Judiciary Leaders Introduce Bipartisan, Bicameral
Orphan Works Legislation
Leahy, Hatch,
Berman, Smith Introduce IP Legislation
WASHINGTON (Thursday, April 24, 2008) – Leading members of the
Senate and House Judiciary Committees today introduced bipartisan,
bicameral legislation to preserve so-called “orphan works” – works
that may be protected by copyright, but whose owners cannot be
found. Potential users of orphan works often fail to display or use
such works out of concern that they may be found liable for
statutory damages, amounting to as much as $150,000.
Legislation to address those concerns was introduced today in the
Senate by Judiciary Committee Chairman Patrick Leahy (D-Vt.) and
Sen. Orrin Hatch (R-Utah), a senior member and former chairman of
the panel, and in the House by Rep. Howard Berman (D-Calif.),
chairman of the House Judiciary Committee's Subcommittee on Courts,
the Internet, and Intellectual Property and Rep. Lamar Smith
(R-Texas), ranking member of the House Judiciary Committee. The
bill is co-sponsored in the House by Judiciary Committee Chairman
John Conyers (D-Mich.) and Rep. Howard Coble (R-N.C.) The
legislation would enable users to exhibit orphan works if, after a
thorough, documented search, the copyright owners are unable to be
located. The legislation outlines the criteria for such a search,
and provides for court review to determine if a search has been
adequate and done in good faith. If the copyright owner later
emerges, the user must pay reasonable compensation to the owner.
The bill also includes provisions to further protect owners of these
orphaned copyrights, should any user exhibit bad faith.
“This legislation will help bring together potential users and
owners of orphan works,” said Leahy. “But also as important, it
will allow the public to view works that may remain orphaned. A
Vermonter can restore a family photograph from three generations
ago, even when the original photographer is no longer available to
give permission. With this bill, we can preserve important parts of
our personal and national heritage, without giving a free license to
infringe on established copyright protections.”
“There are thousands of
artistic creations around the country that are effectively locked
away and unavailable for the general public to enjoy because the
owner of the work is unknown. Identifying the owner of a
copyrighted work is difficult in many cases and represents a huge
liability to those who would bring the work into the public domain
without permission,” Hatch said. “This bill represents a commitment
from Congress to unlock orphan works so the general public may once
again enjoy them.”
“Too many valuable works are unused because their creators are
unknown, and potential users fear excessive liability,” said
Berman. “We must act to lower the legal barriers that keep these
works from the public.”
“Millions of copyrighted works are effectively ‘locked up’ and
unable to be enjoyed by the public due to our current copyright
system,” said Smith. “As a result, investments in new works and
expositions by libraries, museums and others are frequently not
undertaken due to the possibility of lawsuits and large statutory
damage awards. By placing reasonable limitations on liability,
while ensuring that owners receive compensation for the use of their
works, the bills introduced today will help reduce uncertainty and
encourage creativity.”
Leahy, Hatch, Berman and Smith have longstanding interests in
intellectual property issues, and have introduced copyright
legislation in the 110th Congress, including a
bipartisan, bicameral bill to reform the patent system.
# # # # #
Section-by-section
for background is
below.
Statement Of Senator Patrick Leahy (D-Vt.)
On Introduction Of The Shawn Bentley Orphan Works Act Of 2008
April 24, 2008
Today, I join once again with Senator Hatch to introduce a bill that
will have a significant and positive impact on our cultural
heritage. Hundreds of thousands of so-called “orphan works” – works
that may be protected by copyright, but whose owners cannot be
indentified or located – are collecting dust. Despite tremendous
interest in using these orphan works in new collections and new
creations, they often languish unseen, because those who would like
to bring them to light, and to the attention of the world, fear the
prospect of prohibitively expensive statutory damages. In other
instances, the copyright in an orphan work may have expired, but
potential users lack the information to be certain of the propriety
of going forward with its use.
The Shawn Bentley Orphan Works Act of 2008 will remedy this
situation. It will help potential users of orphan works find the
owners of those works, and it will help the owners to receive
compensation. The works will no longer be orphans; their owners
will reap the financial benefits of their use, while the public
reaps the creative benefits. More creative works will be used,
contributing to our cultural and artistic heritage, and more
creators will receive compensation for use of their work.
Our legislation permits the use of an orphan work only if the
potential user performs and documents a good faith search for the
copyright owner. If users cannot locate and contact copyright
owners, they may use the orphan work. But if copyright owners later
make themselves known, and if users have performed a search that
qualifies under this legislation, owners are entitled to reasonable
compensation. The user will not be liable for full statutory
damages in those circumstances, but if a user does not perform that
good faith search, the user will face up to $150,000 in statutory
damages.
In practical terms, then, what does this mean? It means that a
woman in Vermont can restore a wedding photograph of her
grandparents, even if she cannot locate the photographer to get
permission to do so. It means that a library can display letters of
American soldiers wrote during World War II, even if the library
cannot contact the soldiers or their descendents. It means that
museums can exhibit Depression-era photographs, even if they cannot
determine the name of the photographer.
