Good News, Bad News

Copyright Modernization Act pulled from this Congress, Smith vows to pass it next session

First the good news: The Copyright Modernization Act (aka Orphan Works Act) appears to be dead for this year. For the third time in as many weeks the bill failed to make it out of mark-up today, and in two days Congress adjourns for this session.

Now the bad news: Lamar Smith seems committed to this awful bill and has promised to bring it back next year.

And a caveat: Congress returns after elections for a "lame-duck" session, so the bill could still be attached to some other unrelated bill and passed into law without discussion. Don't breathe too easily until this Congress is adjourned for good.

Although there's little reason to break out the champagne over this development, the illustration community should take great satisfaction from the knowledge that your unprecedented efforts have brought sufficient scrutiny to this bill to have stalled it so far. Remember that in March, the bill's sponsors warned us that it would be law by now and that any group that opposed it would be "ignored" and "left behind." It hasn't worked out that way.

Because of your efforts — and those of our allies, the photographers, textile designers, greeting card manufacturers and others — Orphan Works legislation has now been exposed as a Trojan Horse for those who want to see a radical change in copyright law. We need to stay vigilant and we must expect that when the bill comes back (in whatever form) its sponsors will be prepared for principled opposition. They'll plan their strategy accordingly, and we should be ready to renew our campaign all over again.

In the meantime, thanks to all of you for a united effort — you did a fantastic job. We'll pass along more information when we learn more.

— Brad Holland and Cynthia Turner
for the Board of the Illustrators' Partnership

This may be posted or forwarded in its entirety to interested parties.

Manager's Amendment

Amendment to Copyright Modernization Act requires the Copyright Office to create a text-searchable database of visual works.

The Copyright Modernization Act was scheduled for mark-up today but has been delayed again, perhaps until next week.

In response to criticism from visual artists, Rep. Lamar Smith (R-Texas) has now introduced a “Manager’s Amendment” to the bill that would require the Copyright Office to create a text-searchable database of visual works.

The effective date is whenever the Copyright Office does it or 2011, whichever comes first. With all due respect, we suggest that Congress pass the “Manager’s Amendment” by itself and put the rest of the Orphan Works Act on hold.

Reason: a searchable database would allow users to source and access a vast number of rightsholders without compromising the protected work of artists who are simply hard to find — or whose authorship can’t be determined by a text-based search — or whose art was never registered in the first place (as the 1976 Copyright Act did not require it to be).

The “Manager’s Amendment” (without the Orphan Works Act) has several virtues lacking in the blunderbuss bill.

1. It would do no harm.
2. It’s doable, although it needs tweaking. (It should require the Copyright Office to include all works registered since 1976, not just future works registered electronically once the Copyright Office can do it.)
3. It would serve as a model on which other incremental changes could be based.

In other words, as an isolated proposal, we think the “Manager’s Amendment” has tremendous merit, but attached to the Orphan Works Bill, it merely lessens the overall damage the bill would do.

Why the rush to pass this bill? No rights will be lost and no businesses damaged if it doesn’t pass, but there’ll be havoc in commercial markets if it does.

We believe the passage of the “Manager’s Amendment” in place of the Orphan Works Act, would be a significant Congressional achievement. Let the Copyright Office lead the way by making its own records more accessible to users. Once the database is in place, then re-consider the Orphan Works Act.

Brad Holland and Cynthia Turner
— For the Board of the Illustrator's Partnership

Sugar Coating the Orphan Works Act

It’s transparently irresponsible to legalize the abuse of private property on the premise that you might create some undefined “remedies” to handle the abuse.

The new Copyright Modernization Act sugarcoats the Orphan Works bill by proposing to consider "Remedies for Small Copyright Claims." We’ve already noted the problems this raises in our March 2 post, “No Time to Go Wobbly”:
http://www.illustratorspartnership.org/01_topics/article.php?searchterm=00182

and in our testimony before the House IP Subcommittee March 29:

Written Statement:
http://www.illustratorspartnership.org/01_topics/article.php?searchterm=00202
Webcast of testimony:
http://www.illustratorspartnership.org/01_topics/article.php?searchterm=00201

At that hearing, we were asked to testify about "small dollar" infringement remedies without mentioning Orphan Works – as if the subject was separate from the OW bill. We insisted that the two proposals were linked and testified to that effect. Now it's clear they are linked: see page 95-96 of The Copyright Modernization Act: Sec. 204. Inquiry on Remedies for Small Copyright Claims.

Section 204 requires the Copyright Office to conduct a year-long feasibility study, to begin "not later than 1 year after the date of the enactment of this Act," and to submit to Congress "such recommendations [for copyright Small Claims remedies] that the Register [of Copyrights] considers appropriate."

In other words, pass the bill first, then conduct the study.

Let's consider a possible scenario:

• The Copyright Modernization Act is rammed through. Congress acknowledges that infringement cases will multiply.
• But not to worry, they’re considering "remedies."
• Once the bill is passed, the Copyright Office begins its study.
• A year later, they conclude it's not economically feasible to create an entirely new branch of the federal judiciary system to handle small copyright disputes.
• Enjoy your "Modern Copyright" law, folks.

