.1. Available at: [abstract: This article is about the unique connection that has emerged between copyright law's orphan works problem and the pending controversy that Google, Inc., has created with its "Google Print" project. Delving more deeply into this connection can provide us with information concerning a core element of copyright law, the fair use doctrine. Moreover, the Google Print project is an important and instructive example of the orphan works problem. It is the author's contention that these connected doctrines present a rational policy-based argument. A policy-based solution is important because it is a solution to the Google Print lawsuit and it is distinctive from what has been offered by all parties to the Google lawsuit and the various commentators.]
Hickman, Benjamin. ‘Can you find a home for this 'orphan' copyright work?: a statutory solution for copyright-protected works whose owners cannot be located’, Intellectual Property Law Review Vol. 39, (2007) pp. 639-672. Syracuse Law Review, Vol. 57, (2006) pp. 123-156. [Why orphan works are a problem -- congressional modifications to copyright law have created the orphan works problem -- repeal of formalities -- copyright extension term -- legislative proposal -- affirmative defence for users who have conducted a reasonably diligent search for copyright owner -- diligent search solution best addresses the problem -- searching technology useful for owners and users -- concerns of visual artists -- alternative solutions -- orphan works registry -- Copyright Office administrative power -- need firm guidelines for what constitutes diligent search -- further consultation and reform.]
Khong, Dennis. ‘Orphan Works, Abandonware and the Missing Market for Copyrighted Goods’, (2007) International Journal of Law and Information Technology, Vol. 15, No. 1, pp. 54-89, 2007. Available at SSRN:
Lessig, Lawrence. ‘An Orphan Works Maintenance Requirement’ (February 2007), summary of proposed scheme. Available at: [one page description of Lessig’s alternate proposal to US Copyright office: a form of registration, failure to register within a year of obligation removes some or all copyright protection]
Pike, George H., An Update on Orphan Works’, Information Today, Vol. 24, No. 7, p. 1, 2007; U. of Pittsburgh Legal Studies Research Paper Series. Available at SSRN: (University of Pittsburgh - School of Law)
Schwartz, E.J and Williams, M, ‘Access to Orphan Works: Copyright Law, Preservation and Politics’ Cinema Journal (2007) Vol. 46, No. 2.
Sherman, David. ‘Cost and Resource Allocation Under the Orphan Works Act of 2006’, Virginia Journal of Law & Technology, Volume 12, Issue 2, (Spring 2007). Available at: [Abstract: “As a result of legislation passed to extend the duration of copyright protection and to eliminate the formalities previously required to obtain it, a large category of works has been created that are protected by copyright, but whose copyright owners cannot be identified or contacted to obtain permission to use the works. These “orphan works” are problematic because the uncertainty over their copyright status often leads to substantial transaction costs that prevent them from being used in new creative works or made available to the public, even when there is no one claiming copyright ownership, or the copyright owner would permit such use at no cost. As a result of the inefficient resource allocation caused by such transaction costs, the public is forced to bear the substantial economic, social, and cultural costs of orphan works being used unproductively. In response to this problem, the House Judiciary Subcommittee on Courts, the Internet, and Intellectual Property, on May 24, 2006, approved a bill known as the “Orphan Works Act of 2006.” If passed, the Act would limit the relief available to copyright owners whose “orphan works” are infringed upon by a user who performed a reasonably diligent search in good faith to find the copyright owner in order to obtain permission, but did not succeed. In doing so, it would allocate a portion of the transaction costs of initiating negotiations from the potential orphan works user to the copyright owner, thereby reducing the value of the copyright monopoly. Surprisingly, there has been almost no discussion by either the U.S. Copyright Office or anyone else about how the Act would allocate transaction costs. However, the effectiveness of the Act will ultimately depend upon whether such cost allocations would allocate orphan works more efficiently than they are now and thus, reduce the economic, social, and cultural costs of the orphan works problem. Because efficiency increases alone do not justify intentional copyright infringement, this paper examines whether the Act would minimize overall transaction costs, whether such cost allocations would cause copyright orphans to be used more efficiently than the current system, and whether any potential efficiency increases would comport with the goals of copyright law, such that the Act would provide a meaningful solution to the orphan works problem.”]
Sleep, Tony. Comment on Lessig blog,
(25 February 2007). Available at: xx. [UK photographer cautiously
supporting Lessig registration model, suggesting DOI as platform.
“We have the Gowers report proposing similar orphan rights here in UK, where of course there is no copyright registry. Gowers proposes creating one, but no doubt it will be as cumbersome and disastrous as every other Government bureaucracy.
As a UK photographer, firstly alarmed by the US proposals, and now by our own domestic equivalent, I was pretty happy to see LL talking what looks like good sense here. It is the beginning of a way past a logjam of conflicted interests and denial.
I agree universal cheap and simple registration is a way forward - as LL suggests, a sort of 'DNS for copyright'. This even exists already as the Digital Object Identifier system, which is a suitable open standards protocol already supported by some browsers. All we need is registries implemented for the purpose. DOI costs work out to a few cents per item.”]
Teng, Simon. ‘The orphan works dilemma
and museums: an uncomfortable straitjacket’, Journal of Intellectual Property Law and Practice Vol. 2 No. 1,
(January 2007) pp. 30-39. Available via OUP Journals Current. [
abstract: Copyright -- untraceable owners -- consent for use -- royalty payments -- fair use -- discouraging dissemination -- museum usage -- making cultural material available to public -- internet -- funding -- risk of using material -- museums proposed orphan works exception -- five year protection from prosecution -- Copyright Office recommends reduced remedy -- compensation -- not damages -- calculation of compensation -- due diligence search -- legislation passed 2006
“Legal context: Orphan works are copyright works where the right holders cannot be found. Without the consent of the right holder, a user faces potential liability for the unauthorized use of the work. Museums have a duty to make cultural materials available to the public. However, the orphan works problem may pose obstacles to the normal functioning of a museum. This article explores the problem of orphan works as it pertains to museums.
Key points: Legislative solutions are being considered in addressing the problem of orphan works in the United States. The museums, as a lobbying group, initially advocated for a safe-harbour rule. The U.S. Copyright Office recommended a limitation on remedies rule. Any legislative solution tackling the orphan works problem must balance the benefits of using orphan works against the exclusive rights of creators.
Practical significance: This article will inform readers of the orphan works problem. In addition, the lobbying efforts of the museums in trying to obtain desirable legislation are explored. By understanding the various interests involved, readers can better anticipate the possible orphan work solutions that the United States may adopt. “]
Valkonen, Sami, and White, Lawrence J. ‘An Economic Model For The Incentive/Access Paradigm Of Copyright Propertization: An Argument In Support Of The Orphan Works Act’, Hastings Communications and Entertainment Law Journal Volume 29, Number 3, (Spring 2007) p.359.
Williams, M. “Recent Second Circuit Opinions Indicate that Google’s Library Project is Not Transformative” (2007) 25 Cardozo Arts & Entertainment Law Journal, 303- 331. [McAus]
[See also Reports section.]
Gompel, Stef van. ‘Unlocking the potential of pre-existing content: how to address the issue of orphan works in Europe?’, IIC: International Review of Intellectual Property and Competition Law Vol. 38 No. 6, (2007) pp. 669702. [abstract: Digital distribution of pre-existing works increasing -- copyright clearances -- owners cannot be identified or located -- practical importance of problem of orphan works -- regulatory action needed to facilitate use -- measures to prevent problem spreading -- improved rights management information -- creation of databases containing information on orphan works -- solutions based on agreements between users and rights holders -- solutions provided by legislative instruments -- compulsory licences -- action needed at EU and national level.]
Gompel, Stef van. Audiovisual Archives and the Inability to Clear Rights in Orphan Works, IRIS plus, (2007). Available at:
Australian Copyright Council. “Information Sheet G51, Owners of Copyright: How to Find” (July 2006). Available at:
Australian Copyright Council. ‘Response to government proposals for new exceptions in media release ‘Major copyright reforms strike balance’’ (May 2006). Available at:
Alliance (ADA). ‘Orphaned Works On the Agenda’, ADA Monthly Intellectual Property Wrap-Up (January/February 2006).
Available at: [“The key recommendation of
the Office, is that an additional provision be inserted into the US Copyright
Act, which essentially states [summary only] that:
If 'the infringer' (user of the orphaned work) performed a good faith, reasonably diligent search to locate the owner of the work;
And if throughout the use of the work, the infringer provided attribution to the author and copyright owner of the work if possible and as appropriate under the circumstances;
Then the remedies available to the copyright holder shall be limited as follows:
(1) No award for monetary damages other than an order requiring the infringer to pay reasonable compensation for the use of the work, provided that the use is not for direct or indirect commercial advantage and the infringer ceases the use expeditiously after receiving notice of the claim for infringement; and
(2) Where 'an infringer' has prepared or commenced preparing a derivative work that recasts, transforms, or adapts the infringed work with a significant amount of the infringers expression, a Court will not restrain the continued preparation & use of that derivative work, provided that reasonable compensation is provided to the copyright owner & provided that reasonable attribution to the author and copyright owner are made as determined by a Court.
The provision also states that in all other cases not falling under such circumstances; a Court will take into account a users reliance upon this provision; and that the provision does not affect rights, limitations or defences to copyright infringement including fair use.”]
Daniels, Helen (Assistant Secretary, Copyright Law Branch, Attorney-General's Department). ‘An Overview of the Government's Copyright Reform Agenda’, presentatin at ACIPA’s 11th Annual Copyright Conference (17 February 2006). [indicated intention to review orphan works]
Fitzgerald, Brian F., Fitzgerald, Anne M., Perry, Mark, Kiel-Chisholm, Scott D., Driscoll, Erin P., Thampapillai, Dilan, and Coates, Jessica M. Open Access to Knowledge (OAK) Law Project Report No. 1: Creating a legal framework for copyright management of open access within the Australian academic and research sector (2006). QUT Faculty of Law, OAK Law Project, Brisbane, Qld. See para 2.119–2.123, pp.50–51. Available at: [quotes AVCC submission: ‘Australian Vice Chancellor’s Committee (AVCC) noted that: Simply, the current copyright regime effectively ‘locks up’ such material for not good reason and represents a clear failure in providing a balance between the interests of owners and users of copyright material.”]
Hudson, Emily. ‘Little Orphan Author’ (2009) presentation ACIPA conference, Brisbane. Available at:
McAllister, Moyra (Advisor, Copyright, ALIA). ‘Copyright: Orphan Works’, Incite, Vol. 27, No. 7 (July 2006): 10. Available online via AGIS+.
Overview of the Orphan problem:
recognising an orphan,
practical consequences of a work being orphaned.
Use of orphan works is often characterised by a risk analysis of the likelihood of a claim and successfulness of a claim. This article then explores different jurisdictional approaches to the use of orphan works.
Issues with orphan works are becoming more and more prevalent due to digitisation era. Different jurisdictions have different legislative methods of treating Orphan works:
Canada: has a system under which its Copyright Board has been able to grant statutory licenses on a case-by-case basis for up to five years to applicants who cannot locate a copyright owner. Before having a license granted, the applicant must satisfy several criteria set by the Board.
