The courts and the orphan works

Digitizing the orphans

Sometime later this year or early next year, in two different courtrooms in the Federal Courthouse in Manhattan in New York, two cases will be decided that could greatly affect how easily and how readily researchers, including genealogists, can access books online — especially those books that fall into the category called “orphan works.”

Those are copyrighted works — books, plays, photos and the like — where the copyright owner can’t be identified or located.1 There’s been legislation pending for years to come up with a way to deal with the problems posed by orphan works, but the courts seems likely to have to deal with the issue first.

That’s because the Authors Guild is suing on behalf of all copyright holders to stop the digitization of works for eventual online access — including all those thousands, perhaps millions, of orphan works.

In one suit, the Guild is suing Google, digitizer of all those Google Books.2 And in the other, it’s suing HathiTrust, a consortium of university libraries that are using Google’s services and digitizing their book collections.3

In both cases, the Authors Guild alleges that the copyrights of authors are being violated by digitizing the works regardless of the use that’s made of the digitized copies thereafter. That the mere scanning of the works and their storage digitally is a copyright violation. And, of course, that any distribution of the copies on the internet is the worst part of the whole deal.

There are a number of problems with the Authors Guild allegations in both of these cases. First, of course, the simple fact is that some of the books being digitized are out of copyright. Although all works published in the United States before 1923 are out of copyright, a large number of books published after 1923 are out of copyright as well.

That’s because some of them were never marked with a copyright notice when such a notice was required, or never registered with the U.S. Copyright Office when that was required, or a copyright wasn’t renewed when renewal was required. There are a number of reasons why a copyright could have expired.

Any work that’s out of copyright can be copied and redistributed. Period. That’s the law, here in the U.S. and around the world. It doesn’t matter if it’s reprinted in hard copy or published on the internet. If it’s out of copyright, it’s fair game.

HathiTrust in particular is carefully checking every book’s copyright status and has discovered that a large number of the works it had segregated as copyright-protected are no longer protected.

Second, one of the reasons for the digitization projects undertaken by Hathi Trust is the preservation of volumes that are otherwise simply not replaceable. They’re out of print and they’re unlikely ever to be reprinted. We’re not talking about print-on-demand products here. We’re talking about books that were typeset years, perhaps decades ago, and there’s not enough demand for a new edition ever to be printed again. It’s hard not to see preservation as a fair use.

Third, a good many of the authors whose works are being digitized simply don’t care if Google or HathiTrust makes copies, and a good many of those don’t care if the works are made available on the internet, either to groups of researchers associated with a particular college library or even to the general public. And for those works, where the authors aren’t complaining, why is digitization a problem at all?

But the big problem here is that a good many of the works being digitized are orphan works — still in copyright, yes, but with the owner of the copyright or his or her whereabouts unknown today.

Here’s an example. On 29 June 1936, my father’s cousin Alfred Benschura received a copyright for a two-act play titled Blessings of the Gods.4 There’s no indication it was ever published, so it would remain in copyright until the year 2030 — 70 years after Alfred’s death in 1960.5

Unless I’m very much mistaken, my brothers and sisters and I are Alfred’s heirs — his closest surviving relatives — so we now own that copyright. Without the services of a diligent genealogist, nobody interested in that play would have been able to identify us as Alfred’s heirs. And I’d be willing to bet my entire 17-cents life savings that not one of us would mind if Google and HathiTrust digitized it and featured it in their collections.

We wouldn’t even have known about it if I hadn’t been trying to chase down whatever happened to Alfred’s younger brother Willy6 and gone off searching for any reference to any human being on the face of the earth by the name of Benschura.

Another example is a family history self-published in 1972 by a distant cousin in my Baker line. It’s out of print, the cousin has long since passed on, I have no idea where his only son is located today, and I can’t imagine for one moment that that son or any grandchild or great grandchild would mind one bit if that book was digitized and made available.

But the Authors Guild minds. It doesn’t want Alfred’s play or cousin Elma’s book digitized and certainly doesn’t want them put on the internet simply because they’re copyrighted. The fact that there doesn’t seem to be a particular copyright holder who shares that concern is getting lost here.

Where these cases will end up is anybody’s guess. A settlement was reached once in the Google case but was scuttled by the judge assigned to that case. (A different judge is assigned to the HathiTrust case.) And Congress seems totally disinclined to address any of these issues, least of all the issues posed by orphan works.

