The three jurisdictions examined in this paper have struck different balances between legal certainty and flexibility. This now raises the second question: what is the price of the degree of legal certainty offered? To answer this question, it is necessary to simulate a diligent search. Based on an in-depth understanding of the law in force, including both hard and soft law instruments, as well as the organisational landscape present in the different countries, we have compiled a data set of institutions that manage directories of potential right holders and copyright works. These databases arguably need to be consulted (in the case of the UK, they must be consulted) in order for a search to be deemed diligent. In doing so, we provide a realistic image of what a CHI has to do in practice to meet the legal requirements of acting in good faith and being diligent. As the following graph shows, the number of sources to be consulted varies extensively.
Quantifying the Meaning of “Diligence”
As expected, the number of sources to be consulted varies significantly across the types of works and the three jurisdictions examined here. In general, published books have the fewest relevant sources, followed by newspapers/magazines, visual works and finally audio-visual works. This order is not surprising, given that the number of potential right holders increases with each category.Footnote 26 Two things are notable: first, the overall numbers indicate that the diligent search requirement is very burdensome although the extent varies across jurisdictions. For example, to clear a newspaper article, a UK CHI would have to search 234 sources. In Italy it would be 89 sources, followed by the Netherlands with 48. These numbers are so high that it is very unlikely that a CHI would have the resources to clear more than a few works at best without some kind of automation. However, this is not available or even planned in the examined jurisdictions.
Second, there seems to be a link between the number of sources and the guidance provided by regulators. In the UK, with the exception of published books, more sources are considered relevant than in the other two jurisdiction (86 for published books, 263 for newspapers and magazines, 234 for visual works, and 379 for audio-visual works). This is followed by Italy (131, 62, 89 and 75, respectively) and then the Netherlands (32, 39, 48, 45 sources, respectively). It is interesting to see that the country with the most detailed guidance, the UK, has the most sources, followed by the semi-guidance (Italy) and finally the jurisdiction that provides no additional information (the Netherlands). This indicates the most likely impact of the regulators’ response to the OWD Annex: the regulators tend to be over-inclusive. In particular, the UK’s numbers are not only higher, but in fact multiples of those for the other two jurisdictions examined here. For example, in the case of audio-visual works, the UK’s IPO lists 379 sources and therefore five times more compared to Italy (75 sources) and more than eight times as many as the Netherlands (45 sources). It thus seems that the IPO lists are essentially a list of all organisations in the sector rather than a selection of those sources most likely to yield information. This list is essentially over-inclusive to the point where “diligent search” is a synonym for “exhaustive search”.
The price of legal certainty therefore seems to be high, making the search very resource-intensive. The numbers indicate that the more a Member State has opted for legal certainty at the expense of flexibility, the larger the number of sources that needs to be consulted. Providing guidance on what searches need to be performed in effect does not lead to a hierarchy of the most important sources. Instead, it is a list of possibly relevant sources, making them over-inclusive. However, the number of sources to be consulted alone is an incomplete indicator of how burdensome a search is in practice.
The Qualitative Meaning of “Diligent”: The Accessibility of Sources
The practical burden of the diligent search requirement crucially depends on two factors. First, there is the number of sources that must be consulted as discussed in the previous section. The more sources that need to be searched for each work type, the higher the investment in terms of time and resources by the CHI to clear a work. Second, the online accessibility – or here more precisely searchable nature – of the sources is important. It is less resource-intensive to search online compared to having to visit an institution to search the catalogue. As a result, the higher the proportion of sources that are not freely and fully accessible online, the more burdensome a diligent search is in practice. It is therefore crucial to ascertain to what extent sources are accessible. To this end, this research has collected an empirical data set in which each source identified as relevant was classified in terms of the access restrictions under which it operates, distinguishing between those fully and freely accessible online and those that are not. The latter was then further divided into: (1) paying access online; (2) partially accessible online; (3) will be accessible online in the future; and (4) free access on site only. The analysis of these data will provide crucial insights into the viability of the diligent search exception as provided by the OWD, and the potential drawbacks and pitfalls of this route. We will now proceed to describe our findings.
First of all, one particular type of required source deserves attention: the orphan works databases. To prevent the duplication of efforts, the OWD provides for the mutual recognition of the status of orphan works. In other words, once a work has been declared orphan in one Member State, it is considered orphan in all Member States until a right holder makes a valid claim.Footnote 27 To facilitate this, cultural institutions are asked to keep records of their diligent searches, and the results of such searches are due to be inserted in a single online database for the European Union to be made available to the public at large in a transparent manner.Footnote 28 To this end, the OWD calls for an EU-wide database to be created at the EUIPO,Footnote 29 which receives and consolidates information from all Member States. In addition, Member States are free to develop their own databases in addition to the one managed by the EUIPO.Footnote 30 This particular source, the EUIPO Database – or where available, a national database – is therefore mandatory in all jurisdictions.
