[Editor Charlie sez:  Given that the Google Party in Europe is jamming a new orphan works on steriods bill through the UK and EU Parliaments, this is a good time to repost this history of orphan works from last year.  See “UK’s Brazen Copyright Landgrab Sneaked Into Enterprise Bill” and Photography Organisations Raise Objections to EU Orphan Works Law]

In the aftermath of the Google Books debacle, we are starting to hear noises that Google will back a new orphan works bill in this Congress.  There are some commentators—truly misguided in my view—who are calling for Congress to bring back the failed legislation from 2008 known as the “Shawn Bentley Orphan Works Act”.  (The late Shawn Bentley was a tech industry lobbyist and former Senate Judiciary staff counsel.)  Let’s review that legislation in light of what we now know.  (For a more detailed account, see Unhand That Orphan from the ABA Entertainment & Sports Lawyer.)

The net effect of the legislation is to allow anyone—anyone—to use a work—for any reason–for which the user could not locate the owner after a reasonably diligent search, and essentially stripped away any right of the copyright owner to stop the use.  All answers for any problems that arose with administration seemed to be that the copyright owner could sue.  Ask yourself if the copyright owner could not be located in a bona fide diligent search, how likely are they to sue?

Google is–of course–very interested in orphan works.  They have a deep and abiding interest in the subject.  For example, current Twitter General Counsel, Google’s then-attorney, Berkman Center affiliate, Lessig acolyte, and all round digital sophisticate Alexander MacGilivrey made that clear in his testimony at the Copyright Office:

“I would encourage the Copyright Office to consider not just the very, very small scale, the one user who wants to make use of the work, but also the very, very large scale and talking in the millions of works.”

That statement was made on July 22, 2005—almost 4 months to the day before the Library of Congress announced a $3 million gift from Google for the Librarian’s World Digital Library pet project.

You should also understand that if the Google Books case is any guide–litigation where the orphan works issue has come up repeatedly–Google has clearly, clearly stated to a judge that it would welcome mass litigation.  And their argument for mass litigation was not articluated as limited to the Books case, either, but generally as a Google litigation strategy.

According to Publishers Weekly:

[Judge] Chin…suggest[ed] that Google would be “delighted” if he certified a class, because it would save Google the trouble of answering a flurry of individual suits. “No,” [Daralyn] Durie responded [for her client Google]. “We care whether the law is being applied correctly, and the correct application is not to certify a class.”

The presiding judge didn’t buy that for one second by the looks of the reported exchanges between Daralyn Durie and Judge Chin, and ruled against Google, certifying a class.  (Of course, what Google may be shaping with orphan works is the kind of “prepackaged” class action that they pulled off with Google Buzz where what the court referred to as Google’s consultants and lobbyists got huge cy pres awards, the class got virtually nothing and Google got relief from liability in return for millions in donations to many of the groups (ACLU, EFF, Berkman, Stanford, and of course the Center for Democracy and Technology) who helped them with SOPA.   We’ll see.)

The U.S. orphan works legislation was entirely out of step with successful orphan works practice in other countries, most significantly in Canada which has a very good orphan works regime that avoids the moral hazard of the U.S. system.  We will discuss the very effective Canadian solution in another post.

The point is that the way the Shawn Bentley Orphan Works Act was drafted, it was designed to make it very easy for works to be used without compensating owners or even giving them a chance of finding the infringing use except by happenstance.  This, of course, encourages parasitic innovation.  Of course, if you described it that way to the sponsors, they would not agree, but there were thousands of artists who saw it exactly that way.

As you will see, Google was a prime advocate of the bill and planned on making “millions” of uses—so presumably, they also planned to make millions of dollars.  In fact, orphanworks.com was registered on January 28, 2005 to Joseph Gratz, just a few months before Alexander McGillivary’s Copyright Office testimony.  There is a Joseph Gratz who is counsel to Google in the Google Books case at the Durie law firm.  These appear to be the same person although it looks like the registration still uses an old address.   It is a common practice for counsel to a client to “park” a domain of economic value to the client for a short period of time by registering the domain using their own name or the name of their law firm to avoid detection of their client’s interest in the domain.  I don’t know if that practice violates the rules of the domain registrar, but it probably would be hard to prove that a domain was registered under false pretences.  Oh, and the orphanworks.com domain is parked on servers at…wait for it…the EFF.

orphanworks.net was registered to Joe Keeley, formerly counsel to the Copyright Office and the House IP subcommittee, on February 12, 2008 (weeks before the bills were introduced, but apparently after he left the people’s service).  Keeley has a narrative regarding his role in the legislation on orphanworks.net which makes interesting reading.

