we are trying to analyze the issue in the context of the Google Book Searchsettlement (GBS settlement),
by contrasting it with the author's experience ofthe debate in the French context.
Existing literature on orphan works raises two main issues:
how is it determined that a work is orphaned ?
how is exploitation of orphan works to be managed ?We will explore these issues, mainly in relation with the Berne Convention, hencealso the WIPO Treaty on Copyright and the TRIPS agreement that include thesubstantive provisions of the Berne Convention.
Then we extend the perspective ofthe discussion to other aspects of the GBS settlement agreement, and particularlyto the case of unregistered rights holders whose (non-orphan) works are includedwithout explicit consent. However, for simplicity, we will at first not take intoaccount the fact that the Berne Convention is not self-executing – it can beignored by the court – and we will come back to that point in the later sectionsof this analysis.
2.Asserting the orphan status of a work.
A work is said to be
when some of its rights holders cannot be identifiedor found, even after a diligent search, so that it is not possible to obtain alicense for exploiting any protected use of the work. The problem with thisdefinition is that it is negative: even though it may have been impossible tocontact the right owner up to now, at whatever cost, nothing proves that it willnot be possible tomorrow. One way to avoid the difficulty could be to requireregistration by the rights holders, so that they can be easily found. However,for reasons that are further explained below,
this is prevented by article 5(2)of the Berne Convention
that stipulates that “The enjoyment and the exercise ofthese rights shall not be subject to any formality.” Indeed, the existence oforphan works in the U.S.A. is often attributed to a large extent to the 1976changes in the U.S. copyright law, doing away with copyright registration, inorder to comply with the Berne Convention.
5Settlement Agreement, The Authors Guild, Inc., Association of American Publishers, Inc., et al.v. Google Inc.,, No. 1:2005cv08136 (S.D.N.Y. Oct. 28, 2008). [hereinafter “GBS settlement”]http://www.googlebooksettlement.com/intl/en/Settlement-Agreement.pdf 6Similar discussions also take place at the European level, and have led to conclusions that areconsiderably more open-ended than in the French case. See: Final Report on DigitalPreservation, Orphan Works, and Out-of-Print Works, High Level Expert Group CopyrightSubgroup, i2010: Digital Libraries, June 4, 2008.http://ec.europa.eu/information_society/activities/digital_libraries/doc/hleg/reports/copyright/copyright_subgroup_final_report_26508-clean171.pdf and other documents athttp://ec.europa.eu/information_society/activities/digital_libraries/experts/hleg/meetings/index _en.htm 7The TRIPS agreement does not include article 6bis of the Berne Convention on moral rights.8See page5and footnote21 below.
9http://www.wipo.int/treaties/en/ip/berne/trtdocs_wo001.html#P109_16834Actually, pursuant to article 5(3), a country can impose formalities for enjoying copyrights on awork only if it is the “
country of origin
” of the work. For the United States, in a nutshell, thisexcludes works first published in another country than the U.S.A., or simultaneously publishedin another country, when the U.S.A. have the longer term of protection. Canada is an exampleof such a country. Article 3(4) further specifies that “simultaneously” means within 30 days of the first publication. The notion is instantiated to the case of the United States in the definitionof a "
United States work
" in 17 U.S.C. § 101, which is specifically intended to keep formalitiesrequired by 17 U.S.C. § 411 whithin the limits allowed by the Berne Convention.http://www.copyright.gov/title17/92chap1.html#101 10Free the Orphans: A Look at the Case of Kahle v. Ashcroft, Richard Koman, May 06, 2004.
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