Since Congress concedes that an Orphan works bill will increase infringement litigation, lawmakers should delay any further discussion of this legislation until after the feasibility study has been conducted and its recommendations budgeted and implemented. It’s transparently irresponsible to legalize the abuse of private property on the premise that you might create some undefined “remedies” to handle the abuse.

— Brad Holland and Cynthia Turner, for the Board of the Illustrators’ Partnership

Please post or forward this email in its entirety to any interested party.

Orphan Works Update: Mark-up Postponed

The Copyright Modernization Act of 2006 was pulled from the schedule for mark-up today. House Judiciary IP Subcommittee Chairman Lamar Smith said that representatives of the various interests were meeting with him and Ranking Member Berman, or their senior staff, for further discussion.

We will keep you updated on the bill's status.

— Brad Holland and Cynthia Turner,
for the Board of the Illustrators’ Partnership

Please post or forward this email in its entirety to any interested party.

Orphan Works Go Ballistic

Smith introduces The Copyright Modernization Act of 2006

In our Senate testimony on Orphan Works, we warned that “the Orphan Works Act is not an Orphan Works Act at all, but a radically new copyright law.” Today comes the confirmation.

We’ve just been informed that Congress has drafted a new bill, tentatively called “The Copyright Modernization Act of 2006.” It’s scheduled for mark-up, perhaps as early as Wednesday.

At more than 100 pages, we haven’t had time to completely review it, but it appears to embody all the bad provisions of the Orphan Works Act into a comprehensive overhaul of U.S. Copyright Law.

Judging by its length, it’s not likely that congressmen whipped this up as an afterthought during their August recess. Yet, if it’s been in the works, why the surprise? And why the stealth?

The speed and secrecy with which certain interests want copyright law rewritten raise questions. We’ll try to learn more about this and report what we learn.

— Brad Holland and Cynthia Turner
for the Board of the Illustrators’ Partnership

Orphan Works Update

Because of the concerns raised by the textile industry, the bill may not come out of the House Judiciary Committee before Congress recesses for the summer.

The Orphan Works Act will not leave the Judiciary Committee before fall. That’s the news from Ms. Corinne Kevorkian, Senior Vice President, General Counsel & Secretary of F. Schumacher & Co., one of our allies in the fight against the Orphan Works Act:

“On July 20, the Decorative Fabrics Association, the National Textile Association and the American Manufacturing Trade Action Coalition sent [a] letter in opposition of the Orphan Works Act to the leadership of the House Judiciary Committee.

“We have since heard from members of [Representatives] Coble and Inglis' staff that, because of the concerns raised by the textile industry, the bill is not coming out of the House Judiciary Committee before Congress recesses for the summer, which is good news.

“In the meantime, DFA and NTA continue to have discussions with staff members in Senators Specter's, Hatch and Leahy's offices in order to put the marker down in the Senate that this proposed legislation has serious problems. NTA and DFA will also try to schedule meetings with staff members of the full HJC [House Judiciary Committee].”

Textile companies joined this fight shortly after June 20th, when we met with greeting card companies and others at the Jacob Javits Center in Manhattan. It was they who brought this bill to the attention of the textile and manufacturing industries and all groups met by conference call on July 11th to discuss strategies for opposing HR5439.

Our congratulations to the textile manufacturers for getting the word out to these critical Congressmen. In their letter, the organizations said this:

“Unfortunately, HR5439 poses a significant new and unanticipated risk to the textile and home furnishing sector. Under the bill, commercial or non-commercial infringement of any visual art, past, present, and future, regardless of age, country of origin, published or unpublished, is permissible whenever the rights holder cannot be identified or located. Because the U.S. Copyright Office does not have a searchable database for visual designs (and no such searchable database otherwise exists) the rights holder of many creative designs will go unidentified — even in cases where the rights holder would have clearly sought to protect its legitimate rights or where such designs were previously or are currently exploited by the rights holder.”

This development points up the need to keep writing our Congressional representatives with clear and reasoned arguments for defeating or seriously amending the Orphan Works Act.

Our groups continue to work towards amending or killing this poorly conceived legislation.

— The Board of the Illustrator’s Partnership

This may be posted or forwarded in its entirety to any interested party.

Blue Girl Revisited

The Blue Girl infringement letter we published Wednesday has really hit a chord with working artists. It seems everyone understands its implications. We’ve received only one critical response, but since it anticipates the criticism we expect from the bill’s advocates, we think it’s worth addressing:

Argument: The Blue Girl case is “a standard copyright infringement case.” Since the artist’s name was on the promotional piece, she only needed to show the postcard in court to prove her name had been taken off.

Answer: If that was so, why did the case cost her four years and tens of thousands of dollars in legal fees?

Argument: “Because it was willful infringement, this is not a true orphan works case.”

Answer: Of course it’s not. That’s precisely the point.

The facts of the infringement were not self-evident: Michiko might have been able to prove that someone had removed her name and information, but she could not have proved WHO did it. That took four years of discovery.

Under current law, this was an ipso facto infringement case. The only question was who removed the name. Since it was a reasonable bet that discovery would yield an answer, Michiko was able to get a contingency fee lawyer (i.e. the lawyer knew that someone besides the plaintiff would have to pay).