Discovered that people are locating copyright owners so process is not frequently used
Many people do not use orphan works at all/happy to take risk in using them
People who do use the process are those who do not like risk and the process acts as a shield against any risks that surface
Japan: S 67 Japanese Copyright Law governs issues over copyright works. This procedure is complicated and there are not many examples of this legislation being used in practice. What is known is that:
You need to pay a compensatory fee (how this fee is assessed is unknown)
You cannot use the right to use the orphan work in a business environment because the special legal status is derived from an administrative decision
America: until recently, registration of copyright together with the renewal of registration played a large part in minimising what was protected by copyright. Now, as a result of being party to the Berne Convention, they are obliged to grant copyright protection without any formalities. As a result:
Lack formalities (opt-in formalities) will result in possible orphaning of 50% of published material that was never protected by copyright due to their inability to comply with previous formalities.
The whole point of previous formalities was to narrow the reach of copyright law to works which had continuing copyright related interest; as such it burdened few copyright works
The orphan works issue is governed by s 108(h) US Copyright Code, s 115(b)(1) Copyright Act and two provisions in the US Code of Federal Regulations §260.7 and §253.9.
At the time of this article Orphan Works Bill was going through legislative process. This bill imposed a limitation on remedies for infringing use of orphan works, as opposed to a complete defence for infringing use.
But is there even a need for a legislative mechanism to deal with orphan works; another variant of this is whether the problem is orphan works or orphan uses.
Australian proposal: Many of the submissions to the 2005 Fair Use inquiry urged the government to amend the Copyright Act to deal with orphan material with a focus on fair use. In summary, the proposals include:
A new defence to infringement i.e. “reasonable enquiries” made to ascertain identity/location of owner
Case-by-case license granting by an appointed body/court
“Extended licensing model” where licenses offered by collecting societies be deemed by legislation to extend the use of all similar material unless owner specifically informs society to the contrary
Further Issues to consider:
Is there a need for a legislative mechanism at all?
Is an independent arbiter a necessary part of any orphan works exception?]
Ricketson, Sam, and Ginsburg J. International Copyright and Neighbouring Rights: The Berne Convention and Beyond, 2nd ed (Oxford: Oxford University Press, 2006)
[*]Rimmer, Matthew. ‘Robbery under Arms: Copyright Law and the Australia-United States Free Trade Agreement’ (March 2006), First Monday, Volume 11, Number 3. Available at SSRN: and [considers the changes to Australian copyright law as a result of the Australian-United States Free Trade Agreement 2004.
Term of expiry in the USA was 50 years, but as a result of powerful lobby groups including Walt Disney, this was extended to 70, with dubious benefits. Extending the term would not seem likely to provide additional incentives to produce new works, but may impose costs on consumers.
In terms of orphaned works, a series of constitutional challenges to copyright have all failed.
Libraries, archives, cultural institutions, as well as educational and research organisations, incl:
the National Screen and Sound Archive
Australian Broadcasting Corporation
Public Domain Enhancement Act 2003 (US)
sought to amend US Copyright Act to allow abandoned copyrighted works to enter public domain after 50 years
As yet not supported?
2006 – Marybeth Peters, Register of Copyrights at US Copyright Office released report on orphan works, which concluded that there was a need for legislative reform (see above).
Unclear how effective that would be, in that users could still be liable despite diligent efforts to find the owner.
Better option would be to provide copyright users with a legislative defence in respect of orphan works. Copyright users should not have to pay compensation in such cases. (US group ‘Public Knowledge’)
Australian Digital Alliance also called for creation of a legislative defence where user has made ‘reasonable efforts’ to locate and notify the copyright owner. Non-remunerable free use.
the Australian government commissioned the Centre
for International Economics to undertake economic analysis of the impact of the
FTA, and Dr Phillipa Dee was likewise commissioned by the Senate Select
Committee to provide an independent economic analysis”
GG: “In a 2006 presentation Rimmer identifies six different structures or models that can be used to deal with the orphan works problems, which he labels: (i) Twilight Clauses; (ii) Defences; (iii) Limitation on Remedies; (iv) Registration Scheme; (v) Canadian Model; and (vi) Scandinavian Collecting Society Model. He notes considerable problems with some of the models. For example, “Twilight Clauses” based on the age of works, or the duration of time since publication, or the date of death of the author, will often be useless because so many of them have such little data associated with them that these dates cannot be established with any certainty. “Any system attempting to administer trust monies for all orphaned works will necessarily be complex, time consuming an unreasonably burdensome.” There is a risk that any scheme involving compensatory payments will “keep the orphans in the orphanage” because the uncertainty involved in the level of compensatory payments which may be required will deter use.”]
Rimmer, M. “Finders Keepers: Copyright Law, and Orphan Works”, presentation for ALCC/CICI Orphaned Works Forum (22 May 2006). Available at [an overview of available models to deal with the orphan works issue, and an analysis of options for reform for Australia]and (slides)
‘Higher education and fair use: A wider copyright defence in the face of the
Australia-United States Free Trade Agreement changes’,
(2006) 17 AIPJ 181. Available
via Thomson Legal Online. [
newer development is that the issue of orphan works has been extended into the statutory licence for educational institutions.]
Khong, Dennis. ‘Orphan Works, Abandonware and the Missing Market for Copyrighted Goods’, Int’l J. of Law and Info. Tech., Vol. 14, no. 3, (2006). Available at.
Benkler, Yochai. The Wealth of Networks: How Social Production Transforms Markets and Freedom (2006). Yale University Press.
Brito, Jerry and Dooling, Bridget. ‘An Orphan Works Affirmative Defense to Copyright Infringement Actions’. Michigan Telecommunications and Technology Law Review, Vol. 12, p. 75, 2005. Available at SSRN: [“discussing four of the leading orphan work proposals and advocating for an orphan work affirmative defence.”]
Hecker, Joel. ‘Who Should Be At Risk? The Proposed Orphan Works Legislation’, The Picture Professional, Issue 2, 2006.
Huang, Olive, ‘U.S. Copyright Office Orphan Works Inquiry: Finding Homes For The Orphans’ (2006) 21 Berkeley Tech. L. J. (1), p. 265, 270.
Muller, Frank. ‘Owners and Users Unite!: Orphan Works in the Copyright Modernization Act of 2006’, DePaul Journal of Art, Technology & Intellectual Property Law, Volume 17, Number 1, (Fall 2006) p.79–128. Available via Hein Online. [ ]
Thompson, Coree. ‘Orphan Works, U.S. Copyright Law, And International Treaties: Reconciling Differences To Create A Brighter Future For Orphans Everywhere’, Arizona Journal of International and Comparative Law, Volume 23, Number 3, (Fall 2006) pp.787–852. Available at:
White, Lawrence J. and Valkonen, Sami. ‘An Economic Model for the Incentive/Access Paradigm of Copyright Propertization: An Argument in Support of the Proposed New 514 to the Copyright Act’ (2006). NYU Working Paper No. EC-06-05. Available at SSRN:
Hugenholtz, Bernt, Van Eechoud, Mireille, Gompel, Stef Van, Guibault, Lucie and Helberger, Natali. The Recasting of Copyright & Related Rights for the Knowledge Economy, U. of Amsterdam Institute for Information Law (Nov. 2006). Available at SSRN: , or (executive summary), and [Durantaye: “at the end of 2005, the European Commission commissioned the Institute for Information Law (IViR) at the University of Amsterdam to conduct a study on the extent of the orphan works problem and to determine whether a European Union-wide legislative solution would be in order”]
Knopf, Howard (Macera & Jarzyna, LLP)/Documentary Organisation of Canada (DOC). The Copyright Clearance Culture And Canadian Documentaries: a White Paper on behalf of the Documentary Organisation of Canada (22 November 2006). Available at: or [HoC: Suggested following the approach recommended by the US Copyright Office: p. 25 "While the Canadian provisions may have at one time been exemplary in comparison the lack of any such provisions in most countries, the Canadian solution now appears to be outmoded and even unworkable."]
‘Legislation recommended to deal with problem of 'orphan works'’, World Intellectual Property Report Vol. 20 No. 3, March 2006, pp. 14-16 [abstract: Protection to users of orphan works -- reasonable license fee -- derivative works -- injunctive relief -- study requested by law makers -- problems acknowledged -- common causes of orphan work situation -- ad hoc approach accepted by agency]
[*]Australian Digital Alliance (ADA). Submission to the Attorney-General's Department in response to the Fair Use and Other Copyright Exceptions: An examination of fair use, fair dealing and other exceptions in the Digital Age (May 2005). Available at: . [In addition to submitting that format shifting, preservation copying and other forms of copying should be provided for under the Act, this submission puts forward the idea that the copying of orphaned works should be exempted from copyright infringement so long as certain steps are undertaken to identify the author.
Retain the existing fair dealing exceptions
Introduce following new exceptions:
Amend the Act to achieve technological neutrality
Researchers have disincentive to use broad range of sources for their work.
Institutions (particularly public institutions) have a greater administrative burden.
Exception to infringement:
Non-remunerable free-use exception.
Exemption to cover situations where the author of a work is unknown and the user has made ‘reasonable efforts’ (as judged by industry practice) to locate and notify the copyright owner.
Any exemption for orphaned works must encompass unpublished works where the author is known but has died.
Existing provisions for unpublished works to be amended to be consistent with those for orphaned works.
The ADA does not support:
Any scheme which deems unidentifiable rights holders to be members of collecting societies.
The adoption of a Canadian or Scandinavian style model.]
Council. Response to the issues paper
on Fair Use (June 2005). See p. 3 para 12 and pp. 7–8, para 34-38,
supporting Canadian model. Available at: [ADA 2005: “It has been
suggested by some, (such as
for example) that a system for orphaned works akin to the one in Canada might
be an option for Australia, so that those wishing to use orphaned work would
have to seek permission from a body such as the Copyright Tribunal to be able
to make use of an orphaned work.”
ACC recommended adopting a similar approach to Canada: p3 para 12:
“12. We are in favour of a mechanism allowing use of “orphaned” works, similar to that applying in Canada. The mechanism would need to involve a determination of whether the person wanting to use an orphaned work had taken all reasonable steps to identify and locate the copyright owner, and payment of a licence fee.” and pp. 7–8, para 34-38:
“34. In previous submissions to the Government, we have proposed that there be a mechanism to allow use of material where the copyright owner cannot be found. There is a very limited mechanism of this type in section 52 of the Copyright Act, which allows publication of unpublished works kept in libraries.
35. The Canadian Copyright Act includes a mechanism which allows a person to make an application to the Canadian Copyright Board, and seek a licence from the Board for the use of the material in Canada. Provided the Copyright Board is satisfied the copyright owner cannot be found, it sets a licence fee, which is paid to the collecting society representing that class of works (with an undertaking from the collecting society to pay the copyright owner), or which the licensee undertakes to pay if the copyright owner emerges in the next 5 years.
