You are on page 1of 7

JFP

Copyright, Rights

99 | 10.2018
Research, and Orphan
Works in the UK
Annabelle Shaw

Annabelle Shaw, FRSA, is Rights Database Manager for the British Film Institute where she leads on copyright, research, and licensing
aspects of the BFI’s mass digitisation programmes. Having a Postgraduate Diploma in UK, US and EU Copyright Law, she is a member of
the Libraries and Archive Copyright Alliance (LACA) and Film Archives UK (FAUK) Copyright Working Group.

This article is based on a presentation given at THERE IS NO ONE COPYRIGHT TO RULE THEM ALL 2
this year’s FIAF Winter School, “Programming
Film Heritage”. While the Berne Convention 3 underpins some
key principles and minimum requirements of
Researching rights for archive film is a disci- protection in most countries, the world can
pline worthy of its own handbook. It is a game be split into two categories of intellectual
of detection that requires a grounding in copy- property: droit d’auteur, or authors’ rights, in
right law, the expertise to extrapolate infor- civil law countries, and copyright, the right to
mation from a wide variety of sources, and im- copy, in common law countries. Very broadly,
agination to fill in the gaps and take a chance; the droit d’auteur regime attaches the right to
it is both methodical and messy. Rights re- the author of the work, while copyright places
search is, more often than not, carried out the emphasis more on owners who may be
reactively with looming deadlines; any effort different persons to authors. European Union
made towards best practice can be hampered (EU) member states’ laws have been changed
by some very muddy and fast-running wa- by a number of EU directives with the aim of
ters. The relatively recent implementation of harmonising certain areas of copyright law
the European Union’s Orphan Works Directive 1 to enable better functioning of the EU single
provides an opportunity to shine a light on market. 4 In practice, the differences between
this area of archival work for mass digitisa- countries’ laws, often originating from the
open forum

tion projects, in this case the BFI’s Unlocking principles and philosophies that underpinned
Film Heritage programme, and what impact the earliest legislation, 5 remain abstract in our
the formalised “diligent search” requirement
of the Directive has or has not had. 2. For a detailed exploration and study of film copyright
in the EU refer to Film Copyright in the European Union
by Pascal Kamina. Cambridge: Cambridge University Press
(Cambridge Intellectual Property and Information Law series),
2nd Edition, 2016 (originally published 2002).
3. <http://www.wipo.int/treaties/en/ip/berne>.
4. <https://ec.europa.eu/digital-single-market/en/
eu-copyright-legislation>.
5. US Constitution Copyright Clause <https://law.justia.com/
constitution/us/article-1/50-copyrights-and-patents.
html>; and see the UK’s first copyright act in 1710, <http://
1. Directive 2012/28/EU <http ://ec.europa.eu/internal_market/ www.copyrighthistory.org/cam/tools/request/showRecord.
copyright/orphan_works/index_en.htm>. php?id=record_uk_1710>.

51­
Annabelle Shaw gives her presentation at the FIAF/Cinémathèque française Winter School in March 2018.

day-to-day work, although still very relevant where films are usually “works made for hire”,
in legal decisions. A good example of how and the rights are vested with the producer.
these differences are still influential today is Civil law countries provide authorship for many
moral rights: civil law countries will provide contributors to the creation of a film, combined
for a number of moral rights including right with presumptions of transfer of rights to the
of authorship, right of integrity, right of first producer. In the UK, only the producer and prin-
disclosure of a work, and right of withdrawal. ciple director are provided authorship.
The UK has weaker moral rights for authors,
with no right of disclosure or withdrawal, and WHEN A FILM IS NOT A FILM
the duration of these rights is tied to the dura-
tion of copyright in the work, while in France, Copyright protection of films forms one of
for example, moral rights are perpetual. In the the most interesting and complex areas of
United States, moral rights do not exist save for United Kingdom copyright law. In the UK,
limited rights afforded to visual artists. The col- the treatment of films under copyright has
ourisation of John Huston’s The Asphalt Jungle changed throughout the twentieth century. 7
(1950) demonstrates the substantial differences A key date to note is 1 June 1957: under UK
in treatment of moral rights and authorship in law, there was no copyright in anything de-
the US and France. The Houston family went to fined as “film” made before that date. A film
court in France, after the broadcast of the col- made before 1 June 1957 is protected differ-
ourised film, and won the case to assert moral ently, depending on its nature, either as an
rights, winning damages for the infringement original dramatic work where the director is
of the film’s integrity.  6 Houston, as the director, considered to be the author and first owner
did not have such rights to exercise in the US of copyright, or as a series of photographs

