Please, sir, I want some more

Limitation on remedies for the use of orphan works

It has long been recognised that Australia’s prescriptive and limiting exceptions to copyright infringement make it difficult for researchers, educators and creators to utilise so-called ‘orphan works’ (copyright materials where the copyright owner cannot be identified or located). Such works often have significant cultural, social or educational value, but this value cannot be realised in modern creative or educational endeavours, because of a fear that doing so could potentially open the provider or user up to a claim for compensation or legal action for infringement.

The Bill proposes the addition of two new sections designed to limit the remedies relating to orphan works or ‘former’ orphan works, in the circumstances set out below.¹

First, it is proposed that a Court must not grant relief for infringement in circumstances where:

• a person does an act that is an infringement of copyright;
• a “reasonably diligent”² search for the copyright owner(s) was conducted within a reasonable period before the infringement occurred;
• the outcome of the search is that the identity(ies) of the owner(s) are unknown or the owner(s) whose identity(ies) are known cannot be contacted; and
• if the author of a copyright work is known, that author is identified, where reasonably practicable to do so.

Second, if the copyright owner comes forward or is identified following the use of a ‘former’ orphan work, another provision will allow the copyright owner to seek reasonable payment for ongoing use, as follows:

• if a person did a ‘past act’ which, at that time, was covered by the section described above, and at a later time the identity(ies) of the owner(s) become known and they can be contacted, then the person does a ‘current act’ that is an infringement of copyright; and
• the parties can agree on terms for carrying out that current act or, in the absence of agreement, the terms for doing so are fixed by the Copyright Tribunal³; then
• the Court must not grant relief for infringement, so long as the terms as agreed or fixed are complied with.

Some important points to note, according to the Discussion Paper that accompanied the Bill, are that:

• although the scheme is intended to cover commercial use as well as non-commercial use, a more extensive search may reasonably be expected where the use is commercial or where the copyright material is disseminated widely;
• the commencement of the scheme will be delayed for 12 months following the introduction of the new sections, to allow for the development of industry guidelines, adherence to which will form part of the assessment of whether a “reasonably diligent” search has been conducted; and
• statutory licences will not apply to the use of copyright material covered by this scheme, although there is an expectation that education and government sectors using the scheme will work with collecting societies to establish best practice for searching for copyright owners and identifying orphan works.

New fair dealing exception for non-commercial quotation

Unlike some other jurisdictions (such as the United States of America), Australia does not have a general ‘fair use’ defence or exception to copyright infringement. Instead, the current legislation includes a number of so-called ‘fair dealing’ exceptions including research and study, criticism or review, parody and satire, and reporting the news. To fall into one of these exceptions, the use must both be fair and be for the specified purpose, which has a number of significant practical limitations and which creates potential uncertainty for users.

Despite repeated calls by some for the piecemeal fair dealing approach to be done away with entirely in favour of a broader-based fair use defence, the Bill instead proposes the introduction of another ‘fair dealing’ exception. This proposed additional section would permit the “quotation” of copyright material by certain public bodies, organisations or individuals for non-commercial purposes or if it is of immaterial commercial value.

This section covers quotation in whole or part, and includes, non-exhaustively, quotation for the purposes of explanation, illustration, authority and homage.⁴

In order to fall within the scope of the proposed new exception, the following conditions must be satisfied:⁵

• the dealing must be “fair”;⁶
• the dealing must be done by:
  • a library or archives, educational institution, the Commonwealth or a State; or
  • by a person or organisation only for the purpose of research (which extends to making the research public through dissemination or publication);
• the quotation is either:
  • for a non-commercial purpose; or
  • for a commercial purpose, but is immaterial to the overall value of the product or service in relation to which it is used;
• the copyright material in question has already lawfully been made public; and
• the author (for copyright works) and the name or title of the copyright material are identified, where it is reasonably practicable to do so.

The Discussion Paper makes it clear that the new exception is intended to protect the rights of copyright owners through the inclusion of the requirements that the dealing be fair and that the quotation either be for a non-commercial purpose or immaterial to the overall value.⁷ It is primarily targeted towards protecting public institutions and researchers in circumstances where it is unclear whether the existing exceptions provide sufficient protection and where getting clearance for the use of quotes could be administratively burdensome and costly.

However, the protection of the ‘right of first publication’, which is generally reserved for the creator, does potentially limit the scope of this exception, given that as currently drafted, it will not apply to unpublished works. Practically speaking, this carve-out could affect large swathes of the materials held by national institutions and the need to differentiate between published and unpublished materials could create administrative burdens, which the exception is intended to reduce. This is an area on which the Government has sought further input from stakeholders, and so it may be the case that the publication requirement is ultimately removed or further qualified in order to address this potentially significant practical limitation.

Clarification of library and archives exceptions

The current exceptions relating to libraries, archives, galleries, museums and other key cultural institutions have not kept pace with the digital age, limiting the public’s ability to make use of the existing exceptions unless they are physically on site. This has the effect of disadvantaging certain groups, such as those living in remote locations, people with a disability and people affected by COVID-19 restrictions. A number of reforms are intended to simplify, consolidate and update the existing exceptions to increase flexibility and respond to the realities of the digital environment.

Most notably, the Bill includes broader exceptions for libraries and archives making material available online (whether at the premises or on the internet), designed to allow libraries and archives to offer what are effectively online browsing or borrowing services using digital technologies. The exceptions will apply in circumstances where:⁸

• the material was acquired in electronic form as part of their collection, and they take “reasonable steps”⁹ to ensure that a person who accesses it does not infringe copyright; or
• the material was acquired in hardcopy form, they undertake reasonable investigation to confirm that an electronic copy cannot be obtained “within a reasonable time at an ordinary commercial price”,¹⁰ and that they take “reasonable steps” to ensure that a person who accesses it does not infringe copyright.

In addition, the existing exception allowing for the supply of copies of copyright material upon request (which was previously limited to use for research and study purposes only) will now extend to “private and domestic use”,¹¹ and to all types of copyright material (including audio-visual and unpublished material).¹²

Key takeaways

Whilst some will find the proposed reforms less than satisfactory, they should be welcomed at least by those charged with administering or working within the current labyrinth of unnecessarily complex and overly restrictive exceptions for libraries, archives and similar institutions.

Further updates can be expected in the coming months, following the receipt of submissions in response to the draft Bill, and we will be following the implementation of the reforms closely at that time.