Research & Project Outputs

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One of the project's goals is to develop the intellectual foundation for legal and policy changes in copyright law needed to support the digital public library efforts. The project outputs posted on this page were created in support of that goal. 


David R. Hansen, Kathryn Hashimoto, Gwen Hinze, Pamela Samuelson, and Jennifer M. Urban, Solving the Orphan Works Problem for the United States, 37 Columbia J. L & Arts 1 (2013)
Over the last decade, the problem of orphan works — i.e., copyrighted works whose owners cannot be located by a reasonably diligent search — has come sharply into focus as libraries, archives, and other large repositories of copyrighted works have sought to digitize and make available their collections online. Although this problem is certainly not limited to digital libraries, it has proven especially challenging for these organizations because they hold diverse collections that include millions of books, articles, letters, photographs, home movies, films, and other types of works. Many items come with a complex, unknown, and (often) unknowable history of copyright ownership.  In this article we present evidence that the orphan works problem is very real and that it inhibits many socially valuable uses of copyrighted works by libraries, archives, museums and other memory institutions. We then canvas the array of potential solutions, and ultimately conclude that fair use, combined with the Copyright Office’s remedy limitation approach, are better approaches for addressing this problem in the United States than alternatives proposed elsewhere. Finally, we explore future-looking changes, such as the reintroduction of copyright formalities and the development of registries, that would reduce the number of orphan works in the future.

Brief Amici Curiae of 133 Academic Authors in Support of HathiTrust Digital Library, Authors Guild, Inc. v. HathiTrust, Case No. 12-4547 (2d Cir. June 4, 2013)
On June 4, 2013 Pamela Samuelson, Jennifer Urban and David Hansen of the Berkeley team filed an amicus brief on behalf of 133 academic authors in the appeal of the HathiTrust digital library case. The brief argues that the Authors Guild, which has requested that the court impound and enjoin the use of all 7.3 million potentially in-copyright books in the HathiTrust corpus, does not have standing to make such broad claims because it and its co-plaintiffs have only identified 116 works for which they claim ownership. For the remainder of the 7.3 million books in the HathiTrust corpus--many of which are more likely authored by academic authors than anyone else--the Authors Guild should not be permitted to assert control because neither the Copyright Act not prudential rules of standing developed by the courts allow it. Furthermore, the sharp divergence in the interests of academic authors and the Guild and its members in terms of fair use and the merits of the case is an additional reason why the court should limit the Guild's standing to the copyrights it actually holds. 

Brief of Digital Humanities and Law Scholars in Support of HathiTrust,  Authors Guild, Inc. v. HathiTrust, Case No. 12-4547 (2d Cir. June 4, 2013)
On June 4, 2013 Jason Schultz of the Berkeley team, along with Matthew Sag and Matthew Jockers, filed an amicus brief on behalf of over 100 digital humanities and law scholars in the appeal of Authors Guild v. HathiTrust before the Second Circuit Court of Appeals. The brief argues that non-expressive uses of copyrighted materials--for example, text mining applications in the developing field of the digital humanities--are not infringing and that copying to enable those uses should be considered fair use. 

Brief of Academic Authors and Legal Scholars in Support of Georgia State University, Cambridge University Press v. Becker, Case Nos. 12-14676-FF & 12-15147-FF (11th Cir. April 25, 2013)
On April 25, 2013, Members of the Berkeley team, along with law professors Peter Jaszi and Rebecca Tushnet, filed an amicus brief on behalf of over 100 academic authors and law scholars in the appeal of Cambridge University Press v. Becker before the Eleventh Circuit Court of Appeals. The brief argues that Georgia State University's use of excerpts of copyrighted works on course electronic reserve systems are fair use. 

Berkeley Digital Library Copyright Project Reply Comments in Response to the U.S. Copyright Office Notice of Inquiry on Orphan Works and Mass Digitization (March 6, 2013) [with appendix] [click here for version without appendix]

On March 6, 2013 the Berkeley team submitted reply comments in response to the Copyright Office Notice of Inquiry regarding orphan works and mass digitization. The reply's main contribution is on the “diligent search” concept, with the submission of two recent team white papers which set forth information about various approaches that orphan works proposals have taken regarding (a) who must conduct a diligent search, and (b) how diligent searches have been defined. In addition, the reply makes recommendations regarding the Office's overall approach to the orphan works issue, how to give guidance regarding the "reasonably diligent search" standard, whether to take a different approach for some works or types of uses (e.g., mass digitization), and principles to observe in the creation of registries that would help ease the orphan works situation. 

