Last Monday was the deadline for comments on orphan works to be submitted to the U.S. Copyright Office. All comments are currently publicly available at the Office’s orphan works section. Legislation that have limited remedies for the use of orphan works if a copyright owner later emerged failed to pass in 2008, and the issue of orphan works lay dormant in Congress since then. Last year, however, the Copyright Office indicated that addressing orphan works was still one of its priorities, especially in the context of mass digitization projects, which have been growing in size and scope. And so it solicited comments on legal and business developments regarding orphan works since 2008 and inquired about potential orphan work solutions in the context of mass digitization projects.

Orphan works, of course, are works where the copyright owner is either unidentifiable or unlocatable. Such works may still have commercial, cultural, or historical value, but because there is no one to grant permission for these uses, the works lie fallow, especially by risk-averse institutions like libraries and archivists.

As with any discussion of copyright issues, some respondents could not resist using this opportunity to get in a few digs at some of the fundamental aspects of current copyright law. One such aspect is copyright’s automatic nature — protection vests as soon as a work is created and fixed in a tangible medium, as opposed to requiring registration and publication.

In its comment, the Computer & Communications Industry Association claims “Moving away from an ‘opt-in’ default for copyright protection was the most proximate cause of the orphan works problem.” This is echoed by several other respondents, including a joint comment from the Electronic Frontier Foundation and Public Knowledge:

While the renewed interest in orphan works is much appreciated, it also is worth noting that the persistent problem of orphan works is due mostly to three dangerous and sadly persistent aspects of U.S. copyright law: extremely long terms, high statutory damages, and a lack of formalities for copyright protection. With copyright terms commonly lasting more than a century, the number of works that cannot be matched with their rightsholders will necessarily be high. Add to this the fact that no effort beyond the initial fixation of the work itself is required for protection, and the number of copyrighted works in existence in the world becomes astronomical, and increases by millions each day.

Similarly, the Digital Media Association writes:

As the Office has repeatedly noted, including most recently in the present NOI itself, the acceleration of the orphan works issue, an unavoidable result of the progress into the current age of mass utilization, has been further exacerbated by a series of changes in U.S. copyright law over the past half century. These changes have seen the United States Copyright Act modified with relaxed registration requirements, random exceptions and various, difficult-to-interpret extensions to copyright terms for works. These changes, both unilateral and as part of U.S. attempts to come into compliance with various obligations under international treaties, resulted in the removal of certain obligations for copyright owners to proactively assert and manage their rights. The removal of those formalities, which helped enable the public and copyright users to identify the creators and owners of copyrighted works, coupled with the various ever-increasing scope and term of copyrights, has made the issue of orphan works particularly important and something that must be dealt with immediately.

To be fair, the Copyright Office itself has referred to these changes in the Copyright Act of 1976 as exacerbating the orphan works problems on multiple occasions, including in its 2006 Report on Orphan Works.

Nevertheless, when it comes to unpublished works, this is wrong. Provisions in the 1976 Copyright Act addressing unpublished works did far more to alleviate any orphan works problems than any other law or proposal — and solved more problems than those that may have been caused by registration or duration provisions.

Unpublished works comprise a major part of the orphan works population as the comments received by the Copyright Office indicate.

The response from University of North Carolina-Chapel Hill Libraries, for example, indicates that its special collections includes “unpublished manuscripts, letters, and diaries”, such as the Watson Collection, which “consists of 7.5 linear feet of correspondence written between 1873 and 1986.” Emory University Libraries notes, “Much of the special collection materials in libraries … consist of unpublished works or works never created for commercial gain.” And the Society of American Archivists specifically cites unpublished works in its collections that require greater protections to use. And the Copyright Office’s 2006 Report notes strong opposition to excluding unpublished works from any legislation, opposition that came from a “good number of commenters.”1

So what did the Copyright Act of 1976 do that fundamentally changed the situation regarding unpublished works? Simply put, it eliminated common law protection of such works and brought them under the umbrella of federal, statutory protection.

History of common law protection for unpublished works

The protection of unpublished works at common law was recognized consistently and continuously for nearly as long as statutory copyright first appeared in England in 1710.

