The Google Book Project, as litigated in Authors Guild, et al. v. Google, Inc.,[i] demonstrates the challenges facing the current model of copyright laws as applied to orphaned works.
In 2009, Google, Inc. proposed a settlement agreement, the Amended Settlement Agreement (“ASA”), which, in part, provided for an “opt-out” policy through which rights holders could exclude their books from the Google database and prevent Google from digitizing their works.[ii] Google intended for the “opt-out” policy to grant Google the freedom to digitize books without having to complete the cumbersome copyright clearance process, while also providing a procedure through which rights holders could prevent Google from digitizing their works (or have the digitized copies removed).
The Google Books Project is especially problematic for orphaned works. An orphaned work is a work which is still within the copyright term (therefore, the work is not part of the public domain), but whose author or rights holder is either unavailable or unknown.[iii] The challenge with orphaned works derives from the fundamental basics of copyright law: authors enjoy exclusive rights and the law has no registration requirement. Under copyright law, an author enjoys exclusive rights in her work for a term of the author’s life plus seventy years.[iv] Except in the limited circumstances of fair use,[v] unauthorized parties may not use the work without permission from the right holder.[vi] Given the long length of the copyright term, the lack of a registration requirement, and the absence of a centralized system to catalog rights holders, the rate of orphaned works has increased.[vii] As a result, most uses of orphaned works are impossible because the rights holder cannot be found to grant permission for the use.
The way in which an orphaned work can be used is greatly restricted to fair uses.[viii] What constitutes a fair use is difficult to determine because fair use is not a categorical determination, but instead a (unpredictable) balancing of interests.[ix] The Copyright Act offers little guidance on how an orphaned work can be used: “in general a user faced with an orphan works situation will not find a specific section or other provision of the Act on which he might rely to make use of the work.”[x] There is no categorical fair use for orphaned works; just because a rights holder is not asserting his rights does not mean he does not still possess those rights. When someone wishes to use an orphaned work, he faces the choice of using the work and risking liability for copyright infringement, or foregoing the use altogether:
Concerns have been raised that . . . a productive and beneficial use of the work is forestalled – not because the copyright owner has asserted his exclusive rights in the work, or because the user and owner cannot agree on the terms of a license – but merely because the user cannot locate the owner. 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.[xi]
Google is faced with the fair use/liability dilemma. Resolving the issue with orphaned works is critical to a Google Books Settlement because many of the books that Google has digitized (and will digitize) can be classified as orphaned works. Books still protected by copyright cannot be digitized when rights holders are either unknown or cannot be found.
Google sought to address orphaned works through the “opt-out” policy and Registry, and described the settlement efforts as “a strong complement to, and not a substitute for, orphaned work legislation” as Google continues to search for a solution to the orphaned works problem.[xii] The “opt-out” policy was met with great opposition, and ultimately rejected by the court.[xiii] Google’s “strong complement” to orphaned works legislation was rejected because it would have actually created a legislative effect.[xiv]
The Department of Justice was especially concerned that the laws governing the rights of orphaned works would be modified by Google through the private judicial settlement, rather than through appropriate legislation.[xv] Additionally, Marybeth Peters, in her official statement for the United States Copyright Office, opposed the ASA, stating that it “inappropriately creates something similar to a compulsory license for works, unfairly alters the property interests of millions of rights holders of out-of-print works without any Congressional oversight, and has the capacity to create diplomatic stress for the United States.”[xvi]
In part to protect the rights of orphaned works’ copyright owners, and in response to the Department of Justice’s concerns, the court encouraged Google to switch from an opt-out model to an opt-in model.[xvii] As James Grimmelmann, an associate professor at New York Law School said, "If the parties can agree on an opt-in arrangement, it will give authors and publishers one more option for selling their works. This is pretty much how copyright works today.”[xviii] The opt-in arrangement would enable rights holders to further exploit their works for economic gain - and allow them to do so at their discretion, rather than Google’s discretion as it would have been under the opt-out model. As Professor Grimmelmann stated, the opt-in policy is generally how the industry currently operates: those who wish to appropriate a work under copyright protection must seek permission to use the work before doing so. The opt-in policy essentially continues this tradition by inviting rights holders to actively grant permission to Google. The opt-out policy, however, would have transformed that tradition by allowing Google to assume permission has been granted unless explicitly revoked.