36. We think that any mechanism allowing the use of “orphaned” works should require the payment of a licence fee, or there is a risk that users will choose to use “orphaned” works instead of works available for licence, and adversely affect the market for those works. The licence fee may vary depending on the type of use; a commercial use would likely require a higher use than a non-commercial one. [p8]
37. We understand that the procedure under the Canadian Act is reasonably informal, easy and cheap to use, that applicants do not need legal representation, and that one application may cover a number of works. Looking at the data on the Copyright Board’s website, all except three of the applications to the Copyright Board have been successful. Of those three, two were refused because the copyright owner’s permission was not needed (one case involved quotations of less than a substantial part, and one involved works in which the copyright had expired), and one was refused because the applicant had presented no evidence that the works had been published.
38. In Australia, the Copyright Tribunal may not be able to hear such applications because they would require a judicial determination (ie whether the applicant had taken sufficient steps to find the copyright owner), which may be outside the Tribunal’s power. It may be, however, that such applications could be heard by the Federal Magistrate’s Court, which can deal with cases in a speedy and inexpensive manner.”]
Australian Copyright Council. Submission to the Copyright Law Review Committee in response to issues paper Simplification of the Fair Dealing Provisions of the Copyright Act 1968, (April 1997).
Australian Vice Chancellor’s Committee (AVCC). ‘Entering the Digital Age: Fair use and other copyright Exceptions’ An examination of fair use, fair dealing and other exceptions, AVCC Submission to the Attorney- General’s Department (2005), submission no. 115. See p.15. Available at: [Fitzg: AVCC: “Simply, the current copyright regime effectively ‘locks up’ such material for not good reason and represents a clear failure in providing a balance between the interests of owners and users of copyright material.”]
Hudson, Emily, and Kenyon, Andrew. Copyright and Cultural Institutions: Short Guidelines for Digitisation (2005). See pp. 9 and 16. Available at:
Lindsay, David. ‘Fair Use and Other Copyright Exceptions: Overview of Issues’ (2005) 23(1) Copyright Reporter 4. [reviews the Issues Paper]
Weatherall, K. ‘Fair Use, Fair Dealing: The Copyright Exceptions Review and the Future of Copyright Exceptions in Australia’, Intellectual Property Research Institute of Australia, Occasional Paper No 3/5, (May 2005). See p 14. [p. 14: “Orphan works are defined by Weatherall as‘works for which it is difficult, or impossible to locate a copyright owner. This may be because the owner is dead, or the company which owned copyright has ceased to exist, or has changed its name’”]
Waelde, Charlotte. ‘Orphan works’, Appendix F in Ed Barker, Charles Duncan, Andres Guadamu, Jordan Hatcher, Charlotte Waelde. The Common Information Environment and Creative Commons: Final Report to the Common Information Environment Members of a study on the applicability of Creative Commons Licences, 10 October 2005. Available at:
Hirtle, Peter B. “Unpublished materials, new technologies, and copyright: facilitating scholarly use”, Journal of the Copyright Society 49 259–275 (Fall 2001) at 269. Available online at .
Cunard, Jeffrey. Counsel for the Coll. Art Ass’n, Debevoise & Plimpton LLP, Letter to Jule L. Sigall, Assoc. Register for Policy & Int’l Affairs, U.S. Copyright Office (Mar. 25, 2005) . Available at: .
Ginsburg, Jane and Goldstein, Paul. ‘Comments on “Orphan Works” Inquiry (Federal Register, January 26, 2005)’ (March 2005). Submission by letter. Available at: [warned that Orphan Works legislation must precisely define the scope of its mandate or fail to meet the three-step test.]
Hirtle, Peter B. "Recent Changes To The Copyright Law: Copyright Term Extension," Archival Outlook, January/February 1999. Contains the first version of the ‘Copyright Term and the Public Domain’ chart now maintained at: .
Troll Covey, Denise. ‘Rights, Registries, and Remedies: An Analysis of Responses to the Copyright Office Notice of Inquiry Regarding Orphan Works’, in M. Halbert (Ed.): Free Culture and the Digital Library Symposium Proceedings. Atlanta, Georgia: MetaScholar Initiative at Emory University (2005), pp. 106–140. Available at:
Troll Covey, Denise. ‘Copyright and the Universal Digital Library’, Universal Digital Libraries: Universal Access to Information. Proceedings of the International Conference on the Universal Digital Library, 9–26. Hangzhou, China (October 2005). Available at:
Gervais, Daniel. Application of an Extended Collective Licensing System in Canada: principles and issues related to implementation (2003), Ottowa, Department of Cultural Heritage. Available at: [in de Beer]
Harris, Lesley Ellen. Editorial Copyright & New Media Law Newsletter (July 2005) . Available at: [Canadian scheme: In 1998, a provision for obtaining a license for the use of works by “unlocatable copyright owners” was added to the Canadian Copyright Act. The license is issued by the Canadian Copyright Board. Decisions are made on a case-by-case basis through application to the Board. If the Board is satisfied by the applicant’s efforts of e-mails, phone calls, written correspondence, approaches to copyright collectives, Internet searches, etc., then it may issue a non-exclusive license which is valid only in Canada, subject to any terms and conditions it sees fit. To June 2010, 249 licenses have been issued (200 since 1998, 49 before! ) and 8 requests denied by the Board for various uses such as:
- the mechanical reproduction of musical works
- the reproduction of architectural plans
- the reproduction and incorporation of a film clip into another film
- the reproduction in a book of a cartoon
- the reproduction, the public performance and the communication to the public of sheet music on a Web site
Kraan, Wilbert. ‘Identifiers, migrating metadata and orphaned objects’ (16 December 2003). The Centre for Educational Technology Interoperability Standards (CETIS), UK. Available at: [technical issues for digital object identifiers to be reliable under various circumstances which could result in loss of link to a work; relevant if DOIs have key role in an OW/registration model?]
Parliamentary Counsel’s Office. Television New Zealand Amendment Bill 89-2 2009, version 2 as reported from the
Commerce Committee on 28 October 2010. Amends the Television New Zealand Limited Act 2003 (NZ), and adds a new
Schedule and amends the Copyright Act
1994 (NZ). . Available at: [See commentary by Morgan:
“The other part, which is the subject of this note, enables TVNZ to rescreen
certain programmes held in its archives. The purpose is to overcome the problem
that some rights holders cannot be located, therefore TVNZ cannot negotiate
terms for rescreening and the programmes languish in the archives.
Clause 10 of the Bill inserts a new Part 4A into the principal Act comprising sections 29A to 29S. Other provisions add a new Schedule and amend the Copyright Act 1994. In brief, the effect of these provisions is to permit TVNZ to screen archived works ‘free of charge’ on certain specified ‘delivery platforms’. Persons with an interest in an archived work lose ‘any rights and privileges’ they may have under contract or under the Copyright Act in relation to the screening of the work.“ “A Dangerous Precedent
Section 29D (1) provides that the ‘rights and privileges’ of persons with an interest in an archived work cease and are replaced by rights provided in the Bill (Rights to Compensatory Payment.).
There is some logic in permitting works to be rescreened where none of the rights holders can be located. However, this provision deprives all rights holders of their rights under both copyright and contract whether those rights holders can be located or not.
Copyright is an exclusive right that enables a right holder to determine the use of a work; and contractual rights and obligations are the subject of negotiations. This provision sets a dangerous precedent that strikes at the heart of intellectual property law by depriving the right holder of rights without any opportunity to negotiate or to appeal.“]
Parliament of the Commonwealth of Australia, Copyright Act 1968 (Cth). See Parts VA and VB, and ss. 51, 52, 33(3), 34(1), 40, 42, 43, 51, 52, 54–61, 103A, 103B, 103C, 110, 113C, [the problem of unlocatable copyright owners in the case of sound recordings] 195AR, 200AB, and 219. Available at: or [a very limited mechanism to permit use of material where the copyright owner cannot be found. which allows publication of unpublished works kept in libraries.]
Parliament of the Commonwealth of Australia, Copyright Amendment Act (2006), No. 158 of 2006. Available at:or
Parliament of the Commonwealth of Australia, Copyright Amendment Bill (2006). Available at:or
Parliament of the Commonwealth of Australia, Attorney-General, Explanatory Memorandum to the Copyright Amendment Bill (2006). See at 7. Available at:
Parliament of the Commonwealth of Australia, Attorney-General, Supplementary Explanatory Memorandum to the Copyright Amendment Act (2006). See para 52, re s.200AB. Available at: [para 52: suggests a possibility s 200AB(2) might "allow a library or archive to make a use of a work where a copyright owner's permission cannot be obtained because he or she cannot be identified or contacted".]
Parliament of the Commonwealth of Australia, Copyright Amendment (Digital Agenda) Act 2000 (Cth), No. 110 of 2000 (‘Digital Agenda Act’). Available at:or
*Parliament of the Commonwealth of Australia, National Film and Sound Archive Act 2008. See s.6. Available at: [NFSA Statement on Orphan works p.2: “the NFSA has a mission to develop, promote and provide access to the national collection of audiovisual heritage. This dictates that, in considering the orphan works problem, the NFSA must weigh up the public interest imperatives and social benefits of making these works available against the rights of copyright holders who may or may not approve of such use.”]or
Parliament of the Commonwealth of Australia, US Free Trade Agreement Implementation Act 2004, Schedule 9. Available at:
Regulations 38 to 42 of the Copyright Act 1912–1966 [after McDonald 2006]
Copyright, Designs and Patents Act (1988) UK. See s. 190. Available at:
Digital Economy Act (2010) c.24 UK, assented 8 April 2010. Available at: . See also Explanatory Notes to the Act as passed by Department for Culture, Media and Sport and the Department for Business, Innovation and Skills. Available at:
Digital Economy Bill [HL] 2009-10, Bill 89. See the later excised clause 42 (cl 43 in later version) inserting s116A-E, and Schedule 2 inserting Schedule 1A ‘Regulation of licensing bodies’, into Copyright, Designs and Patents Act 1988 . Available at: (as amended in committee 8 February 2010) or . (as sent 16 March 2010) [Clause 43 would have inserted a heading ‘Additional licensing and regulation’ into the Copyright, Designs and Patents Act 1988 (UK) with new sections 116A Licensing of orphan works, 116B Extended licensing schemes, 116C Meaning of “orphan work”, 116D Orphan works: registration and compliance, 116E Regulation and enforcement, and 116F General (inter alia, omitting crown copyright from this scheme). Schedule 2 would have inserted into the Copyright, Designs and Patents Act 1988 (UK) a new Schedule A1 ‘Regulation of Licensing Bodies’, and amended Schedule 2A to insert further ‘Additional licensing and regulation’ provisions.]
Digital Economy Bill [HL], House of Lords, Hansard of 8 April 2010, 2.49 pm, col. 1713. (Discussion of the last minute exclusion of Clause 43 and Schedule 2 Orphan Works provisions.) Available at: [“Digital Economy Bill [HL] - Commons Amendments
The Parliamentary Under-Secretary of State, Department for Business, Innovation and Skills (Lord Young of Norwood Green): My Lords, I beg to move that the House do agree with the Commons in their Amendment 1, as well as Amendments 9, 10, 13 and 14. The first amendment leaves out Clause 1, thus removing the requirement in the Bill for Ofcom to promote investment in electronic communications networks and public service media content. The second amendment leaves out Clause 29, removing the powers from the Bill that would allow Ofcom to appoint providers of regional or local news. The final amendments leave out Clause 43 and Schedule 2. Effectively, this group of amendments removes the provisions on orphan works and extended collective licensing from the Bill.
