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In my prior post on the fallout of the Orphan Works Act, I looked at
how history panned out for the Fair Use provisions of the Copyright Act as
a barometer for forecasting the future of the OWA, were it to pass. I felt
that this would calm the fears surrounding the bill, given that both Fair
Use and OWA shared similar objections (and rationale) from artists. I
concluded that, despite how the OWA may appear, it would pose no more of a
threat than Fair Use has, which has already been established to be benign
However, feedback from some people suggests that I was speaking too
abstractly. So, in this article, I want to speak more concretely and
address head-on the most fundamental concerns people have about OWA:
- that the bill is too vaguely worded to address the concerns
germane to parties on both side of the law that it is intended to protect;
- that it's too easy to establish a work as "orphaned";
establishing a work as an orphan makes it an easily defensible candidate
for infringing upon it;
- that the infringer would be exempt from
statutory damages, making them only liable for what the license fee would
have been for the use; and
- that the cost of pursuing infringers is
prohibitive for artists, making it a virtual free ticket to infringe.
To properly address these concerns, I will walk through three basic legal
principles and doctrines that will not only explain why the Orphan Works
Act is fine as it is, but how it can be argued in court.
I begin by addressing the first concern, that of the "vagueness" of the
OWA language, which brings us to the first legal principle:
"I know it When I See it"
Laws are written to serve two different interests at the same time: to
protect some, while not taking away rights or protections from others. The
Orphan Works Act cannot be worded more precisely than it is, or it risks
becoming less effective. Why? Primarily, because when laws are
written, there is a history behind it and cases that have come up that
lead to why the law was crafted. Judges that decide cases read and
learn what the intent is behind a given law, and then interpret the facts
and circumstances of any given case that comes before them. As this
happens, they get a gut feeling -- a "sense" -- for what's really going on
behind the rhetoric of the plaintiffs. This was the inspiration for the
phrase, "I know it when I see it," when Justice Potter Stewart, a 1964
supreme court justice, used it to express his feelings about the First
Amendment. Despite how short and vague it is, cases can still be decided
based on its spirit and intent. He wrote:
"I shall not
attempt to define the kinds of material ... embraced within that shorthand
description. But I know it when I see it..."
The people's interests are met when our courts have judges that rely on
their sense of "right and wrong" when deciding cases, and therefore, we
rely on judges to know when someone is trying to get away with something
when they see it... "facts notwithstanding."
The Law of Unintended Consequences The concerns of adding more
specificity to the OWA is found in the "law of unintended consequences."
By adding detailed language to include more parameters and restrictions,
you may inadvertently end up introducing loopholes that work more against
you than for you. This is so common that experienced lawmakers and lawyers
alike have learned that, when drafting contracts or legislation, their
best scenario is often found in the middle, where there's some ambiguity,
not heavy-handedness on one side or the other. This is not just for legal
advantage, but also political reality: ask too much, and the other side
But, there is a legal strategy too: the more precise the language, in some
cases, the easier it is for the other side to argue that their case lies
outside of those specifics. Here, "the other side" may not be "the
infringer," it could be you.
If you want the judge to consider whether your works were wrongly
infringed, it'll be much easier to appeal to his senses about it,
than to try to point to precise language that the other side could
potentially wiggle out of with crafty arguments.
It's understandable that people may still feel uncomfortable about
trusting judges to "know infringement when they see it." But, these are
the same fears and hand-wringing that artists had about Fair Use when it
was proposed. And yet, those fears never came to pass. Judges "knew Fair
Use when they saw it," and history has proven it: there haven't been that
many cases where infringers were able to get away with much. Similarly,
judges know the intent of the OWA and will rule accordingly.
Of course, one doesn't rely on this principle alone -- the others play a
major role in decisions -- but it's important to understand that judges
do know it when they see it, as will you, which is often the
compass by which you can navigate legal strategies by using the doctrines
In this next section, I want to present some examples that I'll be using
throughout the rest of this article.
