12.62 The ALRC proposes that the Copyright Act be amended to provide that remedies for infringement be limited where an orphan work has been used and a ‘reasonably diligent search’ has been conducted and the rights holder has not been found. The ALRC considers that this approach will promote the use of orphan works to further education, research and access to cultural heritage, without taking away all the rights of rights holders to their works.
A reasonably diligent search
12.63 The first step in the ALRC’s model requires a user to conduct a reasonably diligent search for the copyright holder. There was universal support from stakeholders that a diligent search ought to be conducted. Requiring a ‘reasonably diligent search’ recognises the need to try and bring owners and users together to facilitate licensing of works.
12.64 Here, the ALRC’s approach differs somewhat to the US Copyright Office recommendations. In particular, the ALRC considers that there is a role for legislation to provide for a number of factors that may be considered in determining what constitutes a ‘reasonably diligent search’.
12.65 There was consensus among stakeholders that a diligent search should be conducted in order to locate the rights holder before any use of an orphan work. A number of stakeholders were against having any prescriptive definition of a diligent search in the Copyright Act. For example, the ADA and ALCC were wary of adopting an overly restrictive legislative definition and suggested that any criteria should be ‘flexible’ and ‘proportionate’, taking into account the diverse nature of the work, its age and any commercial value, in Australian cultural institutions.
12.66 The International Association of Scientific, Technical and Medical Publishers (STM Publishers) agreed that regulations should refrain from prescribing minimum search steps or information sources to be consulted. It suggested that only a flexible approach could cater for individual circumstances of each orphan work, as well as rapidly changing information sources and search techniques.
12.67 Similarly, Google warned against a legislative criterion that was ‘so high that small museums, artists or other actors cannot meet, or so vague that users can never achieve certainty that their search is over’.
12.68 A number of stakeholders suggested that industry guidelines could be developed to inform the concept of reasonably diligent search. SBS suggested that ‘what is a reasonable search in relation to one type of material will not necessarily be relevant and sufficient in relation to another’. Therefore, ‘reference to industry standards may alleviate concerns that may be specific to particular creative industries’. Professor Jock Given argued that standards should reflect the principle that ‘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’.
12.69 The person or entity conducting the diligent search might often be expected to keep records of the search. As Robert Xavier submitted, 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 Given suggested libraries could ‘include information about the copyright status of works in their catalogue records, including information about any diligent search already conducted’.
12.70 The question of who should perform the search was raised in a number of submissions. Wiley and Sons indicated that it would favour an authorised licensing body offering a service to conduct a diligent search on behalf of users:
This would facilitate generally understood industry norms in relation to diligent search. Users of such a service should be protected from legal action by a suitable indemnity from the authorised licensing body. To be useful, the search would need to be carried out efficiently within agreed timeframes.
12.71 The CSIRO agreed that having a central authority would benefit in ‘ensuring consistency and generation of records, but may not always be able to respond speedily to inquiries or carry out searches relevant to all jurisdictions where a prospective user may be exposed, potentially resulting in duplication’. It considered that a user should be entitled to conduct the diligent search and not be obliged to have a central authority conduct those searches.
12.72 Providing some certainty around the concept of a ‘reasonably diligent search’ may be important. However, search technology and the availability of databases and services that might be used to conduct a diligent search may change, perhaps rapidly. New industry practices and guidelines might also emerge.
12.73 In the ALRC’s view, the exact requirements of a diligent search should therefore not be set out in legislation. In fact, what amounts to a diligent search should change as technology, databases and services change. A reasonably diligent search in 2013 may not be sufficiently diligent in 2023. The ALRC therefore proposes that the Copyright Act provide for a number of factors that may be considered in determining whether a reasonably diligent search has been conducted.
12.74 Collecting societies or others may offer to perform diligent searches for a fee. That a reputable organisation confirmed in writing that it conducted a search and that the work appeared to be an orphan would no doubt be highly persuasive evidence that the work was in fact an orphan. However, the Copyright Act should not provide that only some organisations may perform such searches. Such monopolies may be less likely to be efficient and innovative.
