13.64 While guidelines may provide some certainty, users relying on fair use may still run the risk of the use being judged not to be fair. There may also be instances where a user may determine that use of an orphan works is unlikely to be fair. The risk of damages or injunctive relief may therefore discourage users from making socially productive uses of orphan works.
13.65 To overcome this, the Copyright Act should be amended to provide for a limitation on remedies following a diligent search. This proposal received strong stakeholder support, with many suggesting that the approach adopted by the US Copyright Office be followed.
13.66 The ALRC also considers that limiting remedies will provide some measure of certainty to users beyond fair use. The importance of adequately compensating rights holders could be recognised, for example, if remedies were limited to ‘reasonable compensation’. The ALRC appreciates that, unlike the US, the Australian system does not have statutory damages. However, the Copyright Act does permit the award of additional damages that may deter users from using an orphan work.
13.67 The introduction of a limitation on remedies would not be new in Australian copyright law. Section 115(3) already provides that, in an action for infringement a plaintiff is not entitled to any damages, if it is established that ‘at the time of infringement, the defendant was not aware, and had no reasonable grounds for suspecting, the act constituting the infringement was an infringement of copyright’.
A reasonably diligent search
13.68 The first step in the ALRC’s model requires a user to conduct a reasonably diligent search for the copyright holder. This recognises that the optimal outcome is to bring owners and users together to facilitate licensing of works. As noted below, diligent search criteria may also encourage the development and use of technological tools such as registries and databases. These may have flow-on benefits of reducing the amount of orphan works and helping facilitate efficient licensing in the digital environment.
13.69 The person or entity conducting the diligent search would be expected to keep records of the search. Robert Xavier submitted that it is ‘reasonable to require records to be kept of attempts made to discover the holder of copyright before a work is treated as orphaned’. Professor Jock Given suggested libraries could ‘include information about the copyright status of works in their catalogue records, including information about any diligent search already conducted’.
13.70 Given that orphan works cover the spectrum of copyright material, each with different challenges in terms of locating a copyright owner, it would not be appropriate for legislation to set a standard for a reasonably diligent search for all or many of these circumstances. The ALRC expects that guidelines, protocols and search technologies will continue to evolve and change. What constitutes a ‘reasonably diligent search’ in 2013 may not be so in 2023.
13.71 Instead, the Copyright Act should provide for a number of factors that can guide users and courts to determine whether a reasonably diligent search was conducted on a case-by-case basis. These factors would be flexible, but precise enough to ensure that users consider the circumstances of the case and make use of the most appropriate technologies and tools available to search for the copyright holder. The balance of factors may mean that a reasonably diligent search will, as circumstances dictate, range from a limited search to an extraordinary one.
The nature of the copyright material
13.72 The nature of the copyright material—including the age, type of work and amount of identifying information are all relevant factors in what may constitute a diligent search. Stakeholders suggested that searches would almost certainly be fruitless in relation to certain types of material for which there is no identifying information. The age of a work may come into consideration as the identifying information may no longer be relevant. For example, the National Film and Sound Archive suggested in relation to Australian audiovisual material, that since the turn of the century Australian media production has been ‘characterised by short-lived companies, mergers, and takeover’, making it difficult to track down rights owners. Similarly, the CAARA suggested that the age of the material and the lack of clear transmission of ownership are particularly relevant to archival records. These factors may suggest that a limited search is appropriate in some circumstances.
13.73 On the other hand, a recent work would more likely contain identifying information, on the basis of which a user would be expected to conduct a more thorough search. Professor Jock Given submitted that the ‘effort required should be greater where the work is recent, or created for professional purposes or proposed to be used in ways that are hard to revoke’.
13.74 The US Copyright Office’s Report on Orphan Works suggested that, whether the use is commercial or non-commercial and how prominently the work figures in the activity of the user, should be a consideration. For example:
If a work is to play a prominent role in the user’s activity, then more effort to find the owner should be required. Similarly, more effort should be required where the use is commercial as opposed to non-commercial. Also, the more broadly the work is disseminated, the more effort to locate the owner should be required, even where the user is a non-commercial entity.
How and by whom the search was conducted
13.75 There seems no reason why collecting societies or others should not be able to perform diligent searches on behalf of a user. However, the Copyright Act should not provide that only some organisations may perform such searches, or that users are required to have their searches validated. Such monopolies are less likely to be efficient and innovative.
Guidelines, protocols databases and registers
13.76 Guidelines could direct users to publicly available registers and databases that they might be expected to consult in conducting a reasonably diligent search. Freely available registers and databases exist worldwide and they are becoming more prevalent and robust. SBS suggested that ‘reference to industry standards may alleviate concerns that may be specific to particular creative industries’.