What Constitutes a Diligent Search Under Present and Proposed Orphan Works Regimes, White Paper No. 5
Numerous legal regimes or proposals have been devised to address the problem of whether or under what circumstances in-copyright works can be made available if the works are “orphans,” because their rights holders are unknown or cannot be found. A common feature is a requirement that a prospective user make a diligent search for the rights holder. This White Paper complements an earlier one on orphan work searches which considered who would be expected to conduct a search. The present White Paper focuses instead on different conceptions about what a diligent search might consist of. It does not offer a normative assessment of what “diligent search” should mean. Rather, it intends to provide information about various approaches to this concept to aid in reasoned conversations about this concept.
  • Citation: David R. Hansen, Gwen Hinze, and Jennifer Urban, What Constitutes a Diligent Search Under Present and Proposed Orphan Works Regimes (Berkeley Digital Library Copyright Project, White Paper No. 5, 2013), http://ssrn.com/abstract=2229021.

Orphan Works and the Search for Rightsholders: Who Participates in a 'Diligent Search' Under Present and Proposed Regimes, White Paper No. 4
Over the past several years, policy makers and private actors have developed an evolving set of approaches for addressing the orphan works problem — a problem that arises when “the owner of a copyrighted work cannot be identified and located by someone who wishes to make use of the work in a manner that requires permission of the copyright owner,” preventing follow-on uses of works. These approaches usually attempt to address the orphan works problem by employing some threshold mechanism to differentiate true orphan works, to which the proposed solutions would apply, from non-orphaned copyrighted works. Satisfying a “reasonably diligent search” is one well-known formulation by which users can designate works as orphaned and therefore subject to a proposed solution, though — as this paper points out — alternative approaches certainly exist. Regardless of the specific formulation, the search for rightsholders (or conversely, the confirmation that no rightsholder can be located) is an integral component of almost every orphan works proposal. This paper examines in detail the core schemes for identifying rightsholders among the leading orphan works regimes and proposals. Although these schemes differ across many variables, three factors predominate: (1) who is expected to participate in the search process, (2) the nature and extent of the required search generally; and (3) specifically what types of resources, tools, registries or other information-sharing mechanisms are required or allowed.

This paper compares existing proposals’ approaches with respect to the first factor: who participates in a search? A subsequent paper will focus on the second and third factors.

  • Citation: David R. Hansen, Gwen Hinze, and Jennifer Urban, Orphan Works and the Search for Rightsholders: Who Participates in a 'Diligent Search' Under Present and Proposed Regimes (Berkeley Digital Library Copyright Project, White Paper No. 4, 2013), http://ssrn.com/abstract=2208163.

Berkeley Digital Library Copyright Project Comments in Response to the U.S. Copyright Office Notice of Inquiry on Orphan Works and Mass Digitization (Feb. 4, 2013) [with appendix]
[click here for version without appendix]
On February 4, 2013, researchers for the Berkeley Digital Library Copyright Project submitted these comments in response to the U.S. Copyright Office's most recent Notice of Inquiry regarding orphan works and mass digitization. The comments broadly outline developments in the United States and abroad since the Copyright Office last studied the issue, and makes several recommendations about preserving existing approaches to orphan works, such as fair use, making progress toward a legislative solution by adopting the limitation on remedies approach recommended by the Copyright Office in its previous report, responding to proposals for an extended collective licensing regime and the difficulties of implementing such a system in the United States, and explaining how the Office could reduce the orphan works problem in the future by recommending several forward-looking approaches that deal with copyright formalities and implementing technology--for example, through metadata standards and registries--to help track ownership of copyrighted works. 