While the Google Books case may not be the vehicle through which the questions of copyright terms and fair use will be resolved, it may be a vehicle through which the orphaned works issue can begin to be resolved. The current copyright system is too informal to adequately prevent the creation of orphaned works, and fails to provide parties with guidance as to what uses are appropriate, fair uses. As Marybeth Peters noted, orphaned works have very limited audiences and cannot be used in potentially valuable ways, but to make those orphaned works more widely available without obtaining permission from the rights holders would conflict with the goal of copyright, which is to protect the rights holders’ interests in the work.[xix] It is difficult to find a balance between the “right exploiters” (i.e., Google Books) and rights holders’ competing interests in orphaned works and copyright law.
The ASA’s “opt-out” and registration provisions, for all its flaws, could have been a way to encourage the rights holders of orphaned works to step forward and exercise their rights through the opt-out policy and registration. Once the rights holders came forward, the Google registry could have made a record of the rights holder and provided a means for others who wish to use the work to contact the rights holder for appropriate permissions. This demonstrates the value of moving copyright laws in a direction that will reconsider the no-registration requirement and encourage authors and publishers to create and utilize a collective rights organization and to proactively exercise their rights as copyright owners. The Google Books Project, however it turns out, should be sure to maintain the integrity of copyright law and copyright holders’ rights.
[i] Authors Guild v. Google, Inc., 770 F. Supp. 2d 666 (S.D.N.Y. 2011).
[ii] Id. at 672.
[iii] The ‘Orphaned Works’ Problem and Proposed Legislation: Statement Before the Subcomm. on Courts, the Internet, and Intellectual Property, Comm. on the Judiciary, 110th Cong. 2 (2008) (statement of Marybeth Peters, Register of Copyrights); U.S. Copyright Office, Report on Orphan Works 15 (2006), available at http://www.copyright.gov/orphan/orphan-report.pdf.
[iv] 17 U.S.C. § 102(a) (West 2012); 17 U.S.C. § 302(a) (West 2012) (“Copyright in a work created on or after January 1, 1978, subsists from its creation and, except as provided by the following subsections, endures for a term consisting of the life of the author and 70 years after the author’s death.”).
[v] 17 U.S.C. § 107 (West 2012).
[vi] 17 U.S.C. § 106 (West 2012).
[vii] The ‘Orphaned Works’ Problem and Proposed Legislation: Statement Before the Subcomm. on Courts, the Internet, and Intellectual Property, Comm. on the Judiciary, 110th Cong. 2 (2008) (statement of Marybeth Peters, Register of Copyrights).
[viii] 17 U.S.C. § 107 (West 2012).
[x] U.S. Copyright Office, Report on Orphan Works 4 (2006), available at http://www.copyright.gov/orphan/orphan-report.pdf.
[xi] U.S. Copyright Office, Report on Orphan Works 1 (2006), available at http://www.copyright.gov/orphan/orphan-report.pdf.
[xii] Testimony Before the H. Comm. on the Judiciary Hearing on Competition and Commerce in Digital Books 111th Cong. 1 (2009) (testimony of David Drummond, Chief Legal Officer, Google, Inc.).
[xiii] Id. at 680.
[xiv] Id. at 680.
[xv] Dep’t of Just., 1:05-cv-08136-DC, Document 720, Statement of Interest of the United States of America Regarding Proposed Class Settlement (Sept. 18, 2009).
[xvi] The ‘Orphaned Works’ Problem and Proposed Legislation: Statement Before the Subcomm. on Courts, the Internet, and Intellectual Property, Comm. on the Judiciary, 110th Cong. 2 (2008) (statement of Marybeth Peters, Register of Copyrights); U.S. Copyright Office, Report on Orphan Works 15 (2006), available at http://www.copyright.gov/orphan/orphan-report.pdf.
[xvii] Authors Guild, 770 F. Supp. 2d at 686 (“[M]any of the concerns raised in the objections [to the proposed settlement] would be ameliorated if the [settlement] were converted from an ‘opt-out’ settlement to an ‘opt-in’ settlement.”).
[xviii] Amir Efrati & Jeffrey A. Trachtenberg, Judge Rejects Google Books Settlement, The Wall Street J., Mar. 23, 2011, http://online.wsj.com/article/SB10001424052748704461304576216923562033348.html.
[xix] The ‘Orphaned Works’ Problem and Proposed Legislation: Statement Before the Subcomm. on Courts, the Internet, and Intellectual Property, Comm. on the Judiciary, 110th Cong. 2 (2008) (statement of Marybeth Peters, Register of Copyrights).