Free the Orphans: A Look at the Case of Kahle v. Ashcroft

by Richard Koman
Congress shall have the power ... to promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.
-- United States Constitution

Mike Perry, an editor for Seattle-based Inkling Books, wants to publish the writings of Dr. Leo Alexander. In Perry's view, Alexander, a Vienna-trained psychiatrist and Army officer who followed American troops into Germany in the final days of World War II, has a lot to tell us about the nature of evil. After the war, Alexander served as special medical advisor at the Nuremberg War Crime Tribunals, and after the trials, Alexander wrote a number of articles for professional journals about Nazism and particularly, the SS. Alexander described how the Nazis glorified death and how they justified their crimes.

Republishing these articles, Perry thinks, would make a particularly relevant book for today's readers. "In our current struggle with terrorism, we shouldn't just dismiss evil as the product of insanity or fanaticism. Understanding evil is the first step in countering it," Perry said in an email.

So Mike Perry contacted the journals, most of which are still in publication, and found out that in all cases Dr. Alexander had retained the copyright. If the magazines held the copyright, they surely would have given permission for their republication, probably at little or no cost. Perry couldn't ask Alexander himself, since he had died. And Perry has been unable to locate Alexander's heirs. End of the road.

Who's Got the Copyright?

Perry's attempt to publish Dr. Alexander ended in failure largely because of the difficulty in tracking down literary heirs, but since 1976 Congress has made it even more difficult for would-be users to identify who holds a copyright. Ever since the U.S. Constitution became the law of the land in 1789, copyright law had stated that authors and artists had to claim copyright by filing a claim with the Copyright Office. That gave you protection for a certain number of years (originally 14 years, extended many times over the decades). If you wanted to extend copyright past a relatively short initial term, you filed for an extension. This meant that the Copyright Office had to keep a registry of works in copyright and the names of the copyright holders.

Beginning in 1976, Congress dramatically changed the law. In an effort to comply with the Berne Convention, the international copyright agreement, the new (current) law did away with copyright registration, automatically granting copyright at the moment of creation. It set the term at lifetime of the author plus 50 years. It did away with the renewal requirement. And then, to put the icing on the cake, in 1992, Congress retroactively applied the elimination of the renewal requirement to all works first published during 1964 through 1977.

These changes to the copyright laws had an unintended consequence: they created a class of so-called "orphan works," works that would have gone out of copyright when their creators failed to renew a copyright claim under the old law, but which are now kept in prolonged copyright. (It's an irony of the law that term is defined by the "lifetime of the author," but that no registry of who the authors are or whether they are dead or alive is maintained.) And it is these works that are the focus of a new lawsuit, Kahle v. Ashcroft.

Orphan Works

Filed by two digital archivists, Brewster Kahle of the Internet Archive and Rick Prelinger of the Prelinger Archives (which are hosted on the Internet Archive), the suit seeks to show that the law creating orphan works is unconstitutional, according to Chris Sprigman, who serves as lead attorney on the case.

For orphan works, says Sprigman, "the removal of mandatory formalities (registration, notice, and renewal) and extension of copyright terms only burdens use, it does not benefit rights holders."

Mandatory formalities created a "filter of renewal," says Sprigman, through which works pass only if the copyright holder explicitly renews them. Historically, only 15 percent of works passed through this filter. But in the 1992 Copyright Renewal Act, the orphan works were automatically renewed.

"That's not the filter of renewal, that's renewal by fiat. The terms of those works was then extended again in 1998 in the Copyright Term Extension Act. That extension was different than any extension in the past because it happened without the renewal filter having separated the valuable copyrights from those that have stopped delivering returns to a creator," says Sprigman.

A Million 19th Century Books

Case in point, says Kahle, is the Million Book Project, a National Science Foundation-funded effort spearheaded by Raj Reddy, a computer science professor at Carnegie Mellon University. With cooperation from the governments of India and China, the Million Book Project scans public domain books, and the Internet Archive hosts the files. The goal is to digitize and put online 1 million books. Since the project deals with public domain materials, most of the books are very old.

"The question for the Million Book Project is, what we are allowed to make available? Under U.S. law, before 1964 it's not very hard to figure out which books are under copyright because there's a registration system," Kahle said.