However, the development of these databases has been slow in practice. The EUIPO database is already operational but contains very few entries: little more than 2000 entries at the time of writing.Footnote 31 This lack of uptake is even more pronounced at the national level. While the establishment of national databases is not required by the Directive, all three jurisdictions originally planned to have a national database as well to prevent duplication domestically. However, the outcomes of these plans are mixed at best. The UK has its own database which contains about 350 entries.Footnote 32 The overall number of works is therefore low but at least it is operational. It should also be noted though that this database forms part of a broader licensing scheme which also covers orphan works that are subject to the OWD, for example stand-alone photographs. On the other hand, the databases planned in the Netherlands and Italy have not been developed yet. In the Netherlands, it is known that the results of a diligent search have to be reported by the CHI to the Dutch Minister of Education, Culture and Science, and that the Dutch orphan works database is to be maintained by the Rijksdienst Cultureel Erfgoed. The government will then transmit the information to EUIPO.Footnote 33 While the transfer to EUIPO is functional, and indeed most works in the database are from Dutch CHIs, the national database has not made any progress. Similarly, the Italian orphan works database is also not operational yet.Footnote 34 Once the national database is created, beneficiary organisations need to communicate the results of diligent searches to the Directorate-General for libraries and cultural institutions (DGBIC – Direzione generale biblioteche e istituti culturali) at the Ministry of Culture. The DGBIC has to transmit the information to the European database at EUIPO. However, the national database at the heart of this has not been created yet, leading to confusion. In particular, it is not clear whether national registration is a precondition for European registration. As a result, no Italian cultural institution appears in the EUIPO database at the moment due to fear of infringing national legislation by a direct registration at EU level.
The current state of the orphan works databases at national and EU level severely limits the effectiveness of these sources. On the one hand, the UK has a working database but it is over-inclusive by covering works beyond the scope of the Directive. As a result, not all of them benefit from the mutual recognition of their status as orphan. On the other hand, the Netherlands and Italy have no databases yet. This means that one of the main sources is simply not available. In Italy’s case, this also impacts on the effectiveness of the EUIPO-managed database as the hyperlink to the Italian jurisdiction on the EUIPO website is not working. However, not all required sources are subject to these start-up issues.
A first look at the data reveals that the UK has the highest percentage of sources that are freely accessible online (70% of all sources). However, 70% is still problematic because it also means that 30% of listed sources require additional effort of some kind. Of these, only 2% offer free on-site access. By contrast, direct contact is required – either by email or mail – for 22% of the sources, making the process more time and resource-consuming. The picture is even less promising for Italy and the Netherlands. Here, only about half of the sources can be fully accessed online (Italy: 56%; Netherlands: 54%) (Table 1).
It should be noted that the largest, most comprehensive databases in the Netherlands do not fall into this category. In fact, 41% of all sources in the Netherlands are not directly accessible at all. In particular, the large Collective Management Organisations (CMOs) with the broadest membership fall into this group. The only exceptions to this pattern are two CMOs: PictorightFootnote 35 (art works) and BUMA/STEMRA (musical works). For all other large databases, direct contact is required. As the guidelines for the diligent search report have not yet been published, it is not clear if the contact has to be in writing, making it very resource-intensive. The lack of a paper trail proving a search result may require this in practice. Instead, smaller organisations have freely accessible databases.
Italy has a very varied accessibility pattern in practice: 44% cannot be accessed freely online. This is comparable to the Netherlands. However, the restrictions on the remaining databases are more varied: only 23% of sources require direct contact which is the most onerous kind of search. Instead, Italy has comparatively many sources that are accessible online subject to restrictions. At least, 7% of sources can be searched on-site. Most notably, the primary source identified by the law is the Registro Pubblico Generale delle Opere Protette (General Public Registry of Protected Works) established by the Ministry of Culture, whose consultation is recommended for almost all categories of work,Footnote 36 which falls into this category.Footnote 37 This means that any diligent search requires a visit to this institution. However, the real difficulty is posed by another category of access: partial online access (9% of sources identified). These sources require an understanding of what is and is not online. Failure to do so can invalidate a diligent search because a source was not fully searched. For example, if a CHI fails to consult the offline part of the catalogue and misses important information as a result, its search was not diligent as prescribed by the law. Importantly, all legal deposits and the major Italian libraries have not yet completed the digitisation of their catalogues and therefore fall into this group.