Lord Clement-Jones [Lib-Dem]: My Lords, this is a sad outcome to a Bill that started with promise. At the outset of the passage of the Bill through this House, almost all noble Lords accepted that we needed provisions that would avoid the scenario so graphically set out in the recent EU study that forecast the loss of 250,000 jobs by 2015 if current copyright piracy trends continue. There is no doubt that many parts of the Bill were greatly improved in the two and a half months that the Bill spent in this House, particularly in expressly stating that subscribers are presumed innocent until proof is provided otherwise.
the Bill's passage here, however, the process has been totally unsatisfactory.
Second Reading could easily have been held three weeks earlier. The Bill left
this House on 15 March and Second Reading could have taken place well before 6
April, when it actually took place in the Commons. Some Committee days on
crucial areas such as file-sharing, website blocking and orphan works could
have been allocated. Instead of that, we have had the unedifying prospect of a
wash-up stitch-up between the Conservative and Labour Benches on many elements
of the Bill. Allied to the lack of time was the Government's unwillingness in
some cases to consider amendments or to give assurances that would have
delivered a sensible, consensus [Column 1714]
solution. It is no wonder that so many internet users, Back-Bench MPs and now the Front Bench of my party are firmly of the view that the Bill has not received adequate debate and should not proceed further. [...]
We support the deletion of Clause 43 at this stage. Throughout the Bill's passage through the House, we championed the cause of commercial photographers threatened by the orphan works provisions and we secured some improvements. In a proper Commons process, further amendments could have been made exempting contemporary photography, and ministerial assurances could have been given to ensure that only where moral rights applied across the board and there was proper attribution would photography be reinserted. In this way, the cultural sector could have been catered for by the process. However, because of the truncated time in the other place, that could not be done, so the only solution has been to delete Clause 43.
We will not be voting on these Commons amendments, but I hope that we have made the views of these Benches clear and that never again will such a complicated Bill be dealt with in this way at the fag end of a Parliament.
[3 pm 8 Apr 2010 : Column 1716] Viscount Bridgeman: My Lords, I have been involved in the debate exclusively on Clause 43. It had admirable intentions to free up orphan works and make possible extended collective licensing. It was a victim of the bad programming by the Government, which results in the messiness that we have had to experience through the wash-up.
The noble Lord, Lord Clement-Jones, has made the valid point that there were some points which ought to have been discussed in another place, particularly the releasing of-and giving attention to-photographers. It is interesting that, yesterday, the noble Lord, Lord Rooker, made a significant contribution about post-legislation scrutiny. Of all Bills, this is one which should have had pre-legislation scrutiny. It would have been, I am sure, a very effective Bill had the time been made available for that. I am assured by my own party that if it forms the next Government, it intends to bring back at an early stage a Bill to rectify the deficiencies which sadly exist in the present one. I hope that the party opposite, if it should be in power, would have similar intentions.”]
Preservation of Orphan Works Act, Title IV of the Family Entertainment and Copyright Act of 2005, ‘to provide for the protection of intellectual property rights, and for other purposes,’ Pub. L. No. 109-9, s. 202, 119 Stat. 218, 226, 227 enacted April 27, 2005. Available at: or . See Bill S.167 of 109th Congress, at: [Amends section 108(i), title 17, United States Code, to add orphan works to the list of works that are exempt from certain limitations on uses by libraries and archives.]
Sonny Bono Copyright Term Extension Act (CTEA), ‘To amend the provisions of title 17, United States Code, with respect to the duration of copyright, and for other purposes,’ Pub. L. No. 105-298, 112 Stat. 2827 (1998) Available at: See Bill ‘Fairness in Music Licensing Act of 1998’ H.R. 505 of 105th Congress, at: . [Codified as amended 17 USC ss. 105, 108, 203, 301-04.]
Digital Millennium Copyright Act of 1998 (DMCA), ‘To amend title 17, United States Code, to implement the WIPO Copyright Treaty and Performances and Phonograms Treaty,’ Pub. L. No. 105-304, 112 Stat. 2860, 2889. (Amends, inter alia, s. 108). Available at: See Bill H.R. 2281 of 105th Congress, at:
Copyright Renewal Act of 1992, Title 1 of Copyright Amendments Act of 1992, ‘To amend title 17, United States Code, the copyright renewal provisions, and for other purposes,’ Pub L No. 102-307, 106 Stat. 264 (26 June 1992). See Bill S.756 of 102nd Congress. Available at:. [term extension] (See also Title 2, `National Film Preservation Act of 1992'.)
Copyright Act of 1976, Pub. L. No. 94-553, (19 October 1976), 90 Stat. 2541. Title 17, United States Code. See esp. ss. 107 (fair use), 108(h), 109, 115(b)(1), 504(c)(2). Available at: [504(c)(2): In cases of “innocent infringement,” the court may reduce statutory damages to $200; for certain infringements by nonprofit educational institutions, libraries, archives and public broadcasters, the court may reduce the award to zero.]
United States Constitution, Article 1, section 8. Available at:
Shawn Bentley Orphan Works Act of 2008, ‘A bill to provide a limitation on judicial remedies in copyright infringement cases involving orphan works’, S.2913, 110th US Congress, referred from Senate to House, 24 April 2008, passed Senate amended 26 September 2008. Available at: , or Commentary: [would provide a limitation on judicial remedies in copyright infringement cases involving orphan works if the party using the copyrighted work had, among other things, performed a diligent search to identify the owner but was unable to do so.],
Orphan Works Act of 2008, ‘A bill to provide a limitation on judicial remedies in copyright infringement cases involving orphan works’, H.R.5889, bill of 110th US Congress, introduced to House 24 April 2008. Available at:
Copyright Modernisation Act of 2006, ‘To amend title 17, United States Code, to provide for licensing of digital delivery of musical works and to provide for limitation of remedies in cases in which the copyright owner cannot be located, and for other purpose,.’ H.R.6052, bill introduced to 109th Congress, Title II (2006). Available at: Previously introduced as H.R.5439, below.or
Orphan Works Act of 2006, ‘To amend title 17, United States Code, to provide for limitation of remedies in cases in which the copyright owner cannot be located, and for other purpose,’ H.R.5439, bill introduced to 109th US Congress (22 May 2006). Available at: : [Peters, 2008: On May 22, 2006, “” was introduced in the House by former Chairman Lamar Smith. The bill included revisions to the Copyright Office's original proposal and incorporated a number of changes that were designed to protect photographers and other visual artists in particular. These changes included a requirement that users document their searches, a definition of "reasonable compensation" (taken from the Office's Report), and the availability of attorney's fees under circumstances where a user fails to negotiate in good faith with an owner who has previously registered his work. That bill was later imbedded in H.R. 6052, “.” The 109th Congress ended before the bill could be addressed.”]or
Preservation of Orphan Works Act of 2004, ‘To amend section 108 of title 17, United States Code, relating to reproduction of works by libraries and archives,’ H.R. 5136, bill introduced to 108th Congress (23 September 2004). Available at:
of 2003, ‘To amend title 17, United States Code, to allow abandoned copyrighted works to enter the public domain after 50 years,’ H.R. 2601, bill introduced to 108th US Congress in 2003. Available at: or , Reintroduced as H.R.2408 for the 109th Congress, 17 May 2005. Available at: or [WP: would have added a for works to retain their copyright status. The of the bill was to make it easier to determine who holds a copyright (by determining the identity of the person who paid the tax), and to allow copyrighted works which have been abandoned by their owners, also known as , to pass into the . ]
See SourceWatch for further materials pre-2009.
European Commission. Draft Single Market Act, (27 October 2010). Open for consultation until Feb 2011. See Proposal 2 for an Orphan Works Directive. See also Single Market High Level Conference organised by the European Commission in Brussels, 8 February 2011. Available at: , and see related Communication at: . [“Proposal No 2: In 2011 the Commission will submit a proposal for a framework Directive on the management of copyrights, with the aim of opening up access to online content by improving the governance, transparency and electronic management of copyright. The Commission will also be proposing a Directive on orphan works.”] [Clifford Chance: a bundle of fifty measures aimed at supporting and furthering Europe's single market. Covering everything from patents to financial services, a public consultation will run until February 2011 before the final text is agreed with EU Member States and Members of the European Parliament.]
European Commission Recommendation 2006/585/EC of 24 August
2006 on the digitisation and online accessibility of cultural material and
digital preservation. (2006). Brussels: Commission of the European
Communities, Official Journal of the
European Union (OJ), L 236, p. 28, 31 August 2006. Available at: or [Digitisation
and online accessibility - Recommendation “6. improve conditions for
digitisation of, and online accessibility to, cultural material by:
(a) creating mechanisms to facilitate the use of orphan works, following consultation of interested parties,
(b) establishing or promoting mechanisms, on a voluntary basis, to facilitate the use of works that are out of print or out of distribution, following consultation of interested parties,
(c) promoting the availability of lists of known orphan works and works in the public domain,
(d) identifying barriers in their legislation to the online accessibility and subsequent use of cultural material that is in the public domain and taking steps to remove them;”]
European Parliament and Council Recommendation 2005/865/CE of 16 November 2005 on film heritage and the competitiveness of related industrial activities (2005). Brussels: Commission of the European Communities, Official Journal of the European Union (OJ), L 323, 9 December 2005, p. 57. Available at:
European Council Resolution C/162/02 of 25 June 2002 on preserving tomorrow's memory - preserving digital content for future generations (2002). Brussels: Commission of the European Communities, Official Journal of the European Union (OJ), C 162, p. 4, 6 July 2002.
Directive 2001/29/EC of the European Parliament and of the
Council of 22 May 2001 on the harmonisation of certain aspects of copyright and
related rights in the information society. Brussels: Commission of the European
Communities, Official Journal of the European Union (OJ), L 167, 22 June 2001,
p. 10. Summary at: ,
text available at
or . [in particular solutions to
stay within the ambit of the exceptions permitted under Article 5(1)-(4) of the
EC Information Society Directive, and (b) conform to the “three step” test as
required by Article 5(5).
In article 5.2(c) : “[Member States may provide for exceptions or limitations to the reproduction right provided for in Article 2 ...] in respect of specific acts of reproduction made by publicly accessible libraries, educational establishments or museums, or by archives, which are not for direct or indirect economic or commercial advantage;”]
Norway, Act Relating to Copyright in Literary, Scientiﬁc and Artistic Works (1961). Act No. 2 of 12 May 1961 relating to Copyright in Literary, Scientific and Artistic Works, Etc., with subsequent amendments latest of 30 June 1995. See section 38b. Available at:
Sweden, Act on Copyright in Literary and Artistic Works (1960). No. 729, of December, 30, 1960, as amended up to April 1st, 2000. See Article 26i. Available at: [in Ian McD]
Hungary, proposed law. See EU Parl Note.