6. Turner Entertainment Co. v. Huston, CA Versailles, civ. ch., 7. Copyright Act 1911, Copyright Act 1956, Copyright, Designs and
December 19, 1994. Patents Act 1988 (as amended).

52
forming part of a film where the producer The BFI’s Unlocking Film Heritage (UFH) 9
is generally considered the author and first programme (2012-2017) delivered a major

JFP
owner of copyright. Film as a recognised expansion of public, free-to-view access of
copyright subject matter was introduced British film heritage. The digitisation and ac-
under the 1956 Copyright Act, which came cess strand digitised over 10,000 films (half

99 | 10.2018
into force in 1957 (Chart 1). It is important to from the BFI and half from the UK’s national &
know how film works are treated under each regional film archives 10), making them avail-
law because the definition of the work in- able via the video-on-demand platform BFI
forms you who are the authors and owners of Player, and the in-venue viewing terminals in
the copyright; for films made between 1957- the BFI and the regional mediatheques. 11
1994 it was the producer; from 1994 onwards,
to align the UK with the authorial nature of The key components needed to undertake
film recognised in the civil law countries, mass rights clearance are:
both the producer and director are the au-
thors of a film. Similarly, the rules of duration • clear guidance on the copyright rules for
are made more complex because changes to authorship, ownership, and duration

Annabelle Shaw
the term of protection in each new copyright • ensuring a consistent approach, espe-
law do not ordinarily operate retrospectively: cially to determine what is in the public
knowledge of the law that applied when the domain
film was first created is often necessary. 8 The • having access to readily available rights
general position now is that the duration of information
copyright lasts for 70 years from the death • advance planning
of the last to die out of the “connected per-
sons”, i.e., the (principle) director, the author The approach for UFH rights clearance
of the screenplay, the author of the dialogue, started with an initial copyright status check

and Orphan Works in the UK


Copyright, Rights Research,
or the composer of original music commis- to determine if a film is:
sioned and used in the film (Chart 2).
• out of copyright
THE COPYRIGHT CHALLENGE FOR ARCHIVE • copyright or with rights owned by the
DIGITISATION PROJECTS BFI
• a Crown Copyright work (for which the
Archives find themselves in a strangely BFI has “delegated authority”)
unique place as both custodian of other • in copyright with a known rights holder
people’s copyright works and facilitator of • in copyright but with an unknown rights
public access to those works. Access is syn- holder (a potential “orphan work”)
onymous with copyright. There is not one
route to access that is not dependent on Each status determination was carried out
copyright in some way: through the under- using readily-available information held in
standing of the limits of copyright, i.e., when our Collections Information Database and our
copyright expires, understanding the excep- rights and royalties system. 12 With the out-of-
tions to copyright whereby archives benefit copyright, BFI-owned, and Crown Copyright
open forum

