The Last Word on the UK Orphan Works Scheme for 2015?

As we mentioned in our posting to mark the completion of the first 12 months of the UK's Orphan Work Licensing scheme, the IPO has now published its own report on the first year's operation. The report also covers some limited analysis of the EU Orphan Works Directive scheme.

The report is mercifully brief (24 pages) and aided by a number of tables and infographics to display the data. As part of the legislative process concerning Part 6 of the Enterprise and Regulatory Reform Act 2013 which, inter alia, set up the IPO sponsored scheme, the minister agreed to report back to Parliament after the first year, and this document fulfils that undertaking.

Since we have already looked at the statistics for the first year in our earlier posting, it is intended just to examine the other main points which come out in the IPO report. These are:

• Experience of using the system has led to a refinement of the guidance on how to conduct diligent searches;
• Some usage fees have been adjusted thanks to feedback from users and others.
• No licences have been refused and no returning rights holders have come forward to claim their works.

The report also looks at the results of a survey of users of the scheme conducted by the IPO. The IPO acknowledges that the sample size (19 respondents) is too small to draw any firm conclusions from, but nonetheless, the feedback has been useful and may lead to future amendments to the system. In particular there is a table showing the various points at those who did not complete their application, abandoned the process.

And finally the report looks briefly at the experience of the EU Directive mandated process, which is open to major institutions such as publicly funded libraries, archives and museums etc. Only 10 UK institutions have so far registered with the OHIM (which administers the EU system), but this compares favourably with a total of 61 registrations across the whole EU. These 10 institutions are not identified in the report and between them they have created 53 entries in the OHIM database together with 14 records relating to embedded works, although again no details are included. Interestingly the UK registrations have resulted in 2 rights holders coming forward to claim their works. This compares with 25 returning rights holders across the whole of the EU for a total of 1399 registrations. It remains to be seen whether these figures indicate that some of the searches have been less than diligent (given that registrants self-certify and this is not checked either by OHIM or the national authorities such as the IPO).

The 1709 blog's good friend John R Walker will be delighted to know that the IPO collected £1,492 in administrative fees for the first 12 months, and is holding £8,001.97 in licence fees on behalf of any rights holders, should they become known within the next 8 years.

Art for Art's $ake?

It is rather depressing to hear that once again Wikimedia is being threatened with a copyright suit for publishing digital images of works of art which are themselves in the public domain. Like the spat between the UK's National Portrait Gallery and Wikimedia back in 2009, the current case involves another museum, this time it's the ReissEngelhorn Museum in Mannheim, Germany. Arguably Germany's domestic copyright law is less sympathetic to facsimile photographic copying of works of art than is thought to be the case under UK law. In fact of course both jurisdictions are likely to follow the EU acquis found principally in the Infopaq case where the CJEU decided that the test for originality was whether the new work was an expression of the spirit of the author. No doubt, like the 2009 dispute, the Reiss Engelhorn's complaint may well feature other matters such as database right and/or technical prevention measures, however this posting is concerned just with the copyright aspect.

The latest development is depressing for a number of reasons, not least because one might have hoped this would be settled law by now, considering that one of first test cases on the subject - the Graves Case - took place in 1869, a mere seven years after copyright protection in the UK had been extended to include photographs. In that case the photographer Henry Graves won his case, with the trial judge (Blackburn J) concluding "And it seems to me that a photograph taken from a picture is an original photograph, in so far that to copy it is an infringement of this statute [the Fine Art Copyright Act 1862]." Despite this slightly elliptical reasoning, the courts in England and Wales have not seriously upset this finding ever since. Although the test for originality more generally has been refined on many occasions, most notably in recent times in Designers Guild [2001], Hyperion Records [2005], Baigent v Random House [2006] and more specifically with regard to photography, in Antiquesportfolio.com v Rodney Fitch [2001], the line taken by the UK courts has been that if the photographer uses sufficient skill and labour in his or her choices (such as the timing, choice of viewpoint, exposure, depth of field, lighting etc) then the resulting photograph would be entitled to copyright as an original work. In contrast to this, in the US case of Bridgeman Art Library v Corel Corp [1999], the District Court of the Southern District of New York sought to apply UK law to the subject of photographs of classic works of art, and came to the opposite conclusion, namely that copyright did not subsist in mere photographic reproductions. And that was at a time when such photography was based on the use of film which arguably required greater skill on the part of both the photographer and the printmaker when it came to correctly reproducing the colours of a painting. By comparison, today's digital photography together with the widespread use of sophisticated editing software to faithfully recreate colours requires rather less skill and labour. And although not a case about photography, in Interlego AG v Tyco Industries, the UK Privy Council found that where design drawings were being manually copied, "[t]here must in addition be some element of material alteration or embellishment which suffices to make the totality of the work an original work. But copying per se, however much skill and labour be devoted to the process, cannot make an original work"

In mainland Europe, photography has always been something of a Cinderella artform. A typical response of the national courts can be seen in the Jimi Hendrix portrait case reported on by Marie-Andree a couple of months ago. And as well as Infopaq, in Painer [2001] we have a decision of the CJEU which provides additional clarity on the specific subject of originality in photographs. Taking German national law and the two CJEU decisions, Infopaq and Painer, all together, I wouldn't rate the Reiss Engelhorn Museum's chances of success in court as being too good.