But under Orphan Works law, years of litigation might yield nothing more than that SOME PERSON OR PERSONS UNKNOWN removed the name. So unless the infringer had a sudden Perry Mason Moment (“I’m guilty. I took the name off. Fine me!”), any user would be entitled to the presumption of good faith (“there was no name on the picture when I found it”). This means no practical lawyer would be likely to take the case unless the plaintiff was rich enough to pay for years of litigation, regardless of the outcome.

The problem with this bill is not with how responsible users will avail themselves of true orphaned work — but how bad actors will abuse a law that emasculates the penalties for infringement, inviting - and rewarding - abuse. The existing remedies for infringement are the only effective mechanism the law gives us to protect our work.

— Brad Holland, for the Illustrators’ Partnership

Unwilling Orphan

The story of Michiko Stehrenberger and her “Blue Girl” art

We’ve asked for permission to share this letter because it demonstrates the kind of abuse which is going on now, but which the Orphan Works bill would legalize. Because this is a real-life example, not legal theory, we’ve asked several artists to fax copies of this letter to their own Congressional representatives. Nothing else we’ve read better exposes the danger lurking behind this proposed legislation. We’ve added the boldface.

July 12, 2006

Congressman Jim McDermott

1035 Longworth House Office Building
Washington, DC 20515

1809 7th Avenue, Suite 1212
Seattle, WA 98101-1399

RE: HR 5439
Via Facsimile

Dear Congressman McDermott,

As a constituent and small business owner, I am writing to express my opposition to the Orphan Works Act now before the House Judiciary Committee.

This bill concerns me deeply because for 15 years I have made my living licensing my work to major corporations and media outlets. I have taken great care to protect the value of my intellectual property and I am concerned that the provisions of this bill have been drafted so broadly that it will undermine those efforts and undermine the value of my work to my clients. For me, the issues at stake are not hypothetical; they are a matter of experience. I would like to offer a brief account of my own experience as a cautionary example of the damage this bill could do.

The Orphan Works Act would limit or remove penalties for infringement of works whose owners are said to be hard to find. The claim is that this will provide a safe harbor for responsible users of works whose creators have died or abandoned their copyrights, and the premise is that the law will be used by those acting in good faith.

I was the plaintiff in a recent copyright infringement case, however, and I can testify that the full remedies of the law were necessary for me to prove that the infringement, which involved the removal of my name from a registered work of art, was a willful act — one conducted in bad faith by a major corporation which would not, even when confronted, admit to their abuse of my property rights.

Because existing copyright law permitted me the ability to be awarded full damages, injunctive relief and legal fees, I was able to persuade a lawyer and the necessary expert witnesses to take my case on a contingency basis. After four years of perseverance, this finally allowed me to bring the case before a judge and achieve a resolution.

Under the Orphan Works Act, however, the infringer could have asserted a “good faith” orphan works defense and said, in effect: “Go ahead and sue me!” In that event, I would have had to risk upfront out-of-pocket legal fees and court costs in the hopes of establishing the infringer’s bad faith. I would also have had to weigh that risk against the fear that a successful “good faith” defense (whether merited or not) by the infringer would have limited my award to a paltry usage fee — far from enough to cover the nearly $100,000 that the suit would eventually cost me. And I would also have to risk it while knowing that there would be NO LIMIT to the amount of money the infringer could then extract from me in a counterclaim.

Here are the details: In 2000, my copyrighted image, Blue Girl, was infringed by the world’s second largest tobacco corporation. Although the infringer knew how to contact me beforehand, they instead chose to use my artwork without my knowledge or permission in a series of poster-sized cigarette advertisements that ran in 16 states and reached an estimated 8 million readers. They even branded my art with their logo right on a focal point of the image, changing my work into a cigarette endorsement.

My art is registered with the U.S. Copyright Office and bore my copyright line and contact information. I released it on a promotional postcard I had designed, which I later discovered they had used as the source scan for their infringement.

The date of the company’s action is relevant, because the tobacco companies had already been forbidden from targeting teens and kids through the use of cartoon characters in their advertising. The Master Settlement Agreement, negotiated with the states’ Attorneys General, went into full effect in June of 2000, yet just two months later, the tobacco company started using my cartoon character in their ads. By utilizing my art, the company sought to benefit from the strong appeal that my style and characters have among my core audience of teens and kids at a time when my client base consisted of youth-focused companies such as MTV, Playstation, Hasbro and Lego.

The blatant affiliation of my artwork with their tobacco products went very much against my wishes and intentions. I had already turned down a potentially lucrative offer from a competing cigarette company years earlier because I didn’t want to promote tobacco use. Additionally, this unwelcome use of my art had the potential to harm my professional reputation among the children’s book editors and publishers with whom I was developing professional relationships.

The intentional “orphaning” of my work was total. My original promotional postcard piece contained a copyright notice and website information precisely so that potential clients would know how to contact me. The art also contained a prominent hand-signature on the image itself. This means that all three forms of identifying information had to be deliberately removed in order for a user not to find me. In other words, far from being hard to identify or locate (the standard the Orphan Works Act would use to define an “orphan”), the point of my Blue Girl image was to encourage users to find me. Yet it took only one person to find my image and sell it to the tobacco company, and somewhere in those transactions my contact information was completely removed.

