Subject to a limited number of statutory exceptions, copyright works may be used only with the consent of those who hold the rights in them. Yet in some instances, rights holders cannot be identified or traced, leaving these ‘orphan works’ unusable without significant risk.
But the UK government has recently taken steps to unlock the commercial value of these works. The Copyright and Rights in Performances (Licensing of Orphan Works) Regulations 2014 (the Regulations) implement a scheme which will allow the Intellectual Property Office (the IPO) to grant licences over these works, in the absence of the rights holders, upon application by prospective users.
The scheme also applies to performers’ rights, but in the interests of brevity this note discusses the scheme as applicable to orphan works.
Diligent search As a first step towards obtaining a licence under the scheme, the prospective user must conduct a ‘diligent search’ for the rights holder, unless a valid previous search has been made. Such searches must comprise a reasonable search of at least the following sources:
- The IPO’s orphan works register;
- The Office for Harmonization in the Internal Market’s (the OHIM) orphan works database; and
- Any relevant sources listed in Part 2 of Schedule ZA1 of the Copyright, Designs and Patents Act 1988, which includes for example, library catalogues, databases of identifiers such as ISBN and ISAN numbers, and the databases of relevant collection societies.
The IPO has issued guidance on conducting a diligent search in relation to different types of works, which recommend contacting the work’s creator in the first instance. If that fails to identify the rights holder and searches of the IPO register and OHIM database likewise fail to assist, the IPO guidance notes for the various types of work should be consulted in order to identify other potential sources of information.
The IPO will not license works where rights holders are identified and located but refuse to license their rights, or fail to respond.
If the rights holder cannot be identified, or if they are identified but cannot be located, the applicant should present the records and results of their search to the IPO as part of their application. The IPO will then judge the sufficiency of the diligent search and may reject the application if it considers that the search falls short of what is required. Searches that thoroughly consult multiple sources are more likely to be deemed acceptable. Furthermore, the IPO has the power to refuse applications if the proposed use is “not appropriate” or on “any other reasonable ground”, including whether or not the use “constitutes derogatory treatment”. An appeal process is provided for, should an applicant disagree with the IPO’s decision, and this process includes recourse to the Copyright Tribunal.
Orphan works licences Where an application is accepted, the IPO will be able to grant a licence that will be valid for seven years. Licences may be renewed at the end of the term, but applicants will need to conduct another diligent search at that time.
Orphan works licences granted by the IPO will be subject to certain limitations. The licences will be non-exclusive and the use will be limited to the exploitation of the work in the UK only; the system will not therefore assist where a user wishes to exploit the work more widely. Sub-licensing is prohibited. In addition, the applicant’s use of the work must respect the moral rights of the author. Furthermore, the IPO may also impose such conditions on the licence as it sees fit and may vary the terms of the licence during its term.
Fees All applicants will be required to pay an application fee and be responsible for all costs associated with conducting a diligent search.
Successful applicants will also pay an appropriate licence fee. This will be set by the IPO at a market rate depending upon the type of work, its intended use and the intended duration of that use. The IPO will hold these licence fees on behalf of the rights holder for a period of eight years, after which, if the holder has not been found, the money will be used to cover the IPO’s costs and the surplus may go to charitable causes.
Comment On its face, this new initiative appears to be an elegant method of upholding copyright principles while unlocking valuable content for commercial use. However, since orphan works licences obtained under the scheme will be for use in the UK only, this is bound to restrict its commercial application, at least until some far-off day when countries agree to some form of reciprocal recognition of licences granted under their respective schemes.
The application process is available for use now on the IPO’s website: https://www.gov.uk/apply-for-a-licence-to-use-an-orphan-work