In a dark corner of the Trans-Pacific Partnership lurks some pretty nasty copyright law

[Updated below, 9/6/2015]

The extent to which our international obligations interact with—and may sometimes override—domestic law is a pretty fascinating one, and is, for any number of pretty obvious reasons, increasingly in the news. Here's a rather small footnote to the very large controversy over the Trans-Pacific Partnership treaty, involving a narrow (but actually quite important) bit of U.S. copyright law, that nicely illustrates how complicated these questions can be—a synecdoche, as it were.

The copyright issue relates to so-called "orphan works." As a consequence of many factors—the absurdly long term of copyright protection [life of the author plus 70 years—see my comments here on the liberation of Sherlock Holmes, after a lo-o-ong time, from his copyright shackles], along with the elimination of copyright notice, or copyright registration, requirements as preconditions for copyright protection—there are literally millions upon millions of works—books, letters, songs, articles, poems . . .—created in the '30s, '40s, or '50s that are (a) still protected by copyright, and for which (b) it is virtually impossible to ascertain who owns the copyright, or even whether the copyright is still in force. Consider this scenario:

Alice Johnson publishes a book of poems in 1930. It languishes, unsold, and largely vanishes from sight. You would like to reprint it. To know whether you need permission to do that, you have to locate the author. If she has died, you have to find out when—if it was 1933, you're in the clear; if it was 1993, not so much. If she has died, you have to find her heirs, because copyright passes as personal property at death. Possibly all of her heirs, because they may well have taken title to the copyright, upon Alice's death, as joint owners. And if any of them has died, you'll need to round up their heirs. And so on.

How do you do it? The answer is: You don't, because you can't. It is, by any reasonable definition of the term, impossible.

That's an orphan work.

Who cares, you ask? It's a fair question. After all, you could (and probably would) just go ahead and reprint the book—what are the odds that someone will come out of the woodwork and accuse you of copyright infringement?! You're more likely to be struck by lightning. Twice.

And even if someone does sue you—what are his or her damages?! For an out-of-print book that nobody has bought for 70 years or so?

It looks like you have something like a 0.0004 percent chance of being sued, and, even if you are, a damage award likely to equal about $0.03—even your lawyer will let you take that risk, no?

Well, actually—no. Big problem #1 is that copyright law doesn't require the plaintiff to show any damage whatsoever. And it authorizes awards of up to $150,000 in "statutory damages" for each work that is infringed—independent of any damage assessment. [And it authorizes the prevailing party in an infringement suit to recover his/her attorney's fees.] Substituting $150,000+ for $0.03 changes the risk equation quite a bit.

And big problem #2 is that nothing is more likely to guarantee that Alice's heirs will emerge from the woodwork, brandishing their copyright registrations, than the scent of money. So if by some chance you are actually successful with your reprint, you materially raise the odds of getting sued. 0.25 times $150,000 looks a lot different than 0.00004 times $0.03.

And if you're still wondering "Is this really such a big deal?," multiply it all by 10 million (or more). Remember Google Books? I don't know about you, but I was pretty excited by the thought that every book ever published was going to be available to me over the Net—with all the lousy news out there, that sure sounded like a good thing for the human race, no? Well, the Google Books project foundered largely because of the orphan works problem. Even Google is not willing to take on $100 billion or so of potential exposure to infringement claims, and its attempts to reach a settlement that would have waived the rights of "orphan works" copyright holders to get statutory damages was unavailing—on the grounds that no court can approve a settlement waiving the statutory rights of persons who are not only not present in the courtroom to weigh in on the settlement, but who haven't even been notified—because, of course, nobody knows who they are—that there is a settlement.

It's a serious conundrum. I'm hardly the first to notice it. The solution is pretty obvious—a true legislative no-brainer: Amend the Copyright Act to eliminate statutory damages for these orphan works. Surely even Congress can see how idiotic it is that this class of invisible rights holders can keep this treasure trove of information out of the public's hands, and there has indeed been significant movement recently (including a Copyright Office proposal to this effect) toward just such a change.

So what does all this have to do with the TPP? I'm glad you asked. It appears that the latest version of the treaty contains, buried within its many hundreds of pages, language that could require the U.S. to scuttle its plans for a sensible revision of this kind. [I say that this "appears" to be the case, because, of course, the text of the TPP has not been revealed to the public, so all we have are leaked versions appearing from time to time on WikiLeaks.] Any provision of U.S. law that eliminated "pre-established damage" or "additional damages" for any class of works could be a violation of various TPP provisions requiring that such damages be made available, and it even appears that distribution of orphan works would have to subject the distributor to criminal copyright liability. [See the detailed analyses by Knowledge Ecology International here and here, and by the Electronic Frontier Foundation here.]

These (and other—poke around at the KEI site for more evidence) copyright provisions in the TPP are pretty dreadful and continue the disturbing trend of making copyright bigger, longer and stronger just when public policy demands the opposite. Might not be enough for me to want to throw out the whole deal (which, after all, concerns a great deal more than just global copyright law), but it's pretty disturbing nonetheless.