Under the Orphan Works Act, this unauthorized third-party infringement would have made my image an orphaned work. And even if I suspected that the removal of my contact information had been conducted in bad faith, how would I be able to prove it?

Thankfully, the current Copyright Act allows for the “discovery” process through depositions from the defendants' staff members as witnesses. In my case, this enabled us to use the defendants’ own testimonies, provided under oath (information which they refused to provide to us otherwise) to establish that the removals of my copyright line, web address, and signature were deliberate.

With proof of “willful infringement” we were able to settle out of court by reaching an agreement consistent with the range of statutory damages figures for willful (rather than “innocent”) infringements allowed under the law.

The current Copyright Act allows for these statutory damages to be determined by a jury. The figure can be as high as $150,000 per infringement, plus reimbursement of legal costs. This is not the amount of my settlement figure — a confidentiality agreement prohibits any disclosure of that amount — but the settlement was presumably sufficient to punish a willful infringer who had acted in bad faith, and we can hope that it will in some way be adeterrent against future infringements by the same company.

However, this kind of resolution would have been problematic if not impossible under the Orphan Works Act. Without the instrument of discovery, I could not have risked the cost of proving to a judge that this had been a bad faith infringement, even despite strong outside factors pointing to that conclusion. Without the full range of remedies available under current copyright law, I would not have been able to take the essential steps necessary to establish the specific details behind the company’s actions.

In my case, expert witness costs, depositions and court costs approached the $50,000 range alone, and substantial attorneys' fees had to be paid as well. Of course, it is easy to say that this was not a true orphan works case because the infringement was proven to have been conducted in bad faith — but the company’s bad faith was not self-evident to a court without discovery testimony, and it cost me nearly $100,000 in legal fees to prove that.

All this goes to show that the problem with permitting “good faith” infringements of “orphan work”: no unscrupulous infringer who gets caught will admit to having willfully removed an artist’s name and risk exposing themselves to penalties exceeding $150,000. Instead, they’ll claim the work they infringed had no name on it and assert an orphan works defense.

Nor is a small claims court, as proposed by the Copyright Office, a rational solution for this kind of abuse. If I had had to pursue my case in small claims court instead of Federal court, there would have been no discovery process, and therefore no way to ascertain the facts. A judge would have had to weigh conflicting stories and would have likely “split the difference.” My awards for damages would likely have been limited to smaller dollar amounts — in my county, the current small claims maximum limit is $4000 — and since that sum would be less than the prevailing market rate for a standard commissioned ad with a typical transfer of rights, what would the tobacco company have learned? That the deliberate “orphaning” of an artist’s work is a rational business decision! What would stop them from making it a standard practice?

All this would have the effect of devaluing my work, because its market value is determined by the licensing potential locked in by exclusive rights. For example, the infringed version of my artwork with my name and contact information removed is still floating around out there for others to find and use. Under current law, these new infringements would also be actionable, which means the current law acts as a barrier to further abuse. But under the Orphan Works Act, no subsequent infringers would be exposed to liability, the barrier to abuse would disappear, and I could no longer avail myself of the full licensing potential ebbing from my work. That first act of intentional infringement would have made my image, in many quarters, a true “orphan”— unless, of course, a user’s “reasonable search” had led them to the tobacco company, and the company had charged them a licensing fee for the use of “their” Blue Girl image. This is just one of the possible bad scenarios I can imagine arising from the passage of this bill.

Aside from the confusion and crisis over the source of authorship of newer non-abandoned works, this would harm the lifetime value of these works as well. Illustrators, graphic designers, authors, painters, character designers, product designers, concept licensors, and other creators (not to mention their agents and business clients and others along the licensing chain) all make their living from the authorized repeat usages of this work. The Orphan Works Act will potentially harm all of these small businesses by wiping out the protections for the ownership of the core properties upon which these businesses are based.

In my own business of illustration and character design, the value of an image increases as the image gains in popularity. This can make third and fourth uses of an image more valuable than the primary usage fee, and this allows me to keep control of its licensing potential. This acts as both an incentive and a reward for artists to successfully develop an image or icon based on their own knowledge and instincts regarding trends, marketing, and other cultural factors.

In other instances, the opposite principle applies: a client will purchase exclusive first-rights to a particular image for a substantially higher fee. In exchange, the client receives increased control of how they can display that image to the public. This higher fee guarantees them exclusivity — an exclusivity that I will no longer be able to guarantee my clients under orphan works legislation. In one swoop, this bill could potentially devalue all the artwork I have so far created and hope to create in the future.

The authors of the Orphan Works Act have drafted their “limitation on remedies” because they say infringers need “certainty” that their actions won’t expose them to great financial loss. But except for the current penalties for infringement, what other mechanism does the law provide to prevent abuse? “Certainty” is not something any of us have in the commercial marketplace, so why should infringers uniquely be entitled to it?

This bill would make it cost-prohibitive for creators to pursue infringers, even when we expect (as I did in my case) that their actions were deliberate. No creator could afford to challenge a major infringing corporation on an issue of copyright without hope that the ordeal of litigation would be rewarded with justice. If an infringer has to pay only after they get caught and if there are no additional penalties imposed for doing so, and if creators are forced to lose money in order to protect their intellectual property, then this creates a massive problem and an injustice against those who strive to innovate new and original work in our marketplace.