What this bill does not do is create a “license to infringe.” In
any of the above instances, if the users do not conduct a good faith
search for the copyright owner, those users are in the same boat
they are in now when it comes to infringement. This bill does not
change the basic premise of copyright law: If you use the
copyrighted works of others, you must compensate them for it. As an
avid photographer, I understand what it means to devote oneself to
creative expression, and I applaud anyone with the talent and
commitment to make a living doing so. Orphan works are too
important to our families, our communities, and our culture to go
left unseen and unused.
I thank Senator Hatch for his help in developing this legislation,
and I look forward to working with him to ensure that this bill
becomes law. I am especially pleased to name this bill for Shawn
Bentley. Several years ago, Shawn died, tragically young, but he
left behind a legacy of affection and regard for all of us who knew
him. He served Senator Hatch as a counsel for intellectual
property, and it was he who first inspired this effort on orphan
works. Naming this bill for him is a testament to his dedication to
the issue, and his value to the Judiciary Committee.
I ask unanimous consent that
the full bill text be included in the Record.
# # # # #
SHAWN BENTLEY
ORPHAN WORKS ACT
OF 2008
SECTION-BY-SECTION
For Background
Sec. 1. Short
Title. Cited as the “Shawn Bentley Orphan Works
Act of 2008”.
Section 2.
Limitation on Remedies in Cases Involving Orphan Works.
In general.—The
Act creates a new section 514 of title 17, which provides a
limitation on remedies in certain instances of copyright
infringement in which the user of the work is unable to locate the
owner of the work despite having conducted a diligent search.
Conditions on
eligibility. To qualify for this section, a user
must (1) perform and document a good faith – but ultimately
unsuccessful – search for the owner of the copyright in the work
being used prior to such use; (2) provide attribution if the
identity, but not location, of the owner is known; and (3) include
with the use of the infringing work a symbol, indicating the author
was not located, in a manner the Copyright Office will prescribe.
Pre-litigation
requirements. If the owner later emerges and
provides notice of infringement to the user, the user must negotiate
reasonable compensation in good faith and render any such
compensation agreed upon in a timely fashion.
Requirements in
litigation. If the owner files an action for
infringement, the user must assert the right to a limitation on
remedies under this section in its initial pleading; consent to, or
be held to be subject to, the jurisdiction of the court; and provide
documentation of the qualifying search to the owner at the time of
the initial discovery disclosures.
Qualifying
searches. A court, in determining whether a
search is diligent, shall consider factors including whether (1)
actions taken in a search are reasonable and appropriate in a given
situation, (2) the infringer employed the applicable best practices
maintained by the Copyright Office, and (3) the search took place
immediately prior to use. The fact that a work lacks identifying
information pertaining to the owner is not sufficient to meet this
standard.
The Copyright Office is charged with maintaining publicly available
statements of best practices. The statements of best practices may
include using Copyright Office records, private registries, industry
practices and guidelines, technology tools, and electronic
databases, which may require a charge or subscription fee.
Limitation on
remedies. If the user qualifies for a limitation
on remedies under this section, but the user and owner do not agree
on reasonable compensation, a court may determine and award
reasonable compensation, defined as the amount to which a willing
buyer and a willing seller would have agreed immediately prior to
use.
No award of damages may be made if the user is a nonprofit
educational institution, museum, library, archive, or a public
broadcasting entity and such user can demonstrate that the
infringement was not performed for direct commercial advantage; the
infringement was primarily educational, religious or charitable in
nature; and, the user promptly ceased infringement after receiving
notice. Proceeds directly attributable to the use may be awarded to
the owner.
A court may impose injunctive relief except in the case of a work
that has been recast or integrated with a significant amount of the
infringer’s original expression.
The limitations on remedies under this section are not available if
the infringer asserts it is not subject to the courts of the United
States for an award of damages and refuses to pay reasonable
compensation.
Preservation of
other rights,
limitations and defenses. This section clarifies that
other rights, limitations and defenses, such as fair use, are
preserved and ensures that if a statutory license is applicable to
the use, that provision applies instead of this section.
Derivative works
and compilations. This section clarifies that a
user who qualifies under this section shall not be denied copyright
protection in a compilation or derivative work based on the orphan
work contained in the compilation or derivative work.
Section 3. Database
of Pictorial, Graphic, and Sculptural Works. The
Copyright Office must create and undertake a certification process
for the establishment of electronic databases of visual works.
Certain requirements for any such registry are prescribed. The
Copyright Office will post a list of all certified registries on the
Internet.
Section 4.
Effective Date. The Act has a staggered effective
date. For pictorial, graphic, and sculptural works, the effective
date will be the earlier date of (a) the date on which the Copyright
Office certifies at least 2 separate registries under Section 3, or
(b) January 1, 2011. For all other works, the effective date will
be January 1, 2009.
Section 5. Report
to Congress. The Register of Copyrights must
report to the House and Senate Judiciary Committees on the
implementation of the Act by
December 12, 2014.
Section 6. Study on
Remedies for Small Copyright Claims. The Register
of Copyrights must conduct a study to determine the feasibility of
instituting a small claims procedure for instances of infringement
involving smaller amounts of monetary relief. The Register shall
present a report on the study, including any legislative
suggestions, not later than 2 years after the date of enactment.
Section 7. Study on
Copyright Deposits. The Comptroller General must
conduct a study examining the function of the deposit requirement in
the copyright registration system and report to Congress within 2
years after the date of enactment, making any administrative,
regulatory or legislative recommendations.