And although the matter was settled, it is worth looking back at the outcome of the NPG & Wikipedia dispute from six years ago. According to the Wikipedia article referred to above, it would appear that the NPG resolved from an early stage not to resort to litigation, and the status quo today is that Wikimedia continues to host the images at the heart of the dispute. No money appears to have changed hands, so are we to conclude that the NPG effectively lost the battle? They have certainly amended their conditions of access allowing a large number of low resolution images to be freely accessed, and have made higher resolution images available 'for free' to the academic community. But it remains to be seen whether the Reiss Engelhorn will be forced to adopt a similar outcome.

There is without doubt a valid argument that works in the public domain should be readily accessible by the public, especially in the digital age, but where each work is unique and often very valuable (such as art), can such access invariably be free? There is considerable expense involved in the digitisation process itself, in preserving, restoring and protecting the original artworks, and in making them available to be viewed in person as well as online. Museums and art galleries cannot be expected to absorb this cost without passing at least some of it on to the public, although many institutions seek to offset these costs by charging commercial publishers and the like for access to high resolution images, rather than by charging higher public entry fees. But should copyright be used, possibly fraudulently, to underpin this business model? And if so, how can any work of art which is not already sited in a public place, ever be said to be truly in the public domain? And given that the EU has recently given museums, libraries and archives greater ability to make their orphan works available to the public, while recouping no more than the cost of digitization, how does this new right sit with the less justifiable (ab)use of copyright in cases where the copyright in the original is known to have expired long ago?

The Adopted Orphans are One Year old

The UK IPO's Orphan Works Register has now been operating for twelve months. Readers may recall that we took a look at its progress at the six month point here, with a follow-up here.

The second six months have seen much less activity. Only 31 new applications have been received, taking the total to 294 for the whole year. However the proportion of successful applications has stayed the same at 83%. As was noted at the six month point, the vast majority of applications have been for still images (229) with written works (47) in second place. However the success rate for written works is much lower at 55%. Sound recordings come in third place (14 of which 12 were granted licences) and musical notation, scripts & choreography, and moving images only having one or two applications for each category.

The Museum of the Order of St John still stands out as the institution with the most applications (179), all of which have been successful. More commercial bodies such as book publishers and a promotions agency have also been among the applicants, and while it would seem that the former might be seeking to re-publish out-of-print books, exactly what the promotions agency intends to do with its licensed works is less clear. Unfortunately they did not reply to our enquiry. All the register tells us is that the intended use is "in a sound/music production that is available as a audio-only product e.g. CD".

Nor is it always apparent why a number of applications have been withdrawn (this terminology appears to be synonymous with 'licence not granted'). But clearly one or two applications seem to have been misconceived from the outset. Take for example application number OWLS000038-1 submitted in July, for the lyrics to the Benny Hill song Ernie (The Fastest Milkman in the West).  The application notes that Columbia (later Sony Music) who issued the record claim not to hold the copyright, but this is hardly surprising as the Benny Hill estate* or a music publisher is most likely to be the owner of any copyright in the lyrics. One quick call to PRS should have sorted that one out.

Later this month the IPO is due to publish its own review of the first year of the Register's existence, along with a review of how the EU Orphan Works Directive scheme in the UK has fared. This system is available to certain libraries, museums and archives to self-certify that they have conducted diligent searches for copyright owners of works they hold and thus saves them the fees payable for using the IPO system.

* Benny Hill (real name Alfred Hawthorn Hill) died intestate and it was reported that his estate passed to seven nieces and nephews.

Public Consultation on orphan works in the UK launched

Were you wondering why - since the beginning of the year (less than 2 weeks ago) - you have not seen any new consultations on copyright [by the way: have you responded to the EU one? The deadline is 5 February!]? Were you starting to feel a bit bored, abandoned, if not even ... an orphan? 

It's time to cheer up!

On Friday last, in fact, UK Government launched its public consultation on draft secondary legislation for both the UK orphan works licensing scheme [this follows adoption of the Enterprise Regulatory and Reform Act 2013 and its Section 77, on which see here, here and here] and the transposition of the EU Directive on certain permitted uses of orphan works [Directive 2012/28/EU, on which see here and here]. 


As explained by the Intellectual Property Office, UK Government's orphan works scheme aims to address the issue of reproducing works when rights holders cannot be found. The UK wide scheme allows for the commercial and non-commercial use of any type of orphan work, by any applicant, once they have undertaken a diligent search for missing rights holders and paid a licence fee.