[And as an ironic footnote to all this, part of the reason we're in all this mess, as I mentioned at the start, is that we no longer have a sensible regime for copyright notice and copyright registration. Why don't we? Because of another international agreement, the Berne Convention on Literary Property, that we acceded to in 1989 (and which prohibits all "copyright formalities"). We would have been much, much better off on our own on that one.

UPDATE: A fair number of readers were unpersuaded by my assertion that the TPP provisions actually constitute a conflict with attempts to craft a sensible orphan works policy in US law. I was hoping that the cites to the KEI and EFF analyses would suffice, but perhaps I should give a little more detail on what I have in mind—without going to deep into the copyright weeds, and bearing in mind that it's a little difficult to demonstrate that a treaty whose text has not been released to the public conflicts with an overhaul of the Copyright Act that is still very much in the early planning stage.

But let's assume that both the TPP, and the Copyright Office proposal, were enacted into law. Thus, the new, revised Copyright Act contains the following provisions:

Section 514(c)(1) Limitations on Remedies—Monetary Relief . Monetary relief (including actual damages, statutory damages, costs, and attorney's fees) shall be limited to an order to pay reasonable compensation to the owner of the infringed copyright for use of the infringed work. No monetary relief may be made if the infringer is a nonprofit educational institution, museum, library, archives, or public broadcaster (or employee thereof), and proof by preponderance of the evidence is made that infringement was performed without purpose of direct or indirect commercial advantage; was primarily educational, religious, or charitable; and, after Notice of Claim of Infringement and good faith investigation, infringement promptly ceases. Additionally, a court may take the value added to an infringed work by virtue of its registration into account in determining reasonable compensation. …

Eleventh Amendment Limitations—If an infringer (such as a State entity) asserts that it is immune, under the Eleventh Amendment, from money damages, it may not take advantage of the limits on injunctive relief, unless it (a) complies with the eligibility requirements and (b) pays timely reasonable compensation, as either agreed with the owner or ordered by the court. These limitations are not to be construed to authorize, require, or constitute an award of damages; nor shall they constitute an authorization to sue a State. If an infringer pays reasonable compensation under this limitation, this does not waive any Eleventh Amendment protection it has from being sued for money damages.

The TPP provides:

QQ.H.4.7. In civil judicial proceedings, with respect to infringement of copyright or related rights protecting works, phonograms, and performances, each Party shall establish or maintain a system that provides for one or more of the following: (a) pre-established damages, which shall be available upon the election of the right holder or (b) additional damages.

[fn 211] For greater certainty, additional damages may include exemplary or punitive damages.

QQ.H.4.9. Pre-established damages under [paragraph (4.7)] shall be set out in an amount that would be sufficient to compensate the right holder for the harm caused by the infringement, and with a view to deterring future infringements.

QQ.H.4.11. Each Party shall provide that its judicial authorities, where appropriate, have the authority to order, at the conclusion of civil proceedings concerning infringement of at least copyright or related rights and trademarks, that the prevailing party be awarded payment by the losing party of court costs or fees and appropriate attorney's fees, or any other expenses as provided for under that Party's law.

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A decent copyright lawyer, working on behalf of the copyright holders' interests, wouldn't have too much trouble arguing that many of the limitations in the statute conflict with the TPP.

For example, under the statute, there would be no monetary damages, under any circumstances, for (1) infringements by States or agents of States (because of the States' 11th Amendment immunity), or (2) infringements by nonprofits, etc. if they comply with certain conditions (primarily educational, no commercial advantage, infringement stops after notice).

There would be no attorney's fees, under any circumstances, for infringement of orphan works

There would be no punitive damages, under any circumstances, for infringement of orphan works (because copyright law does not permit punitive awards)

And there would be no permissible "exemplary" damages, over and above compensation to the rights holder for the harm suffered, in connection with infringement of orphan works, because monetary relief is expressly limited to reasonable compensation for the harm suffered by the copyright holder.

How is this scheme, which provides for no damages (in some circumstances at least), compliant with the TPP requirement that the US must provide for either "pre-established damages," or "additional damages"? No damages = no damages, no? A court would (as I read the new statute) NOT be permitted to award punitive, or exemplary, damages in orphan works cases—but the TPP seems to require that.

How is this scheme compliant with the TPP requirement that the pre-established damages must take into account "compensat[ion to] the right holder for the harm caused by the infringement" AND "deterring future infringements"?

And how is it compliant with the TPP requirement that US law must "have the authority to order . . . that the prevailing party be awarded payment by the losing party of court costs or fees and appropriate attorney's fees, or any other expenses as provided for under that Party's law"?

Now, I also suspect that, if I were wearing my defense lawyer's hat, I could come up with a number of counter-arguments here. But that's not the point, I don't think—I think this is plenty on which to base an opinion that there is indeed a conflict, and the TPP requirements would in effect make certain provisions of the Copyright Office proposal of very questionable validity.