in their public missions to preserve and pro- titles making their way through the technical
vide some level of access to films, as well as
exceptions available to all, and, through the
mechanisms of copyright licensing that en- 9. <http://www.bfi.org.uk/britain-on-film/unlocking-film-
heritage>.
able wider access, the (re)creation of a po- 10. East Anglia Film Archive, Imperial War Museums, London’s
tential market, income generation, and re- Screen Archives, Media Archive of Central England, North
East Film Archive, Northern Ireland Screen, National Screen
coupment of archival investment. and Sound Archive of Wales, North West Film Archive, Screen
Archive South East, National Library of Scotland Moving Image
Archive, South West Film & Television Archive, and Yorkshire
Film Archive.
11. Section 6.3 of “BFI Unlocking Film Heritage 2013-2017,
8. <https://copyrightcortex.org/copyright-101/chapter-6>, and, for Digitisation Fund Guidelines for Applicants” (BFI, 2013).
other copyright duration tools, <http://outofcopyright.eu>, and 12. Media Maestro <https://www.vistex.com/product-suites/
http://librarycopyright.net/resources/digitalslider/index.html>. counterpoint-suite/media-maestro>.

53­
digitisation process, the focus turned to the lic access to a considerable part of Europe’s
third-party-owned titles in need of rights re- shared cultural heritage: the phenomenon of
search to identify and contact rights holders. the twentieth-century black hole. 14

Ultimately, the goal of rights research is In October 2014, UK copyright law was
to have a robust set of paperwork to defend amended to introduce the EU Directive
one’s right to publish a film. This should be Orphan Works exception. 15 This exception al-
a contract with a licensor who can warrant lows archives, libraries, and museums to dig-
they have the legal authority to enter into itise and publish their orphan works online,
the agreement, or, where obtaining a licence as long as a “diligent search”, which requires
proves impossible, a form of written permis- archives to consult with relevant sources,
sion. In every case, documenting all efforts is carried out to find the rights holders and
to ensure an audit trail is crucial, particularly the work is registered on the European Union
when the rights holder cannot be found, to Intellectual Property Office (EUIPO) Orphan
evidence “good faith” efforts. Works database.  16 The UK’s Intellectual
Property Office (IPO) has produced guidance
Each category of film requires a different and a checklist of required actions. 17
approach to rights research and clearance,
because each was made with different aims There is a certain irony that, in tackling the
in mind and is owned by a diverse range of lack of information that creates orphan works,
rights holders, from studios and distributors to the legal solution presented, in the form of
charities, political parties, brand owners, and the diligent search, has perhaps tripled the
filmmakers and their heirs. One size cannot fit research efforts required to find rights hold-
all, especially when dealing with rights holders ers. The challenge of the diligent search has
who are not in the film business and perhaps been investigated in depth and mapped out by
had no prior knowledge that they have any the EnDOW project (“Enhancing access to 20th
rights at all. In general, the less commercial- Century cultural heritage through Distributed
ly-exploited the film, the higher the costs (in Orphan Works clearance”) 18 to try and find
terms of staff time) of researching and clear- practical solutions, bringing together the col-
ing the rights. If it is not possible to find any lective knowledge of institutions and the pub-
existing rights holder for the film, one may lic to develop a crowdsourcing approach to the
also require consents from the rights holders diligent search.
of the underlying rights, i.e., the performers,
and any literary, musical, and artistic works The following are examples of diligent
incorporated in the film. searches the BFI carried out for UFH:

ORPHAN WORKS Cocaine (Graham Cutts, 1922):

Orphan works are those works still protected BFI’s Screenonline 19 told us that Graham
by copyright but for which the rights holders Cutts was a contemporary of Alfred Hitchcock.
are unknown or cannot be located. In 2009, it Ancestry 20 and IMDbPro 21 showed that Cutts
was estimated that, across the UK’s cultural had an actress daughter, Patricia. Wikipedia 22
and public-sector bodies, there were 50 million gave us information that she had been in the
orphan works. 13 The orphan-works problem is,
at heart, an informational problem: if there is 14. <https://pro.europeana.eu/post/the-missing-decades-the-
20th-century-black-hole-in-europeana>.
no information to tell you who owns the rights, 15. <http://ec.europa.eu/internal_market/copyright/orphan_
or you cannot find them, then you cannot ob- works/index_en.htm>.
16. <https://euipo.europa.eu/orphanworks>.
tain permission to make the work available. 17. <https://assets.publishing.service.gov.uk/government/
This is one problem that holds back wider pub- uploads/system/uploads/attachment_data/file/557126/
orphan-works-film-and-sound.pdf>.
18. <http://diligentsearch.eu>.
19. http://www.screenonline.org.uk.
20. https://www.ancestry.co.uk.
13. <https://www.jisc.ac.uk/podcasts/in-from-the-cold-a-report- 21. https://pro.imdb.com.
on-orphaned-works-08-jun-2009>. 22. <https://en.wikipedia.org/wiki/Patricia_Cutts>.

