When independent filmmaker John Smith decided to make a documentary about the history of jazz in New Orleans, Louisiana, he never anticipated that his inability to track down the creators of the songs in the documentary would hinder its publication. Because the creators had long since died, leaving no trace of any living relatives, John was unable to locate the identifying information of the current rightsholders. As a result, John faced a common, yet little-known dilemma in copyright law – either publish the documentary and risk being sued for copyright infringement by the true copyright owner or forgo publication entirely.

John’s Catch-22 is a prime example of the “orphan works” problem, which arises when users of copyrighted works – such as filmmakers, publishers, libraries, production companies, and individuals – are unable to locate the true owner of the work after a diligent search. Without absolute certainty that the copyright owner will not suddenly emerge and seek damages for copyright infringement, continued use of the work carries with it the possibility of an expensive lawsuit, unless an exception to copyright infringement – such as fair use – applies. When potential users of these works decide not to take this risk, countless works fall into what scholars call a “20^th-century digital black hole.” As a result, access to millions of works is severely limited, and any would-be socially beneficial uses of works never occur. Museums may hesitate to display certain literary works, filmmakers may steer clear of projects that incorporate videos of unknown origin, and publishers may avoid including valuable photographs in books.

 “Happy Birthday To You”

 On September 22, 2015, the lyrics to the most recognizable song in the English language – “Happy Birthday To You” – likely joined the ranks of millions of orphan works. Until recently, Warner/Chappell Music, Inc. and Summy-Birchard, Inc. (collectively, “Defendants”) purportedly owned a copyright in both the lyrics and the melody to the song and anyone who wanted to use the song in a movie, screenplay, or YouTube video, would need to pay thousands of dollars in licensing fees to Defendants. That is, until U.S. District Judge George H. King held that Defendants’ copyright claim to the centuries-old lyrics was invalid, ending in a big victory for two film production companies, an independent filmmaker and a musician (collectively, “Plaintiffs”), who brought suit three years ago challenging the validity of the song’s copyright.

The story goes like this: sisters Mildred and Patty Hill authored the “Happy Birthday To You” melody and lyrics in the late 19^th century. The sisters then transferred their rights to the melody of the song to Summy Company, which filed a copyright registration in 1935. Defendants acquired Summy Company in 1988, believing that they rightfully purchased all of the rights to both the melody and lyrics of the song.

This September, Judge King blew the lights out on Defendant’s cake. He held that Defendants only acquired the rights to the melody – which had long passed into the public domain. In the wake of the ruling, because the “Happy Birthday To You” lyrics had no readily ascertainable owner, commercial use of the lyrics remained risky. It was at least possible that an heir of the Hill sisters could come out of the woodwork claiming to be the rightful owner.  Indeed, that is what happened.

On November 9^th, the Association for Childhood Education International (“ACEI”), an association founded by Patty Hill, joined the lawsuit against Defendants, claiming that it inherited the copyright to the lyrics after one of the Hill sisters bequeathed the rights to ACEI when she died. In a surprising twist, in an order filed on December 8^th, Judge King vacated the trial set to begin on December 15^th because Warner/Chappell and ACEI agreed to settle the case. Although the terms of the settlement remain confidential, sources close to the parties indicate that the issue of ownership of the lyrics to the song has been resolved and no further appeals are expected. According to George Washington Law School Professor Robert Brauneis, if the parties did in fact agree to give up ownership claims to the lyrics, then the lyrics will finally fall into the public domain. Since the lyrics are presumably no longer under copyright, they also lose their status as orphan works.

Is a workable solution to the orphan works problem on the horizon?

 For the countless works that remain in the digital black hole, there is currently no pending legislation in Congress addressing the orphan works problem. However, there is hope on the horizon: the House Judiciary Committee on Courts, Intellectual Property, and the Internet (the “Committee”) is in the midst of an ongoing comprehensive review of U.S. Copyright law that aims to bring antiquated copyright law into the digital age. As part of its review, the Committee is seeking input from various stakeholders – from artists, musicians, and composers to large production companies – on proposed solutions to the orphan works problem. In fact, in June 2015, the U.S. Copyright Office weighed in on the significance of the problem in its “Orphan Works and Mass Digitization” report, even going so far as to propose draft legislation.

A successful solution to the orphan works problem will involve amending the U.S. Copyright Act to limit the liability of good faith users of copyrighted works who conducted a diligent search for the true owner to “reasonable compensation.” This approach was recommended by the U.S. Copyright Office in its June 2015 report, and comports with the primary objective of copyright law – “to promote the Progress of Science and the Useful Arts.” When damages for copyright infringement of orphan works are limited, people will be more likely to make dynamic and constructive use of copyrighted works. Importantly, such an approach balances the rights of copyright holders with those of innovators.

By Connie Boutsikaris, Esq.