We’ve all been there. You’ve found the perfect photo . . . verse . . . song lyrics . . . vignette . . . you name it . . . to open your book or a chapter within it or to use within the text. Having labored long and hard to locate just the right thing, you are now certain that nothing else will serve as well. There’s only one problem. The material is not yours, and you can’t determine who owns the rights, or you know who owns them but you can’t figure out how to reach the owner, or the owner is dead or out of business or doesn’t answer.

What to Do?

First take account of two facts.

• You don’t need permission if the material you want to use comes from works no longer under copyright protection.
• Even for works still protected, various uses are defensible as a fair use; see Fair Use and Other Aspects of Coping with Copyright Law from the June 2011 Independent.

When seeking permission does seem necessary, the bad news is that you are likely to encounter obstacles, and the good news is that you can minimize your exposure to risk. Why do obstacles crop up so often? Largely because of “orphan” works.

The Problems

Copyright protection lasts for a very long time under current U.S. law—for the life of the author plus 70 years after the author’s death (or for 95–120 years for works made for hire). And although we have a national public registry for copyright claims, using it is not mandatory. So copyright protection for a work continues long after the original copyright owner has died (or if the owner is a company, perhaps long after that company has been dissolved or acquired), and the owners of older—but still protected—works may be hard if not impossible to find.

These older, still protected “orphan” works constitute a substantial body of content that is effectively kept out of productive use because of the risk, however small, of copyright infringement suits.

Although the orphan-works problem has long been recognized, it has not yet been resolved. In 2005, the Copyright Office undertook a study of it, issuing a 200-page report of its findings a year later. In short, the office concluded that the problem was real, was hard to quantify, and required a legislative solution.

Two years later, in 2008, legislation was introduced in the 110th Congress that would have sharply reduced the damages available for infringement of an orphan work, provided that the user had done a reasonably diligent search to find the copyright owner (in compliance with search best practices that were to be established by the Register of Copyrights) and provided that the user had included with the use an attribution to the owner when the owner could be identified.

After many years of work on this legislation, it proceeded to die a quiet death, mired behind the bailout legislation that preoccupied the country and the Congress.

The Copyright Office is looking at the problem again this year, but any solution is likely years away.

While the government was failing to solve orphan-works rights snafus, private enterprise—specifically Google—was undertaking a mass digitization project, reaching agreements with five major university and public libraries to scan the contents of upwards of 15 million books from their collections in order to make everything in all these books digitally searchable.

As you may remember, Google scanned these books without regard to whether they were still under copyright protection and without securing permission from the copyright owners of books that were still protected.

As you may also remember, Google was promptly challenged in two lawsuits, one initiated by several publishers and the other by a group of authors acting on behalf of a class of all similarly situated authors. The two suits resolved pretty quickly into a protracted settlement negotiation, and if the settlement had been approved by the federal court overseeing the two cases, we would have had a de facto scheme for dealing with a good share of the universe of book-form orphan works, albeit with Google alone at the controls.

Since the settlement was ultimately not approved, the litigation over this digital archive continues to this day, pursued by the authors and pursued also in a related action against the Hathi Trust, a consortium of universities that also manages access to a copy of the database of scanned books that Google created.

So both legislative and private solutions to the orphan-works problem have been thwarted to date.

And orphan works are hardly the only problem. Authors and publishers interested in using material from out-of-print works may find that a known publisher either doesn’t respond to requests for permission, or responds by disclaiming responsibility. Similarly, artists, authors, and executors may simply ignore repeated inquiries.

Practical Solutions

To minimize the risks if you decide to use protected material without permission, you need to build a record of diligence. This entails both diligent efforts to track down the owner of the work you’d like to use and a written record of those efforts.

The specific steps required for diligent efforts will vary from work to work. In general, you should consult the sources identified below.

The records of the U.S. Copyright Office are typically the place to start. Records for works registered or published since 1978 are available in an online database and searchable by, among other things, author, claimant, or title at copyright.gov. (The search program is not especially user-friendly, so while finding a direct hit will give you some comfort, not getting a relevant result may mean only that you didn’t find it, not that it isn’t there.)

To get records for older works, you will have to go to the Copyright Public Records Reading Room in Washington, DC, to check the Copyright Card Catalog, or pay the Copyright Office or a private search company to do that for you.

For more about determining the copyright status of any particular work, see Circular 22, “How to Investigate the Copyright Status of a Work,” available at copyright.gov.

Your next stop might be published indexes of published material relevant to the publication type and subject matter of the work you want to use. Think Books in Print (booksinprint.com), for example, or the Periodical Index (pio.chadwyck.co.uk/marketing.do), or any number of research tools available from ProQuest (proquest.com).

University and large public libraries may have their own indexes and catalogs of library holdings and collections that can provide information about the author or publisher of the work.