"But then there are all the rest in this limbo period, the so-called orphan works. I can't tell you how many books are caught under this, but it's a huge number. They're not in print, not available commercially, but under copyright. ... I would conservatively estimate that more than 50 percent of the books from this period are in this state," Kahle added. (Sprigman puts the number at 85 percent, based on renewal rates under the old regime.)

"Unfortunately, these works are not few--there are millions of them," Kahle points out. "We would like it clarified that we can make out-of-print works available on the Internet; otherwise we live in a world of just very old works in the public domain and commercially available works. Everything in between effectively will be denied the next generation. ... We could lose the 20th century."

A visit to the Archive's web site reveals the truth of the situation--virtually all of the works online come from the 19th century and early 20th century; available works stop roughly in 1924.

The situation even has international development implications. When this writer visited the National Library of Uganda to implement the Uganda Digital Bookmobile, I found several fascinating, disintegrating first edition volumes by Stanley, Speke, and other British explorers, as well as books about colonialism and independence written by African scholars in the 1960s. The Ugandans could digitize the often-racist 19th century British works but not the much more relevant works by African scholars. What kind of digital record is this for Ugandan students?

Copyright Lasts Longer Than Film

For film the situation is a preservation crisis, says Rick Prelinger, who archives ephemeral film -- government films, commercials, social hygiene movies, etc., from the 1920s through the 1970s. "Copyright currently lasts longer than film," he says. If archivists can't preserve and digitize the hundreds of films from the 1960s and 1970s, they will literally disappear forever. The images will fade away, the physical films will disintegrate.

"We broke new ground by being able to put a great deal of our moving image heritage online with the Internet Archive. It's just a drop in the bucket but people have been given a huge amount of access," Prelinger says. "Probably between 1.5 and 2 million individual films have been downloaded and are out in the world now; people teach with them, people link out of syllabi to them. But the orphan films that are caught in this limbo ... we can't do anything with them. They are probably abandoned; they probably don't have any willing parent who wants to take care of them ... but we cannot assume the risk of doing preservation work or conservation work or preservation copying of any of those films and putting them online."

Notably, the 1964-77 period is a critical group of work for preservationists. "This is a period when people starting making color film that fades to pink. If you act fast enough you can stabilize that and make copies that are decent color. Right now we can't. ... All of the post-1963 material we have on the Archive, with a very few exceptions, is government material. There are literally hundreds of thousands of abandoned films from that period that we and others could make available."

And of course, it's today's digital and online capabilities that create a real opportunity to make use of these old works in ways that were never practical or even imagined back in 1976. "We now have a system that allows us to distribute creative work inexpensively and ubiquitously, so why not use it? We really feel strongly that there could be a great cultural efflorescence. Cultural and group identities of different generations would begin to make it out there on the Net. The books that are on the Net right now are very, very old and there isn't anything for younger people to point to and say that's my life, that's my culture."

What Kahle, Prelinger, and other digital archivists have done so far is just the tip of the iceberg. There has already been a great flowering of originality flowing from the ability to use and reuse public domain works in digital form and it is the massive expansion of their work, of the digital distribution of millions more books, movies, audio recordings, and web sites, that will truly transform our culture, and our ability to speak about our world. That right of speech is severely curtailed when the raw materials are limited to the period that ends in 1964.

Contours of Copyright

If you accept that damage has been done; that the law does not "promote progress"; that relevant artistic, literary, and multimedia works are prevented from being created; that huge swaths of our heritage are headed for oblivion ... even if you agree with all of that; there is still the question of how the case will fare in the courts.

Sprigman took pains to explain that the case is not Eldred revisited. That case challenged the right of Congress to extend copyright terms as they did in the 1998 ("Sonny Bono") Copyright Term Extension Act. In that case, Larry Lessig argued that allowing Congress to extend terms as it pleases violates the "limited term" clause of the Constitution. (See The Supreme Court didn't take to this argument, noting that they were loath to impinge on Congress' rights in this regard. The new case, Sprigman says, isn't about term extensions, it's about the shift from formal copyright registration to automatic, implicit copyright. Yet, this case builds on the Court's decision in Eldred.