54
3rd
TOP LEVEL TOTAL ORPHAN RIGHTS RIGHTS
OUT OF © BFI © PARTY
OVERVIEW FILMS WORK REFUSED CLEARED

JFP
OWNED
FILMS (No) 5,168 2,962 456 273 1,503 51 1,111

• Films produced between 1895 and 2012 • 379 potential Orphan Works identified

99 | 10.2018
• 15% fiction; 85% non-fiction • 106 rights holders located
• 1,271 rights holders researched • 273 Orphan Work registered with EUIPO
• 499 contracts issued Orphan Works Database = 5% of BFI films
• 1 take down request selected.

Chart 3 : Unlocking Film Heritage Clearance Statistics

British soap opera Coronation Street before Adventures of Son of Exploding Sausage
her death in the 1970s. The Ancestry site re- (David Korr, 1969):
vealed that Patricia had left a son and three
grandchildren, and we found one of them On a general internet search, we found an

Annabelle Shaw
through her obituary in The Guardian newspa- email address for David Korr, but had no re-
per. Facebook enabled us to contact a grand- sponse; nor did we locate the film’s producer.
daughter who put us in touch with her father We searched our own databases and records
(Patricia Cutts’s son) and her estate, who gave as well as IMDbPro, Ancestry, British Academy
us permission. of Film and Television Arts (BAFTA), the British
Board of Film Classification (BBFC), Directors
Conclusion: rights holders found, rights UK, the Equity trade union, Companies House,
granted, film published. Wikipedia, and online fan-forum sites, but
could not find any leads. We had better results

and Orphan Works in the UK


Copyright, Rights Research,
Getting it Straight in Notting Hill Gate (Joe with the family members of the stars of the
Gannon, 1970): film, the Bonzo Dog Doo-Dah Band, who gave
us their blessing to publish.
Joe Gannon was Pink Floyd’s first lighting
designer. However, another Joe Gannon was Conclusion: registered as an orphan work, 24
stage lighting designer for Alice Cooper dur- film published. 25
ing the same period, and research initially led
us in the wrong direction. (The Alice Cooper In the course of UFH we identified around
Joe Gannon now owns restaurants in Hawaii.) 380 potential orphan works, and by carry-
We began again. A colleague recommended ing out diligent searches, were able to locate
contacting lighting designer Peter Wynne- rights holders for one third, while registering
Wilson, 23 who provided leads to other col- two-thirds as orphan works (Chart 3).
leagues in the industry, including Jeff Dexter,
programmer of the very first Glastonbury fes- Whether or not an organisation chooses to
tival, who was able to put us in touch with Joe, use the orphan-works exception, its introduc-
who had radically changed careers and is now tion provides an opportunity to reassess rights
open forum

a town official in Vermont. research as a discipline, and to ask questions


about how it is managed alongside other ar-
Conclusion: rights holders found, rights chival research work. What is the difference
granted, film published. between a diligent search, as a codified task,
and our existing rights-research practice? Can
the requirements of the diligent search, oner-
ous as they are, help us develop the discipline
further? The BFI’s experience is that, as much

24. <https://euipo.europa.eu/orphanworks/#viewOW/2616/work>.
25. <https://www.youtube.com/
23. <http://www.peterwynnewillson.com>. playlist?list=PLXvkgGofjDzh0Fg5odZ9LNFNtWFJwBbUw>.

