Peter D James

Submission. A consultation on how to implement an extended general term of copyright protection in Canada.

Peter D James. Librarian emeritus. University of British Columbia.

Introduction:

This submission to a consultation on how to implement an extended general term of copyright protection in Canada, concentrates on the use of orphan works by non-commercial public bodies. Following discussion on the introduction of formalities and the public domain, it addresses orphan works regimes in other countries, the centrality of diligent search, the operation of the Unlocatable Copyright Owners regime in Canada and suggests some proposals that are offered in the hope of increasing use of the scheme by public bodies.

Term extension:

Canada's adoption of the extended term serves to adhere to the terms of the CUSMA/USMCA treaty, brings Canada into line with current international thinking on the appropriate term of protection, and benefits creators of works. By adopting the well-recognised term of life plus 70 years, Canada joins a progressive community of nations in protecting the works of creators.

Registration for last 20 years of term extension:

The re-introduction of formalities in Canadian copyright is an unnecessary step. Canadians can read, cite, or re-create works through the exceptions to infringement (fair dealing, re-production for private purposes, non-commercial user-generated content, education, library and archives exceptions etc) set out in Part III of the Copyright Act.^{Footnote 1} Should Canadians seek to re-issue copyrighted works, they can negotiate a reproduction agreement with the copyright owner or utilise various licensing schemes with collective societies. Finally, Canada has a regime, Unlocatable Copyright Owners (UCO), for making works available to the general public where a copyright holder cannot be identified or located.

A copyright registration requirement is termed a 'formality' and introducing one for the enhanced twenty-year period of protection, effectively nullifies the term extension. ^{Footnote 2} Article 5(2) of the Berne convention states the enjoyment of copyright shall not be subject to any formality and early revisions of the Berne Convention successively did away with such formalities.^{Footnote 3} As Sara Bannerman notes, the removal of formalities was the "most significant change from a Canadian perspective", including the end of "registration of a work in a central registrar." ^{Footnote 4}

Canada's re-adoption of registration will undermine its commitment to Berne and to the protection of creators' rights. Adoption will penalise small copyright owners and inheritors of ownership, who may lack knowledge of the requirement or the procedure for seeking to assert their rights, and so see them vanish. In short, promotion of registration should be seen for what it is: an attempt to prematurely strip away copyright protection, undermine the spirit of USMCA compliance, and thereby seek to exploit the 'released' works. ^{Footnote 5}

The public domain:

Some^{Footnote 6} advocating the introduction of registration for the final twenty years of protection, cite remarks by the former US Register of Copyrights, Maria Pallante, suggesting s similar requirement for the US Act.^{Footnote 7} Her thoughts were in part based on a US Copyright Office study of copyright renewals (1961) that stated only 7% of books copyrighted in the period 1932-1961 had their copyright renewed after the initial 28-year term, thereby throwing 93% of the books into the public domain. A CRMS group at University of Michigan recently raised doubts about this conclusion, and identify the number of PD works for the period as closer to 50%. It noted that much of the content collected by research libraries included works published outside the US and not registered in a timely manner: the works were subsequently returned to protection under US legislation, further confusing the true volume of PD works.^{Footnote 8}

Assumptions about the size of the public domain are not confined to a Library of Congress report or even to the United States. A Europeana study on copyright declarations for works housed in member institutions found a great discrepancy between the copyright status of the works and the copyright declarations. The review identified accurate rights statements only 62% of the time.^{Footnote 9} The assignment of copyright status by member institutions was problematic: the application of a Public Domain status was correct in only 50% of the cases.^{Footnote 10} When looking at a rights statement with a PDM statement, users are as likely to encounter an accurate rights statement as they are to encounter a possibly inaccurate rights statement. Because of Europeana's policy of promoting the possibility to reuse these results are especially alarming.^{Footnote 11} The authors identified a lack of training, misunderstanding of copyright and a need for periodic reviews of assigned statements to ensure compliance with copyright revisions key to resolving the problem.

Orphan works:

Some of the identified problems with Public Domain declarations could arise in a rush to identify and re- issue supposed 'orphan works'. At the centre of all orphan works regimes is a respect for the rights of copyright holders. All require a search for a copyright owner and upon discovery, a requirement to seek a use licence. The European Orphan Works Directive (EU OWD) is clear on this point: Article 5 of the Directive, 'End of Orphan status' states: Member States shall ensure that a rightsholder in a work or phonogram considered to be an orphan work has, at any time, the possibility of putting an end to the orphan work status in so far as his rights are concerned.^{Footnote 12}

A common element of the orphan works legislation is an exemption from copyright's remedies for public bodies in compliance with regulatory requirements. The various schemes' exceptions operate in different ways. The Canadian and UK^{Footnote 13} schemes provide a non-exclusive licence issued by a government agency upon approval of a vetted application from the user. The EU OWD scheme permits use upon completion of an uncontested diligent search and submission of documentation to the OW Database.^{Footnote 14} Proposed Australian^{Footnote 15} and US^{Footnote 16} schemes also permit use without need of a licence, but they require the public body engage a returned owner in licence negotiations or remove the content from the website.

