Study – Paul Keller

In an attempt to address the problem of the 20th century blackhole, European legislators are creating a framework that should allow CHIs to overcome the legal challenges around the digitisation and dissemination of their collections. Following the Orphan Works Directive from 2012, the DSM Directive’s provisions on Our Of Commerce Works (OOCWs) focus on a wider category of works: works that are not available to the public through customary channels of commerce (orphan or not).

In order to allow CHIs to make OOCWs in their collection available online the Directive introduces a two tiered approach, that relies on licensing at a primary mechanism and a mandatory exception as a secondary (“fall-back”) mechanism. This novel approach is the result of successful lobbying by cultural heritage institutions which resulted in the addition of the fall-back exception to the more limited original proposal that only relied on a licensing mechanism.

The licensing mechanism, based on so-called extended collective licensing (ECL) ^[1]The Directive refers both to ECL and to a presumption of representation. The abbreviation ECL is used to cover both. or a presumption of representation, is a solution that is already in place in some European Member States, especially in the Nordic countries, often used in the educational sector. It allows CMOs to give licenses not only on behalf of authors that have granted them permission to do so, but also of authors that haven’t. The “extension” of the license to cover works of authors that are not part of the CMO is possible because of the (presumed) representativity of the collective management organization.

In sectors or for types of works where there are no sufficiently representative CMOs (sufficiently representative for the type of work and for one or more rights) cultural heritage institutions can rely on an exception in order to make OOCWs in their collections available online.

The provisions dealing with the use of Out of Commerce Works by cultural heritage institutions are implemented in Articles 8, 9, 10 and 11 of the Directive:

Article 8 requires that member states provide a legal solution to allow CHIs to digitise OOCWs and to make them available online. The two possible solutions are a licensing mechanism or, when there is no representative collective management organisation (CMO) that can issue such licenses for certain uses and types of work, an exception to copyright.

Out of Commerce Works are works that have never been in commerce or when the work as a whole is no longer available through “customary channels of commerce”. There is no limitation with regards to the type of work or other subject-matter. The provisions also apply to works that have never been in commerce and unpublished works ^[2]Think of works such as letters, posters, leaflets, trench journals or amateur audiovisual works as well asunpublished literary works.. Member States are allowed to provide specific requirements to determine whether a work is OOC, such as a date before which everything is considered out-of-commerce (a cut-off date).

Rights holders whose works are digitised and made available under these provisions will be able to opt out, meaning to request the “removal” of their works from what has been made available through the license or the exception.

Article 9 provides that the mechanisms introduced in Article 8 allow access from all EU Member States. A European portal will be created by the European Intellectual Property Office (EUIPO), the institution also in charge of the Orphan Works Database, to identify and provide information on out-of-commerce works (Article 10).

Member states need to organise a dialogue (Article 11) among rights holders, CMOs and CHIs to agree on requirements of what is considered an OOCW, and at the practical level to make licenses and the exception workable. It will be key for cultural heritage institutions to take part in these discussions.

Taken together, these provisions are very promising for the mass digitisation of OOCWs and have the potential to resolve one of the biggest problems that cultural heritage institutions have faced when shifting their activities online. However the provisions are also very complex and rely on effective collaboration between a complex set of stakeholders (cultural heritage institutions, collective management organisations, rightholders and the EUIPO). Given this national legislators should implement these provisions in ways that facilitate en incentivise such collaborations.

Workable definition of representative CMO

From the perspective of cultural heritage institutions there is a big difference between making OOCWs available based on the exception or under an extended license issued by a CMO. Having to obtain licenses will require good negotiating skills, these negotiations can be inconclusive, the cross-border applicability is less straightforward and licenses will be subject to remuneration.

It is therefore important that Member States establish clear criteria for when a CMO can be considered CMO to be “sufficiently representative of rightholders” for a type of work. Ideally this will result in a list of CMOs that are considered to be representative for specific types of works in the Member State. Based on such a list cultural heritage institutions can determine for which types of works they will need to conclude license and which types of works can be made available under the exception. Determinations of representativeness should be made by the Member State authorities in close collaboration with both CHIs and CMOs. In this context, Member States should attempt to facilitate a dialogue between CHIs and CMOs aimed at creating consensus on the types of works for which the collective licensing mechanism makes sense (Such a dialogue should be part of the stakeholder dialogues that need to be conducted pursuant to Article 11).

Workable and broad definition of OOCW

The definition of OOCWs contained in Article 8(5) is very general and is not always straightforward to apply to all kinds of works. It is obvious that cultural heritage institutions would benefit from the broad definition coupled with easy to comply with requirements for determining that a collection of work is indeed out of commerce ^[3]It is important that the clarifications contained in recital 38 (no work by work search requirement, searches do not need to be undertaken repeatedly over time) are transposed into national … Continue reading.

