Orphans in Europe: can Member States still determine their own laws?

Europe is increasingly
united: so who exactly
can do what they want?

Last Sunday The 1709 Blog announced publication in the European Intellectual Property Review of Eleonora's new article [also available here] entitled "The orphan works provisions of the ERR Act: are they compatible with UK and EU laws?" [where 'ERR Act' stands for Enterprise and Regulatory Reform Act 2013, here]. As copyright-focused readers may recall, the ERR Act contains a number of copyright provisions, including one – Section 77(3) – which confers a new power [following introduction of new Section 116A into the Copyright and Designs Patents Act 1988 (CDPA)] on the Secretary of State to provide by regulations for the grant of licences in respect of orphan works. According to the indicative timetable issued by the UK Government, the regulations should come into force no later than October 2014, a bit less than a year from now.

Even the mere announcement of this article's publication on the 1709 Blog managed to attract, or provoke, quite a few comments from readers, thus proving how timely and controversial issues surrounding orphan works are. On this basis the IPKat and his friends on the 1709 Blog have decided to join forces and launch a poll asking readers the following question:

DOES THE ORPHAN WORKS DIRECTIVE LEAVE EU MEMBER STATES COMPLETELY FREE TO LEGISLATE AUTONOMOUSLY IN THE AREA OF ORPHAN WORKS?

The blog poll can be found at the top of the IPKat's very own sidebar, on the left-hand side of the screen. If you are already familiar with the issues and want to vote, you can do so straight away.  If however you'd like a bit of background to Eleonora's article and the issues it raises, read on ...

What's in the article? 

Eleonora's piece analyses the legislative framework for orphan works as resulting from the ERR Act and compares it with the recently-adopted Orphan Works Directive [which the UK must implement, along with all other EU Member States, by 29 October 2014]. 

While the actual shape of the future UK orphan works legislation has yet to be fully defined – either under the ERR Act or the Orphan Works Directive – Eleonora questions whether in principle the ERR Act is compatible with the CDPA, the InfoSoc Directive, the Charter of Fundamental Rights of the European Union and, unsurprisingly the Orphan Works Directive. 

This required consideration of the nature of the regimes embodied in the ERR Act [which purports to adopt a ‘licensing’ approach] and the Orphan Works Directive [which creates an exception to the rights of reproduction and making available to the public, under Articles 2 and 3 of the InfoSoc Directive, respectively], as well as the more general relationship between EU and national laws (in particular the principle of supremacy of EU law and the doctrine of EU preemption), so to establish whether, by adopting its orphan works provision in the ERR Act, the UK acted in breach of its obligations under EU law. 

It is Eleonora's position that the UK has rendered impossible any meaningful implementation of the Directive into its national law. As a matter of practice, there will be no significant advantages to claiming the benefit of the orphan works provisions under the Directive, rather than the parallel provisions under the ERR Act, at least for works that will be exploited within the UK territory.

We hear they've made a
movie about the Gowers
abd Hargreaves reviews

The article begins by discussing the history of the domestic orphan works legislation, tracing its origins back to the Gowers and Hargreaves Reviews. This history suggests that the UK regime is intended to work through licensing, and to be broad in scope. Eleonora then considers the Orphan Works Directive, emphasising that in many respects, it offers much narrower freedom to use orphan works than will be possible under the ERR Act. Looking next at the legal nature of the mechanism envisaged by the ERR Act, Eleonora questions its qualification as a licensing approach; her view is that the ERR Act has rather adopted an exception ‘in disguise’ which – as such – contravenes both the CDPA and the InfoSoc Directive, which may even deprive missing rightholders of their own intellectual property, contrary to Article 17 of the Charter of Fundamental Rights [for a recent application see the CJEU's decision in Case C-277-10 Luksan, discussed by this Kat here]. Next comes an assessment of the ERR Act against the Orphan Works Directive, examining the principle of supremacy of EU law and the doctrine of preemption, weighing up what the provisions in the Directive offer users over and above the rules under the ERR Act. 

So what's the bottom line? On the basis that the benefits of the Orphan Works Directive are at best marginal, Eleonora's article suggests that – even accepting the different legal methodology (licensing rather than exception) – there must be serious doubts about the legitimacy of the ERR Act's provisions under EU law.

What room is left for autonomous national initiatives in the area of orphan works?

Some of 1709 Blog's readers comments questioned Eleonora's conclusion that the Orphan Works Directive does not leave Member States free to legislate independently in the area of orphan works [this is also the position of UK Government and independent technical advisers to the UK Intellectual Property Office]. To determine what room is left for national initiatives in the area of orphan works, we have to refer to those recitals to and provisions in the Directive that are directly addressed at Member States.

Recitals: lots to sing about?

Recital 9 stresses the need for “a common approach to determining the orphan work status and the permitted uses of orphan works”. To this end Recital 20 and Article 6 require Member States to provide for a specific exception or limitation in addition to those provided in Article 5 of the InfoSoc Directive. Recital 4 clarifies that the Directive “is without prejudice to specific solutions in the Member States to address larger mass digitisation issues, such as in the case of ‘out-of-commerce’ works.” Recital 24 and, along the same lines, Article 1(5) states that the Directive does not interfere with any provisions concerning the management of rights at the national level, such as extended collective licensing, legal presumptions of representation or transfer, collective management or similar arrangements or a combination of them, including for mass digitisation. Finally, Article 7 provides that the Directive shall be without prejudice to provisions relating to, among other things, the law of contract.

So, says this Kat after taking a deep breath, while national initiatives concerning out-of-commerce works and the management of rights (including extended collective licensing) are expressly allowed under the Directive, Eleonora asks if the same conclusion may be also reached with regard to licensing mechanisms like that envisaged by Section 116A CDPA. 

This is because the UK orphan works scheme does not appear intended to facilitate mass digitisation initiatives. The orphan works scheme envisaged by Section 116A CDPA is in fact “about licensing of individual works”. 

What's more, while the Directive expressly permits national initiatives as regards extended collective licensing, it may not appear to do the same in relation to orphan works licensing schemes. Neither Recital 21 nor Article 7 in the Commission’s 2011 Proposal have been transposed into the final text of the Directive (Recital 21 would have allowed “Member States to permit the use of orphan works for purposes which go beyond the public interest missions of the organisations covered by this Directive.” Subject to a series of safeguards, Article 7 would have permitted Member States to authorise the beneficiaries of the proposed Directive to use an orphan work for purposes other than those relating to their public interest missions).

On rather a different note, the final text of the Directive acknowledges that diverging approaches to permitted uses of orphan works might hinder legal certainty in the internal market. This means that Member States are expected to adopt a specific exception or limitation to the rights of reproduction and making available to the public.

After reading the Directive, Eleonora found it hard to conclude that Recitals 4 and 24 and Article 1(5) were such as to allow Member States to legislate independently in the area of orphan works. She conceded that Article 7 could be interpreted as supporting national initiatives by means of licensing solutions, in that it provides that the Directive shall be without prejudice to national provisions concerning the law of contract. However, she doubts whether the ERR Act is really about a licensing mechanism. In addition, it seems more plausible that, in the context of the Directive, Article 7 freedom is to be seen mainly as relevant to the conclusion of public-private partnership agreements as per Article 6(4).

Let us know what you think!

What is your view? Do you think that the Orphan Works Directive leaves Member States completely free to legislate autonomously in the area of orphan works? Just hit your preferred button on the left hand side of the IPKat sidebar poll. You have until close of play on Sunday 15 December to let us know what you think.