by Michael Capobianco

Recently, a consortium of university libraries called HathiTrust decided to make more than one hundred digitized books available as e-books to the universities’ communities because the books were “orphans,” works for whom the rightsholders could not be located after a diligent search.

Shortly thereafter, the Authors Guild filed a lawsuit against HathiTrust, and began to blog about how easy it was to find the authors of those books or their heirs, ridiculing HathiTrust’s process for designating orphan works (two of which, it was ultimately discovered, were actually still in print). After some defensive maneuvers, HathiTrust admitted that their process was faulty and announced they would re-think it, but intended to continue with their plan to release works they deemed to be “orphans.” Librarians across the Internet came out in support of HathiTrust, and reviled the Guild.

There is clearly a disconnect between HathiTrust and commercial writers, very handily illustrated by Duke University Scholarly Communications Officer Kevin Smith’s condescending open letter to J. R. Salamanca, author of The Lost Country, a novel originally published by Simon and Schuster in 1958, and made into the movie Wild in the Country, starring Elvis Presley, in 1961. The book was one of the “orphan works” included in the HathiTrust’s list. Within days, the Authors Guild had located Mr. Salamanca, and it wasn’t long before he was signed onto an amended complaint.

Librarians complained that this was just a publicity stunt, and it was, but it represented much more, and cuts to the heart of authors’ problem with what happened, because it showed that librarians could regard their search for the rightsholder of a work as diligent and not be even remotely so from an author’s point of view.

“Due diligence” has come up repeatedly as the minimum standard for a rightsholder search before a work could be declared an orphan, and many authors have conceded that it might be okay to allow limited use of a work if no rightsholders could be found after a truly diligent search. (See SFWA’s White Paper on Orphan Copyrights.) One of the expectations of a truly diligent search for rightsholders is that it would be conducted by someone who understands publishing and is able to search intelligently. This appears not to be the case with HathiTrust’s search, and is probably the underlying cause of the problems they encountered.

First, and most important, there’s evidence that HathiTrust was not searching for the authors themselves, but assumed that the publishers would be the rightsholders of these works. In response to an author comment that for a work published in 1958, the author would almost certainly be the only rightsholder because publishing contracts from the fifties don’t mention e-book rights, Kevin Smith comments that “The issue about who has the right to reproduce and distribute a digital copy of a work is usually a matter of interpreting the scope of the contractual assignment of those basic reproduction and distribution rights.” While this may be true in academic publishing, it’s certainly not the case in trade publishing, in which contracts explicitly lay out reproduction and distribution rights. The obvious conclusion is that HathiTrust didn’t find Mr. Salamanca because it wasn’t looking for him.

If true, this is very troubling. There is case law indicating that the author retains all rights that have not been explicitly assigned to a publisher (the Tasini case), and a preliminary finding by a judge that says that pre-electronic rights contracts do not give publishers e-book rights simply because the contracts specified book rights (Random House, Inc. v. Rosetta Book LLC). While the issue is by no means resolved (unfortunately, Rosetta Books settled with Random House, and the actual dispute wasn’t litigated, so we don’t know for sure how the case would have turned out), that’s surely enough case law to indicate that for out-of-print works, the author is likely to be the rightsholder that HathiTrust (and projects like it) should be looking for.

There’s another thing that points to the author being the rightsholder of out-of-print books, even if one concedes that the precedents above aren’t conclusive. Almost all commercial book contracts include a reversion clause that allows authors to reclaim all of their rights and terminate the contract after the book has gone out of print. Considering that a book such as The Lost Country has been out of print for at least four decades, wouldn’t it be reasonable to assume that a canny author like Mr. Salamanca had reverted his rights?

It would be extremely helpful if the folks at HathiTrust would reveal the steps they took to try and locate the rightsholder(s) of The Lost Country. What assumptions did they make? Whom did they talk to, if anyone? What references did they consult? Most important, what do they think a diligent search is? One thing is quite clear, and that is that a diligent search requires a diligent searcher. It can’t be automated. In many cases, it’s going to take time and effort and detective skills. And asking the publisher will only be one step in the process, which must involve looking at the publishing contract, and ultimately must include consulting with the author or his/her estate.

The good news is that there are many resources available to locate authors, both on the Internet and elsewhere. As the Authors Guild blog demonstrated, crowdsourcing works to some extent, but even a thoughtful Google search can produce a remarkable number of leads and, in some cases, an email address or phone number.

When the AG publicized the list of potential orphan works in HathiTrust’s hopper, one name jumped out at me: Fletcher Pratt. Although the book in question was one of his historical works, Pratt wrote some fine science fiction, both solo and in collaboration with SFWA Grand Master L. Sprague de Camp. I figured that would be a good test case, so I started investigating.

As it so happens, several years ago, SFWA initiated a project to locate contact information for the estates of deceased science fiction and fantasy writers. Bud Webster, who has deep roots in the SF pro and fan communities, heads up the project. Pratt died in 1956, but there was no contact information for Pratt’s literary estate in SFWA’s existing Estates Database. Bud put the word out among his contacts, and Orion CEO Malcolm Edwards came back with a name and address for Pratt’s heir, the daughter of Pratt’s wife Inga with her second husband. Case closed? Not quite…we’ve been unable to find a phone number or e-mail address that we could use to confirm her status, but the search is ongoing.

The moral of this story is twofold: 1) sources such as SFWA’s Estate Project should be consulted as part of any diligent search, and 2) copyright is people. Finding the heir(s) of an author can be very complicated, but that doesn’t mean a work is an orphan simply because several generations have passed since the author died.

That’s where the definition of diligence comes into play; if the trail peters out and the author or heirs can’t be found after a truly diligent search, then perhaps it’s time to declare the work an orphan. But a truly diligent search can’t economically be made for hundreds, if not thousands, of works; unless HathiTrust’s resources are very large, they are going to have to prioritize among their choices and be content with a slow, painstaking process. No doubt they would say that this defeats the whole point, which is based on Google’s notion that a thousand random books are worth more than a few carefully chosen ones. Books from academic publishers in which copyright was assigned to the publisher will undoubtedly be easier to trace. But if the orphan work concept is to have any validity at all for commercially published works, slow and painstaking is HathiTrust’s only choice.

Michael Capobianco is the author of one solo science fiction novel, Burster (Bantam 1990), and co-author, with William Barton, of the controversial hardcore SF book Iris (Doubleday 1990, Bantam paperback 1991, Avon Eos 1999), Alpha Centauri (Avon, 1997), and the critically acclaimed near-future novel Fellow Traveler (Bantam, 1991). Capobianco served as President of Science Fiction and Fantasy Writers of America (SFWA) from 1996-1998 and 2007-2008. He received the Service to SFWA Award in 2004 and is currently on SFWA’s Board of Advisors.