An orphan work describes a copyright-protectable work whose owner is unable to be identified. This can be for any reason but is most often due to the passage of time, incomplete work-creation records, or the bonafide rights holder being unaware that they own the copyright (i.e. if the copyright passes by death to a next of kin). This problem is increasingly more prevalent in today’s technological era as the mass-digitization of copyrighted works puts so many works within easy reach of anyone with a click. Orphan work issues are usually discovered when someone desires to use a particular work and since they cannot locate the copyright holder, they cannot receive the required permission. For example, publishers or other corporate entities won’t allow the use of the work without a copyright clearance due to the legal exposure of a potential infringement. By some estimates, there could be tens of millions of orphan works online.
While other countries have passed laws to deal with orphan works, the U.S. has not, requiring a user to analyze the risk before committing to using the orphan work. The initial analysis is straightforward. Under US copyright laws, an orphan work is entitled to the same exclusive right protections that govern all copyrighted works so using an orphan work without permission is typically an unarguable infringement of copyright.
So, what is a new user supposed to do when faced with the reality that the owner cannot be located? Here is a non-exhaustive list of major areas of concern one should look into before using an orphan work.
The US has passed numerous copyright laws regarding the duration of copyright protection and depending upon certain factors, one can determine whether a work is under copyright protection or in the public domain. The term “public domain” refers to copyrightable works that are no longer eligible for copyright protection and, therefore, are free to use. While this determination may seem counterintuitive, if one can reasonably estimate the year an orphan work was created, that information can be used to determine whether the work is in the public domain. Due to changes in copyright law over time, the analysis can be a bit tricky.
The Cornell University Copyright Clearance Center maintains a useful chart with all the details. (https://copyright.cornell.edu/publicdomain) but for purposes of the present discussion, let’s focus on two of the more notable copyright duration terms and examples:
Unpublished works: Life of the author + 70 years
Are you able to date a photograph that you strongly believe has never been published, such as one found it in an attic shoebox, that could only have been taken from a person who died before 1948? The copyright in the photograph has probably expired as copyright duration only lasts for 70 years after the death of an author for an unpublished work.
Works published 1923-1977 without a copyright notice
Prior to 1977, U.S. copyright protection of certain types of works, such as books, required a visible copyright symbol “©” included on or within the work. So if you wish to use content contained in a published literary work from a defunct publisher that can be dated before 1977 and the official work does not contain a copyright notice or other copyright attribution information on the introductory title pages, back cover, or other similar locations, then the literary work may be within the public domain for failing to follow copyright formalities (please note, there are always exceptions and copyrights are judged on a case by case basis).
The hypotheticals are endless but conducting an analysis of the history of the orphan work could lead to a determination that the work is likely in the public domain and free to use.
Fair Use Defense
Let’s assume that the date of creation of a work cannot be determined or it can be and it is decades away from slipping into the public domain. In such a circumstance, best practices dictate that we side on the err of caution and assume the work is protected. As mentioned, rights holders in orphan works are afforded the same rights that govern all copyrighted works. This also means that any defenses applicable to the use of another’s copyrighted work without permission also apply to orphan works. The most prominent defense is “fair use.” We have touched on the concept of fair use in other articles but since fair use is often misunderstood, let’s take a look at the basic concepts.
The defense of fair use is typically defined as allowing someone to use another creator’s copyrighted work without permission. The policy reasons for why fair use exists stem from the U.S. Constitution. The copyright clause grants Congress the power to “promote the arts,” which has generally been interpreted to mean that incentivizing the creation of new artistic works is in the best interests of society. The concept of fair use is an extension of this ideal, as it would be harmful to society to limit the use of artistic work in certain circumstances. Over time, certain types of uses have been determined to be fair use, such as news reporting, scholarship, research, or commentary and criticism. For example, without the fair use exception to copyright protection, movie reviewers could not show clips of the movie without permission. This inability to effectively critique without showing the substance of what is being critiqued, would not be beneficial to society.
To establish fair use, one must balance four factors. Importantly, these factors are not weighted evenly against one another, so just because a new user may have three of the four factors balanced in their favor, this does not mean that fair use will be found. Overall, if the weight of the factors balances towards the new use of a copyrighted work, the defense of fair use will apply.