- A filmmaker made a documentary film on the construction of the
Golden Gate Bridge, and he bought an old film reel from a flea market
because it contained footage of the bridge being built. He performed a
diligent search for the artist, but couldn't find him.
- An airline used a photo of a year 2000 celebration in Times Square
for the cover of an in-flight magazine. The photo was downloaded from
someone's Flickr page (whose owner said he wasn't the photographer and
doesn't remember where he got it). The airline performed a diligent
search, but did not find the owner.
- Someone found his parents wedding photos and wanted to make a new set
of prints for their 50th wedding anniversary, and also publish them in a
book that he dedicates to them. He has no idea who the photographer was,
despite having done a diligent search.
One of these examples illustrates a case that is clearly outside the scope
of the OWA's intentions. The other two are clearly within the intended use
of the OWA. Can you tell which they are? Of course you can, and so can
judges -- you know it when you see it. The question now is how to build a
"Unclean Hands" as a Judicial Factor
Before determining whether infringers are technically compliant with the
letter the law, the first thing judges look for are signs of intent
by the parties. Is someone acting in bad faith, or with "unclean hands?"
(Read the Wikipedia entry here.) This
is a basic legal doctrine that allows judges to rule against a plaintiff
or defendant, even if they are fully compliant with the letter of the
law. If the judge determines that they are acting unethically or in
bad faith, he can rule against them. Using the airline's in-flight
magazine as an example, the judge can clearly see that the intent of the
magazine is not within the spirit of the law, and can rule against them,
regardless of whether they've followed the eligibility requirements
spelled out in the OWA.
Almost every fear that artists have had about the OWA can be alleviated by
understanding the Unclean Hands doctrine. But, how do you establish that?
Answer: incrementally. It begins during the discovery phase of a trial,
where facts are gathered. Here, the judge is not just looking for whether
an infringer did a "diligent search," and can produce documentation that
shows he couldn't find the owner of a work. It starts with more basic
questions: How did the defendant get the image in the first place? For
what use? Why was the infringer searching for the work? What is it about
the infringed work makes it so important that other similar photos weren't
used instead? Was the defendant searching for (and using) many works
besides this one? What's the ultimate objective of the larger project that
the infringer was engaged in?
People have complained that the OWA is so vague because it says nothing
about "who" the user is, or parameters for "how" the image can be used in
order to be exempt from statutory damages. But with the Unclean Hands
doctrine, none of this matters. Indeed, if those parameters were spelled
out, it could actually compromise the effectiveness or persuasiveness of
Unclean Hands. Having the OWA remain vague and unspoken on "who" or "how,"
the judge has more latitude to explore the defendant's intentions. And if
he rules that the infringer was not acting in good faith, within the
spirit of the OWA, irrespective of whether they acted within the letter
of the law, the infringer can be liable for statutory damages.
The "Reasonable Inference" Rule
One of the other main concerns that artists have about the OWA is that
there are billions of images on the internet, and the vast majority of
them are not going to be in a searchable OWA database, let alone
registered with the Copyright Office. Artists have asserted that an
infringer could easily pick up one of these photos and genuinely attempt
to find the owner, knowing full well that the likelihood of doing so is
slim. The fear (and assertion) is that they have a free ticket to
Again, it isn't that simple. Judges and juries have latitude to determine
factual issues and to draw "reasonable inferences" from circumstantial
evidence. In the case, United States v. McCarrick, 294 F.3d 1286, 1293,
11th Cir. 2002, an inference is reasonable if it "flows from logical and
probabilistic reasoning." This may not necessarily imply bad faith by the
defense, but it certainly governs whether a judge would perceive an
infringer from failing to properly derive a reasonable inference from
these facts, thereby acting in a less "law-abiding manner" (which would
then make him ineligible for protection by the OWA).
In other words, the question is not whether the work can be proven to be
an orphan, but rather, whether there could be a reasonable inference that
the photo was likely to be an orphan. Judges have full latitude in
making this assessment, and ruling accordingly.