Brief of Amici Curiae Academic Authors in Support of Defendant-Appellant and Reversal, Authors Guild, Inc. v. Google Inc., Case No.12-3200 (2d Cir. 2012)
On November 16, 2012 members of the Berkeley Digital Library Copyright Project filed, with and on behalf of over 150 academic authors, an amicus curiae brief in the Second Circuit Court of Appeals that argues against the certification of the class in the district court below. The brief argues that there is a fundamental conflict between the interests of the named class representatives and the interests of academic authors, who typically benefit from Google Books, both because it makes their books more accessible to the public and because they use Google Books in conducting their own research. In short, a "win" in this case for class representatives would be a "loss" for academic authors. It is precisely this type of conflict that courts have long recognized should prevent class certification due to inadequate representation. 

Jennifer Urban, How Fair Use Can Help Solve the Orphan Works Problem, 27 Berkeley Tech. L.J. ___ (forthcoming 2012)
While Congress nearly passed legislation to deal with the orphan works problem in 2008, its ultimate failure to enact this bill has left those who possess orphan works in limbo, stymieing library and archive efforts to preserve these works and make them available. This article argues that legislation is not necessary to enable some uses of orphan works by nonprofit libraries and archives. Instead, the fair use doctrine in United States copyright law provides a partial solution. The article asks three basic questions: first, is fair use a viable basis for libraries to digitize orphans? Second, is it a viable basis on which to make them available to patrons or the public? And more generally, can or should fair use do any additional work where the copyrighted work in question is an orphan? The answer to each is yes. Courts should apply existing cases and the economic and cultural principles underlying the fair use doctrine to make clear that nonprofit libraries and archives can rely on fair use in order to digitize orphan works in their collections and to make those works available. Paper available here.


Brief of Digital Humanities and Law Scholars as Amici Curiae in Partial Support of Defendants' Motion for Summary Judgment or in the Alternative Summary Adjudication, The Authors Guild, Inc. v. Google, Inc., 05 Civ. 08136 (DC) (S.D.N.Y. Aug. 3, 2012)
On Aug. 3, 2012 members of the Digital Library Copyright Project filed, with and on behalf of several digital humanities and law scholars, a brief as amici curiae in support of Google's summary judgment motion. The brief explains the social benefits of large-scale text-mining projects and outlines why the digitization of analog texts to facilitate such projects should be considered a fair use. The brief is available here


Brief of 25 Intellectual Property Law Professors as Amici Curiae in Support of Petitioner, Kirtsaeng v. John Wiley & Sons, Inc., No. 11-697 (S. Ct., July 9, 2012) 
On July 9, 2012 members of the Digital Library Copyright Project filed, with and on behalf of 25 intellectual property law professors, a brief as amici curiae in support of  Kirtsaeng (petitioner), in the Supreme Court case Kirtsaeng v. John Wiley & Sons, Inc.The question in this case is whether authorized, foreign manufactured works are “lawfully made” under the Copyright Act and therefore subject to the first-sale limitation, which is what libraries rely upon to lend the works in their collections. The Second Circuit answered “no,” but the Supreme Court granted certiorari and will hear the case in its October term.The submitted amicus brief explains why the application of the first sale doctrine to foreign made copies is consistent with the text and structure of the Copyright Act, with the common-law origins of the first sale doctrine, and with the related common law of patent exhaustion. The brief is available here.

Brief of Digital Humanities and Law Scholars as Amici Curiae in Partial Support of Defendants' Motion for Summary Judgment, The Authors Guild, Inc. v. HathiTrust, 11 Civ. 06351 (HB) (S.D.N.Y. July 7, 2012)
On July 7, 2012 members of the Digital Library Copyright Project filed, with and on behalf of several digital humanities and law scholars, a brief as amici curiae in support of Hathitrust's summary judgment motion. The brief explains the social benefits of large-scale text-mining projects and outlines why the digitization of analog texts to facilitate such projects should be considered a fair use. The brief is available here

Copyright Issues Posed by Mass Digitization, IViR Summer Course Slides, July 11, 2012
On July 11, 2012 Project Co-Principal Investigator Pamela Samuelson will lead a course at the University of Amsterdam, Institute for Information Law's 13th annual International Copyright Summer Course on the topic of copyright issues posed by mass digitization. Slides from her presentation are available here