Because this is my livelihood, and I am the exclusive controller of the usage of my work (including what sorts of products, services, events and clientele my imagery endorses to the audiences and fan bases of people who follow the progress my work) I do feel it is my responsibility and right to have reasonable control of the integrity of any affiliations with my work, especially since the current Copyright Act has already established this as appropriate.

It takes an infinite number of transactions to make the clockwork of the marketplace work, and I believe that any government should be very careful before passing laws that would interfere with such essential free market relationships. I’m grateful for the fact that the existing copyright law has protected my work, but I’m alarmed that Congress might now consider stripping away the existing protections.

Thank you for taking the time to read this letter. As a woman who has worked for 15 years as a freelance creator, my professional experience has shown me that our current copyright protections are essential, and should not be sacrificed.

Please vote against the upcoming Orphan Works bill so that we can keep these vital protections in place and continue to provide incentives to innovation in our marketplace, without exposing small business owners to such overwhelming legal and financial risks. Thank you!

Sincerely,

Michiko Stehrenberger
Seattle, Washington

© 2006, Michiko Stehrenberger. All rights reserved. Author grants permission expressly for the use of the Illustrators' Partnership of America. The Blue Girl image and its infringement can be viewed at: http://www.michiko.com/illustratorspartnership/bluegirl

This may be posted or forwarded in its entirety to any interested party.

Orphan Works Update

“Sponsors are likely to plow ahead full steam”

We’ve been advised that the sponsors of the Orphan Works bill “are likely to plow ahead full-steam.” They’re expected to “try to get the bill up to a House vote as soon as possible, maybe even this week or next,” before our opposition can affect the outcome. In short, we were told “it is paramount that the opposition scale up quickly.”

To write your Congressional representative, enter your zip code into http://www.house.gov/writerep/
Remember to note in your first paragraph that you are a.) a constituent; b.) a small business owner; c.) opposed to the Orphan Works Act.

To write members of the House Judiciary Committee, go to the IPA Orphan Works Resource Page and follow the instructions there: http://www.illustratorspartnership.org/01_topics/article.php?searchterm=00175

This may be posted or forwarded in its entirety to any interested party.

Orphan Works Advocates

Here's a reminder that your letters opposing the Orphan Works Act of 2006 are important. Congress is hearing from many advocates who support the bill and are determined to push it through. Here's a sampling:

Human Advocacy Network
http://capwiz.com/humanitiesadvocacy/issues/alert/?alertid=8870326
Public Knowledge
http://www.publicknowledge.org/node/487/act
Indy Filmmakers Go to Washington
http://www.publicknowledge.org/node/439
The Association of American Universities hires Ropes & Gray to lobby on “orphan works” legislation
http://www.thehill.com/thehill/export/TheHill/Business/062706_bottomline.html

For additional information about Orphan Works developments, go to the IPA Orphan Works Resource Page for Artists
http://www.illustratorspartnership.org/01_topics/article.php?searchterm=00185

This may be posted or forwarded in its entirety to any interested party.

Key Congressional Districts

We’ve been advised of three more Congressional districts that merit special attention in opposing the Orphan Works Act. Would all artists in the following area codes: (262), (513), and (630) please email your representatives:

Representative James Sensenbrenner ( R-WI 5th) Fax (262) 784-9437 (Chairman of the House Committee on the Judiciary)

Representative John A. Boehner (R-OH 8th) Fax (513) 779-5315 Fax in DC (202) 225-0704

Representative J. Dennis Hastert (R-IL 14th) Fax (630) 406-1808 (House Majority Leader) Fax in DC (202) 225-0697

When you write, remember to note in your first paragraph that you are a.) a constituent; b.) a small business owner; c.) opposed to the Orphan Works Act. Give a brief account of your professional status. You can verify that this is your representative by entering your zip code into http://www.house.gov/writerep/

We’d also like several artists from these area codes to contact us for an additional mailing to these congressmen. To volunteer, just tell us you’re willing to help, hit “Reply” and for reference, please note your area code. We’ll e-mail you individually to explain how you can help.

Thanks.
The Board of the Illustrators’ Partnership

This may be posted or forwarded in its entirety to any interested party.

Tech Law Journal Analysis of H.R. 5439, The Orphan Works Act of 2006

by David Carney, Publisher and Author of Tech Law Journal

David Carney is author and publisher of the respected Tech Law Journal. These excerpts are from his analysis of the Orphan Works Act. We quote from it with permission. The emphasis (in bold) is ours.

The [Orphan Works] bill is supported by representatives of libraries, museums, and universities. It is also supported by the trade groups that represent the major copyright industries, including the music, movie, book, and software industries. All would be net beneficiaries of the bill. While the bill would weaken the protection afforded to creators, it would primarily harm individuals and very small businesses. Representatives of those who create works in photography, illustration, and the visual arts have adamantly opposed the Copyright Office's proposal.

The Copyright Act now contains no requirement that a creator register a work for the copyright to exist. The Berne Convention, to which the U.S. is a party, prohibits the imposition of such formalities.This bill does not expressly require registration, or other formalities. However, the [bill’s] language, especially the reference to registration, is in the nature of a reinstitution of formalities.