Alongside the UK scheme, the Government is implementing the "complementary" EU orphan works Directive. This will allow publicly accessible archives to digitise certain works and to display them on their websites for access across the EU.

This technical consultation [here and here] is seeking views on the legal effectiveness, structure and effect of the draft secondary legislation only. The overall policy is outside the scope of this consultation.

Feeling excited? Good, but hurry up: the closing date for comments is Friday, 28 February 2014.

Orphans and legitimacy revisited: here's a poll

Last Sunday I innocently posted a short note telling readers that my blogging colleague Eleonora had just published an article in the European Intellectual Property Review in which she cast some doubt on the compatibility of the framework for legislating on orphan works in the UK with the Orphan Works Directive and sundry other items of more-than-just-the-UK legislation.  This post has received an unprecedented volume of comments from readers, which has in turn prompted us to run a readers' poll which asks:

"Does the EU's Orphan Works Directive leave Member States completely free to legislate autonomously in the area of orphan works?"

This poll is a joint venture between the 1709 Blog and the IPKat (who is hosting the poll at the top of his home page sidebar). This morning's IPKat carries an explanatory post that discusses the issues in greater detail. If you are new to this debate, or are unsure what it entails, you may find that post helpful.

The poll closes on 15 December. Do participate, please!

Orphan works: have the British ERRed?

"The Orphan Works Provisions of the ERR Act: Are They Compatible with UK and EU Laws?" is the title of 1709 Blogger Eleonora Rosati's most recent article. A forthcoming publication in Sweet & Maxwell's monthly European Intellectual Property Review, this piece is already available online via SSRN: you can access it here. According to the abstract:

On 25 April 2013 the Enterprise and Regulatory Reform Act 2013 (ERR Act) received Royal Assent. The ERR Act contains a number of heterogeneous copyright provisions, including one – Section 77(3) – which confers a new power upon the Secretary of State to provide by regulations for the grant of licences in respect of orphan works.

This article analyses the legislative framework for orphan works as resulting from the ERR Act and compares it with the recently adopted Directive 2012/28/EU (the Orphan Works Directive, which the UK must implement – along with all other EU Member States – by 29 October 2014). Although the actual shape of UK orphan works legislation has yet to be fully defined – either under the ERR Act, or the Orphan Works Directive, – this contribution questions whether in principle the ERR Act is compatible with the Copyright and Designs Patents Act 1988, Directive 2001/29/EC (the Information Society or InfoSoc Directive), the Charter of Fundamental Rights of the European Union, and the Orphan Works Directive.

This requires consideration of the nature of the regimes embodied in the ERR Act (which purports to adopt a ‘licensing’ approach) and the Orphan Works Directive (which creates an exception), as well as the more general relationship between EU and national laws (in particular the principle of supremacy of EU law and the doctrine of EU pre-emption), so to establish whether, by adopting its orphan works provision in the ERR Act, the UK acted in breach of its obligations under EU law. In any case, it is submitted that the UK has rendered impossible any meaningful implementation of the Directive into its national law. As a matter of practice, there will be no significant advantages to claiming the benefit of the orphan works provisions under the Directive, rather than the parallel provisions under the ERR Act, at least for works that will be exploited within the UK territory.

Is Eleonora right? Do you agree with her analysis? Do let her know what you think!

Orphan Works Directive adopted by the Council

The Orphan Works Directive, which has long been in the pipeline (see Eleonora's June blog post), has finally been adopted by the Council.

The Council's approval marks the final step in the legislative procedure meaning that the Directive will formally enter into force in the coming weeks further to its publication in the Official Journal of the European Union. Member States will then have two years to transpose it into national law.

Orphan Works are works which are protected by copyright but whose creators cannot be identified or found. The Commission memo, released yesterday, confirms that the new Directive on Orphan Works "will provide Europe's libraries, archives, film heritage institutions, public broadcasters and other organisations acting in the public interest with the appropriate legal framework to provide on-line cross-border access to orphan works contained in their collections." It goes on to say that "The Directive is a central element of the Commission's strategy to create an enabling framework for the use of intellectual property announced in its intellectual property strategy adopted in May 2011."

Commissioner Barnier has said that "Today's adoption of the Orphan Works Directive is a significant achievement in our efforts to create a digital single market. It will enable easy online access for all citizens to our cultural heritage. The swift and successful outcome of the legislative process and the broad consensus reached both in the Council and the Parliament prove that by working together we can agree on measures to ensure that the EU copyright rules are fit for purpose in the digital age. Alongside other achievements such as the European Memorandum of Understanding to facilitate the mass digitisation of out-of-commerce books, this Directive is one more step in making licensing and online access to cultural content easier."

As this blog reported in September, although the Commission's Vice-President Neelie Kroes, is in favour of the Orphan Works Directive and proposals relating to collective rights management, she has been very clear other issues exist beyond licensing and orphan works, and that "substantive copyright reform" is required.

A detailed analysis of the proposals behind the Orphan Works Directive can be found on the IPKat.