Those of us who have welcomed the ability to access works that can’t be purchased can only watch and hope that, for once, we don’t come away shaking our heads, convinced once again that “the law is an ass.”7


  1. See generally “Orphan Works,” U.S. Copyright Office ( : accessed 4 Sep 2012).
  2. See Complaint, The Authors Guild et al. v. Google, Inc., 05 CV 8136, U.S. District Court for the Southern District of New York, online at Justia ( : accessed 4 Sep 2012).
  3. See ibid., Complaint, The Authors Guild et al. v. HathiTrust et al.,, 11 CV 6351, U.S. District Court for the Southern District of New York.
  4. U.S. Copyright Office, Catalog of Copyright Entries, Part 1, Group 3, Dramatic Compositions and Motion Pictures, 1936 (Washington, D.C. : U.S. Government Printing Office, 1937), 9: 183.
  5. “California Death Records,” database; entry for Alfred Benschura, 2 September 1960, ( : accessed 31 Aug 2012).
  6. Judy G. Russell, “Where’s Willy?,” The Legal Genealogist, posted 1 Sep 2012 ( : accessed 4 Sep 2012).
  7. Charles Dickens, Oliver Twist (London : Richard Bentley, 1839), 279; digital images, Google Books ( : accessed 4 Sep 2012).
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12 Responses to The courts and the orphan works

  1. As for your example of the Baker line, we have to be very careful about this kind of scenario.

    My brother wanted to digitize to pdf a book similar to this from one of our lines. The book was printed in the early sixties. We thought the author was dead, honestly. My brother tried contacting the family. Eventually he did make contact only to find out the man wasn’t dead and his son was a lawyer. They were very touchy and went over the top and sent him a cease and desist order (funny since he was reaching out to them for permission).

    Moral of the story – sometimes the children and grandchildren do mind so err on the side of caution and find out.

    • Judy G. Russell says:

      Caution is absolutely the only way to go, Marian — a book is someone’s intellectual property and that someone has rights that need to be respected. When the “someone” can be found and permission sought, that’s the only reasonable course. It’s what to do when the “someone” can’t be found that needs some sort of real long-term solution.

      (But a cease and desist order when someone is asking permission is really over the top, for pete’s sake!!)

  2. Mark says:

    “The fact that there doesn’t seem to be a particular copyright holder who shares that concern is getting lost here.”

    Not at all. If a copyright holder showed up to claim an orphaned book, then it wouldn’t be orphaned anymore, would it? The fact is that we simply don’t know the wishes of the copyright holders of orphaned books. Just because you don’t care about the digitization of your relative’s book, doesn’t mean that other copyright holders feel the same way.

    • Judy G. Russell says:

      I understand and accept that there are copyright owners who do care, Mark (although those who really do care need a solution to the problem of how people contact them as much as researchers need a solution to the problem of not being able to find them). I suspect that the courts are the least able to find that kind of a solution, and that troubles me.

  3. Dave says:

    Actually, I would hope that for once a court would toss the lawsuit simply on the grounds that the Guild doesn’t have the right to sue on behalf of everyone. Not all authors are members of the guild, and as you say not all copyright holders would object.

    Of course, when that happens I expect to look out my window and see a lot of pigs flying by!

    • Judy G. Russell says:

      That issue has already been decided in favor of the Guild in the Google case and should be decided this fall in the HathiTrust case, Dave. The Google case judge ruled that case could proceed as a class action.

  4. Cyndy Bray says:

    I’ve been waiting for years for Congress to do something about this. My concern was more about pictures, but since getting further into genealogy it is now also about books. I have pictures that were taken way back when. Who knows when and by whom and therefore can’t know if the photographer has been dead for 70+ years. Hope the courts do a better job than congress and I do hope they find in favor of the libraries.

    • Judy G. Russell says:

      Cyndy, my fear is that the courts will simply apply the rules the same across the board — whether the copyright owner is utterly unfindable or not. It’s really not the kind of thing the judges want to deal with — but Congress isn’t. Talk about a Catch 22.

  5. Genej says:

    This is so a two edged sword.

    When packaged this way, it sounds so nice and cuddly–so to speak, “It’s all about the really old books.”

    In reality, that is not what’s happening here, and I sure don’t see this as being about the “utterly unfindable.”

    This seems to me much more about one party substituting their will for that of another. The proposed changes will effectively backdate a re-write of existing copyright law, but it won’t effect everyone across the board. It will will mostly be used to defeat what have been low cost rights granted to, and really needed by, independent creators. –GeneJ

    • Judy G. Russell says:

      It will affect LOTS of things, Genej, including really old books and some perhaps much more recent works as well. My biggest concern is that I don’t think the courts are up to the task here. This is something that really needs a legislative solution.

  6. Judith Goff says:

    It would seem to me to be a fairly simple solution. The creator of the works and their descendants retain copyright (ownership) for a period of 70 years, whether filed or not. At 70 years a copyright must be applied for – only by the creator or descendants – if they wish to retain ownership, otherwise it goes into public domain. If the rights are sold or transferred, then the new owner must keep a current legal copyright, or lose it to public domain.

    • Judy G. Russell says:

      I have some problems with this for two reasons, Judith. (a) It would dramatically lengthen copyright protection (right now, at 70 years after death, the copyright on an unpublished item terminates, period — it can’t be renewed); and (b) it doesn’t solve the problems of the document now 50 years old where the copyright owner can’t be found.

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