Orphan works, fair use, and criminal copyright infringement: First Circuit upholds conviction for copying movies from old VHS tapes.

June 29, 2022 by Dane Johnson

United States v. Gordon
USCA First Cir June 23, 2022

In United States v. Gordon,¹1. No. 21-1023 (1st Cir. June 23, 2022). the U.S. Court of Appeals for the First Circuit upheld the criminal conviction of “a film buff since childhood” on two counts of criminal copyright infringement. The Copyright Act prohibits any person from “infring[ing] a copyright willfully and for purposes of commercial advantage or private financial gain . . . .”²2. 17 U.S.C. § 506(a). The defendant, Douglas Gordon, testified to believing that selling DVDs of movies copied from old VHS tapes was not infringement because nobody appeared to own the rights and argued that the evidence was insufficient to find willfullness. While perhaps mildly sympathetic to the “orphan works” problem in copyright law, the court concluded that the jury could easily have found knowledge that unauthorized duplication of even not widely available movies was illegal.

“Orphan works” are old photographs, letters, manuscripts, films, and other creative material that is likely still protected by copyright but has no identifiable copyright owner. “They include a vast treasure trove of newsreels, documentaries, anthropological films, portraits of minority life in the U.S., instructional films, and even some Hollywood studio productions.”³3. Duke Law School Center for the Study of the Public Domain, Access to Orphan Films 1 (2005). The works at issue in Gordon were VHS tapes of not widely available movies. The jury heard evidence that Gordon, operating through a small chain of video stores and several websites such as “findrareDVDs.com” and “lostmoviefinder.com”, sold and rented copies of DVDs made from these tapes. There were apparently hundreds of complaints from customers that the quality of their purchased DVDs was something less than stellar.

The Maine Attorney General’s office investigated and demanded that Gordon produce documents related to possible copyright violations. After getting no response to a demand letter, they referred the case to the federal government. A target letter was sent to notify Gordon that he was under investigation for “criminal infringement of movies protected by copyright.” The Motion Picture Association also sent a cease and desist demand.

Gordon argued on appeal that insufficient evidence supported the jury’s finding that he willfully committed copyright violations. Because the defense did not move for an acquittal at trial under the Federal Rules of Criminal Procedure,⁴4. Fed. R. Crim. Pro. 29. the First Circuit reviewed the verdict under a “clear and gross injustice” standard. This standard of review considers the evidence from which the jury reached its verdict in the light most congenial to that verdict.

The appellate court took little pause before concluding that abundant evidence supported the finding of willful infringement. Along with the notices and demands sent to Gordon, the court explained, Gordon’s own actions suggested it. “As a filmmaker, [he] took care to mark his own work for copyright protection. In fact, he described to a colleague how to seek copyright protection, the reasons for doing so, and the risks for filmmakers in using copyrighted work . . . .”⁵5.Gordon, supra note 1.

But the court’s opinion appeared to acknowledge that the uncertain status of orphan works under copyright persists as a problem for creators. As of the date of this post, there have been only proposed legislative solutions to the problem, such as limitations on remedies available to copyright owners if users have searched diligently to find them but been unsuccessful. The district court in Gordon instructed the jury correctly that “United States copyright law does not recognize the concept of an orphan work.”⁶6.Id. (internal quotations omitted).

As a result, documentary filmmakers and non-fiction authors must struggle to deal with orphan works on nearly every project. There may be no better source, for example, than home movies to recall a place and time.⁷7.Rick Prelenger, Address at Berkeley Law Orphan Works Symposium (Apr. 12, 2012). Typical of orphan works, however, home movies that may still be protected by copyright nearly always lack sufficient information to identify their owners.

Consequently, “identifying the date on which they would otherwise enter the public domain is also impossible. Even where that date can be determined, it is often a long, long time away.” Perhaps most infuriating for creators is that “using these works as building blocks for other works would not be opposed in most cases either — but there’s no one to ask.”⁸8.U. Tex. Libraries, Digitization & Orphan Works.

Copyright law’s onerous penalties give even a slight risk that some owner will eventually discover the use and assert a claim after a project is completed and released tremendous weight. “For good faith users, orphan works are a frustration, a liability risk, and a major cause of gridlock in the digital marketplace.”⁹9.U.S. Copyright Office, Orphan Works and Mass Digitization 35 (2015). The penalties for copyright infringement can include criminal prosecution as in Gordon  as well as injunctions and statutory damages even if actual monetary harm cannot be proved. Attorney fees can also be recovered from infringers. Errors and omissions insurance to protect film and television projects that include orphan works “can sometimes be negotiated . . . but the results are at best uneven.”¹⁰10.Michael C. Donaldson & Lisa A. Callif, Clearance and Copyright 105 (4th Ed. 2014). Thus, unless an orphan work can clearly be determined to be in the public domain, the safest course is to assume that someone owns the legal rights to it.

Does such an assumption mean that the only creative decision is not to use the work? Not necessarily. Users of orphan works may be able to rely on the defense of fair use. If the work is central to a film or television project, an attorney evaluation that its use would not infringe anyone’s copyright can help support moving the project into development.

Section 107 of the Copyright Act¹¹11. 17 U.S.C. § 107. provides that fair use of a copyright-protected work is not an infringement. This does not mean that whether any particular use qualifies as a fair use is an easy question. Even federal judges sometimes struggle to determine whether fair use applies in a given situation. That’s exactly what Mr. Gordon apparently did too. As the First Circuit explained, he “testified he believed . . . that his reproductions were permissible. He testified he would primarily consider whether the movie was ever on DVD — if not, he might sell it, because he assumed any sales could not affect the DVD market. And he further testified he would consider whether the movie was old enough to ‘have an educational value to society,’ which, in his view, would weigh in favor of fair use.”¹²12.Gordon, supra note 1.

The court acknowledged evidence that Gordon “did his best to obey the law by following his understanding of the concepts of ‘orphan works’ and of fair use.” But because even an exhaustive search for an orphan work’s owner would not be a defense and fair use did not apply in his case, the First Circuit rejected his arguments as “wither[ing] in the light generated by the many warning signs demonstrating his knowledge that he was breaking the law.” Under the “clear and gross injustice” standard of review, the court explained that “even if we could discern some plausibility to Mr. Gordon’s arguments, there is more than sufficient evidence for the jury to have found a willful intent.”¹³13.Id.

The takeaway for creators? Correctly applied, the Copyright Act does include at least a possibility that you may be able to include an orphan work in a creative project even if you can’t find the owner to license it. So if you want to use a home movie, photograph, or other work that seems to be an orphan, you may not need to find something else. Contact an experienced entertainment attorney about whether the work may be in the public domain or used under the fair use defense to copyright infringement claims.

Read the decision here.

Questions about using orphan works for film or television or other questions about protecting your intellectual property in entertainment? Contact DeepFocus Law at (503) 975-8298 or schedule an entertainment attorney consultation.