Limitations on Remedies. The bill would substantially limit the copyright holder's ability to recover financially, or obtain injunctive relief, for infringement. The bill provides that “an award for monetary relief (including actual damages, statutory damages, costs, and attorney’s fees) may not be made, other than an order requiring the infringer to pay reasonable compensation for the use of the infringed work.” (Parentheses in original.) The bill does not define the term “reasonable compensation”.

[T]he bill provides for the recovery of no monetary relief where the infringement was “without any purpose of direct or indirect commercial advantage and primarily for a charitable, religious, scholarly, or educational purpose”. The bill also provides that the “owner of the infringed copyright has the burden of establishing the amount on which a reasonable willing buyer and a reasonable willing seller in the positions of the owner and the infringer would have agreed with respect to the infringing use of the work immediately before the infringement began.” Satisfying this burden would likely require copyright owners to retain expert witnesses to perform analyses, write reports, and testify in depositions and trial. The cost of this would not be recoverable, but in many cases would likely exceed “reasonable compensation”.

The bill also limits the owner's right to exclude. It provides that “the court may impose injunctive relief to prevent or restrain the infringing use, except that, if the infringer has met the requirements of subsection (a), the relief shall, to the extent practicable, account for any harm that the relief would cause the infringer due to its reliance on having performed a reasonably diligent search under subsection (a).”Subsection (a) of Section 514 is the language stating when an infringer qualifies for the limitations on remedies.

The bill also imposes an almost complete ban on injunctive relief where the infringer “recasts, transforms, adapts, or integrates the infringed work with the infringer's original expression in a new work of authorship”. The bill provides that in these situations, “the court may not, in granting injunctive relief, restrain the infringer's continued preparation or use of that new work, if the infringer . . . pays reasonable compensation . . . ” The bill would limit remedies in actions for infringement.

[T]here are asymmetries in the limitations on remedies. The bill would preclude the recovery of attorneys fees by the plaintiff in an action for infringement where the court accords Section 514 status to the defendant. However, nothing in the bill limits the attorneys fees recoverable by the defendant in such an action who successfully asserts counterclaims. Also, while the bill limits the plaintiff in such an action to “reasonable compensation”, there is no parallel limitation of the recovery of damages by the defendant for counterclaims.

Retroactive Application...The bill would extend to any works, not just those created after June 1, 2008...Since 1978 many creators have relied upon the Copyright Act of 1978, and employed business practices based upon the protections of the 1978 Act. Now, Rep. Smith proposes legislation that would have the effect of depriving certain creators of the ability to enforce their copyrights because they did not take steps that the Copyright Act of 1978 did not require them to take.

Title of the Bill is Not Descriptive . . . [N]either the Copyright Act, regulations, nor this bill define the term “orphans”. Under this bill, a single copyrighted work could be accorded orphan status in one legal proceeding, but not accorded orphan status in another. Moreover, while the use of the word “orphan” in this bill is a metaphor that suggests the death of parents, or metaphorically, of authors, the bill would result in Section 514 status being extended by courts to works that were infringed immediately upon creation, where the author is alive, in business, and licensing the work. In particular, there is no minimum age for a work to be accorded Section 514 status.

— David Carney, from the Tech Law Journal
For the full text of the analysis please see
http://www.techlawjournal.com/topstories/2006/20060522.asp

Please post or forward this email in its entirety to any interested party.

Time To Act

Artists and photographers have been joined by writers, textile manufacturers and others in realizing the threat of the Orphan Works Act of 2006 (HR5439). As we continue to spread the word, it’s time again to act in concert. Others in related fields will be doing the same. Starting in about one week — as soon as Congress returns from its Fourth of July recess, we’ll be emailing lawmakers in numbers. This notice is to give you time to get your letters ready.

First, we’re asking each of you to write your Congressional representative. Please note in your first paragraph that you are a.) a constituent; b.) a small business owner; c.) opposed to the Orphan Works Act. You can identify your representative by entering your zip code into http://www.congress.org

Second, please write to members of the House Judiciary Committee.
They can be located on the IPA Orphan Works Resource Page: http://www.illustratorspartnership.org/01_topics/article.php?searchterm=00175

Several members of the Judiciary Subcommittee are particularly important because they’ve already shown an understanding of the concerns we’ve expressed in previous letters. Please thank them for this and ask them to vote against this bill or table it until it an be properly re-considered and amended. Here are some of their names:

-Howard Berman (CA, 28th District)
-Darrell Issa (CA, 49th District)
-Bob Goodlatte (VA, 6th District)
-Howard Coble (NC, 6th District)
-John Conyers (MI, 14th District)

Here is one suggested sample letter:
http://www.illustratorspartnership.org/01_topics/article.php?searchterm=00224

We’ll email you two more. Use any of these texts you like and feel free to modify them as you choose. You can edit, copy and paste the text of these letters onto your letterhead for faxing. In the letter below please insert an introductory sentence. Again, if you are a constituent, say so at first and cite your profession. Because the bill is being fast-tracked, it’s critical that we write now. To join us, get your letter ready for sending the week of July 10.

Please post or forward this email in its entirety to any interested party.