Accessibility by Type of Work
As the previous section has shown, all three jurisdictions examined in this paper require sources to be consulted that are not freely accessible online. Many of these can in fact only be accessed on site or require direct contact with the organisation managing them. This raises the cost of a diligent search in practice. However, the data presented so far are aggregate numbers. The diligent search requirement is based on searching the relevant sources by the nature of the source; for example, a published book requires the consultation of different sources compared to an audio-visual work. As a result, it may be possible that some types of works are easier to clear than others. To clarify if this is indeed the case, we have broken down the sources according to the type of work they touch upon and then compared them within the jurisdictions.
In the UK, the percentages are comparatively stable across the types of works. All four categories examined here, published books, newspapers, visual works and audio-visual works, have similarly high proportions of freely accessible sources. These range from 74% for published books to 63% for audio-visual works.Footnote 38 The differences are also minor for the other, more restricted categories of online access. “Paying Access Online” such as subscriptions range around 10%, published books have 9%, magazines 12%, art works 8%, and audio-visual works 11%. It is interesting to see, however, that partial online access does not really play a role. All types of works examined here have less than 5% of sources that are available online but not in their entirety.Footnote 39 On the other hand, the numbers of sources that cannot be accessed online or only on-site are low and also comparable across types of works. Audio-visual works have the largest share here, namely 14%, followed by art works (13%), magazines (11%), and finally published books (8%). The percentages are even lower for sources that can be accessed freely on site but not online.Footnote 40 This means overall that the accessibility of sources in the UK does not systematically vary across types of works to any significant extent. Instead, the likelihood that a source is freely accessible online is the same for all four categories, as is the case with the other accessibility classifications.
The UK pattern differs significantly from the Dutch one. Here, accessibility varies significantly between work types. Looking at the freely accessible sources first, it is clear that published books, visual works, and magazines have similar proportions of sources that can be freely accessed (66, 63, and 55%, respectively). However, the proportion is significantly smaller for audio-visual works: here only 42% and therefore not even half are freely accessible online. Instead, most sources are simply not accessible online and this varies across work types. Restricted access is indeed highest for audio-visual works (56%), followed by the significantly smaller numbers of published books (28%), art works (33%), and magazines (35%). It should be noted at this stage that partial online access only plays a minor role in the Netherlands, irrespective of the work type. Free access on site is not relevant at all while “Paying Access Online” stays at or below 5% for all work types and is de facto absent for audio-visual works.Footnote 41 Partial online access is therefore not a determinative feature of the environment. In other words, clearing audio-visual works is more complex in the Netherlands than the other three groups because more than half of the relevant sources are not freely accessible and indeed require the CHI to either visit or contact the relevant organisation directly.
Italy has a different pattern of accessibility across work types from the other two jurisdictions examined here because partially accessible sources play a larger role. First, when it comes to the sources that are freely accessible online, there is not much difference across work types. They generally range between 52% (audio-visual works) and 60% for magazines and newspapers.Footnote 42 It is interesting that magazines have the highest percentage, even if the difference to published books (57%) is only marginal. At the other end of the spectrum, visual works have the highest share of sources that cannot be accessed directly at all and therefore require direct contact with the institution; 42% of sources fall into this category. The percentages for the other types of works are similarly high with 37% for audio-visual works and magazines, and 34% for published books.
However, there are significant differences between work types when it comes to sources that are available online but restricted. In general, paying for access, such as by subscription, is only a small percentage: 5% for newspapers, 4% for visual works, and 2% for published books, and is indeed not relevant at all for audio-visual works. However, sources that are only partially searchable online are very relevant to a diligent search. Most notably, 26% of the sources required to search for visual works are only partially accessible. This is followed by magazines (18%), published books (17%), and finally audio-visual works (7%). This is very significant because partially accessible sources can be potentially very difficult to manage in practice. They require that the searching party fully understands what is available online and what is not. A lack of clarity could mean that the CHI thought it searched the whole catalogue when in fact it relied on a sub-catalogue. This can invalidate a diligent search and therefore expose the CHI to infringement claims.
As the discussion has shown, the accessibility of work types varies by jurisdiction. In the UK, accessibility does not significantly vary according to work types. Instead the search burden is largely determined by the number of sources. In the Netherlands, freely accessible sources are comparable across work types, except for audio-visual works. Here, access is generally more restricted and in particular a higher percentage of sources requires direct contact with the organisation. In Italy, variations are also limited in that a comparable percentage of sources are freely accessible. However, fully restricted and partial online access is a particularly acute challenge for visual works.