One of the earliest and most influential cases to enunciate this doctrine was Pope v. Curl, in 1741. Noted English poet Alexander Pope sought an injunction against bookseller Edmund Curl to stop him from printing a book of Pope’s letters. Curl argued that Pope maintained no form of property over the letters once he had sent them. The Court disagreed and held that Pope was entitled to an injunction. This despite the Statute of Anne, passed in 1710, applying only to published books, not unpublished letters.

Courts, including U.S. courts, would continue to cite to Pope for the proposition that, even in the presence of statutory copyright law, the common law continued to protect unpublished works. Within a century of the decision, the U.S. would confront issues of common law copyright in Wheaton and Donaldson v Peters. The Court ultimately held that U.S. copyright statutes supplanted any common law copyright upon publication of a work. Before publication, however, was a different story — “That an author, at common law, has a property in his manuscript, and may obtain redress against any one who deprives him of it, or by improperly obtaining a copy endeavours to realise a profit by its publication, cannot be doubted.”

Exactly 100 years after Pope, the Supreme Court confirmed that holding in Folsom v. Marsh, regarded as the origin of the fair use doctrine in the United States. Justice Story explained in his opinion there:

In short, the person, to whom letters are addressed, has but a limited right, or special property, (if I may so call it), in such letters, as a trustee, or bailee, for particular purposes, either of information or of protection, or of support of his own rights and character. The general property, and the general rights incident to property, belong to the writer, whether the letters are literary compositions, or familiar letters, or details of facts, or letters of business. The general property in the manuscripts remains in the writer and his representatives, as well as the general copyright. A fortiori, third persons, standing in no privity with either party, are not entitled to publish them, to subserve their own private purposes of interest, or curiosity, or passion.

These and other cases addressing unpublished works noted that though their protection was similar to protection of published works under statutory copyright, there was a major distinction between the two forms of copyright. Statutory copyright was primarily seen as protecting pecuniary interests, but common law copyright protection of unpublished works was decidedly not pecuniary — by keeping such works from the public, the author either wasn’t interested in or refused to commercially exploit them. As Folsom indicates, protection was justified primarily because jurists considered such works the property of the individual. It would not be until the end of the 19th Century that the reason for such protection would be expressed in more modern terms: as a right to privacy.

Louis Brandeis and Samuel Warren nearly single-handedly gave us the current day conception of the doctrine of the right to privacy — the “right to be let alone” — in the seminal 1890 Harvard Law Review article, The Right to Privacy.2 Brandeis and Warren position this right to privacy as a generalized concept that includes within it the common law copyright for literary and artistic works.

The common law secures to each individual the right of determining, ordinarily, to what extent his thoughts, sentiments, and emotions shall be communicated to others. … The existence of this right does not depend upon the particular method of expression adopted. It is immaterial whether it be by word or by signs, in painting, by sculpture, or in music.

They note that protection does not hinge on the literary merit of the work. “The same protection is accorded to a casual letter or an entry in a diary and to the most valuable poem or essay, to a botch or daub and to a masterpiece. In every such case the individual is entitled to decide whether that which is his shall be given to the public. No other has the right to publish his productions in any form, without his consent.” Also noted is the terminus of this right — publication — and how this serves as one of the distinctions between common law and statutory copyright:

The right is lost only when the author himself communicates his production to the public, — in other words, publishes it. It is entirely independent of the copyright laws, and their extension into the domain of art. The aim of those statutes is to secure to the author, composer, or artist the entire profits arising from publication; but the common-law protection enables him to control absolutely the act of publication, and in the exercise of his own discretion, to decide whether there shall be any publication at all. The statutory right is of no value, unless there is a publication; the common-law right is lost as soon as there is a publication.

Brandeis and Warren later argue that, unlike statutory copyright, common law copyright protects specific expression and any facts native to that expression, as well as what today we would call “metadata.”

