New EU Directive on Orphan Works
Claire Davies, Tom Ohta
The new ‘Orphan Works Directive’ aims to provide for the digitisation and dissemination throughout the EU of so-called ‘orphan works’ such as books, art, audio recordings and films, where the copyright owners are unknown or untraceable. It is one of several EU initiatives relating to copyright, implemented as part of a broader policy objective of creating a digital single market. This article explores the likely impact of the Directive and the issue of commercial exploitation of orphan works.
Orphan works are works such as books, art, audio recordings and films that are protected by copyright but whose copyright owners are unknown or untraceable. As a result of the potential copyright infringement concerns in relation to making them publically available, many orphan works remain in storage in public institutions such as libraries. The so-called “Orphan Works Directive” (Directive 2012/28/EU) entered into force on 28 October 2012 and aims to facilitate the digitisation and dissemination throughout the EU of orphan works. Member States have until 29 October 2014 to incorporate its provisions into national law.
The Directive is broad in its application, including books, journals, newspapers, magazines or other writings, cinematographic or audiovisual works and phonograms. A notable exception is stand-alone photographs and other images.
The Directive applies to certain public institutions: publicly accessible libraries, educational establishments and museums, archives, film or audio heritage institutions and public-service broadcasting organisations (the “Beneficiaries”). The Beneficiaries may use orphan works without risking copyright infringement when pursuing aims related to their “public-interest missions”, particularly in the context of preserving, restoring and providing cultural and educational access to their collections. Beneficiaries are permitted to generate revenue by using orphan works, provided that it is for the exclusive purpose of covering their costs of digitising content and making them available online. The focus of the Directive on non-commercial use is further highlighted by its preclusion of a Beneficiary granting a commercial partner (in a public-private partnership contract) any rights to use, or control the use of, the orphan works.
By only applying to certain public institutions in pursuit of their public-interest missions, the Directive therefore leaves unresolved the question of lawful commercial use of orphan works. It is therefore noteworthy that the Enterprise and Regulatory Reform Bill (which, at the time of writing, has entered the Committee stage in the House of Lords having passed through the Commons) contains a clause which, if enacted, gives powers to Ministers to make regulations for the licensing of orphan works for commercial and non-commercial use. The proposed clause would in effect provide the ability to reform copyright law by regulation – and therefore without Parliamentary scrutiny. It will be interesting to see how this clause is addressed during the remaining passage of the Bill.
In order to be classified as an orphan work, a “diligent search” must be carried out in good faith by the Beneficiary or by other organisations (presumably at the Beneficiary’s behest) in the Member State where the work was first published or broadcast. The Directive requires that a diligent search is carried out “by consulting the appropriate sources for the category of works in question” which are listed in the Annex to the Directive (including the Accessible Registry of Rights Information and Orphan Works (ARROW)). Member States may also refer to the diligent search guidelines agreed in the context of the High Level Working Group on Digital Libraries, established as part of the i2010 digital library initiative.
Where a diligent search fails to establish the identity or location of any rightholder(s), the work will be recognised as an orphan work in all Member States. The central, publicly accessible database entrusted with collecting and maintaining records of diligent searches provided by the Member States is the Office for Harmonisation in the Internal Market (“OHIM”).
The Directive enables rightholders to put an end to the orphan status of their work, but makes clear that this is only in respect of rights that they hold. It will be interesting to see what mechanisms Member States introduce in this respect and the degree of evidence that will be required of rightholders to show chain of title.
Member States must also ensure that such rightholders are awarded “fair compensation” for the use that has been made of their work, with discretion afforded to the Member States as to how to determine the level of compensation payable. Differences between Member States in relation to the level of compensation could potentially lead to ‘forum shopping’, whereby parties choose to bring or defend claims in the jurisdiction most favourable to them.
Furthermore, where a work has been wrongly found to be an orphan work as a result of a search that was “not diligent”, remedies for copyright infringement remain available for rightholders under national law. As it is for each Member State to judge whether or not a search is “diligent”, there is potential scope for differences to emerge not only between Member States, but also within different categories of work.
 The British Library estimates that 40% of its collection are orphan works. Source: British Library Press and Policy Centre, Policy on Intellectual Property: http://pressandpolicy.bl.uk/content/default.aspx?NewsAreaID=316.
In recent years, the European Commission has encouraged initiatives designed to preserve and disseminate Europe's cultural heritage, including the digitisation of collections and archives in order to make them publicly accessible online. However, orphan works present a major obstacle to such efforts; authorisation must be obtained from rightholders prior to making copyright works available to the public, but this is not possible where the rightholders cannot be identified or located. The creation of a legal framework to “facilitate the cross-border digitisation and dissemination of orphan works within the single market” was one of the key actions identified in the Commission’s “Digital Agenda for Europe” in 2010 (part of its Europe 2020 Strategy). However, this failed to yield the results the Commission had hoped for. On 24 May 2011, it adopted a proposal to establish common rules on the digitisation and online display of orphan works and the Orphan Works Directive entered into force on 28 October 2012.
 Works and other protected subject-matter embedded or incorporated in, or which constitute an integral part of, the above are also included.
 However, the Directive contains a “review clause”, and the Commission will consider including these, along with other subject matter, within the scope of the Directive in the future.
 Accessed at: http://ec.europa.eu/information_society/activities/digital_libraries/doc/hleg/
 It is important to note that whilst there can be several rightholders in a particular work, if at least one rightholder has been identified and located, that work should not be considered an orphan work.