Diligent search:

The standard search requirement in many jurisdictions is a 'diligent search'.^{Footnote 17} The diligent search concept is central to the orphan works regulation … the aim is to facilitate the process of rights clearance for European cultural institutions. … The conditions to designate a search as 'diligent' may take the form of extensive guidelines, listing specific sources that must be consulted for each work type; or Member States may have chosen to only provide for general categories of sources to be consulted.^{Footnote 18} The recently proposed US Orphan Works draft legislation sets out similar requirements and proposes that users should be ready to pay fees for subscription services that may be relevant to the search. In addition, the Register of Copyrights will be required to maintain an archive of Notices filed. ^{Footnote 19}

EnDOW is a project dedicated to facilitating diligent searches across the EU. It too produced guides and worksheets for OW applicants,^{Footnote 20} as well as a Manual for search strategies and checklists of relevant searches for the member states, which each establish criteria in their respective OW enabling legislation.^{Footnote 21} An EnDOW report identifies one of the major challenges in conducting the diligent search is access to the records of various collective societies, publishers and related bodies that can provide necessary evidence. ^{Footnote 22}

Registers and notice of use of orphan works:

The EU OWD,^{Footnote 23} established a centralised database for orphan works in the Union.^{Footnote 24} A 2013 British study of orphan works regulation in seven countries noted a variety of registration requirements. In Hungary and France a voluntary public online register for suspected orphan works is established. In Japan, some institutions have their own register of orphan works.^{Footnote 25} US proposals for orphan works see the creation of a registry in which Orphan works users have to file a Notice of Use to the Register, and the Register would make the archive accessible to the public. The Notice of Use would contain information about the author (if available), the user, and the uses of the work at hand. It also would include a summary of the diligent search conducted and the certification that the user performed a qualifying search in good faith.^{Footnote 26}Hungary requires that users publish use notices in newspapers as does India.^{Footnote 27} In Japan, a licence grant must be published in the Official Gazette. All the foregoing efforts seek to bring together users and owners to engage in a negotiation for a licence and preserve copyright's balance.

Unlocatable copyright owners (Canada)

The Copyright Board of Canada requires a reasonable search for the copyright owner. The Copyright Act does not define what constitutes a 'reasonable search'^{Footnote 28}, and this may be the greatest challenge to the success of applications. Guidance on searches provided by the Board is of a general nature:

The Board will only issue a licence if the applicant has done its best, in the circumstances, to find the copyright owner. Research must therefore be extensive. Applicants should appeal to collective societies as a starting point because they can grant licences for the work of members. The applicant can also use online search engines or search publishers, libraries, archives, universities, museums and ministries of education. If the copyright owner is deceased, the applicant must try to find out who inherited the copyright or who administers the estate.^{Footnote 29}

Unlocatable copyright owners – Uses

The Canadian Copyright Board has operated an orphan works regime for more than thirty years. It provides licences to commercial and non-commercial users of works where a copyright owner cannot be located. The licence is term limited and a returning owner is entitled to the licence fee, and a possibility that works can be removed during the five-year licence term.^{Footnote 30} A decade ago, DeBeer and Bouchard provided analysis showing half of formal applications were approved and only 1% were formally rejected. A number of applications were abandoned for a variety of reasons.^{Footnote 31} Their analysis shows that applications from public bodies (broadly defined) accounted for little more than 30% of total applicants. As most of these bodies would likely have a non-commercial purpose in seeking a licence, it is noteworthy that non-commercial licences were processed quicker than those for commercial uses. ^{Footnote 32}

A review of the Annual Reports of the Board, 2010-2011 to 2019-2020 reveals a slightly different picture from this earlier period. The Board received 280 applications, made decisions on 97 of them and issued licences to 71 (72%).^{Footnote 33} In some years there were very few licences granted: in 2015-16 only six of thirty- four applicants were granted a licence.^{Footnote 34} The Annual Report for the 2018-2019 reporting period reveals 31 applications with four issued licences and 7 denied licences.

The number of approved licences for this period (97) reveals that the Unlocatable Copyright Owners regime provides a legally-secure means for re-using material that is copyrighted for both commercial and non-commercial uses. At the same time, it needs to be said that approximately 62% of applications did not result in a Board decision.