55­
useful information can be found in sources not duration are critical. As there are so few short
listed in diligent-search guidance, this leaves cuts to be had in the handling of multilayered
the question of what is deemed an appropri- film rights, planning is crucial, while risk man-
ate source, and, ultimately, whether it is only agement cannot be ignored and needs to be
the archive that can pronounce on the rele- developed alongside rights-research check-
vance, or otherwise, of sources to interrogate. lists. Most of all, one should try to move away
from the reactive, deadline-driven hunt for
From the experience of carrying out rights rights holders by getting rights cleared early,
research and diligent searches in the context getting rights information earlier, and starting
of UFH, it is clear to me that clarification of, to plan at the earliest opportunity. It is never
and a consistent approach to all applicable too early to start talking about rights.
copyright rules on authorship, ownership, and

fr es

La mise en œuvre relativement récente de la Directive La implementación relativamente reciente de la “Direc-


relative aux œuvres orphelines de l’Union européenne nous tiva sobre obras huérfanas” de la Unión Europea brinda la
donne l’occasion de nous intéresser à la problématique oportunidad de arrojar luz sobre cuestiones relacionadas
de la recherche d’ayants droit dans le cadre de projets de con los derechos de autor en proyectos de digitalización
numérisation en masse, en l’occurrence le programme masiva (como el programa Unlocking Film Heritage del BFI)
Unlocking Film Heritage du BFI, et l’impact de l’exigence y sobre el impacto del requisito formal de “búsqueda dili-
formalisée de « recherche diligente » de la Directive. gente” que establece dicha directiva.

Les systèmes juridiques internationaux se divisent, Los sistemas jurídicos internacionales se dividen bási-
schématiquement entre le droit d’auteur, liant le droit à camente en droit d’auteur, que atribuyen los derechos al
l’auteur de l’œuvre, dans les pays de droit civil, et le copy- autor del trabajo en países de Derecho Civil, y copyright en
right, dans des pays de common law, qui accordent une los países de Derecho Común, que hacen más hincapié en
place centrale au propriétaire, qui peut ne pas être l’au- los propietarios, que pueden ser personas distintas de los
teur. On peut citer l’exemple de la famille de John Hous- autores. Un ejemplo fue el de la familia de John Houston,
ton, qui est allée devant un tribunal français (pays de droit que acudió a los tribunales en Francia (Derecho Civil) en
civil) plutôt qu’aux États-Unis (pays de common law) afin lugar de en los Estados Unidos (Derecho Común) para evi-
d’empêcher la colorisation de son film Quand la ville dort. tar la coloración de su película The Asphalt Jungle.

L’article décrit les initiatives prises par le British Film El artículo describe los pasos dados por el British Film
Institute au sujet des droits de plus de 10 000 titres dans le Institute (BFI) en relación con los derechos de más de
cadre de son projet de numérisation, Unlocking Film Heri- 10,000 títulos en el marco de su proyecto de digitalización
tage : une vérification du statut des droits d’auteur, afin Unlocking Film Heritage. Estos pasos incluían la verifica-
d’identifier les œuvres dont il détenait lui-même les droits, ción del estado de los derechos de autor, la identificación
celles qui n’étaient plus couvertes par le droit d’auteur, tanto del material sobre el que tenían derechos como del
relevant du droit d’auteur de la Couronne (autrement dit material no cubierto por copyright, los derechos de autor
du gouvernement), propriétés de tiers ou orphelines. Des de la Corona (Gobierno), las películas que eran propiedad
exemples de « recherches diligentes » sont également cités. de terceros y las obras huérfanas, ofreciendo ejemplos de
“búsquedas diligentes”.

56
Reproduced with permission of copyright owner. Further
reproduction prohibited without permission.