The Impossible Quest – Problems with Diligent Search for Orphan Works

IIC - International Review of Intellectual Property and Competition Law, Apr 2017

Digital technologies allow unprecedented preservation and sharing of world-wide cultural heritage. Public and private players are increasingly entering the scene with mass digitisation projects that will make this possible. In Europe, legislative action has been taken to allow cultural institutions to include in their online collections copyright works whose owners are either unknown or non-locatable (“orphan works”). However, according to the Orphan Works Directive, cultural institutions must attempt to locate the owner of a work before using it. This is the so-called “diligent search” requirement. This paper provides an empirical analysis of the conditions under which a diligent search can feasibly be carried out. The United Kingdom, the Netherlands, and Italy, all of which have implemented the Orphan Works Directive, have been selected as case studies. For each jurisdiction, this analysis determines what the requirements for a diligent search to locate copyright holders are, what the authoritative sources and databases to be consulted are in practice and, most importantly, to what extent these are freely accessible online. In doing so, our analysis provides insights into the two main issues affecting cultural heritage institutions: (1) how much legal certainty does the implementation provide, and (2) what is the practical burden of a diligent search. The analysis reveals that the jurisdictions have given different meanings to the term “diligent”. While the UK’s extensive guidance makes it unlikely that a search would not be deemed diligent, the search burden is onerous. On the other hand, Italy and especially the Netherlands have a lighter search burden, but in the absence of clear, definite guidance, the likelihood of accidental infringement by failing to meet the diligence standard is greater. In addition, all three jurisdictions have so far failed to take the accessibility of the sources into account, making the searches even more onerous than the numbers suggest at first sight. Therefore, it will be difficult for cultural institutions to clear the rights for their collections while fully complying with the requirements of the legislation. This article concludes that legislative action, official guidelines, or jurisprudence are needed to establish a different legal value of sources for a diligent search, with various degrees of optionality depending on data relevance and accessibility.

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The Impossible Quest – Problems with Diligent Search for Orphan Works

IIC The Impossible Quest - Problems with Diligent Search for Orphan Works Simone Schroff . Marcella Favale . Aura Bertoni Simone Schroff . Marcella Favale . Aura Bertoni 0 1 S. Schroff 0 1 Research Fellow IViR Amsterdam 0 1 Amsterdam 0 1 The Netherlands e-mail: 0 1 0 A. Bertoni Senior Research Fellow ASK Universita` Bocconi , Milan , Italy 1 M. Favale Senior Research Fellow CIPPM, Bournemouth University , Bournemouth , UK Digital technologies allow unprecedented preservation and sharing of world-wide cultural heritage. Public and private players are increasingly entering the scene with mass digitisation projects that will make this possible. In Europe, legislative action has been taken to allow cultural institutions to include in their online collections copyright works whose owners are either unknown or non-locatable (''orphan works''). However, according to the Orphan Works Directive, cultural institutions must attempt to locate the owner of a work before using it. This is the so-called ''diligent search'' requirement. This paper provides an empirical analysis of the conditions under which a diligent search can feasibly be carried out. The United Kingdom, the Netherlands, and Italy, all of which have implemented the Orphan Works Directive, have been selected as case studies. For each jurisdiction, this analysis determines what the requirements for a diligent search to locate copyright holders are, what the authoritative sources and databases to be consulted - are in practice and, most importantly, to what extent these are freely accessible online. In doing so, our analysis provides insights into the two main issues affecting cultural heritage institutions: (1) how much legal certainty does the implementation provide, and (2) what is the practical burden of a diligent search. The analysis reveals that the jurisdictions have given different meanings to the term ‘‘diligent’’. While the UK’s extensive guidance makes it unlikely that a search would not be deemed diligent, the search burden is onerous. On the other hand, Italy and especially the Netherlands have a lighter search burden, but in the absence of clear, definite guidance, the likelihood of accidental infringement by failing to meet the diligence standard is greater. In addition, all three jurisdictions have so far failed to take the accessibility of the sources into account, making the searches even more onerous than the numbers suggest at first sight. Therefore, it will be difficult for cultural institutions to clear the rights for their collections while fully complying with the requirements of the legislation. This article concludes that legislative action, official guidelines, or jurisprudence are needed to establish a different legal value of sources for a diligent search, with various degrees of optionality depending on data relevance and accessibility. Orphan Works Directive Mass digitisation Cultural 1 Introduction Europe has been working for decades to open up its invaluable cultural heritage to the world. One key component of this policy is promoting digital access to public collections in libraries, museums, and archives. The heart of this process is the Europeana project, ‘‘A European Digital Library for All’’.1 Europeana offers a common gateway to the digital collections of European cultural heritage institutions (CHIs). It was launched in 2008 and has since been supported by acts of the European Parliament, Council, and Commission.2 To make archival material available via Europeana though, CHIs have to comply with copyright law as no exceptions are provided for making archives available online. This means that CHIs have to get permission from the right holder before they provide online access to their archives. This poses severe issues in practice because a sizeable share of these materials is considered orphan, meaning that the right holders are unknown or not locatable. Licensing them as required by the law is therefore difficult – if not 1 The Europeana portal is available at: http://www.europeana.eu/portal/ (accessed 9 June 2016). It was conceived within the framework of the i2010 strategy of the Information Society and Media Directorate of the European Commission. The i2010 strategy for an innovative and inclusive European Information Society is available at: http://ec.europa.eu/information_society/doc/factsheets/035-i2010-en.pdf (accessed 14 June 2016). 2 For example, see the Recommendations by the Commission on Digitisation and Digital Preservation, OJEU L 283/39 (29 October 2011), available at: http://eur-lex.europa.eu/LexUriServ/LexUriServ.do?uri= OJ:L:2011:283:0039:0045:EN:PDF (accessed 9 June 2016). impossible. The result is that CHIs that make these works available face the threat of copyright infringement action. It is in this context that the Orphan Works Directive (OWD) was adopted in 2012.3 The OWD allows cultural heritage institutions to digitise and make available online these orphan works in their collect (...truncated)


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Simone Schroff, Marcella Favale, Aura Bertoni. The Impossible Quest – Problems with Diligent Search for Orphan Works, IIC - International Review of Intellectual Property and Competition Law, 2017, pp. 286-304, Volume 48, Issue 3, DOI: 10.1007/s40319-017-0568-z