Unlocatable copyright owners – non-commercial public bodies

The Board's Decisions for the period 2010-2020, show that public bodies, broadly defined, totaled 32 (35%) of the 97 Decisions with 24 being approved and 8 denied.^{Footnote 35} Of the 8 decisions denying a licence, 5 were determined to not meet the Act's section 2.2(1) definition of published works, 2 others were determined to be in the public domain and 1 licence was denied because a school board could rely on section 29.4.

A second concern about the regime is timeliness. Analysis of the 24 approved licences for public bodies in this period reveals that 10 were approved in the year submitted, 12 were approved within one year, and 2 approved in two years. In the latter two cases, the applicant sought multiple textual and visual works, including monographs, periodicals, posters and theatre bills.^{Footnote 36} Even the Athabasca University licence for massive runs of community newspapers took only one year to process.^{Footnote 37} These results suggest that public bodies with well-developed applications can turn around applications in a short time period.

Unlocatable copyright owners – public bodies' reluctance

The foregoing analysis of Board decisions reveals a level of success for public bodies in obtaining licences for re-use. Many Canadian LAMs have indicated an interest in digitising and making available works in their collections, as seen in submissions to the INDU consultation, but the data identifies that in the period 2016-2020 there were a total of 11 public body applications, and never more than four in any one year. What are the reasons for this reluctance to engage the scheme?

It cannot be due to difficulty in completing the application itself, which is a straightforward document.^{Footnote 38} The success rate for public body applicants is 66% with a relatively quick turn-around time. Further, it cannot be the licence fees charged by the Board, as these are so modest that they should not scare off an institution intent on making available content for research and scholarship.

Turning to the alternate possibilities, the paucity of decisions suggests that institutional users are either successful in locating copyright owners, or they are reluctant to undertake the necessary work to prove a negative (an unlocatable copyright owner). The search requirement is perhaps considered a burden to those hoping to digitise large collections of works and, of course, the search could lead to the identification of an owner and the resultant licencing activity. Perhaps the Board's guidance that the first step in a reasonable search is to engage with collective societies may discourage applicants at the start of process.

Reluctance to engage the regime can be teased out of the submissions and presentations by public body representatives to the INDU Parliamentary review of the Copyright Act. There was unanimity amongst these presenters and submitters that a new regime, offering solutions for the orphan works 'probIem', be instituted following consultations with stakeholders (only the Canadian Museum Association specifically acknowledged the matter as an important issue for both creators and users).

Susan Parker, University Librarian, University of British Columbia, at an INDU session in Vancouver claimed, we urge Parliament to … develop a means by which libraries and archives may empower researchers, educators, and the public to utilize and disseminate what are called orphan works. …Parliament has the power to create a system that ensures that Canadians can fairly and respectfully tap into a rich source of Canadian content.^{Footnote 39}At the same session, Christine Middlemass, speaking for the British Columbia Library Association, remarked: BCLA recommends that the Copyright Act be amended to clearly state that libraries, archives, and museums are only required to remove material if they infringe copyright when they had reasonable grounds for believing that their use of the copyrighted work was for a fair-dealing purpose. They should not be required to pay statutory damages. This change to the provision would protect Canadian educational institutions, libraries, archives, and museums, from being sued for digitizing orphan works in good faith.^{Footnote 40}

The Canadian Museum Association, citing the large volume of unpublished works in their members' collections, sought an alternative to the Board's process (We submit respectfully that the Canadian "solution" is not a model)and recommended: that a special study be conducted with all stakeholders on the various solutions adopted in different jurisdictions concerning Orphan Works, and to make recommendations for the best possible practice.^{Footnote 41} In its submission, the Canadian Council of Archives recommended that the federal government convene a working group of concerned stakeholders to further study and propose viable solutions to orphan works issues.^{Footnote 42}

None of these representations and submissions express support for the current regime. One possible task for the proposed working group could be to aid in establishing what constitutes a diligent search for use of a work, and the sources necessary to conduct it, as proposed in the Australian plan. Demanding reform of the Copyright Act's infringement remedies to insulate digitsing efforts by libraries when they had reasonable grounds for believing that their use of the copyrighted work was for a fair-dealing purpose and the activity was made in good faithspeaks to both a reluctance to engage with the UCO regime or seek a licence agreement with an owner.^{Footnote 43} The comment is perhaps better understood as supporting a more robust interpretation of fair dealing.

Perhaps, adopting a US response, these institutional users hope that an ever-expanding fair dealing doctrine will eventually morph into a fair use one, allowing them to engage in the transformative use chimera:^{Footnote 44} A recent CARL proposal in a 'best practices' publication^{Footnote 45} hints at such an outcome. This might do away with the requirement to conduct the diligent search for mass digitisation projects. The approach of using 'best practices' to circumvent the need for diligent searches, licences and other orphan works 'problems' shares the approach taken by Canadian educational institutions' application of fair dealing: both rely upon a self-referential interpretation of 'best' and 'fair' without need to engage the actual creators or owners of the works used.