13.77 Guidelines have already been developed in some sectors. For example, a position statement on orphan works by a consortium of international publishers outlines what they consider to be a diligent search for copyright owners in relation to scholarly material. The position paper suggests that if a user conducts a reasonably diligent search as outlined, the user will be entitled to a ‘safe harbour protection’. In Australia, National and State Libraries Australasia have produced a position statement on ‘reasonable search on orphan works’. Stakeholders expressed a willingness to cooperate and create such guidelines.
13.78 On a wider scale, the European Union’s Orphan Works Directive allows member states to determine the criteria for a diligent search, but suggests that it shall include at least ‘relevant sources listed in the Annex’. The Annex provides a list sources or different types of works that a user would be expected to consult in performing a diligent search.
13.79 Stakeholders suggested that when using orphan works, a user should, as far as possible attribute the work to the author. The primary reason for this requirement is to increase the likelihood that copyright owners will be alerted to the fact that their work is being used. A user who has conducted a reasonably diligent search would likely have developed material that could be used in the attribution. For example, the International Association of Scientific Technical and Medical Publishers argued that ‘where a copyright notice is present in the orphan work, credit should be given in a manner that reflects the notice’.
13.80 Attribution in the case of Indigenous material requires careful consideration. Stakeholders emphasised that users should also have regard to any protocols relating to Indigenous material. For example, consultations might be needed with relevant Indigenous groups before using an Indigenous orphan work, and consideration be given to whether attribution is possible or acceptable in the circumstances. As Professor Kathy Bowrey suggests:
Due to the circumstances of the making of the work copyright ownership in Indigenous knowledge is often vested in a third party. Copyright practices of attribution can, in such cases, involve what is from a cultural perspective, an act of wrongful attribution that causes serious cultural offence.
Options for limiting remedies
13.81 In the Discussion Paper, the ALRC invited stakeholder discussion on a number of possible avenues for limiting remedies including:
limiting remedies—for example, to ‘reasonable compensation’;
amending the Copyright Act to provide that, in an action for infringement, where it is established that a user has conducted a reasonably diligent search and the owner could not be found prior to the infringing use, the plaintiff is not entitled to any damages, but may be entitled to an ‘account of profits’ or injunctive relief;
providing that damages for the use of orphan works be capped; or
providing that a court, in exercising its discretion to award damages, consider that a reasonably diligent search has been conducted, and reduce the amount of damages accordingly.
13.82 A majority of stakeholders favoured structuring limits on remedies in a manner similar to that recommended by the US Copyright Office’s Report on Orphan Works. There was broad support for limiting remedies to a ‘reasonable licence fee’, ‘reasonable compensation’ or similar formulation. This was said to facilitate an efficient ‘market-oriented’ solution to the orphan works problem. Stakeholders therefore suggested that ‘reasonable compensation’ for non-commercial uses of an orphan work may attract zero or no royalty fees.
13.83 On the other hand, ‘reasonable compensation’ for commercial uses might equate to the price that would have been negotiated between the parties, or a reasonable market price. The University of Sydney suggested that copyright owners should be restricted from claiming damages, but could claim an account of profits which would be discounted for fair use.
13.84 The Australian Copyright Council considered that a limitation on remedies was not necessary because a competent lawyer could plead such matters ‘in mitigation under existing law’. However, the Law Council of Australia suggested that amendment is necessary because ‘it is unclear to what extent the courts are willing to adopt a reasonable royalty basis for assessing the amount of damages except in cases where the copyright owner has a practice of licensing’.
13.85 Some suggested that where an orphan work is used for non-commercial purposes and the user expeditiously ceases infringement after receiving a notice, there should be no compensation at all. Others suggested that remedies should only be limited to future profits, and that previous uses should be allowed without authorisation, so as not to stifle mass digitisation projects.
13.86 Stakeholders also suggested that some limitations on injunctive relief will be necessary. For example, SBS submitted that account of profits should not be available where the use of the work is included in another work. The Queensland Law Society argued that injunctions should not be available where that would unreasonably restrict use of a work that has commenced, particularly derivative works.
13.87 The ALRC recognises that it is important to get the balance right in terms of limiting the remedies available for infringement, and considers the model suggested by the US Copyright Office to be a good starting point. The Australian Government may wish to consult further with stakeholders on the appropriate form of limitation on remedies.
University of Sydney, Submission 815; ABC, Submission 775; CSIRO, Submission 774; Universities Australia, Submission 754; Internet Industry Association, Submission 744; Arts Law Centre of Australia, Submission 706; Pirate Party Australia, Submission 689; Association of American Publishers, Submission 611; Google, Submission 600; National & State Libraries Australasia, Submission 588; ADA and ALCC, Submission 586; Motion Picture Association of America Inc, Submission 573; SBS, Submission 556; Free TV Australia, Submission 270. The Australian Film/TV Bodies, Submission 739 did not oppose the ALRC’s proposals.