Parliament of Canada, Copyright Act R.S., 1985, c. C-42. See Section 77: ‘Owners who cannot be located’ for the licensing regime. (See also the Copyright Board Brochure, in Reports). Available at: and [CAL 2005 para 34-38. p7: “ a mechanism which allows a person to make an application to the Canadian Copyright Board, and seek a licence from the Board for the use of the material in Canada. Provided the Copyright Board is satisfied the copyright owner cannot be found, it sets a licence fee, which is paid to the collecting society representing that class of works (with an undertaking from the collecting society to pay the copyright owner), or which the licensee undertakes to pay if the copyright owner emerges in the next 5 years.”]
Copyright Act 1957 (India), s. 31A. Available at: [31A.Compulsory licence in unpublished Indian works.-
(1) Where, in the case of an Indian work referred to in sub-clause (iii) of clause (a) of section 2, the author is dead or unknown or cannot be traced, or the owner of the copyright in such work cannot be found, any person may apply to the Copyright Board for a licence to publish such work or a translation thereof in any language.
2) Before making an application under sub-section (1), the applicant shall publish his proposal in one issue of a daily newspaper in the English language having circulation in the major part of the country and where the application is for the publication of a translation in any language, also in one issue of any daily newspaper in that language.
3) Every such application shall be made in such form as may be prescribed and shall be accompanied with a copy of the advertisement issued under sub-section (2) and such fee as may be prescribed.
4) Where an application is made to the Copyright Board under this section, it may, after holding such inquiry as may be prescribed, direct the Registrar of Copyrights to grant to the applicant a licence to publish the work or a translation thereof in the language mentioned in the application subject to the payment of such royalty and subject to such other terms and conditions as the Copyright Board may determine, and thereupon the Registrar of Copyrights shall grant the licence to the applicant in accordance with the direction of the Copyright Board.
5) Where a licence is granted under this section, the Registrar of Copyrights may, by order, direct the applicant to deposit the amount of the royalty determined by the Copyright Board in the public account of India or in any other account specified by the Copyright Board so as to enable the owner of the copyright or, as the case may be, his heirs, executors or the legal representatives to claim such royalty at any time.
6) Without prejudice to the foregoing provisions of this section, in the case of a work referred to in sub-section (1), if the original author is dead, the Central Government may, if it considers that the publication of the work is desirable in the national interest, require the heirs, executors or legal representatives of the author to publish such work within such period as may be specified by it.
7) Where any work is not published within the period specified by the Central Government under sub-section (6), the Copyright Board may, on an application made by any person for permission to publish the work and after hearing the parties concerned, permit such publication on payment of such royalty as the Copyright Board may, in the circumstances of such case, determine in the prescribed manner.]
Japan, Copyright law (No. 48 of 1970), as consolidated 2009. Article 67. Referred to at:; English translation of 2006 version at:
Korea, Copyright Act, s47. Available at:
Australia-US Free Trade Agreement  ATS 1, Washington 18 May 2004, entry into force 1 January 2005. Available at: or
Berne Convention. (1979). Berne convention for the protection of literary and artistic works. Opened for signature 9 September 1886 at Berne. Revised by Paris Act of 24 July 1971, amended on 28 September 1979. Available at: [See Art. 5(2) re formalities; also Art. 9(2)]
General Agreement on Tariffs and Trade (GATT) was modified in the US by Uruguay Round Agreements Act (URAA). [The URAA restored copyright in foreign (non-US) works that as of 1 January 1996 had fallen into the public domain in the US because of a failure to comply with US formalities. ]
TRIPS Agreement (1994), Agreement on Trade-Related Aspects of Intellectual Property Rights Annex 1C of the , signed in Marrakesh, Morocco on 15 April 1994. Available at: [ to extent that a solution involves exceptions, it has to conform to the “three step” test, Article 13]
Copyright Agency Limited v State of New South Wales  HCA 35, 233 CLR 279; 248 ALR 590; 78 IPR 1; 82 ALJR 1244;  AIPC 92-303. See paragraphs 60-63, 67, 68 and 70. Available at:
Copyright Agency Limited v State of New South Wales (2007) FCAFC 80, Full Federal Court of Australia. Available at: [Not directly on orphan works. The delivery of a [unpublished] survey plan of land by a surveyor to their client amounted to ‘publication’ – expiry period starts to run.]
Avel v Multicoin Amusements & anor.  HCA 58; (1990) 18 IPR 443; (1990-1991) 171 CLR 88. Available at: [Publication in s52 not governed by s29? McD]
[‘there have been very few lawsuits involving orphan works in recent years’ US CBO]
-- Google Book Search:
Authors Guild, Inc. v Google, Inc., No. 1:2005cv08136 (S.D.N.Y. filed Sept. 20, 2005) and McGraw-Hill Cos. v. Google, Inc., No. 1:2005cv08881 (S.D.N.Y. filed Oct. 19, 2005) (the initial Google Book search litigation).
See also: Settlement FAQ. Available at: ;
von Lohmann, Fred, EFF Senior IP Attorney. ‘Google Book Search Settlement: A Reader’s Guide’, EFF Blogpost, 31 October 2008. Available at: ; and
Band, Jonathan. ‘A Guide for the Perplexed: Libraries and the Google Library Project Settlement’ (2008) American Library Association and Association of Research Libraries paper. Available at: [Critics of the proposed settlement argue that the settlement effectively gives Google a monopoly over access to orphan works, and that the Book Rights Registry poses an antitrust threat because it is tasked with setting the prices for digital book access]
The American Society of Media Photographers Inc v Google Inc, 10-02977, US District Court, Southern District of New York filed 7 April 2010. [Pitt:] The press release of a plaintiff is available at:
Davis v. The Gap, Inc., 246 F.3rd 152 (2d Cir. 2001) [proper level of compensation for library use?]
Golan v. Gonzales United States Court Of Appeals Tenth Circuit (D.C. No. 1:01-cv-01854 LTB-BNB) Filed sep 4 2007.
Kahle v Ashcroft 2
USPQ2d 1888 (2004). Available at: See also US Supreme Ct rejection. Albanese, Andrew. ‘Supreme Court
Declines To Hear Orphan Works Case’, Library
Journal (16 January 2008). Available
at: [in McD.Seek declaration OW offend
constitution. Albanese: “The U.S.
Supreme Court has declined to hear the appeal of Kahle v. Ashcroft, brought by
Internet Archive and Open Content Alliance founders Brewster Kahle and Rick
Prelinger in 2003, which challenged the constitutionality of the current
copyright regime. Although not unexpected, the Supreme Court's refusal comes
after a by the 10th Circuit Court
of Appeals raised hopes of a review and lets stand the Ninth Circuit Court of
Appeals' rejection, effectively ending the case.
The Kahle suit was launched in the wake of the unsuccessful 2003 Eldred v. Ashcroft case, which challenged Congess's extension of copyright terms. In that , the Supreme Court held that changes by Congress to the "traditional contours" of copyright law warranted a First Amendment review. Kahle v. Ashcroft contended that Congress's sweeping changes to copyright law in 1976 were enough of a change in the "contours of copyright" to require review.
Until 1976, copyright law required creators to register their works. Changes to the law, however, removed the necessity to register works and extended the basic copyright term from 28 years to "life plus 70 years." The combination of those changes has thrown many works without clear copyright owners into legal limbo, creating the so-called orphan works problem.
The Tenth Circuit Court of Appeals, in fall 2007, bolstered hopes of a Supreme Court review for Kahle, with its ruling in , which held that a provision of the Uruguay Round Agreements Act (URAA) that "restored" copyrights to some works already in the public domain was enough of a change to copyright traditions as to require review. In that ruling, Kahle's lawyers hoped the Supreme Court would see a legal point of reference and would agree that changing copyright from an opt-in system with a short protection period to an opt-out system with a lengthy protection period was also significant enough to warrant review..”]
Worldwide Church of God v. Philadelphia Church of God, Inc., 227 F.3d 1110 (9th Cir. 2000)
CCH Canadian Ltd. V Law Society of Upper Canada  1 SCR 339, 2004 SCC 13. Available at: [in de Beer n236: degree of originality required]
Neighbouring Rights Collective of Canada v. Society of Composers, Authors and Music Publishers of Canada,  1 F.C.R. 303. [Board’s powers to determine terms and conditions of payments and tariffs.]
Copyright Board of Canada, ‘Decisions - Unlocatable Copyright Owners: Decisions/Licences Issued’, (1990–2010). List of 249 decisions, as at January 2010. Available at:. See de Beer and Bouchard 2009 for discussion of these cases.
Copyright Board of Canada, ‘Applications Denied (Reasons)’, (2004–2010). List of 8 decisions. Available at:
Australian Government, Department of Finance and Deregulation. ‘Government 2.0 Work Plan — Status Report August 2010’ (2010). [March 2011: “ [7.3] The Attorney-General’s Department will advance the review of orphan works as determined by the incoming Attorney-General.”]
(Lindsay Tanner, Minister for Finance and Deregulation). Government
Response to the Report of the Government 2.0 Taskforce (5 May 2010). See in
particular Recommendation 7.3. Available at: . [“Recommendation 7.3 It is
recommended that the proposed OIC examine the current state of copyright law
with regard to orphan works (including section 200AB of the Copyright Act
1968), with the aim of recommending amendments that would remove the practical
restrictions that currently impede the use of such works.
AGREED, WITH MODIFICATION. Consistent with the response to recommendation 7.2, although the Taskforce had recommended that the OIC examine the current state of copyright law with regard to orphan works, it is the Australian Government’s view that this review should be undertaken by AGD.”]
Attorney-General’s Department. Statement of IP Principles for Australian Government Agencies (2007). Available at:
Attorney-General’s Department. “Issues and Reviews: AUSFTA Free Trade Agreement” (2006), web page, modified August 2009. Available at: [a round-up of the effect of the AUSFTA on Australian copyright law]
Attorney-General’s Department. AGD e-news on Copyright, Issue 39 (May 2006). Available at:
Attorney-General's Department/various authors. Fair Use and Other Copyright Exceptions: An examination of fair use, fair dealing and other exceptions in the Digital Age(2005). Web pages, including links to Issues Paper and Submissions. Available starting at:
Attorney-General's Department. Fair Use and Other Copyright Exceptions: An examination of fair use, fair dealing and other exceptions in the Digital Age, Issues Paper (2005). See para 11.20, p.29. Available at: [See para 11.20 for anomalous operation of CA s51(1); in Firstpoint para 11.300]
Copyright Law Review Committee (CLRC). Report on the simplification of the Copyright Act 1968: Part 2: Categorisation of Subject Matter and Exclusive Rights, and Other Issues (1999). See 7.88. Available at: or [n GG, CLRC 7.88: “each submission in support noted that the mechanism should operate only after reasonable searches have been made and that remuneration should be paid to the copyright owner if she or he becomes known at a later date. The main arguments in favour of the development of such a mechanism were:
▪ the lack of a mechanism creates practical problems for obtaining approval for the use of copyright material and making payment for its use;
▪ the electronic delivery and creation of copyright material can be expected to result in an increase in the number of cases where the copyright owner cannot be identified or located;
▪ a lot of time and expense are expended by the users of copyright materials, trying unsuccessfully to locate copyright owners unrepresented by copyright collecting agencies, or other licensing bodies;
▪ the introduction of a mechanism would allow the freeing of access to valuable copyright material that presently cannot be accessed because to do so would constitute a breach of copyright; and
introduction of a mechanism would allow for the saving of costs associated with
searching beyond what would reasonably be required to satisfy the reasonable
search standard specified in the mechanism”
GG: “the Copyright Law Review Committee did not recommend amendments to create a right to use orphan works, but did recommend further investigation of whether the Copyright Tribunal should operate some type of licensing scheme (as in Canada), or whether collecting societies should be able to represent unknown authors and licence their works in such cases (as in Scandinavia)”]
Copyright Law Review Committee (CLRC). Report on the simplification of the Copyright Act 1968: Part 1: Exceptions to the Exclusive Rights of Copyright Owners (1998). Available at: or
Copyright Law Review Committee (CLRC). Simplification of the Fair Dealing Provisions of the Copyright Act 1968, Issues Paper (AGPS, Canberra, 1997).