Technology is Not the Solution

“Current available picture matching technology is still in its infancy. If one of the motivations of [Orphan Works] legislation is to facilitate market development of a database for visual arts — the effective date should correlate to a time where a database could realistically be functional.”
— The Honorable Howard L. Berman For the Mark-up of H.R.5439, the “Orphan Works Act of 2006,” May 23, 2006

Technology not necessarily solution to everything
by John Jerney (May. 23, 2006)

Here in Silicon Valley, we like to think that technology, by and large, is a good thing. Technology enables. Technology empowers. Technology, when used properly, can level the playing field between the small and the mighty.

But technology, it turns out, can also be an excuse. Technology can be a shield. Technology can sometimes be used to justify.

This less-than-ideal image of technology is fast being driven into focus by a seemingly obscure piece of proposed legislation to amend the United States copyright laws, ostensively dealing with the subject of orphaned works.

Here is the issue at hand. Museums, libraries, and large corporations are trying to find a way to be able to use copyrighted works, including photographs and other artistic efforts, for which they cannot locate the copyright owner.

The owner may, for example, be anonymous, or could be deceased, unidentifiable, or simply impossible to track down. Whatever the case, potential licensees would like to gain access to these supposedly orphaned properties.

Under the current proposal, which is working its way through the committees in the U.S. Congress, organizations would only need to show that they have conducted a “good faith, reasonably diligent search” before declaring that a work has been orphaned.

And herein lies the problem. Mention the phrase “orphaned works” and the vision of cracked and yellowed century-old prints come to mind. However, an orphaned work could really be any age. In fact, it could be a freshly captured photograph whose attribution and ownership information has intentionally or unintentionally been separated from the file.

For textual material, such as articles, manuscripts and screenplays, this does not present too much of a problem. These items are easy to store on the Internet, and search technologies are rather adept at finding obscure references, even when restricted to searches based on only a few unique words.

In the case of photographs, however, the situation is much different. While some progress has been made in “fingerprinting” images, the technology behind identifying particular characteristics is still some ways off.

Likewise, even the most powerful search engine, Google, uses file names and other textual information as the primary means for performing image searches. Finding photographs based purely on content is very difficult; and you can forget about trying to locate something based on emotional traits, such as “couple in love.”

The Copyright Office itself offers little in the way of a solution. To reduce registration costs, many photographers routinely submit hundreds or thousands of photographs at a time, registered under a single title for the body of work, such as “January 2006 Photographs.”

By not offering online access to images, nor any plans to do so, the Copyright Office best remains a place where issues of ownership can be settled only after an infringement is discovered.

This all adds up to a single undeniable fact. There is no effective search mechanism, central repository, or copyright clearinghouse that enables companies to perform due diligence searches to efficiently locate artists.

Technology, it seems, is not up to the task of providing a solution.

All of which makes the proposed orphan works amendments particularly troubling to creative artists, including photographers, by effectively turning the burden of effort related to identifying and upholding the proper use and licensing of creative works from the potential licensee to the owner.

Morton Beebe (http://www.mortonbeebe.com), the legendary San Francisco photographer who helped establish Image Bank, the first modern stock photography agency, is particularly wary of the proposed changes.

“I hope it doesn't become law because I don't think it serves the best interest of the public at large,” Beebe told me. “To me, it just provides people with a weak excuse to circumvent and abuse the ingenuity of creative artists.”

As an explorer as well as a photographer, Beebe became the 39th person to reach the South Pole while photographing in Antarctica in 1957-58.

“I remember all the way back to the 1950s when I was part of Magnum Photos in New York,” Beebe explained. “They assigned people to go through issues of every major magazine to search for credits, or the absence of credits. Now you, as an individual, couldn't possibly do that.

“But that's what you have to do to protect your copyright. If you don't, your material will eventually land in the public domain.”

The deterrent today for copyright infringement is a rather stiff set of penalties, including actual damages, statutory damages, and attorney fees related to seeking recourse.

But the proposed amendment actually lessens the amount of damages a creative artist can claim for so-called orphaned works, settling instead on an undefined concept of “fair market value.”

“The idea behind the law appears to be, 'go ahead and use the images and there will be no penalty' because you supposedly made every effort to locate the owner,” Beebe said.

For his part, Beebe has been trying to get leading manufacturers to include watermarking technologies as standard features in professional cameras.

“I tried to get camera makers to actually embed a copyright right on the film as long as 30 years ago. They didn't want to do it,” Beebe recalled. It would seem even simpler today to include a menu item secured by a code allowing customized copyright information to be added directly to the RAW image data.

“Why can't they do that?” he asked. “Plus, it could serve as a great antitheft system. In the meantime, we just have to keep up with the times and make sure that we, as individuals, aren't shoved out of the business.”

For Beebe, the orphaned works amendment is a colossal mistake. “To me, it's almost as if people started stealing cars left and right,” he explained. “Imagine if all they had to say was, 'Gee, the car was there with the keys in it, and I couldn't find the car registration. I'm sorry, it was just an innocent theft.' How far would that explanation go?”

http://www.yomiuri.co.jp/dy/features/culture/20060523TDY18004.htm"

John Jerney is a freelance travel writer and photographer based in the San Francisco Bay Area. He also contributes the “Report from Silicon Valley” column to The Daily Yomiuri, the English language edition of the Yomiuri Shimbun, Japan’s largest circulation daily newspaper. This article is reprinted here with the author’s permission.