A man records in a letter to his son, or in his diary, that he did not dine with his wife on a certain day. No one into whose hands those papers fall could publish them to the world, even if possession of the documents had been obtained rightfully; and the prohibition would not be confined to the publication of a copy of the letter itself, or of the diary entry; the restraint extends also to a publication of the contents. What is the thing which is protected? Surely, not the intellectual act of recording the fact that the husband did not dine with his wife, but that fact itself. It is not the intellectual product, but the domestic occurrence. A man writes a dozen letters to different people. No person would be permitted to publish a list of the letters written. If the letters or the contents of the diary were protected as literary compositions, the scope of the protection afforded should be the same secured to a published writing under the copyright law. But the copyright law would not prevent an enumeration of the letters, or the publication of some of the facts contained therein. The copyright of a series of paintings or etchings would prevent a reproduction of the paintings as pictures ; but it would not prevent a publication of list or even a description of them.

Well-settled at this point, common law copyright protection of unpublished works survived the first major revision of copyright law in the 20th century. The 1909 Copyright Act explicitly recognized this common law copyright, stating that the Act “shall [not] be construed to annul or limit the right of the author or proprietor of an unpublished work, at common law or in equity, to prevent the copying, publication, or use of such unpublished work without his consent, and to obtain damages therefor.”3

Protection of unpublished works remained strong in the decades that followed. Perhaps the strongest endorsement of this principle comes from a DC Circuit Court in 1936, which stated, “That there is and always has been a property right in letters and other writings which a court of equity will protect is too well settled to discuss. It is one of those rights which antedate the Constitution. It is inherent in a free government.”4

C.I.A.: Copyright In Action

For a good history of common law copyright protection of unpublished works arising from a remarkably intriguing set of facts, check out the 1977 case Birnbaum v. U.S.5

This case involves HTLINGUAL, a secret (and unlawful) CIA project that involved the opening, reading, and copying of mail that came in and out of the United States for two decades.  The government did not dispute the illegality of its acts during the lawsuit — the only issue confronting the court was whether the government could be sued for its actions and, if so, whether its actions were compensable under state tort law (in this case, New York). The court held that the government could be sued, then turned to consider which cause of action it could be sued for.

Among these, the court considered common law copyright. The court began its discussion by saying,

Common law copyright reserves to authors the right to control the time and circumstances of the first publication of their works. The right has been important to artists, professional writers, scholars and others whose intellectual productions have some commercial value. But the doctrine also has been utilized to shield writers of ordinary, nonliterary letters against the misappropriation and nonconsensual publication of their correspondence.

The court launches into an examination of the legal history of common law copyright, discussing Pope v. Curl, than seguing to Folsom v. Marsh. Aside from a few early decisions that held otherwise, the law seemed settled that common law copyright protected personal letters. The court here continued,

Story expounded further on this theme in his treatise on equity jurisprudence, where he eloquently urged that the true value preserved in many instances by the application of common law copyright was not dollars and cents but privacy. His thesis greatly influenced American courts and was explicitly adopted in New York in Woolsey v. JuddThe court placed its decision squarely on the need of society for a “free interchange,” writing:

Our own views and feelings, we do not hesitate to declare, correspond entirely with those which Mr. Justice Story, in the most elaborate and useful of his works, has very forcibly expressed. We agree with him, that the unauthorized publication of [personal] letters, “unless in cases where necessary to the vindication of the rights or conduct of the party against unjust claims or imputations, is perhaps, one of the most odious breaches of private confidence, of social duty, and of honorable feelings which can well be imagined. It strikes at the root of that free interchange of advice, opinions and sentiments, which seems essential to the well-being of society . . ..” (2 Story’s Equity Jur. § 946.)6

To drive the point home even more sharply that common law copyright is a device by which New York courts protect the privacy interest in the property of a letter, the opinion concluded:

[I]t is with no ordinary satisfaction that, in closing this discussion, we find ourselves in a condition to affirm that the rules of law relative to the publication of private letters, are in perfect harmony with those of social duty and sound morality, and, in the protection which they afford to individuals, consult and promote the highest interests of society.

The few subsequent New York cases to consider the issue have reaffirmed the theme that common law copyright protects an author’s privacy as well as his pocketbook.

The court ultimately held that the government had violated plaintiffs’ common law copyright in this case by copying their personal letters and “publishing” them (under the meaning of that term for common law copyright purposes).

Absolute and Perpetual Property

There is no doubt that the protection of unpublished works by common law copyright until the Copyright Act of 1976 was enacted was well-established. But what was the nature and scope of this protection?