Orphan Works: Causes of the Problem, White Paper No. 3
The orphan works problem can be traced in part to several recent changes in the way copyright law grants rights to owners and in the way that users consume copyrighted works. Broadly defined as the situation where the owner of a copyrighted work cannot be located by someone who wishes to make use of the work in a manner that requires authorization, the problem of orphan works may have existed in theory since the first copyright laws came into effect. But in recent years, at least four developments have exacerbated the problem: (1) the elimination of copyright formalities, (2) the progressive extension of copyright terms, (3) technological advances that allow authors to create and preserve more copyrightable works, and (4) technological changes in the way users access and consume copyrighted works, especially in the shift from print to digital. This paper seeks to familiarize the reader with these developments and the ways that they have brought the orphan works issue to the forefront.
  • Citation: David R. Hansen, Orphan Works: Causes of the Problem (Berkeley Digital Library Copyright Project, White Paper No. 3, 2012), http://ssrn.com/abstract=2038068

Orphan Works: Mapping the Possible Solution Spaces,
White Paper No. 2
This paper surveys a range of proposed orphan works solutions. The goal is to acquaint the reader with the wide variety of solution types, and to identify the positive and negative aspects of each. The paper discusses four general categories of proposed solutions to the orphan works problem: Remedy-limitation approaches, such as the one advocated in the 2006 U.S. Copyright office proposal, that are predicated on a user’s good-faith, reasonable search for rights holders; administrative systems, such as the one adopted in Canada, that allow users to petition a centralized copyright board to license specific reuses of orphan works; access and reuse solutions that are tailored to rely upon the existing doctrine of fair use; and extended collective licensing schemes, which permit collective management organizations ('CMOs') to license the use of works that are not necessarily owned by CMO members, but that are representative of the CMO members’ works.
  • Citation: David R. Hansen, Orphan Works: Mapping the Possible Solution Spaces (Berkeley Digital Library Copyright Project, White Paper No. 2, 2012), http://ssrn.com/abstract=2019121

Academic Author Objections to Plaintiff’s Motion for Class Certification
On February 13, 2012 Berkeley Law Professor and project principal investigator Pamela Samuelson submitted, on behalf of herself and 82 other academic authors, objections to the Plaintiff's motion for class certification in their case against Google. The letter explains how academic authors' interests differ significantly from those of the proposed class representatives, and articulates the ways in which the Authors Guild's actions in maintaining the lawsuit have proven antithetical to the interests of academic authors.

Comments Submitted in Response to the Office of Science and Technology Policy’s Requests for Information Regarding Public Access to Peer Reviewed Scholarly Publications from Federally Funded Scientific Research (December 29, 2011).
On November 4, 2011 the Office of Science and Technology Policy issued a request for information regarding an access system for federally funded research. Researchers from the Berkeley team submitted these comments on how such a system might develop access policies and infrastructure upon principles designed to complement a national digital public library, which could in turn expand the reach and impact of federal research dollars.
  • Citation: David R. Hansen,  Comments Submitted in Response to the Office of Science and Technology Policy’s Requests for Information Regarding Public Access to Peer Reviewed Scholarly Publications from Federally Funded Scientific Research, 76 Fed. Reg. 68518 (Nov 4, 2011), submitted December 29, 2011, http://www.law.berkeley.edu/files/OSTP_Comments.pdf

Orphan Works: Definitional Issues, White Paper No. 1 
This paper outlines responses to two definitional questions that arise in the context of orphan works: (1) exactly what is the “orphan works” problem?, and (2) what is the size of this problem? The answers to these two questions are central to understanding how proposed solutions work to remedy the situation. While the most common descriptions of the orphan works problem focus on unlocatable copyright owners, others have framed the issue in terms of a broader problem of market failure. This paper explores both formulations of the problem. Similarly, the size of the orphan works problem can be viewed from many angles. Rough approximations of the size of the problem for certain types of works (e.g., published monographs) are available, but comprehensive data on the number and value of orphan works do not currently exist for a wide variety of works and the uses to which those works might be put. This paper suggests areas in which further research on these issues is needed.
  • Citation: David R. Hansen, Orphan Works: Definitional Issues (Berkeley Digital Library Copyright Project, White Paper No. 1, 2011), http://ssrn.com/abstract=1974614.