12.75 The ALRC recognises that in some instances it may not be possible to do a ‘diligent search’. For example, in the context of a mass digitisation project where there may be thousands of orphan works covering a spectrum of different types of copyright material, it may not be possible or economically feasible to conduct such searches. In such cases—and if the mass digitisation project is not fair use—a user may prefer to obtain a licence for use of the work, rather than rely on a provision limiting the remedies available to the rights holder.
12.76 Collecting societies may need to be empowered to license orphan works in these circumstances. In Ch 11, the ALRC raises the possibility of voluntary extended collective licensing to cover mass digitisation, including of orphan works.
A copyright or orphan works register
12.77 One persuasive factor that might be considered when determining whether a reasonably diligent search was conducted may be whether or not the work in question appeared on a register of orphan works.
12.78 A number of stakeholders highlighted an important role for technology in facilitating diligent searches and improving ways in which owners and users can find each other. The Business and Software Alliance urged copyright industries to ‘develop and integrate databases of copyright information to suit the particular types of works and business models’.
12.79 Pearson Australia/Penguin highlighted that it had ‘contributed to voluntary schemes in many jurisdictions to facilitate diligent search’ and recognised that ‘the onus is on industry to do this’. The ABC agreed that a register of orphan works could help eliminate duplicate searches and create opportunities for owners of orphan works to identify themselves.
12.80 The collecting society APRA/AMCOS noted that orphan works are not a significant issue for owners of musical works, due to its comprehensive database:
APRA/AMCOS have online works search facility that allow any member of the public to search musical works by title. The search results show the works that have the relevant title, the authors of those works, and in many cases the artists associated with performing the works. AMCOS also offers a research facility whereby, for a small fee, AMCOS will provide author and publisher information in relation to specified musical works.
12.81 The Music Council of Australia suggested that a number of online systems, platforms and processes could be developed with the assistance of the Government, and that such a system could benefit both users and creators and ‘could enable the licensing of orphan works’.
12.82 A key recommendation of the Hargreaves Review was the establishment of a Digital Copyright Exchange that would allow users to quickly identify and license works, while also giving users increased options to license their works and defend against rogue ‘orphaning’ of works, through digital finger-printing.
12.83 Many submissions to the US Copyright Office’s current inquiry into orphan works also supported the creation of a voluntary copyright register. A register was said to be a crucial step in reducing the incidence of ‘abandoned’ as well as ‘kidnapped’ orphan works.
12.84 The ALRC considers that such registers could play an important role in informing a ‘reasonably diligent’ search criterion and help to prevent digital works from being orphaned.
12.85 A register that encourages copyright owners to identify their works and make themselves locatable is important in signalling that rights holders also bear some responsibility for solving the orphan works problem. In the ALRC’s view, the register should be voluntary, as any expanded requirement of formalities would likely violate the Berne Convention, which mandates that the exercise of copyright rights ‘shall not be subject to any formality’.
12.86 The ALRC proposes that in 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 go into the attribution.
12.87 A number of stakeholders argued that use of orphan works should recognise and respect moral rights, and require where possible attribution to the author and copyright owner. For example, STM Publishers argued ‘where a copyright notice is present in the orphan work, credit should be given to in a manner that reflects the notice’.
12.88 Others also suggested that guidelines may inform how a work should be used. For example, SBS submitted:
SBS would also support provisions referencing industry standards in relation to ‘good faith’ or ‘reasonable’ use. These could include the taking of steps to avoid moral rights infringements, as the SBS policy provides, or to put in place industry standard measures to prevent the unauthorised use of the material by third parties.