Absolute and perpetual.

Authorities over the past two centuries on multiple occasions have stated that common law copyright protection endured until the work was published — which conceivably means forever if a work is never published.7

At least one court has held that these rights continue indefinitely in the U.S. even if they fall into the public domain in the country of their origin.8 And, it should be added, since common law copyright arises from the states, this unlimited duration is not subject to the Federal Constitution’s “limited times” requirement, a point upheld by the Supreme Court.9

In addition, the doctrine of fair use does not apply to unpublished works under common law copyright.10 In fact, no limitations in copyright law affected common law copyright.11 And, if Brandeis and Warren were correct, protection extended to certain ideas and facts in unpublished works that are not protected under statutory copyright.

Copyright Act of 1976

In the blink of an eye, centuries of common law copyright doctrine vanished when the Copyright Act of 1976 went into effect. The Act included the following provision:

On and after January 1, 1978, all legal or equitable rights that are equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106 in works of authorship that are fixed in a tangible medium of expression and come within the subject matter of copyright as specified by sections 102 and 103, whether created before or after that date and whether published or unpublished, are governed exclusively by this title. Thereafter, no person is entitled to any such right or equivalent right in any such work under the common law or statutes of any State.12

This had the effect of preempting state and common law copyright. This and other provisions in the 1976 Act brought unpublished works under the protection of federal copyright law. It eliminated publication as the dividing line between common law and statutory protection, extending protection to all works at the moment of creation.13 This also meant that, for the first time in history, fair use (and every other statutory limitation on copyright) extended to unpublished works.

Copyright Office Study on Unpublished Works

This wasn’t accidental. The revision process that led to the 1976 Copyright Act took decades. As part of it, the Copyright Office undertook a number of studies, including one on unpublished works that was released in 1961. In it, the Office examined the current law and considered the pros and cons of bringing unpublished works under federal protection. At times, the study looks at some of the same issues that motivate the present day orphan works efforts. For example, at one point the study notes:

[I]t may be argued that the privacy of authors should be respected by protecting their undisseminated writings against unauthorized disclosure for an unlimited time unless and until they or their heirs or assigns choose to make the disclosure. Thus, the author and his heirs may wish to withhold from the public his less successful works which, in their opinion, might detract from his reputation; or they may wish to keep from the public writings which contain the author’s personal observations regarding contemporary persons or events. On the other hand, it can be argued that after a considerable period of time after the death of the author and his contemporaries, the sensitivity of their remote heirs is no longer entitled to the same consideration, while the accessible “private” writings of the author may be of great interest to scholars, historians, and the public in general. The author or his heirs, or others in possession of his “private” writings, may of course destroy any writings which they believe should never be disclosed; but if these writings remain in existence, there may be a public interest in eventually allowing anyone in possession of an old manuscript to make it available for research or publication without the risk of infringement claims by remote and unknown heirs.14

Included in the final study are a number of comments from individuals that had been solicited by the Copyright Office. Of note is the fact that many who favored protection of unpublished works so that they would eventually be available to scholars and the general public believed that a term of life of the author plus fifty years (which the 1976 Copyright Act would end up adopting) was perfectly adequate to advance this public interest.15

It’s also worth noting that not everyone agreed with protecting unpublished works under federal copyright law. Noted authors’ advocate Irwin Karp wrote in response to the study:

There is no reason, either in history or considerations of policy, to bemoan the fact that an unpublished novel, a personal letter, or an unperformed play, may be protected by common law for periods exceeding the term of statutory copyright. …

It seems to me that the common law property rights in undisclosed works should be preserved. This right is in accordance with a fundamental concept of the democratic form of government; the right of privacy (even though it is not specifically granted in the Constitution). To me, it is also an inevitable concomitant of the right of free speech—that right should include not only the privilege of speaking but of withholding speech.