Extended collective licensing

The possibility of this proposal being endorsed by public bodies is perhaps best answered with a short phrase: Access v. York. The clash between these two opponents over the past eight years reveals a chasm of mistrust that will require great effort to repair. A start on that job might be a more relaxed attitude on the part of collective societies to sharing information on members, works covered and related documentation and making it publicly available on their websites. At present, Access Copyright^{Footnote 46}, the Producer's Audiovisual Collective of Canada^{Footnote 47}, and Copibec,^{Footnote 48} have public online access to works that are identified as orphans and or to creators of such works.^{Footnote 49}

Proposals

Copyright board:

De Beer & Bouchard identified a legislative leeway in the Board's decision-making power,^{Footnote 50} and this should be retained. At the same time, it may be of some advantage to see the Board offer more support to applicants and future users, including published guidance on diligent search tools, transparency in application results, and information on the use of licence fees made by collective societies.

1. The Board should employ the term, 'diligent search'.^{Footnote 51} This would give some clarity to the legislation's 'reasonable effort' and other euphemisms like 'good faith', even where it cannot be fully defined. It will also focus the attention of users on necessary search activities when combined with the next point. Finally, it puts Canada in line with other nations' orphan works regimes.
2. The Board should consider more focussed educational and search tools like the search guidance offered by the UK scheme in which there is a defined body of sources for each category of work that can be employed in a diligent search. This could include: designated national union catalogues in North America (Voila, Library of Congress), OCLC, international databases (WATCH and VIAF for textual works) lists of collective societies, professional associations, publishers and similar bodies. This activity could be coordinated with public bodies in creating sector-specific lists of sources and 'real world' educational activities. As the US proposed legislation suggests, it may be that public bodies will need to pay for subscription services like Ancestry.com.
3. The Board should consider the implementation of a database that identifies prospective users of works, perhaps modelled on the US-proposed 'Notice of Use' database into which users submit notice and details of their intentions and possible uses of the work. This would facilitate copyright owners and collective societies contacting the prospective user and negotiating a licence.

   Additional information that could be included in the database: Has an owner been located? Has the Board requested more information/documentation on the application, or has it instructed the applicant to investigate more sources? Has the application been withdrawn? Reasons for withdrawal.

4. The Board should consider development of an Orphan Works registry, possibly replacing its current 'Decisions' section on the website. There would be some value in having public access to all submitted applications: For example, the UK Orphan Works registry does identify withdrawn applications.^{Footnote 52}

Public bodies:

Whether the current regime or a new scheme serves to make orphan works clearance an efficient means of making content available in digital format, public bodies are going to have to take a more active role in making the regime a success. One means of ensuring this is to provide direction, education and resources for all LAMs and other non-commercial public body users.

1. It seems apparent that at least some public body applicants are not successful in the application process. There is room for LAM member associations and public bodies to conduct an educational program on the UCO regime including topics such as best practices in preparing applications, identifying appropriate search tools and strategies and project planning. Some of this effort could possibly be undertaken conjunction with the Board. Recall that 25% of denied applications were public domain works and another did not appreciate the use of an educational exception.
2. It is obvious that many public bodies do not have the capacity to conduct the necessary diligent search. Public bodies, LAM organisations and interested parties should consider the development of a support body to aid these organisations, along the model of EnDOW.
3. Public bodies could partner with higher education institutions, especially those with iSchools and Library & Information Technology programs, etc., to train students in searching techniques and provide them with copyright clearance experience as part of 'professional experience' projects.
4. To encourage use of the UCO regime by public bodies (especially smaller operations), there should be access to existing or new funding avenues dedicated to making the nation's orphan heritage available on digital platforms.

Other considerations:

1. There should be no re-introduction of formalities. If the registration concept is to be entertained, it should be made more flexible and twinned with a publicly accessible, 'Notice to Use' submission from a potential user. Only when a notice is posted would a copyright holder have a grace period to consider and submit a registration, or let the user proceed. We should observe Ginsberg's thoughts on mass digitisation projects and their compatibility with the Berne three-step requirement.^{Footnote 53}
2. Currently the Board turns over licence fees to the collective societies to hold for returning copyright owners. When not claimed, the society may dispose of this amount as it sees fit for the general benefit of its members. This practice should be ended, and non-distributed royalties should be turned over to support the proposed orphan works educational and engagement activities mentioned above.

The present consultation process may be the best opportunity available to bring together non- commercial public bodies, collective societies and the Board in the construction of a workable orphan works process that is fair to all and a benefit to the public. I hope this submission makes a contribution to the consultation.

Peter D James
Librarian emeritus,
UBC Library
31 March, 2021.