Economic Effects on Small Business and Legal Effects of Treaty Partners

The Shawn Bentley Orphan Works Act (S 2913) was introduced in the Senate on April 24, 2008 and passed the Senate on September 26, 2008.  Yes, that’s five months soup to nuts.  The House bill (HR 5889, the Orphan Works Act of 2008) was introduced on April 24 and was referred to committee on May 7, 2008 where it died at the end of the 110^th Congress.  Therefore, the Senate bill also died.

Many artists will tell you it was a close call.

One principle difference between the two horrendous bills was the so-called “Dark Archive”, a registry of orphan works searches to be maintained by the Register of Copyright so that owners of the infringed work would be able to find the infringer.  The Copyright Office objected to maintaining this archive and it was removed from the Senate bill (although other jurisdictions have a comparable arrangement that is, if anything, more robust than the House proposal).

Concerns of the Small Business Administration

During the course of the legislation, the Small Business Administration sponsored a roundtable in New York that was attended by dozens of representatives from entrepreneurs in the creative community: independent artists, songwriters, small music publishing companies, small independent record companies, photographers, illustrators, visual artists and many others.

While the roundtable attendees overwhelmingly rejected the Shawn Bentley Orphan Works Act, no one in the federal government conducted an economic impact study on this major overhaul to the Copyright Act,  and the many businesses that are interdependent on them from bars and restaurants to CD duplicators, independent music stores, musical instrument manufacturers and hotels.  As a threshold matter, there was short shrift given to the effects on U.S. treaty obligations to the point that treaty partners were ignored.

The closest thing to an economic impact study was the Congressional Budget Office report which stated:

“The bill would impose an intergovernmental and private-sector mandate by limiting the awards that certain copyright owners could receive in civil actions against infringers. The cost of the mandate would be the forgone value of awards and settlements of infringement claims. According to Copyright officials, there have been very few lawsuits against copyright infringers in recent years and the value of the awards in those suits have not been large.”

So that’s complete hogwash, unless they were referring to copyright litigation on the moons of Jupiter, and even then it seems improbable.

Why Perform an Economic Impact Study?

The rationale for performing a significant economic impact study is that the Shawn Bentley Orphan Works Act (and any other orphan works law) creates substantial harms for all copyright owners, but particularly small and independent copyright owners, including recording artists, songwriters, independent labels and others in the music economy.  It should be pretty obvious that no one who was jamming the orphan works bill through the Congress wanted to know the answers or wanted anyone else to ask the questions.

“Orphan works” is clearly a land grab by big online companies like Google that went far beyond the debacle for small business wrought by the Digital Millennium Copyright Act.  The DMCA made it nearly impossible for small business to enforce their rights online—orphan works legislation actually invades their rights and gives these rights to another unless the small business can afford to sue, probably against Google in many cases.

Cities such as Austin, Texas owe a substantial portion of their local economies to independent artists based on economic impact studies.  Nashville, Tennessee is also dependent on songwriters and small publishers for its city identity and economy.  No consideration whatsoever was given by the Congress to the economic impact of the Shawn Bentley Orphan Works Act on these cities, just to name two.  Others that come to mind are New Orleans, Seattle, Chicago, Atlanta and San Francisco.  What kind of artists are most likely to be overlooked in a search?  The kind who lost everything in Katrina.  The kind who never had a lawyer.  The kind who perhaps naively rely on the law to protect their copyrights.

For reasons that escape me, the Congress was intent on establishing a legal regime by which big companies can take advantage of a small business’s failure to register works in a certain manner, allow those works to be exploited without restriction or manipulated beyond recognition, and then require the independent artist and small business to sue the infringing user (likely a Big Tech company such as Google) in order to gain recovery while at the same time denying the independent artist and small business the traditional award of legal fees.

When added to the debacle that the so-called “notice and takedown” provisions of the Digital Millennium Copyright Act have created for independent artists, the Shawn Bentley Orphan Works Act may well have been the coup de grace in creating two classes of copyright owners—those who can afford to protect their rights in court and those who cannot, the haves and the have nots, the Googles and the Ellen Seidlers.

Next in Part 2: A Solution in Search of a Problem