12.89 A number of stakeholders also highlighted the importance of attribution and moral rights of Indigenous material. For example, the Australia Council for the Arts argued that:
There have been instances where Non-Indigenous institutions such as galleries and museums classify unattributed material as ‘orphan’ when Indigenous people and communities are more than capable of identifying the material. Misuse and abuse of the material and its owners in these circumstances is likely to be extremely hurtful to the people concerned.
12.90 Similarly, Arts Law Centre of Australia was concerned that any orphan works scheme not become a ‘trojan horse’ for copyright infringement or cultural harm to Indigenous creators and peoples. Professor Kathy Bowrey argued that as part of a consideration of any orphan works scheme, ‘the constitution and funding of alternative dispute mechanisms to resolve the neighbouring issues around ownership of works needs to be considered’.
12.91 Users of orphan works should also have regard to any protocols relating to Indigenous material. For example, users might consult with relevant Indigenous groups before using an Indigenous orphan work.
Limitation on remedies
12.92 Where a user conducts a reasonably diligent search and then proceeds to use the work for commercial purposes, or profits from the use of the work, the ALRC considers that there should be some way for rights holders to be compensated when they are found. At the same time, limiting the remedies that would otherwise have been available for infringement recognises that the user, in good faith, has put time and effort into locating the owner but was unable to do so.
12.93 A number of stakeholders expressly supported a limitation on remedies approach to deal with orphan works, but did not express a view on the exact nature of the limitations.
12.94 Others suggested that a remedy should amount to reasonable compensation. For example, Google suggested:
If a rights holder later comes forward, there should be a way for them to be reasonably compensated, but not in way that kills good faith projects. No large scale projects will make the necessary investment in time and money if the whole endeavour can be shut down at any time if a rights holder later comes forward and demands punishing damages or an injunction.
12.95 STM Publishers submitted that a rights holder should be entitled to remuneration for previous use, being ‘a licence fee for the entire term of use as would have been negotiated by the parties prior to commencement of use’. If the parties could not negotiate a fee, such a fee could be set by the Copyright Review Tribunal.
12.96 Others argued that remedies should be limited to future profits, so as not to stifle mass digitisation projects. Wiley & Sons publishers agreed that a rights holder should be entitled to payment based upon a ‘reasonable commercial rate licence fee’ for any new uses, but ongoing previous uses should be allowed without authorisation. Similarly, SBS submitted that remedies around ‘account of profits’ should not be available where the use of the work is included in another work. In contrast, ARIA suggested that ‘the remedies of the author should be limited, excluding an account of profits or other reasonable compensation’.
12.97 In Australia, a court can provide for relief of copyright infringement through injunctive relief and either damages or an ‘account of profits’. A court can also award additional damages as it considers appropriate in the circumstances. The basic measure of damages is the loss of value of the copyright caused by the infringement. However, a court may consider other measures such as fair remuneration for use of the work, or loss of profits due to the infringer’s activities where appropriate. This suggests that there a number of ways in which remedies may be limited, including:
amending s 115(3) of 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;
limiting remedies in the same manner as recommended in the US Copyright Office’s 2006 report, for example, to ‘reasonable compensation’; 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.
12.98 The ALRC invites stakeholder discussion on how remedies should be limited for the use of orphan works, after a diligent search has been conducted.
Proposal 12–1 The fair use exception should be applied when determining whether a use of an ‘orphan work’ infringes copyright.
Proposal 12–2 The Copyright Act should be amended to limit the remedies available in an action for infringement of copyright, where it is established that, at the time of the infringement:
(a) a ‘reasonably diligent search’ for the rights holder had been conducted and the rights holder had not been found; and
(b) as far as reasonably possible, the work was clearly attributed to the author.
Proposal 12–3 The Copyright Act should provide that, in determining whether a ‘reasonably diligent search’ was conducted, regard may be had to, among other things:
(a) how and by whom the search was conducted;
(b) the search technologies, databases and registers available at the time; and
(c) any guidelines or industry practices about conducting diligent searches available at the time.
 This is consistent with the principle of acknowledging and respecting authorship and creation: Ch 2.
