New procedures for unlocking access to orphan works
Article written by Emily MacKintosh, Senior Associate, and Miryam Boston, Trainee Solicitor in the Commercial IP team
Works of unknown authorship or ownership (so called 'orphan works') are still protected by copyright. Since the use of a copyright work requires the owner's consent, as the law previously stood an orphan work could not be used until the term of copyright had expired (70 years from the end of the year in which the work was first made or made available to the public).
From 29 October 2014, the Copyright and Rights in Performances (Licensing of Orphan Works) Regulations 2014 ("Licensing of Orphan Works Regulations") come into force, establishing a procedure under which a licence to use orphan works may be obtained.
Alongside this, the Copyright and Rights in Performances (Certain Permitted Uses of Orphan Works) Regulations 2014 transpose the Orphan Works Directive (2012/28/EU) into English law allowing relevant bodies, including libraries, museums, and film or audio heritage institutions, to make certain orphan works available to the public and to reproduce a relevant work for the purposes of digitisation, making available, indexing, cataloguing, preservation or restoration.
The aim of the Orphan Works Directive in creating a new exception for the use of certain orphan works by relevant bodies is to promote free movement of knowledge and innovation in the internal market and give greater access across Europe to works which would otherwise not be able to be made available. This aim will also arguably be furthered by the Licensing of Orphan Works Regulations which enable a broader range of people to use orphan works.
The Licensing of Orphan Works Regulations apply to works protected by copyright where, after a diligent search has been made, one or more of the right holders in the relevant work have either not been identified or, if identified, have not been located. If someone wishes to use a work falling within this definition, an application can be made to the Intellectual Property Office ("IPO") for a licence. The IPO has published detailed guidance on the process for applicants: https://www.gov.uk/government/publications/orphan-works-overview-for-applicants .
The key to the new procedure is ensuring that a 'diligent search' is undertaken. The legislation provides that a diligent search comprises a "reasonable search of the relevant sources to identify and locate the right holders of the relevant work". As a minimum, this must include a search of the databases maintained by the Office of Harmonisation in the Internal Market and also particular databases and catalogues relating to a specific category of work.
The IPO has published detailed guidance and checklists to be used by potential licensees in undertaking a search. These outline different procedures for film and sound, literary works, and still visual art and set out various sources of information and practical tips for applicants, including how to trace any heirs in the case of deceased right holders. If information may be held abroad regarding the right holders, then the diligent search cannot be limited to the UK.
A prospective licensee must keep an accurate record of all search activities undertaken as evidence of the searches they have done in relation to each right holder which must accompany any licence application.
The reality of the IPO's expectations of diligent searches will become clearer once the system starts to be used. Some potential users have concerns that significant time and expense will need to be incurred to satisfy the requirements. By contrast, some rightsholders, particularly photographers whose works are often unidentified on the internet, are concerned that a diligent search is not a sufficiently high threshold. In practice the IPO's requirements will hopefully reflect the steps that a reasonably prudent person would undertake in looking for a right holder.
Once a prospective licensee has undertaken a diligent search and satisfied itself that the right holder(s) cannot be identified or located, they must complete an online application form. Details need to be provided of the work itself, the intended use of the work, the history of the work and how it came into the applicant's possession. A declaration that a diligent search has been completed must be made and evidence of the search provided.
A non-refundable processing fee will need to be paid when the application is submitted. The amount of the fee depends on the number of works in the application but ranges from £20 for 1 work to £80 for a maximum of 30 works.
When the application form has been completed, the anticipated licence fee will be calculated. The licence fee is payable once the IPO has decided to grant a licence but prior to the licence being issued. This fee will be a 'reasonable' amount based on the proposed use of the orphan work.
The licence fee will be retained by the IPO in a specialist fund for a period of eight years. If during this time an orphan work's right holder emerges, the IPO will distribute the funds to the right holder. This closely corresponds to the initial term of the orphan works licence granted which will be for a maximum of seven years.
The IPO will maintain a register which records orphan works in respect of which:
a) an application for an orphan works licence is pending (the prospective licensee having carried out the diligent search and submitted the relevant application form);
b) an orphan works licence has been granted; and
c) an orphan works licence was refused.
This register will enable right holders to easily discover if works in which they hold copyright are being considered as orphan works and to claim the licence fee (if a licence has been granted). It can also be used by future prospective licensees when trying to identify right holders and alert them to the outcome of any previous applications.
As an appendix to the IPO guidance, the IPO has set out the standard terms of an orphan works licence. These terms specify that:
a) the licence will be non-exclusive;
b) the licence only relates to use of the orphan work in the UK;
c) sub-licensing is prohibited;
d) the licence has effect as if it was granted by the right holder;
e) moral rights of the orphan work right holder or the performer are unaffected;
f) the licence has a maximum term of seven years; and
g) the term may be renewed for an additional period of up to seven years (although a new diligent search will need to be completed).
As the licence is granted by the IPO as if it were granted by the right holder, the licence is not terminable by the right holder. Any right holder that emerges will only have recourse to the licence fee being held by the IPO.
The IPO's press release states that the new provisions will "help to disseminate more of the UK's cultural work at home and across Europe". However, licences can only be obtained for use of a work in the UK. The IPO's guidance states that it is "the responsibility of the organisation or person using the orphan work to ensure that they comply with the law of any other jurisdiction where they may wish to use the work". This may mean that an orphan work licence from the IPO may have little practical benefit for organisations whose ultimate consumers are both inside and outside the UK. Further, the stated aim of the EU President Elect of ensuring a Digital Single Market and the removal of any cross-border territorial restrictions in copyright does not sit well alongside a structure of UK statutorily limited licensing.
Given the territorial and time limitations of an IPO issued orphan work licence, the practice of organisations making risk-based commercial decisions whether or not to use an orphan work and making financial allowances to cover the eventuality of a right holder coming forward may well continue. It will be interesting to see whether the new system is stream-lined and user friendly enough to incentivise users to obtain a licence when available. Equally it is hoped that the system will be robust enough to prevent the exploitation of works where little effort has been made to look for the relevant right holder.