"Think back to Eldred for a moment. There was something the Supreme Court said in Eldred that was very interesting. They said, we don't need to look very rigorously at the First Amendment consequences of term extensions just so long as Congress has not disturbed the traditional contours of copyright. The whole basis of the Eldred decision was, look, Congress has repeatedly extended the terms of copyright--this is nothing new, and so this term extension (the 1998 CTEA) does not disturb the traditional contours of copyright.

"Whatever you think of that," Sprigman continues, "I would make the following observation. Whenever Congress has extended copyright before, it only extended terms for works that have passed through the filter of renewal. For works that are renewed, it sends a signal that these works have enduring copyright value. If there's ever a time when extending terms of existing works makes sense, it would be for works that have successfully passed through the renewal filter. The term extension in the CTEA extended terms for works that had never passed through the filter of renewal. That was the first time that happened."

While the question of orphan works seems like it would be easy to resolve--it's hard to imagine the vested interests who would claim that those works should stay under copyright; after all, most of the copyright owners explicitly failed to renew those works--this suit does go further, much further. It attacks the legitimacy of the 1976 Act itself, a bedrock of modern copyright law.

Sprigman explains: "Congress' right to grant exclusive rights is premised on, we say, a requirement that it 'promote progress' in whatever system it enacts of copyright and patent. And we say that in moving from a traditional copyright system with a bunch of formalities, which focused copyright on works for which copyright could actually do some good, to an unfocused system of unconditional copyright where copyright is granted indiscriminately and automatically--in doing this, Congress has failed to promote progress. That shift does not promote progress.

"Copyright is a property rights regime just like any other property rights regime. For 186 years the rule was that if you wanted a property right for your intellectual creation you had to hold up your hand and say, 'I want this' and register to get it. Flip that regime to one where property automatically vests in you the minute you lift your pen from the cocktail napkin ... that's a very, very meaningful shift in the character of the copyright laws. And it's a shift that hasn't benefited anyone systematically and that has caused harm, real harm, and does not, on balance, promote progress."

As far as property rights go, the copyright laws make for a rather strange system. Like physical property rights, the law imposes harsh penalties for "trespass," notes Perry, but unlike real estate law, copyright law "does absolutely nothing to track down who owns the title to a piece of property. ... Land ownership records are carefully maintained by the state and when an owner dies ownership is legally transferred to someone else. That's why it's quite reasonable for the law to forbid me from using someone else's property without permission. This is not the case with copyright. The government owns few and often out-of-date records and yet acts as if the ownership were easily and unambiguously available."

So, what will the plaintiffs ask the courts to do? Overturn the 1976 Act? Put the U.S. out of compliance with the Berne Convention? Force Congress to reinstate the registration system, put orphan works in the public domain, and return copyright terms to their pre-1976 levels?

"There are many possibilities for a remedy," Sprigman says. "Pending in Congress is the Public Domain Enhancement Act, which would, at the end of a life-plus-50 term, impose a small renewal fee in order to provide a filter, thereby winnowing out some valuable copyrights and letting the rest move more quickly into the public domain. There's a change that could be quickly implemented that would help. Another change would be at the international level. We are signatories to the Berne Convention, which prohibits formalities. Perhaps we could propose to make some changes to the Berne Convention, which would allow us to reformalize our domestic copyright system." And Sprigman believes that, if necessary, we don't even need to change Berne: "We could reformalize purely at the domestic level if we do it correctly."

The Dispirit of '76

This seems like a big bill of goods--reforming the '76 Act--since in the oral arguments of Eldred, the Court seemed to say that looking at the 1998 CTEA would mean looking at the '76 law, which they clearly did not want to do. The impact on international treaties was one concern mentioned in the arguments. So, why would lower courts be willing to look at '76 now?

"It's true that the Court was reluctant--in the context of Eldred--to get into '76. But that context was interesting in that Eldred was looking narrowly at term extensions and I think that what the Court was responding to was the uncomfortable truth about '76. The 1976 Act changed the direction of U.S. copyright law. It really represents a break with the historical norms. To a certain extent we're going to have to look at the 76 Act and we're going to have to think hard about whether systemic change is necessary. We're hoping in this case not only to win our Constitutional claims but also to get people thinking about our copyright system in the last quarter century and to consider whether this system is a good system for the digital age."

Richard Koman is a freelancer writer and editor based in Sonoma County, California. He works on SiliconValleyWatcher, ZDNet blogs, and is a regular contributor to the O'Reilly Network.

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