Under the second part of Article 8(5), ”Member States may provide for specific requirements, such as a cut-off date, to determine” the out of commerce status of works. Declaring all works that have been published/created before a certain data to be out of commerce ^[4]Obviously this will only work in combination with the ability of rightholders to opt-out from such determination that is provided for in Article 8(3). would significantly reduce the effort cultural heritage institutions have to undertake to identify collections of out of commerce works. In the interest of facilitating the online availability of Out of Commerce Works, Member States, in dialogue with cultural heritage institutions, collective management organisations and other rights holders should attempt to work with cut-of-dates for as many types of works as possible.

Inclusive stakeholder dialogue

Article 11 requires Member States to organize stakeholder dialogues involving “ rightholders, collective management organisations and cultural heritage institutions in each sector” to establishing specific requirements for determining the out of commerce status of collections in pursuant with Article 8(5). As outlined in the two previous sections such stakeholder roles can play an important role in ensuring that they OOCWs provisions of the Directive work in practice.

It is therefore of utmost importance that Member States organize inclusive stakeholder dialogues that include equal representation from all types of stakeholders and that are conducted with the objective of creating workable national rules for making OOCWs available. While Member States will have some influence over the setting and direction of the stakeholder dialogues, this will require the willingness of all stakeholders to collaborate on solving the issue. This will require an amount of mental flexibility by all stakeholders who have traditionally perceived each other as opponents (CHIs on one side vs CMOs and other rightholders on the other). In the end the ability of these stakeholders to collaborate will be essential in achieving the goals of the DSM Directive Workable EUIPO)

Workable EUIPO database

Article 10 requires that information on out-of-commerce works must be published “on a public single online portal” that is to be “established and managed by the EUIPO” six months before the works themselves can made available online by the cultural heritage institutions. This six month pre-publication period is intended to ensure that rightholders who object to making available of their works have the ability to opt-out in line with Article 8(4) before their works are made available online.

The functioning of the EUIPO portal will play an important role in how effective the provisions of the new Directive will be in enabling access to OOCW held in the collections of Europe’s cultural heritage institutions. The portal will need to provide CHIs and CMOs will low friction workflows to publish the required identifying information and will need to automatically update them about opt-outs and other changes in the status of works for which they have provided information. The portal will also need to provide rightholders with a reliable, effective and trusted way to make use of their ability to opt-out in line with Article 8(4).

In short, the portal has the potential to make or break the effectiveness of the provisions aimed at improving access to OOCW. In order to contribute to the objective of the Directive, the portal will need to integrate well with existing workflows of the intended users (CHIs, CMOs and other rightholders), be able to process large quantities of incoming data, and become a trusted and persistent source of information on the use of OOCW and opt outs registered by rightholders.

Given the crucial role the portal plays in the overall system aimed at enabling access to out of commerce works, the European legislator must ensure that the EUIPO develops the portal in close collaboration with all affected stakeholders and that it allocates sufficient resources to both building the portal and supporting CHIs and CMOs in publishing the required information via the portal ^[5]In this context it is worth noting that in March 2019 the European Court of Auditors concluded that “the budget surplus of the EU Intellectual Property Office (EUIPO), amounting to almost half … Continue reading. The EUIPO should consider the responsibility to run this portal not only as a legal responsibility but also as an opportunity to provide a valuable service to the cultural heritage sector and collective management bodies that enhances the quality and interoperability of rights information available across the sector.

Implementation outlook

The provisions on out of commerce works are among the most complex provisions in the DSM Directive. To successfully implement them Member States will be dependent on the willingness of all stakeholders to constructively collaborate. The national stakeholder dialogues will play a crucial role in this and Member States should invest in creating the conditions for collaboration between cultural heritage institutions on the one side and collective management organisations and other right holders on the other side.

The pre-conditions for this to happen vary substantially across the Member States. The scope of collective management varies substantially between Member States and while some member states have existing collaborations between cultural heritage institutions and collective management organisations these are lacking in others. As a result the European legislator should carefully monitor Member State implementations of the OOCW provisions and facilitate information exchange between the Member States.

In addition the European legislator must also ensure that the EUIPO portal will become an instrument that actively facilitates cultural heritage institutions and collective management organisations in making available out of commerce works contained in their collections.

Relationship with the Orphan Works Directive

The introduction of these new rules for making available Out of Commerce works is also raising questions about the future of Directive 2012/28/EU of the European Parliament and of the Council of 25 October 2012 on certain permitted uses of orphan works. Conceptually the two Directives are overlapping each other: All Orphan Works are by definition also Out of Commerce works. Given that the Orphan works Directive is widely considered to be a failure, that to date only a very small number of works has been identified as Orphan Works ^[6]At the time of writing the EUIPO’s Oprhan Works database contained 5,923 main works and 6,947 embedded and that the OOCWs provisions of the DSM Directive are much easier to comply with, the EU legislator should consider revoking the Orphan Works Directive. ^[7]A decision to revoke the Directive could be based on the outcome of the Commission’s evaluation of the Directive which, in line with Article 10 of the Directive, was due on 29 October … Continue reading