 John Wiley & Sons, Submission 239; Pearson Australia/Penguin, Submission 220; ADA and ALCC, Submission 213; ALPSP, Submission 199; J Given, Submission 185. Some stakeholders also referred to ‘reasonable efforts’. See, eg, Universities Australia, Submission 246.
 ADA and ALCC, Submission 213, noting, for example, that the requirement to conduct a diligent search for each individual item would stifle mass digitisation programs. See also Universities Australia, Submission 246, arguing that ‘procedural requirements … run the risk of imposing unreasonable burdens on institutional users who in any event can be relied upon to act in good faith’.
 IASTMP, Submission 200.
 Google, Submission 217.
 SBS, Submission 237.
 J Given, Submission 185.
 NSW Young Lawyers, Submission 195; J Given, Submission 185; R Xavier, Submission 146.
 R Xavier, Submission 146.
 J Given, Submission 185.
 John Wiley & Sons, Submission 239.
 CSIRO, Submission 242.
 BSA, Submission 248; PPCA, Submission 240 ‘it is too early to see what, if any, shape the UK digital exchange is likely to take. However, the commercial radio industry would be interested in any proposal that seek to simplify the ever more complex task of obtaining clearances for material used on a multitude of technological platforms; N Suzor, Submission 172 (DCE not intended to replace fair use, but complement it); Australian Copyright Council, Submission 219; Google, Submission 217; Art Gallery of New South Wales (AGNSW), Submission 111; Walker Books Australia, Submission 144 (digital copyright exchange before considering exceptions).
 BSA, Submission 248.
 Pearson Australia/Penguin, Submission 220.
 Australian Broadcasting Corporation, Submission 210.
 APRA/AMCOS, Submission 247.
 Music Council of Australia, Submission 269.
 I Hargreaves, Digital Opportunity: A Review of Intellectual Property and Growth (2011), 31.
 US Copyright Office, Comments on Orphan Works (2013) <www.copyright.gov/orphan/comments/
noi_10222012/> at 3 March 2013. See submissions from American Association of Law Libraries and others (#4); Microsoft Corporation (#66); Science Fiction and Fantasy Writers of America (#81), and Copyright Alliance (#28).
Berne Convention for the Protection of Literary and Artistic Works (Paris Act), opened for signature 24 July 1971,  ATS 5 (entered into force on 15 December 1972) art 5.
 United States Copyright Office, Report on Orphan Works (2006), 111.
 ARIA, Submission 241; ADA and ALCC, Submission 213; Australian Society of Archivists Inc, Submission 156.
 IASTMP, Submission 200.
 SBS, Submission 237. See also, Special Broadcasting Service, SBS Statement on Orphan Works [1.0 February 2011] <www.sbs.com.au/aboutus/corporate/view/id/541/h/SBS-Statement-on-Orphan-Works-1.0-February-2011> at 28 May 2012.
 Australia Council for the Arts, Submission 260.
 Arts Law Centre of Australia, Submission 171.
 K Bowrey, Submission 94.
 Australia Council for the Arts, Protocols for Producing Indigenous Australian Visual Arts (2nd ed, 2007), 19.
 BSA, Submission 248; ARIA, Submission 241; John Wiley & Sons, Submission 239; ADA and ALCC, Submission 213; Australian Broadcasting Corporation, Submission 210.
 Google, Submission 217.
 IASTMP, Submission 200. See also NSW Young Lawyers, Submission 195.
 CSIRO, Submission 242; ARIA, Submission 241.
 Google, Submission 217; R Xavier, Submission 146.
 Wiley also highlighted the possibility of a licensing body established to operate an orphan works licensing scheme.
 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 … an account of profits 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.
 ARIA, Submission 241.
Copyright Act 1968 (Cth) s 115(2).
 Ibid s 115(4).
 A Stewart, P Griffith and J Bannister, Intellectual Property in Australia (4th ed, 2010), 272–273.
 Australian 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.