Purpose and character of the use, including whether such use is of a commercial nature
This factor primarily analyzes whether a work is transformative, which is typically considered the most important factor in a fair use analysis. The seminal case regarding transformative use involves the musicians Roy Orbison and rappers 2 Live Crew. 2 Live Crew incorporated aspects of Orbison’s song “Oh Pretty Woman” into a new song “Pretty Woman.” The Supreme Court of the United States found that the concept of transformative use is one where the new author alters the original copyrighted work with a “new expression, meaning, or message.” If the new user of a copyrighted work does add such a new expression, meaning, or message, then the new use will be considered transformative. In this case, it was found that 2 Live Crew’s new composition did alter the original composition with new artistic expression in a parodic way which commented back to the original (i.e., 2 Live Crew commented about the status of a ‘Pretty Woman’), and thus was transformative and fair use was found. To note, it also must be determined if the new work is commercial (i.e., for sale) under this factor, but that analysis does not weigh as heavy as a transformative use determination.
Nature of the copyrighted work
This analysis focuses on whether the new work is artistic or fact-based. New users of fact-based works are typically extended a greater privilege to use a work, as opposed to new users of artistic-based works. This is due to the intrinsic nature of artistic works (i.e., art) having stronger copyright protection than fact-based works (i.e., encyclopedias), as the creation of artistic works is at the core of copyright protection. Generally, the law encourages the dissemination of facts, so using factual works is offered greater credence under the law. This factor is typically less important than a transformative use analysis.
Amount and substantiality of the portion used
Courts analyze this factor to review how much of the original work was copied in the new use. There is no steadfast rule of how much of the original work a new user can use, i.e. no “under 10%” of the original work is allowed threshold. This analysis is reviewed on a case-by-case basis on both qualitative and quantitative levels. For instance, if one appropriates one of the more important aspects of a work, even if such appropriation is a small fraction of the original work, that finding would weigh against the new user. This factor is also generally less important as opposed to a transformative use analysis.
Effect of use on the market for or value of the copyrighted work
This factor weighs whether the new use of the copyrighted work supplants or encroaches on the market of the original work. This analysis focuses on whether the potential customers of the original work are the same or impacted by the new user. The greater crossover of markets of the original and new work, the more this factor balances in favor of the original author. Some courts have suggested this is the most important factor or at least one of the more important ones.
Unfortunately, there is no bright-line rule regarding determining fair use and courts have flexibility over how they weigh the factors. However, this analysis can be helpful to determine the risk involved in using an orphan work, even more so when combined with the copyright duration analysis discussed earlier.
Attempts have been made to craft a new legislative framework regarding the use of orphan works in the United States. For instance, after various litigation associated with the professional writer’s organization the Author’s Guild, a 2015 Copyright Office report suggested limiting copyright infringement damages for the use of orphan works if the new user can show they conducted a good faith search.
These proposals have predominantly not become law in the US (compare with the UK enacting orphan work legislation), but these “good faith” style defenses may be applicable in the future to users of an orphan work who diligently searched for the owner. A mitigation strategy may be to conduct and document a diligent search for an owner, as if law changes, evidence of such a search might be able to be used as a defense in the future. Likewise, evidence of a diligent search could be shown to an owner who later emerges, and such evidence may be able to be used to show that the use of their work was not done in bad faith and maybe the owner would take that good faith attempt to heart in dispute negotiations.
Overall, the first takeaway is to understand that the use of an orphan work may be subject to infringement claims if the owner does make themselves known. This is not to be taken lightly. While there may be defenses available, those defenses need to be well understood by the new user before engaging in any activities that could be construed as an infringement. This is especially important as, typically, the statute of limitations (the amount of time someone can bring a lawsuit) for copyright infringement claims runs from three years when the infringement is first discovered, or should have reasonably been discovered.
That means it is entirely conceivable that one could release a work of art containing an appropriated orphan work, which is discovered 5 years later by the owner, who could file a lawsuit 3 years later. That is 8 years after the work was first released. That is a significant period of time for legal exposure. If your work has been generating income throughout that entire period, a significant lump sum could be due to the copyright holder in the event one loses the copyright suit.
The second takeaway is, that we recommend contacting an intellectual property attorney to answer any questions that you may have concerning the use of an orphan work. This discussion is a surface-level analysis of major issues, that are likely not applicable in every scenario, and further review will need to be conducted based on the specific facts of the intended use of an orphan work. While we understand that engaging an attorney can be expensive in certain circumstances, it does not necessarily have to be. Any work on your part to analyze the orphan work as described herein could reduce the attorney’s review time and thus legal fees. Likewise, investing some time into legal upfront could pay dividends in the long run by avoiding having to play defense against claims, versus having a reliable level of certainty upfront.
Have you had any issues related to using an orphan work? Let us know in the comments below.
Louis Smoller is an intellectual property attorney based in New York.