If an author does not choose to publish something he has conceived and written, that is his own business and nobody else’s. The theoretical loss of valuable works to the community is a risk that must be taken to preserve freedom of thought, speech and privacy—at best it is only a theoretical risk. For every author who may exercise the right of withholding his work, there are a hundred who are only too anxious to disclose the fruits of their minds to the public at the earliest possible opportunity. There is little danger that much will be lost to posterity by permitting those who do not choose to disclose to exercise that privilege.16

Always double-check copyright reform claims

When it comes to unpublished works, the Copyright Act of 1976 did not have the effect that groups mentioned at the beginning of this article say it had: all unpublished works were protected before the Act under common law copyright and protected after the Act under federal law. But more importantly, because of the differences between the two forms of copyright, the Act arguably opened the door for a lot more unpublished works to be made publicly accessible by libraries, museums, and archivists.

Under the 1976 Act, unpublished works would eventually fall into the public domain, unlike under common law. And before the copyright term ends, other parties are now able to make fair use of them. This is especially important for libraries, a number of whom assert in their orphan works comments (erroneously, in my opinion) that the fair use doctrine shields the bulk of their uses of orphan works under mass digitization projects.17 Additionally, Brandeis and Warren suggest that so-called “non-expressive” uses of unpublished works under common law — e.g., indexing, computational linguistics, natural language processing — were previously not allowed. Under federal law, they are. Again, this is important since many mass digitization projects (as well as search engines like Google) have derived great benefit from these “non-expressive” uses of copyrighted works.18


  1. Report on Orphan Works, pg. 100. []
  2. Dorothy Glancy, The Invention of the Right to Privacy, 21 Arizona Law Review 1 (1979). []
  3. 17 USC § 2, added by 35 US Stat 1076 [1909]). []
  4. Hearst v Black, 87 F.2d 68, 70. []
  5. 436 F.Supp 967 (EDNY). []
  6. That is, publishing without permission infringes freedom of speech. []
  7. Drone on Copyright (1879):

    As the law is now expounded, there are important differences between the statutory and the common-law right. The former exists only in works which have been published within the meaning of the statute, and the latter only in works which have not been so published. In the former case ownership is limited to a term of years; in the latter it is perpetual. The rights do not coexist in the same composition; when the statutory right begins the common-law right ends. Both may be defeated by publication. Thus, when a work is published in print, the owner’s common-law rights are lost, and, unless the publication be in accordance with the requirements of the statute, the statutory right is not secured.

    Copyright Office, Copyright Law Revision Study 29, Protection of Unpublished Works, pg. 32 (1961), “The historical theory of copyright law in the U.S. has been to protect private manuscripts against public disclosure, under the common law, for as long as the author or his successors choose to withhold the work from the public.” []

  8. Capitol Records v Naxos, 4 N.Y.3d 540, 562 (NY 2005). []
  9. Goldstein v California, 412 US 546, 560 (1973). []
  10. Harper & Row, Publishers v Nation Enterprises, 471 US 539, 550-51 (1985). []
  11. Protection of Unpublished Works, pg. 4. []
  12. 17 U.S.C. § 301(a). []
  13. Harper & Row at 552. []
  14. Protection of Unpublished Works, pp. 32-33. []
  15. Among them was Judge Learned Hand, who wrote, “I would impose a time limit [on works not publicly disseminated] say for 100 years after the work is created or for 50 years after the author’s death.” []
  16. Protection of Unpublished Works, pg 49, (letter dated April 4, 1958). []
  17. See, for example, comments by the Library Copyright Alliance and MIT Libraries. []
  18. See Matthew Sag, Orphan Works as Grist for Data Mill (Forthcoming, Sept. 1, 2012), for further discussion on nonexpressive uses, data processing in mass digitization projects, and orphan works. []

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  1. That’s a nice rhetorical move from a critique of “extremely long terms, high statutory damages, and a lack of formalities for copyright protection” and “the removal of certain obligations for copyright owners to proactively assert and manage their rights” that most obviously came from the 1976 Act to a discussion of a completely different aspect of the same bill. Sweetly done and appropriately lawyerly. Wouldn’t fly in my field, but I guess that’s why they teach classes in evidence.

    • I’m unclear about what you take issue with. I noted criticism of long terms and lack of formalities resulting from the 1976 Act, then pointed to the (very relevant) issue of unpublished works which, before the 1976 Act, were protected for very long terms (potentially forever) and without formalities. The 1976 Act greatly reduced the former and had no effect on the latter.