• If you have identified the original publisher of the work you wish to use but cannot locate the publisher now, it may be because the company was acquired or merged or dissolved and its assets were dispersed. Consider checking sources that identify changes in ownership of publishing houses and publications, including Literary Market Place for book publishers (literarymarketplace.com), the list of imprints available from the International Association of Scientific, Technical & Medical Publishers for scholarly journals (stm-assoc.org), and relevant country reprographic rights organizations (see a list at ifrro.org) for published works in general.
• If you have identified the author or creator of the work but cannot locate that person currently, try biographical resources for authors, such as the Gale Literary Index (galenet.com), and business or personal directories or search engines (including LinkedIn and Facebook).
• Consider searching for citations to the work you want to use. Perhaps recent relevant literature includes citations that other users or authors have updated. If you have a quote but are not sure where it came from, put a distinctive portion of it into a search engine, and it may take you to the original or other references to it.
• Nontext media present special challenges. If what you want to use is a photograph or a video or a sound recording, it may not have an unambiguous title you can search for, or an identified creator or owner. A digital file may provide some of this information in the metadata. But with just a photo print or a 70mm IMAX HD film or an audiocassette, even determining what to search for is a challenge.

Fortunately, digital search technology can help. If you have an image, but you don’t know where it came from, you can load the image itself into a search engine on Google Images (images.google.com) to search for other instances of that photo on the Internet, some of which may have author/owner information. Also, a Picture Licensing Universal System—the PLUS Registry—is in development at plusregistry.org. For music, the searchable licensing databases at ASCAP and BMI can help you locate the artist, music publisher, and record label for any given work.

Why to Write It All Down

The written record you create should include a log of every step you took and every source you consulted in your efforts to track down the authorship or ownership or copyright status of the work at issue, whether those efforts were successful or unsuccessful.

If you succeeded in identifying and locating an author or owner, and tried to make contact, keep a record of the date and substance of each of your requests for permission and every follow-up attempt.

If you receive no response from the rights holder and choose to accept the business risk of reproducing material without permission, your written record of the attempts to make contact will show a good-faith effort to obtain permission.

By itself, this will not absolve you of liability—you cannot shift the responsibility or burden to the copyright owner by saying that you will use the owner’s work unless the owner tells you otherwise. But there are few absolutes or bright lines when it comes to copyright matters. With much left to the judgment of the court or jury, a record of respectful requests and diligent follow-up coupled with a lack of any response can serve to reduce the size of any likely judgment and make a claim easier to settle.

The threshold question of the copyrightability of plaintiff’s work, the credibility assigned to any given copyright registration, the application of the four-factor test for fair use, the connection between profits and infringing conduct (and the proper allocation of profits), the amount of statutory damages within the statutory range, the award of attorneys’ fees (and how much of them, if any) to a successful plaintiff, and (going the other way) the potential for an award of fees to a successful defendant if the claims prove to have been objectively unreasonable—none of these questions lends itself to objective measure and confidence. Put yourself in a favorable light vis-à-vis the plaintiff, and you make your case that much easier to settle in your favor.

After-the-Fact Events

Sometimes the cost of clearing rights exceeds the likely cost of dealing with a claim after the fact. Of course, after you have used copyrighted material without permission, you will not be in a great bargaining position, and the cost will almost certainly be higher than if you had been able to negotiate a license fee when nonuse was still an option. But if you make a reasonable estimate of what permission for similar uses would likely cost, and if you set that amount aside in a reserve account for contingency claims, at least you won’t be surprised.

Your estimate in any given instance may turn out to be high or low, but overall you will have mitigated the consequences if a claim surfaces, and you will have a fund to use to satisfy them. Also, there is a three-year statute of limitations for copyright infringement claims, so after three years, your risk will have dissipated, and you may able to shift those reserves over into owner’s equity.

For those risks you cannot reserve against and for the peace of mind that lets you sleep at night, consider purchasing media perils insurance coverage. Both IBPA and the Authors Guild refer their members to publiability.com as one source of such coverage, with an application and enrollment process that you can complete online.

Summing Up

When typographers talk about orphans, they are generally referring disapprovingly to short lines of type at the bottom of a page. And when they talk about widows, they’re criticizing short lines at the top of a page. There is a mnemonic for keeping the two of them straight: “An orphan is left behind and a widow must go on alone.”

Don’t be a widow when it comes to orphan works. Until we have a legislative solution, use the tools available to track down the authors and owners of material you want to use; record your efforts to find them and to secure consent; and, if your efforts are unavailing but your editorial and business judgment tells you that the benefit from use outweighs the risk, reserve and insure for the occasional claim that might arise.

Steve Gillen is a lawyer and partner in the intellectual property firm of Wood Herron & Evans and has focused his practice on publishing and media matters for 30 years. He is a member of IBPA and a frequent contributor to the Independent. To learn more contact him at sgillen@whe-law.com or 513/241-2324, ext. 470.