The Challenge Of The Unlocatable Copyright Owner – The Return

by Dentons
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A few years back this blog published a couple of brief posts (The Challenge of the Unlocatable Copyright Owner; and The Challenge of the Unlocatable Copyright Owner – Now Empirically Verified) about the Copyright Board of Canada’s “unlocatable owner” licensing mechanism (sometimes referred to as the “orphan works” mechanism). In brief, the Copyright Board administers a licensing mechanism for use in those situations where someone desperately wants to make use of a copyrighted work but, despite their diligent efforts, has been unable to identify, locate or make contact with the relevant copyright owner; Section 77 of the Copyright Act (Canada) empowers the Board to issue non-exclusive licenses when an application is made to the Board. The Board itself has published a helpful guide to the process, and also makes available its written decisions where licenses have been granted and where the request for a license has been denied. In 2009, the Board released a study it had commissioned, written by Jeremy de Beer and Mario Bouchard, which provided some detailed empirical information about who submits applications and in what circumstances and the outcomes of those applications (Canada’s “Orphan Works” Regime: Unlocatable Copyright Owners and the Copyright Board).

I write about the unlocatable owner mechanism now because the issue has recently been revivified among Canadian copyright law as a result of the following posts, presented in chronological order, which those interested in the topic should read:

Finished reading them? Good. The posts do a fine job of setting out the various arguments in favour of and opposed to the unlocatable owners mechanism, and I’m not going to re-hash them here, since those arguments have been ably advanced by folks quite a bit smarter than me. Instead, I’d like to provide some additional colour to the discussion by describing in practical terms how, based on my experience with them as clients, some of the most likely users of the mechanism, producers of documentary films, view and have interacted with the mechanism.

Spoiler: producers are generally not aware of the mechanism and when asked if they would make use of it they express the view that it seems cumbersome and that they are unlikely to want to make use of it in a situation where they cannot locate the owner of a copyrighted work they want to make use of in their production. This observation seems borne out by the number of licenses issued by the Copyright Board: in the more than twenty years since the unlocatable owner mechanism was first implemented in 1990, less than three hundred licenses have been issued (with the Board only declining to issue a license in the case of eight applications).

In more than a decade of practicing entertainment law and advising film and TV documentary producers, I have never been involved with a project where the producer has made use of the unlocatable owners mechanism. A brief query of some of my colleagues in the offices next to me indicates that their story is similar – they also can’t recall being involved in any such license applications. In itself, that’s simply anecdotal evidence, and I can’t claim that I’ve worked on an inordinate number of documentaries  - but I’ve done my share, and I think it’s indicative of something that a significant subset of one of the largest groupings of entertainment lawyers in the country can’t recall ever dealing with the unlocatable owner mechanism. Why is that? Here are some thoughts:

  • Lack of Awareness. I would venture (again, based solely on anecdotal evidence), that a preponderance of producers are not aware that the Copyright Board’s unlocatable owner mechanism even exists. Certainly no producer I’ve ever spoken with has, unprompted, raised the mechanism to me. Production counsel I’ve spoken to are generally aware of the mechanism, but presumably through a lack of familiarity with it, concede that they rarely raise it with their clients as something which should be considered when they are having difficulty finding the owner or administrator of rights in a work.
  • Lack of Time. Given the realities of the schedules on which many audio-visual projects are created (schedules which are generally measured in weeks or months, with delivery deadlines looming in the face of an incredibly complicated set of tasks to be accomplished in a compressed period of time), the Copyright Board mechanism is viewed as taking too long to obtain a license. The production process does not involve a single activity which can be mapped linearly – rather, it involves a number of different activities occurring contemporaneously, just one strand of which is the “clearance” process for identifying the source of a work and trying to obtain permission for its inclusion in the project. By the time a producer is confident that an owner is unlocatable, the project is often so far advanced that the “orphaned” work has already been incorporated into the work (and it would cost time and money to remove the work from the project). As indicated by the de Beer/Bouchard report, in cases where a final decision was made by the Board in response to an application, about half of the applications took more than eight weeks for a decision to be made, and nearly a quarter of applications awaited a final decision more than sixteen weeks after application (see Figures 4-8 in the de Beer/Bouchard report). The prospect of waiting an average of two months for a decision is unpalatable for many producers, since it functionally means that there could be a significant delay in completion of the project, which would result in the producer breaching its delivery obligations under its distribution agreements.
  • License Deficiencies – Lack of Territorial Scope. The Copyright Board issues licenses which are territorially limited to Canada – it is a rare project which is intended solely for exploitation in Canada, and so producers might be reluctant to go through the licensing process only to be told that the license provides “protection” to them only for Canada, leaving them at least theoretically open to an infringement claim in other territories around the world. A worldwide license would be much more attractive to producers (though of course that would like be beyond the power of the Copyright Board to issue).
  • License Deficiencies – “Fiddlyness”. In general, the issuance of a license by the Board is not the end of the matter for a producer: where the license calls for the payment of a license fee to a collective, the license is often expressly conditional on the collective who is supposed to receive the fee filing a separate acknowledgement with the Board confirming that the collective will comply with the conditions of the license. So, possibly even more delays and uncertainty.
  • Risk Analysis – Practical. Some producers will take the view that if they’ve had trouble finding the owner, odds are that the owner (a) is no longer alive and the heirs are unlikely to care, (b) is alive but doesn’t particularly care about the work and/or (c) is alive but is unlikely to find out that their work was used without permission – so why bother getting a license from the Board?
  • Risk Analysis – Legal. In my experience it’s relatively rare for a proposed unlicensed use by a producer to be obviously and clearly an infringing use. In a large number of instances where an “orphaned” work is being contemplated for use, a cogent argument can be made that the proposed use either does not constitute a “substantial part” of a work or otherwise qualifies as fair dealing; and many producers, coupled with the “practical” risk analysis above, a “cogent argument” is enough for them to move forward with.
  • Most Copyright-Protected Works are Licensed or Otherwise “Cleared”. Bottom line: most producers never make use of the unlocatable owner mechanism because they never need to – they are able to find the owner of the work they want to use and obtain a license. Truly “orphan” works are, in my experience, relatively rare, and most often consist of photographs, a type of work whose use, to circle back to the prior bullet-point, can often be incorporated into a documentary in a way which satisfies the requirements of fair dealing (see, for example, the case of Fraser-Woodward Ltd v British Broadcasting Corporation Brighter Pictures Ltd [2005] EWHC 472 (Ch)).

In the end, the unlocatable owner mechanism is likely destined to be a rarely-used device  in the world of commercial documentary filmmaking for the reasons outlined above. The dynamics and pressures to which a producer is subject as a result of legal advice, errors and omissions (E&O) insurance clearance policies, production schedules, creative imperatives, reputational risk and legal liability mean that making use of truly “orphaned” works is often either going to be avoided or will be “swept under the rug” in the hopes of avoiding cost and delays.

On the same topic, I should highlight the Copyright Board’s decision in the Breakthrough Films application for an “unlocatable owner” license (Copyright Board file 2004-UO/TI-33), which illustrates some of the tensions outlined above. In the matter, Breakthrough sought a license for the use of eight excerpts from an autobiography, the excerpts to be used as off-screen narration in a documentary television series about the Second World War. The excerpts consisted of a total of 325 words from a 342-page book. Breakthrough applied for a license on October 26, 2004. The episode was first broadcast at some point in November or December 2004. The Board issued a license on May 10, 2005 (i.e., more than six months after the application was received, and more than four months after the episode had been broadcast). It took nearly another year (until March 2006) for the Board to issue its reasons for its decision. The Board was split, 3 members to 2, in favour of issuing a license to Breakthrough. To give an idea of how finely-calibrated these sorts of analyses can be, the Board split along two axes: the majority and minority not only disagreed on whether a “retroactive” license should be issued (the majority thought it should, the dissent thought it shouldn’t), they didn’t even agree on whether a license was required at all because they couldn’t agree on whether the amount copied (325 words from a 354-page book) constituted a “substantial part” of the original work. (Oddly enough, it was the dissenting decision, which otherwise adopted the harder line on copyright infringement and opposed granting a “retroactive” license, which thought that the amount copied was too small to amount to copyright infringement.)

 

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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