Copyright Law Review Committee. Jurisdiction and Procedures of the Copyright Tribunal: Final Report (2000) Ch 18. Available at: [rejected proposal for orphan works style licence; see Firstpoint [14.436]]
Copyright Law Review Committee, Copying by Libraries and Archives under the Copyright Act 1968: Issues Paper (April 1997) AGPS, Canberra. [See p. 11 re application of s51(1) to anonymous or pseudonymous authors whose identity remains unknown. Firstpoint para [11.300]]
Copyright Convergence Group, Highways to Change: Copyright in the New Communications Environment (AGPS, Canberra, 1994). See p.68. Available at:
Government 2.0 Taskforce (chair Nicholas Gruen). Engage: Getting on with Government 2.0 -- Report of the Government 2.0 Taskforce (December 2009). Secretariat hosted by the Online Services Branch, AGIMO, Department of Finance and Deregulation, Australian Government, Canberra. See Recommendation 7.3, p. xxi. Available at: and . Also published as Ch 28 [“Recommendation 7: Addressing issues in the operation of copyright -- Recommendation 7.3: It is recommended that the proposed OIC examine the current state of copyright law with regard to orphan works (including section 200AB of the Copyright Act 1968), with the aim of recommending amendments that would remove the practical restrictions that currently impede the use of such works.”]
Government 2.0 Taskforce (chair Nicholas Gruen). Engage: Getting on with Government 2.0 -- Draft Report (2009). Secretariat hosted by the Online Services Branch, AGIMO, Department of Finance and Deregulation, Australian Government, Canberra. See Recommendation 7.3. Available at: and . [“Recommendation 7: An important category of PSI held by public collecting institutions is information for which the copyright is held by third parties who cannot be identified or located, i.e. ‘orphan works’. It is recommended that the Government, through the proposed new Information Commissioner function, examine the current state of copyright law with regard to orphan works (including s.200AB), with the aim of recommending amendments that would remove the practical restrictions that currently impede the use of such works.”]
National Library (NZ) in collaboration with New Zealand Government. Creating a Digital New Zealand: New Zealand’s Digital Content Strategy (August 2007). Available at:
New Zealand Government. The Digital Strategy 2.0 (August 2008). Available at: and
McLay, G. Strategy and Intellectual Property – Scoping the Legal Issues, A Research Report Commissioned to Inform the Development of the New Zealand Digital Content Strategy, (April 2006). See pp. 11 and 16.
UK Intellectual Property Office. Taking Forward the Gowers Review of Intellectual Property: Second Stage Consultation on Copyright Exceptions (2009). Available at: [While Orphan Works was not apparently considered directly in scope for this or the first stage consultation, there was extensive coverage of the issue.]
UK Intellectual Property Office. Taking Forward the Gowers Review of Intellectual Property--Proposed Changes to Copyright Exceptions, (2008). Available at See also summary of responses, at:
Department for Business Innovation and Skills (BIS) and Intellectual Property Office (IPO). Copyright the way ahead: A Copyright Strategy for the Digital Age (2009). Intellectual Property Office. Available at:
Department for Culture, Media and Sport (DCMS) and Department for Business Innovation and Skills (BIS). Digital Britain Final Report (June 2009). See also Digital Britain Interim Report. Available at: or . See in particular ‘Orphan Works’ in Chapter 4 Creative Industries, at p. 115, at: [recommendations by Gowers to facilitate access to orphan works were being taken forward separately. Access to the online version increasingly difficult due to change of government. Extracts:
39. Orphan works are works that remain in copyright where, even after a diligent search, the owner cannot be identified or found. Anyone who uses orphan works on a commercial scale currently risks not only civil but also criminal liability.
40. It is frequently assumed that orphan works consist of largely forgotten books in the stacks of public libraries and second-hand bookshops. The British Library for example estimates that some 40% of their archive count as orphan works. This represents an enormous cultural heritage to which the public cannot get access. Mass digitisation projects, which could put forgotten works back digitally onto the cultural map, are thwarted because of the orphan works problem.
41. But orphan works are not limited to ancient books. The BBC estimates that around 1 million hours of programmes sits in its archives, where the complexity associated with identifying, checking and clearing rights will require imaginative new solutions in order to be addressed. Photographers are concerned that photographs posted on websites frequently lack identifying metadata, and hence the evidence of ownership is lost. Orphan works are being created in growing numbers. Not only are creators losing a source of income, but important cultural assets remain under lock and key because of the legal difficulties associated with using these works.
42. The digital age has ushered in new marketing opportunities for creators and rights holders, and with that the possibility to carve out ever more sophisticated rights and sub-rights over creative works. So rights have grown in both diversity and volume. If the copyright system is not to inhibit the move towards a fully Digital Britain, it is right that the framework should keep pace in order to reflect these developments.
43. Following work done by the European Commission (The EU’s High Level Expert Group on Digital Libraries), much work has been done on proposals for “voluntary” schemes, based on the grant by collecting societies of licences for commercial and non-commercial use. Voluntary in this context means operating within the current legislative structure and without specific Government endorsement or approval. But the operators of schemes cannot avoid criminal liability, and the Government cannot absolve them from such liability, without change in UK legislation. In order to pave the way for a more effective framework to deal with orphan works, the Government proposes to introduce legislation to enable commercial schemes for dealing with orphan works to be set up on a regulated basis.
44. As such a scheme would enable the operators of orphan works schemes to grant rights without the consent of the rights holder, appropriate safeguards will need to be put in place. The form of the new legislative provisions will be outlined fully as work progresses on how such schemes might be administered. However, the expectation is that anybody wishing to use orphan works will be expected to secure an appropriate permission from the Government first, and permission will only be granted where the proposed operator can satisfy the Government that the business methods and procedures involved satisfy key minimum requirements, including making appropriate searches for the true owners and making provision for the reimbursement of rights holders who are subsequently found and claim for the use of their work.
45. This work will also explore the extent to which powers to grant rights over certain works could be exercised by collecting societies or equivalent bodies through an extended collective licensing arrangement as operates in the Nordic countries. This would permit collecting societies or equivalent bodies, subject to appropriate safeguards, to assume a mandate to collect fees on behalf of rights holders who have not specifically signed up to that society.
46. These provisions, which have operated in Nordic countries for many years, would help streamline the problem of rights clearance. If a rights holder wishes to opt out of an extended collective licensing system, then they will have that option – thus maintaining control over their exclusive right. It will extend the ability of consumers to enjoy cultural works and it will collect royalties for the benefit of creators. That is good for creators and simpler for consumers and businesses.
47. The Government intends that any new powers for collecting societies should be balanced with appropriate responsibilities. This will require institution of the necessary provisions to ensure that the balance between consumer and rights holder interests are maintained. These provisions should include adherence to agreed Codes of Practice, including greater transparency and improved complaints handling procedures to give aggrieved users, whether members of the societies, consumers or businesses more effective redress short of having to go to the Copyright Tribunal.”]
UK Intellectual Property Office. Orphan Works – Potential Solutions, discussion paper (23 September 2008). Available at: [See BCC response.].
Various authors. Initial submissions to the Orphan Works inquiry (2005), US Copyright Office. Available at:
US Copyright Office, Library of Congress. ‘Notice of inquiry: Orphan Works’, Federal Register, January 26, 2005 (Volume 70, Number 16). Available at:
Marybeth (Register of Copyrights)/US
Copyright Office. Report on orphan works: A report of the Register of Copyrights (2006), Library
of Congress, Washington DC, 2006.
and .. [Paramaguru, HoC blog: p. 1: "Many users
of copyrighted works have indicated that the risk of liability for copyright
infringement, however remote, is enough to prompt them not to make use of the
work. Such an outcome is not in the public interest, particularly where the
copyright owner is not locatable because he no longer exists or otherwise does
not care to restrain the use of his work."
The report concludes (pp 92-93):
The orphan works problem is real. It is elusive to quantify and describe comprehensively. Some orphan works situations may be addressed by existing copyright law, but many are not.
Legislation is necessary to provide a meaningful solution to the orphan works problem as we know it today.
p. 127: The report recommends that the issue of orphans works be addressed by amending the remedies section of the Copyright Act to limit the remedies available when infringement occurs after the copyright user has conducted a 'reasonably diligent search' to locate the copyright owner and the owner could not be located (see recommended statutory language).”
Web site: “This Report is the result of the US Copyright Office issuing a Notice of Inquiry, to which they received over 850 written initial and reply comments from the public. Three days of roundtable discussions were held in Washington D.C. and Berkeley, California. The Copyright Office subsequently met with various organisations separately to discuss more specific issues raised in the comments and at the roundtables.
The problem of orphaned works is real. A wide range of users identified specific situations in where uncertainty about a work’s ownership status could not reasonably be removed, causing them not to use that work.
Two overarching and related goals:
Any system to deal with orphan works should seek primarily to make it more likely that a user can find a relevant user in the first instance and negotiate a voluntary agreement over permission and payment for use.
Where user cannot identify and locate the copyright owner after a reasonably diligent search, the system should permit that specific user to make use of the work, subject to provisions to resolve any issues if the owner surfaces after the use has commenced.
note: under this sort of scheme, certainty is a key factor, both for the user (liabilities in event that owner surfaces) and for copyright owners.
That orphan works provisions should be independent of, and work in conjunction with existing exemptions and limitations to copyright. Where the use falls within existing exemptions, there is no need to invoke the orphan rights provisions.
Users fall into four (4) categories,:
Subsequent creators of derivative works
Large-scale access uses – users primarily wish to bring large quantities of work to the public, usually via the internet
Enthusiast or hobbyist users
The (US) Federal Government
If user has performed a reasonably diligent search for the copyright owner, but is unable to locate that owner, then that user should enjoy the benefit of limitations on the remedies that a copyright owner could obtain against him if owner showed up at a later date and sued for infringement.
2 main components to the recommendation:
(1) two threshold requirements of a reasonably diligent search for the copyright owner and attribution to the author and copyright owner, if possible and appropriate under the circumstances, and
For ‘reasonable search’ support the creation of voluntary guidelines for each industry to promote certainty.
(2) the closed list of remedies that would be available if the user proves that he conducted a reasonably diligent search.
Monetary relief would be limited to only reasonable compensation for the use, with no monetary relief where use was non-commercial and user ceases infringement upon notice.