Copyright Act 1968 (Cth) s 115(4).
Ibid s 115(3).
IASTMP, Submission 200; NSW Young Lawyers, Submission 195; J Given, Submission 185; R Xavier, Submission 146.
R Xavier, Submission 146.
J Given, Submission 185.
For example, the National Archives of Australia suggested that a diligent search should not be required for a letter to government that is 50 years old and with no address for the author where it is reasonable to conclude that such a person would not be able to be located: National Archives of Australia, Submission 595. See also, NSW Government and Art Gallery of NSW, Submission 740.
NFSA, Submission 750.
CAARA, Submission 662.
J Given, Submission 185.
United States Copyright Office, Report on Orphan Works (2006), 107.
CSIRO, Submission 242.
See, eg, NFSA, Submission 750; CAMD, Submission 719; K Bowrey, Submission 554; Museum Victoria, Submission 522; SBS, Submission 237; J Given, Submission 185.
Examples pointed out by stakeholders include the Global Repertoire Database; ARROW (the Accessible Registries of Rights Information and Orphan Works); PLUS Registry and the Linked Content Coalition.
SBS, Submission 237.
International Association of Scientific Technical and Medical Publishers and others, Safe Harbour Provisions for the Use of Orphan Works for Scientific, Technical and Medical Literature (2013).
Ibid. The document states that where the publisher identifies the use of a work as an ‘orphan work’, the publisher agrees to waive, if a diligent search has been conducted, any claim or entitlement to all fees or damages, including statutory, punitive, exemplary or other special or general damages (other than a reasonable royalty).
National and State Libraries Australasia, Position Statement on Reasonable Search for Orphan Works (2011).
See, eg, NFSA, Submission 750; Pearson Australia/Penguin, Submission 220.
Directive 2012/28 of the European Parliament and of the Council of 25 October 2012 on Certain Permitted Uses of Orphan Works, art 3(2) and Annex.
The Annex provides guidance in relation to published books, newspapers, magazines, journals and periodicals; visual works; and audiovisual works and phonograms.
ARIA, Submission 241; ADA and ALCC, Submission 213; Australian Society of Archivists Inc, Submission 156.
United States Copyright Office, Report on Orphan Works (2006), 111.
IASTMP, Submission 200.
Australia Council for the Arts, Submission 860; Arts Law Centre of Australia, Submission 706.
Australia Council for the Arts, Protocols for Producing Indigenous Australian Visual Arts (2nd ed, 2007), 19.
K Bowrey, Submission 554.
Australian Government Attorney-General’s Department, Works of Untraceable Copyright Ownership—Orphan Works: Balancing the Rights of Owners with Access to Works (2012) suggests that ‘different uses could attract different licence fees or damages caps. For example, payment or damages limitations for non-commercial use could be set much lower (or waived altogether) than commercial use.
Stakeholders referred to a number of different formulations, including: ABC, Submission 775; CSIRO, Submission 774 (reasonable fee for future use); Intellectual Property Committee, Law Council of Australia, Submission 765 (reasonable royalty for the use in question); ARIA, Submission 731; Copyright Advisory Group—Schools, Submission 707 (fair remuneration); International Association of Scientific Technical and Medical Publishers, Submission 560 (licence fee for the entire term of use as would have been negotiated between the parties); National & State Libraries Australasia, Submission 588; ADA and ALCC, Submission 586.
Motion Picture Association of America Inc, Submission 573.
For example, the University of Sydney argued that attribution and take down if requested by the copyright holder is sufficient: University of Sydney, Submission 815.
See, eg, IASTMP, Submission 200; John Wiley & Sons, Submission 239.
University of Sydney, Submission 815.
Australian Copyright Council, Submission 654.
Intellectual Property Committee, Law Council of Australia, Submission 765.
CAMD, Submission 719 suggested that its members ‘have indicated a willingness to be involved in the development of an industry wide policy for take-down where copyright concerns are raised’. See also Arts Law Centre of Australia, Submission 706.
Google, Submission 217; R Xavier, Submission 146.
Queensland Law Society, Submission 644; Association of American Publishers Inc, Submission 611; Google, Submission 600.
SBS argued that an account of profits would almost never form part of a licensing negotiation with the rights holder in an underlying work or program and is therefore ‘an inappropriate and punitive remedy in relation to use of an orphan work in good faith in a new creative work’: SBS, Submission 237.
Queensland Law Society, Submission 644.