The Privatization of the Orphan Works Issue Under the Google Book Search Settlement

Kate Lacey is a first year law student at Osgoode Hall taking the “Legal Values: Challenges in Intellectual Property” course.

As part of their settlement with the Authors Guild and the Association of American Publishers, Google has developed the Books Rights Registry, an apparently independent, non-profit entity designed to collect revenue from Google Book Search and distribute it amongst copyright holders. Google has been praised, or at least praises itself, for this part of the settlement because it gives copyright holders of out of print work a new source of revenue and it theoretically helps the orphan works problem by creating incentive for people to take control of their copyright. By figuring out a way to safely make use of orphaned works, Google is in some way succeeding where Orphan Works legislation has so far failed. However, orphaned works are public issue, as continued attempts to legislate it might indicate. By creating a private solution, the Book Rights Registry and the settlement agreement are illegitimately assuming a huge amount of control.

This settlement agreement presumes to find a satisfactory solution for not only the Authors Guild and the Association of American Publishers, but a massive number of unnamed litigants. The named plaintiffs, as James Grimmelman has argued, feel free to do this because many of the unnamed plaintiffs do not know they are involved and will never come forward. In Grimmelman’s estimation, this reduces the huge body of orphaned works to a “bargaining chip.” (Grimmelman, March 14, 2009, “Google and the Zombie Army of Orphans,” Not only does the number of involved parties in the settlement provide an indicator that the named party’s are exerting too much authority, but orphan works are, by nature, a public issue. Works that have fallen out of use because of unclear copyright are a problem because they are considered wasted and therefore disadvantageous to the public. The inclusion of orphan works in the scope of the settlement discussion was therefore, from its beginning, wholly inappropriate.

The Book Rights Registry also creates a compulsory licensing system as far as orphaned works are concerned. Though opt-out systems are contrary to the Berne Covention in the first place, this problem is amplified by the fact that the registry exists as a result of a settlement agreement. If unregistered copyrights are to be infringed upon, without any duty on the part of the user to search beyond the registry, a major infringement of intellectual property rights is created. Whether or not that infringement is justified as a means of preserving and engaging with the culture should be a decision for the legislature.

There are also important considerations in assessing the Book Rights Registry’s ongoing role as a copyright regulator. The benefits of clearly establishing copyrights are twofold: firstly, it allows others wishing to license and use the work to do so, and secondly, it allows work that is not under copyright to become part of the public domain. The Registry may serve a purpose in accomplishing the first goal, at least as far as Google is concerned, but the Registry has a major financial incentive not to facilitate entering lapsed copyrights into the public domain. Under s. 6.3 (a) of the settlement agreement, revenue from orphan works will be held by the Registry for five years at a time. After that time, the revenue will be distributed to the Book Rights Registry for operational costs, remaining costs will then be distributed to registered rights holders, then those remaining costs, if by some possibility there are any, will be distributed to charities. It is not exactly clear why other authors and publishers have more rights to orphaned works proceeds than anyone else. However, assuming they do, it seems problematic that the authors and publishers who initiated this debate to claim financial recourse from Google, should now be entrusted with a public service without financial motivations.

Something needs to be done with orphan works, but copyright infringement imposed by a private company, for the benefit of a private company, is not the answer.