Copyright owner’s ability to obtain full injunctive relief in cases where user transformed orphan work in to derivative work, allowing the user to continue exploiting the work.
The recommendation is fully compliant with international obligations. IT does not impose any formalities on author and copyright owners that condition the enjoyment of copyright protection.
Not in favour overall – registries need more resources and may not be necessary. The report supports implementing a ‘low-cost’ scheme such as that recommended, and then use practical experience to determine whether a register is necessary.
However, there is a place for registries to be developed by the private sector. They are to become part of the reasonable search by creative incentives for authors and owners to ensure that their information is stored in the relevant databases.
Other methods considered but not supported:
Users required to file with Copyright Office some public notice that they have conducted a reasonable search, and intend to use an orphan work. Mostly opposed by book publishers, as anti-competitive in nature.
Requiring users to pay a sum before commencing use. This was deemed inefficient, in that every user would have to pay, but in the majority of cases, no copyright owner would claim the funds. It also might discourage potential users from using orphaned works because of cost and administrative requirements.
Text of the proposed amendment available at p. 127 of the document.]
Communia project, Public Domain Manifesto (1 January 2010). Available at: [in Purday, note 3: “Communia project, a Commission-backed consortium of users of digital information, developed a Public Domain Manifesto. Communia’s partners included research institutes, universities, consumer groups, digital laboratories and rights organizations. Their Manifesto was published on 1 January 2010 – the symbolic Public Domain Day on which copyright runs out.”]
Communication From The Commission To The European Parliament, The Council, The
Economic And Social Committee And The Committee Of The Regions. Towards a Single Market Act: For a highly competitive social market
economy – 50 proposals for improving our work, business and exchanges with one
another (11 November 2010) Brussels, COM(2010) 608 final/2. See Proposal 2
for an Orphan Works Directive. Available at: See
also related web page at: [p.8: “Proposal No 2: In 2011 the Commission
will submit a proposal for a framework
Directive on the management of copyrights, with the aim of opening up access to
online content by improving the governance, transparency and electronic
management of copyright. The Commission will also be proposing a Directive on
orphan works.”] [See also Clifford Chance
brief. Here, p.8: “Proposal 2 [of 50]: In 2011 the Commission will submit a proposal for a framework Directive
on the management of copyrights, with the aim of opening up access to online
content by improving the governance, transparency and electronic management of
copyright. The Commission will also be proposing a Directive on orphan works.
The absence of a European framework for the efficient management of copyright across the EU is significantly complicating the process of making knowledge and cultural goods available online. In order to create a single European digital market, the potential of online distribution must be used effectively by enhancing the availability of creative content while at the same time ensuring that right-holders obtain adequate remuneration and protection for their works. The Commission is aware that different national systems for private copying levies are affecting cross-border sales services and the production of support media. The Commission will take account of the dialogue between the various interested parties in order to find paths to a sound solution.
It is also important to make the single market accessible to those Europeans who are most used to spending time and money online. The generations that have grown up with the internet would not accept the benefits of the single market being exclusive to physical goods. The freedoms of the single market must therefore be extended to online services while maintaining a high level of protection for creativity and intellectual property.”]
European Commission, European Digital Libraries Initiative: Comité des Sages (Reflections Group). The New
Renaissance (10 January 2011), Report. Available at:
See also the CDS web page at .
For comment see ,
NYT story at: [5.2.3: “The Comité did not
try to cover the whole copyright debate, but decided to focus on the elements
from its mandate: bringing orphan works and out of distribution works online.
The recommendations presented here cover only these two issues.
5.2.4 For the orphan works, the Comité went beyond the terms of reference by also taking into account the need to avoid future orphan works and not just recommend a solution for existing orphan works. “
p. 20: “Key recommendations:
1) A European legal instrument for orphan works needs to be adopted as soon as possible and comply with the 8-step-test defined above.
2) Future orphan works must be avoided. Some form of registration should be considered as a precondition for a full exercise of rights. A discussion on adapting the Berne Convention on this point in order to make it fit for the digital age should be taken up in the context of WIPO and promoted by the European Commission.
3) National governments and the European Commission should promote solutions for the digitisation of and cross-border access to out of distribution works, taking into account the principles expressed above.
4) Rights holders should be the first to exploit out of distribution works.
5) For cultural institutions, collective licensing solutions and a window of opportunity should be backed by legislation to digitise and bring out of distribution works online, if rights holders and commercial providers do not do so.
6) Solutions for orphan works and out of distribution works must cover all the different sectors: audiovisual, text, visual arts, sound.”
**p. 18: Key recommendation - 8 step test:
“188.8.131.52 A European legal instrument needs to be adopted as soon as possible to tackle the issue of orphan works. It welcomes the fact that such an instrument is in preparation by the Commission and has been announced in the Digital Agenda.
184.108.40.206 In order to be effective, the legal instrument needs to fulfil all conditions of the following "8-step test".
Under this "8-step-test" the instrument should simultaneously:
i) ensure that a solution for dealing with orphan works is in place in all the Member States. Where no national instrument is in place, national legislation needs to be implemented.
ii) cover all the different sectors: audiovisual, text, visual arts, sound.
iii) ensure cross-border recognition of orphan works: An orphan work recognised as such in one Member State on the basis of a search in the country of origin, should be recognised as orphan across the EU. The Member State of origin is to be defined based on today’s geography, not on the basis of the historical borders at the time of publication. If there is no obvious country of origin, a search has to be conducted until a satisfactory solution is found.
iv) ensure the cross-border effect of this recognition: an orphan work that is made accessible online in one Member State should also be made accessible online in all Member States or even globally.
v) be compatible with the implementation of PPPs for digitisation.
vi) foresee, in the case of commercial use, a remuneration for the rights holders if after some time they are found or make themselves known. This remuneration can be kept in an escrow account. Also in the case of non-commercial use by cultural institutions the payment of an appropriate fee can be expected. For example, a one-off payment could be envisaged if the work is licensed under an extended collective license and the collecting society has to indemnify the rights holders if they are found or make themselves known.
vii) ensure reasonable transaction costs for dealing with orphan works, commensurate with the commercial value of the work. This implies for example that a search for rights holders of older works can be less intense than for more recent works.
viii) be supported by rights information databases, such as the Arrow system currently under construction. These databases and a European list of established orphan works should be linked to Europeana as a key reference point for Europe’s cultural heritage.”
Quick Guide to DLI:
“One of the main objectives of the Digital libraries initiative is to achieve 'the European Digital Library', which will give citizens direct access from their computer to cultural collections from all Member States.” ]
European Commission, European Digital Libraries Initiative: Representatives of right holders and cultural institutions. Memorandum of Understanding on Diligent Search Guidelines Orphan Works (June 2008). Available at:
*European Commission, European Digital Libraries Initiative. Joint Report: Sector-Specific Guidelines on Due-Diligence Criteria for Orphan Works (2008). Available at:
European Commission, European Digital Libraries Initiative. Appendix to the Joint Report [on Sector-Specific Guidelines on Due-Diligence Criteria for Orphan Works] - Sector Reports (2008). Audiovisual, Visual/Photography, Music/Sound, and Text working groups. See discussion and bibliographies on ‘Grey’ and unpublished literature in the Text section. Available at:
*European Commission. A
Digital Agenda for Europe (May 2010), Communication from the Commission to
the European Parliament, the Council, the European Economic and Social
Committee and the Committee of the Regions, COM/2010/0245. See p. 30.
Available at: or [p.9: “The Commission will:
Key Action 1: Simplify copyright clearance, management and cross-border
licensing by [...]:
• Create a legal framework to facilitate the digitisation and dissemination of cultural works in Europe by proposing a Directive on orphan works by 2010, to conduct a dialogue with stakeholders with a view to further measures on out-of print works, complemented by rights information databases;”
Purday: DAE p30: “Fragmentation and complexity in the current licensing system also hinders the digitisation of a large part of Europe’s recent cultural heritage. Rights clearance must be improved, and Europeana – the EU public digital library – should be strengthened.”” ]
European Commission. Communication from the Commission to the Council, the European Parliament, the European Economic and Social Committee and the Committee of the Regions (August 2008) [SEC(08) 2372]. Available at: [In Purday, note 2: “It is important to stress the importance of keeping public domain works accessible after a format shift. In other words, works in the public domain should stay there once digitised and be made accessible through the internet.”]
*European Commission, Information Society initiative, i2010: Digital Libraries, High Level Expert Group (HLG) on European Digital Libraries, Copyright subgroup. Final report on digitization, orphan works, and out-of-print works (4 June 2008). Available at:
European Commission, Information Society initiative, i2010: Digital Libraries, High Level Expert Group on European Digital Libraries, Copyright Subgroup. Report on Digital Preservation, Orphan works, and Out- of-Print Works: Selected Implementation Issues (18 April 2007). Available at: . See also Appendices, available at:
European Commission, Information Society initiative, i2010 Digital Libraries, High Level Expert Group (HLG) on European Digital Libraries, Copyright Subgroup. Key Principles for Orphan Works and Out-of-Print Works Databases (DB) and Rights Clearance Centres (RCC). Available at:
Communication from the Commission to the European Parliament, the Council, the
European Economic and Social Committee and the Committee of the Regions: 'i2010: digital libraries' of (30 September
2005). Brussels: Commission of the European Communities, COM(2005) 465
final, Official Journal C 49 of 28
February 2008. Available at: [ “online accessibility
The system used by traditional libraries for lending material is not suitable for the digital environment. In addition, the prior consent of the holder of property rights is needed before material can be made available online, except where the material is in the public domain. Consequently, a European library will basically have to concentrate on public domain material. In some cases, the costs of establishing the IPR-status of a work will be higher than the cost of digitising it and bringing it online. This is particularly true for so-called ‘orphan works’ – films or books for which it is impossible or very difficult to determine who holds the rights.”]
European Parliament. Resolution of the European Parliament on ‘Europeana – next steps’ (May 2010), p. 8. Available at: [in Purday, note 8]
Ficsor, Mihály (Hungarian Patent Office). Note: How to Deal with Orphan Works in the Digital World ? An Introduction to the New Hungarian Legislation on Orphan Works (15 October 2009), paper for “Workshop on Copyright - Tackling orphan works and improving access to works for visually impaired persons", Legal Affairs Committee; European Parliament, Directorate General for Internal Policies, Policy Department: Citizens’ Rights and Constitutional Affairs, PE 419.607, 30pp. Available at: [ This paper is intended to give a brief overview of the relevant Hungarian legislation and the first steps taken to implement it. Describing, in a factual but somewhat critical manner, the current Hungarian legal framework for tackling orphan works may contribute to eventually finding solutions to the problem of orphan works at European level as well. The basic aim of the present note is to describe the Hungarian scheme for licensing certain uses of orphan works. In addition, it also gives some insights into the legislative history and the institutional framework of that scheme. An outline of some other provisions which may be of relevance to orphan works is also included. Furthermore, this note renders an account of the implementing measures introduced and the experience gained thus far. It concludes with a first assessment of the new Hungarian legislation on licensing certain uses of orphan works.