Using our example cases above, one could make a "reasonable inference"
that the old film reel is a viable candidate as an orphan work, whereas
the photo downloaded from the internet is otherwise: it's clearly current,
hence the copyright has not expired and the owner is not likely to have
abandoned it. The airline can produce all the "diligent search" records it
wants, but when it comes to the spirit of the OWA, the judge can apply the
"reasonable inference" rule: "there are other viable photos that are
similar enough that are available for license from the known copyright
holders; why did you choose this one?" The defense's answer must be
one that does not draw attention to the obvious and reasonable inference
that the reason that photo was chosen was because it was unlikely
that the owner would be found.
Finally, we get to the last of the most commonly cited criticisms of the
OWA: that copyright holders hold a disproportionate financial burden, not
just because it's costly to file claims, but because if the defense can
show "diligent search", they would be exempt from statutory damages, even
if they were to be found to infringe. This would make it financially
difficult to recuperate those expenses by the photographer.
By now, you should already understand that the infringer bears
considerably more risk than you may have originally thought, because of
the three legal doctrines discussed so far: "I know it when I see it,"
"Unclean Hands", and the "Reasonable Inference" rule. Therefore, it is a
misleading and erroneous assumption that artists bear undue burden.
Infringers risk is far higher because most any "credible" use of OWA will
be for cases like the documentary film, or the consumer printing old
wedding photos. Most any other infringement where the defense claims OWA
protection is more likely to lead judges to discern bad faith, and can
therefore reinstate statutory damages.
How much at stake? Under copyright law, statutory damages range from $750
to $30,000, and the amount is at the discretion of the judge. In fact, if
the judge considers an infringement to be "willful," which your lawyer can
try to persuade the judge to do, if any of the above doctrines are
satisfied, then he has the discretion to increase damages to $150,000. In
any case, the infringer also has to pay the legal fees of the copyright
How likely is this? Consider which is more likely: that the user will get
away with infringement because he can show "diligent search" under
questionable circumstances, facts, and conditions? Or that the copyright
holder convinces a judge that the infringer knew what he was doing, and
tried to intentionally hide behind the provisions of the OWA because it
seemed easy to comply with the provisions. Regardless of which you
think is more likely, the downside of the infringer being wrong will cause
him to think twice, if not decide against attempting the infringement
Even really bad, evil-doing, photographer-killing, rights-grabbing
baby-seal-bashing corporate weenies aren't that stupid. And if they are,
sue 'em. The argument that photographers won't be able to afford to
sue is nonsense. If someone's infringed on your work, and they're
claiming OWA protection, you'll know what to do because "you'll know it
when you see it." And a good lawyer will be able to easily make the case
to the infringer as well by merely uttering the phrases, "Unclean Hands"
and "Reasonable Inference." It won't even get to court; you'll end up with
a tidy settlement that will make the effort financially risk-free.
The spirit and intent of the Orphan Works Act is to permit the use of
photos by those who either have legitimate private uses, or can somehow be
used for public good, or should be made available to the public for
archival or research purposes, among many other benign reasons.
Unfortunately, because the scope of such uses are so broad and difficult
to define in legally binding language, the provisions of the eligibility
clause are vague.
But this does not affect people's understanding of it. And courts know it,
potential infringers know it, and now you know it.
My guess is that there would be so few attempts to infringe based on the
Orphan Works Act, that conflicts will rarely arise. Concerns that
infringers will feel "emboldened" by the OWA are unfounded. In fact, legal
reality poses a great disincentive for anyone to attempt to use a work,
orphaned or not, unless they can find the owner. And that fact
alone removes a great deal of the arguments against the bill.
In fact, I would go further: not only will no one will perform more
infringements because of OWA, but there could be potentially fewer overall
infringements and an increase in licensing for no other reason that
the OWA stipulates a searchable database, which users can use to find
copyright holders for content they want to license legitimately.
That database currently does not exist, and it won't unless OWA
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