Koskinen-Olsson, Tarja (Olsson & Koskinen Consulting, Ystad, Sweden) How to Deal with Orphan Works in the Digital World? (10 November 2009), paper for “Workshop on Copyright - Tackling orphan works and improving access to works for visually impaired persons", Legal Affairs Committee; European Parliament, Directorate General for Internal Policies, Policy Department: Citizens’ Rights and Constitutional Affairs, PE 419.613, 18 pp. Available at: [Works are called orphan when rights holders cannot be identified or located. Substantial groundwork has been done in the High Level Expert Group on Digital Libraries. Practical tools to facilitate rights clearance are implemented in projects where rights holders and cultural institutions partner. Some Member States have addressed the issue by stand-alone norms or by measures supporting collective licensing. As digital uses often take place across borders, mutual recognition of national solutions that meet generally accepted criteria is needed on European level.]
Hiidenmaa, Pirjo (President of the European Writers' Congress). Note: Orphan Works in the Digital Era (10 November 2009), paper for “Workshop on Copyright - Tackling orphan works and improving access to works for visually impaired persons", Legal Affairs Committee; European Parliament, Directorate General for Internal Policies, Policy Department: Citizens’ Rights and Constitution-al Affairs, PE 419.614, 18 pp. Available at: [There are different practices in Europe: no legislation on orphan works, extended collective licensing that includes orphan works, and registers that are used for the search of authors. Legislation is needed. The extended collective licensing seems to be the best system. To make the licensing effective, there is need for the registers and search systems to find authors as well as possible.].
Elisabeth (Deutsche Bibliothek). Note:
How to deal with Orphan Works in the digital world? (10 November 2009),
paper for “Workshop on Copyright - Tackling orphan works and improving access
to works for visually impaired persons", Legal Affairs Committee; European Parliament, Directorate
General for Internal Policies, Policy Department: Citizens’ Rights and
Constitutional Affairs, PE 419.611. Available at: [1. Introduction 5
2. Existing Solutions In The Member States 6
3. The German Project 7
4. What Elements Are Needed In A Workable Solution? 9
5. Is There A Need For A European-Wide Solution And How To Achieve It? 10
6. Is A Regulatory Intervention Necessary? 10
Abstract “Orphan works are a serious issue for digital libraries. The digitisation progress is slow and only brings out-of-copyright material to the Web. If there are exceptions to this rule, they are either disputed or they are highly time consuming and therefore extremely expensive, because of the necessary rights clearance procedures that have to be worked through before digitisation. There are not too many existing solutions in the Member States. The best example is the extended collective licensing in the Nordic countries. Against this background, there is absolutely a need for a European-wide solution. Legal certainty across Europe is indeed required to provide a strong basis for libraries to digitise orphan works.”]
Council of the European Union. ‘Council Resolution of 25 June 2002 on preserving tomorrow's memory — preserving digital content for future generations,’ Brussels: Commission of the European Communities, Official Journal C 162 (06 July 2002), pp. 4–5. [no mention of orphan works explicitly.]
Council of the European Union. ‘Council
Conclusions on the European digital Library – Europeana (JO/2008/C 319/07)’ (20
November 2008). Available at: [Notes with satisfaction: “— the conclusion on
4 June 2008 by representatives of libraries, archives, audiovisual archives and
right holders ,under the auspices of the Commission, of a Memorandum of
Understanding on guidelines on diligent search, as regards orphan works.”
Invites members states to “— establish mechanisms to facilitate digitisation and online access to orphan works and to out-of-print andout-of-distribution works, while fully respecting rightholders' rights and interests.”]
Europeana Group. ARROW - Accessible Registries of Rights Information and Orphan Works, web site. Available at:. See also ARROW project web site, at:
Europeana Foundation/Europeana v1.0 Project. Europeana Public Domain Charter (May 2010). Available at: [In Purday note 4: “Europeana recognised the value of the Communia Public Domain Manifesto and offered its broad support in the shape of the Europeana Public Domain Charter, representing the content holders’ perspective on the public domain. Europeana is run by the Europeana Foundation, whose members are the international heritage associations5 that represent the libraries, archives museums and audiovisual collections of Europe. They are the guardians of society’s shared knowledge and play an essential part in maintaining the public domain on behalf of citizens.”]
Copyright Board of Canada. Our Mandate (undated), web page. Available at:
Copyright Board of Canada. Unlocatable Copyright Owners (2001) brochure. Available at:
*OECD. OECD Recommendation on Public Sector
Information (PSI) (2008), C(2008)36, adopted by OECD Council at its 1172nd
Session on 30 April 2008, at p. 5. Available at: and . [OECD recommends that
something be done about orphan works (PSI Recommendation). p.5: “Copyright.
Intellectual property rights should be respected. There is a wide range of ways to deal with copyrights on public sector information, ranging from governments or private entities holding copyrights, to public sector information being copyright-free. Exercising copyright in ways that facilitate re-use (including waiving copyright and creating mechanisms that facilitate waiving of copyright where copyright owners are willing and able to do so, and developing mechanisms to deal with orphan works), and where copyright holders are in agreement, developing simple mechanisms to encourage wider access and use (including simple and effective licensing arrangements), and encouraging institutions and government agencies that fund works from outside sources to find ways to make these works widely accessible to the public.”]
WIPO, Study on Copyright Limitations and Exceptions for Libraries and Archives. Available at:.
Harry Ransom Center [U Texas] and University of Reading Library. Firms Out of Business (undated, accessed January 2011), online search tool. Available at: and for explanation: . See also The WATCH File (Writers and Artists and Their Copyright Holders)
International DOI Foundation. The Digital Object Identifier (DOI®) System, web site and object registration service (undated, accessed January 2011). Available at:
MILE (Metadata Image Library Exploitation) Orphan Works Database (undated, accessed January 2011). Available at:
Local digitisation projects
National Library of Australia. Australian Newspapers Digitization Project. Available at:or
Australian War Memorial, CEW Bean project (2003–). See van Dyk 2010.
Association of American Publishers (AAP). Statement of Allan Adler, vice president for legal and government affairs of AAP to the US House of representatives Judiciary Committee’s Subcommittee on Courts, the Internet and Intellectual Property concerning The U.S. Copyright Office Report on Orphan Works (8 March 2006). Available at: ; see also summary at [‘suggesting that they follow the recommendations of the U.S. Copyright Office by “fine-tuning” existing law to address the problem of “orphan works”—works under copyright whose owners cannot be located by third parties seeking permission to use the works.’]
American Library Association. Google Book Search Settlement (2009?). Available at: Orphan works. Available at:
Association of Research Libraries. Copyright & Intellectual Property Policies: Orphan Works (2005). Available at:and
eIFL (NGO working with libraries worldwide to enable access to digital information in developing and transition countries). ‘Orphan Works’, section in eIFL Handbook on Copyright and Related Issues for Libraries (October 2009) Available at:
International Association of Scientific, Technical & Medical Publishers (STM), Association of Learned and Professional Society Publishers (ALPSP), and Professional/Scholarly Publishing Division (PSP) of the Association of American Publishers. Safe Harbour Provisions for the Use of Orphan Works for Scientific, Technical and Medical Literature (23 October 2007). Available at:
International Association of Scientific, Technical & Medical Publishers (STM). ‘STM Position: The Use of Orphan Works’, position paper (December 2006). Available at:
International Federation of Library Associations and Institutions (IFLA) and International Publishers Association (IPA). IFLA/IPA Joint Statement on Orphan Works (June 2007). Available at: or
International Federation of Reproduction Rights Organisations (IFRRO). Statement on Orphan Works, (May 2007). Available at: [IFRRO supports the position papers on the use of orphan works prepared by the International Publishers’ Association and the International Association of Scientific, Technical and Medical Publishers.
To enable use of orphan works within the framework of copyright, IFRRO encourages regulators to support (including by legislative measures where appropriate) voluntary solutions between rightsholders and users complying with the following criteria and in a way that is interoperable internationally:
· Any orphan works solution should be applicable to all (kinds of) protected works
· A bona fide user needs to conduct a thorough search employing a high level of care prior to using an orphan work
· Regulators should support stakeholders in different fields to work out category specific guidelines and best practices and should avoid setting minimum standards in legislative measures (including for reasonably diligent good faith search)
· Regulators should support the creation and maintenance of databases concerning information on orphan works
· Regulators should support rightsholders’ initiatives for the improved inclusion of metadata in digital material
· Any solution should ensure attribution (of the work and its rightsholders) by the user throughout to the extent possible
· Any solution should respect moral rights to the extent possible
· Any orphan works solution should include an entitlement to equitable remuneration to the rightsholder for the use of his work and should contain mechanisms for withdrawal of the work regarding future licences when the rightsholder reappears
This does not affect the existing legal framework regarding the duration of copyright, the scope of copyright liability or the applicability of exceptions or defences to infringement or the availability of remedies.]
LACA: the Libraries and Archives Copyright Alliance (UK). Position statement on orphan works (December 2007). Available at:
Ricketson S and C Creswell. The Law of Intellectual Property: Copyright, Designs and Confidential Information, ‘looseleaf’ service, Law Book Co. Available at Thomson Reuters online.
Thomson Legal Online. Residual three-step test exception for libraries and archives – s 200AB, para. [11.336] ‘Application of s 200AB to libraries and archives.’ in Commentaries: Law of Intellectual Property: Copyright, Design and Confidential Information, Part II - Copyright and "Neighbouring Rights". Accessed 20 January 2010. Available via Firstpoint. [Ref to suppl. EM for 2006 Amdt Act implying orphan type option.]
Thomson Legal Online. Implied licences, para. [14.436] ‘Statutory deeming provisions’, in Commentaries: Law of Intellectual Property: Copyright, Design and Confidential Information, Part II - Copyright and "Neighbouring Rights". Accessed 20 January 2010. Available via Firstpoint. [CA 113C, the problem of unlocatable copyright owners in the case of sound recordings]
Thomas Hauss , Justin Hill Ph.D. , Rohan Massey , Francesco Mattina , Hiroshi Sheraton and Boris Uphoff, ‘Sound recordings and co-written musical works - term of protection’ (10 September 2008), briefing note. Available at:
*Cyberspace Law and Policy Centre,
UNSW Law Faculty, www.cyberlawcentre.org. This is part of a project generously
supported by the Copyright Agency Ltd cultural development fund. The author also
gratefully acknowledges the assistance of interns working for the centre
including Pratheepa Kandaswamy, Melissa Wong, Lauren Loz, Michael Tan, Yun
Wang, and also comments and suggestions from a number of the Australian authors
listed herein, including Prof Graham Greenleaf and Catherine Bond, lead
investigator and postgraduate researcher
respectively on the Unlocking IP ARC research project from which this
Notes: Section 1. Articles etc. is sorted by year post-2005, then jurisdiction, and author. ‘Google books’ is separately listed from ‘US’ after 2007. Items in Section 2. and on are generally sorted by jurisdiction, then author, and year. Full text is often available from index at eg., SSRN; if not, a direct URL may be provided. ‘*’ = recommended. ‘’ = in internal working set. Appended annotations are not visible in print or PDF versions, but may be visible in Word if ‘Show ¶‘ is on.