Frequently Asked Questions About Orphan Works

Legal analysts are debating Orphan Works legislation in terms of statute law, but many seem unfamiliar with how we actually license art in the marketplace. As a result, they find our opposition to the bill hard to understand. Some of their questions are good ones and deserve a direct response.

Q: How realistic is it to fear that recent photographs and illustrations will actually be declared "orphan works" and used with impunity?

A: Very realistic. If a picture is unmarked, the average user will have no way to tell if it was made 30 years ago and has been abandoned or if it’s the work of an artist with an active business, but who, for various reasons, the user simply couldn’t find.

Q: Then why shouldn’t artists be required to mark their works so users can find them?

A: Three reasons:

First, the Berne Convention forbids the requirement of formalities such as marking.

Second, trade practice requires that images routinely be published without identifying information, artists’ signatures or marks may be illegible, and information on art can be removed by others.

Third, try to imagine every daily newspaper, magazine, brochure, letterhead or annual report with every single photograph, portrait, illustration, line drawing and graphic mark covered with artists’ identifying information. No magazine would permit it, and artists who demanded it in their contracts would likely be shunned as contributors.

Q: Countless photographs and illustrations go unused because their owners can't be located. Why do visual artists object to a system that would give others access to this unused content?

A: Using another’s property (whether or not you assume they’re using it themselves) is not a right. You don’t have a right to use someone else’s car just because it’s parked somewhere and you can’t find them to ask how much they’d charge you to use it. Moreover it should not be an owner’s obligation to monitor the use of his car by unknown persons, track down those who might have used it, then accept whatever fee they say it’s their policy to pay whenever they use the cars of people they can’t find. Why should copyright, which is an even more personal form of private property than a car (because an artist’s copyright is self-created property) be any different?

Q: But the Orphan Act says if the owner surfaces they will be fairly compensated.

A: A rightsholder whose work has already been exploited will have no leverage to negotiate a fee higher than the user is willing — or able - to pay.

Q: But the artist has the possibility of stopping an infringing use if it is appropriate to do so.

A: It violates an artist’s exclusive property right to legalize infringement, then tell him he can stop the misuse of his property after the fact. No property owner should have to go to Federal court to have decisions made for him that are his to make in the marketplace.

Q: Illustrators say that the incentive to register works is a violation of the Berne Convention. But we currently have a system where one must register in order to pursue full legal avenues for copyright infringement. That's been on the books for the two decades since the US joined Berne and no one has challenged that as a "formality." Don’t you still have copyright protection without registering?

A: Yes, and that’s the chief difference. Under current law, you receive basic copyright protection even if you don’t register your work. Under Orphan Works law your work could be declared an orphan even if you have registered it. Current US law may test the limits of Berne by demanding registration for full protection, but it doesn’t violate the principle of Berne by legalizing infringement, as the Orphan Works Act would do.

Q: lllustrators claim the bill as written allows the new user to copyright all of the new, derivative work, not just the infringer’s contribution.

A: Under current law, the right to create a derivative work is one of an artist’s exclusive rights. Section 103(a) says a user can’t copyright a derivative image that he’s infringed. QUOTE: “[P]rotection for a work employing preexisting material in which copyright subsists does not extend to any part of the work in which such material has been used unlawfully.” http://straylight.law.cornell.edu/uscode/html/uscode17/usc_sec_17_00000103----000-.html#a

But this bill includes a new exception to that. It allows infringers to make and copyright derivatives. QUOTE: “Notwithstanding section 103(a), the infringing use of a work in accordance with this section shall not limit or affect the copyright protection for a work that uses the infringed work.’’ http://www.illustratorspartnership.org/01_topics/article.php?searchterm=00214

This seems quite explicit: If the entirety of an infringed work can be included in a derivative use, then the copyright of the derivative will amount to a copyright of the original. This would be a de facto capture of new exclusive rights by the infringer.

Here’s how this provision could be abused. Infringers could harvest orphans and make simple alterations to the work - change background colors, add seagulls to a sunset, crop details out of paintings. Then they could obtain copyrights on the altered work as derivatives. If one of the infringed artists were to alter his own work in the same manner, he’d infringe the infringer’s copyright to that image. The infringer’s copyright would be “thin,” so he might not be able to collect damages from the artist, but in theory he’d be able to get an injunction to stop the artist from making the same alteration.

That this could happen is not mere conjecture: According to the Advertising Photographers of America, "Within two weeks of the issuance of the Orphan Works Report, nearly all of the domain names associated with orphan works were registered by commercial interests.”

Q: The Illustrators’ Partnership says the Orphan Works Act would interfere with business transactions. Can you give an example?

A: Yes, by “limiting remedies,” the Orphan Works amendment will create a no-fault license to infringe. If you were an artist, consider a hypothetical legal action you might be forced to bring in the future:

In the 1990’s, you licensed a series of pictures for one-time use in a corporate annual report. In such cases, copyright notice and credits are most often omitted by art directors for annual reports, and almost always for advertisements in spite of the wishes of the artist to preserve his credit. You registered your copyright in the work as part of a group registration, the title of which was based on the annual report. You subsequently licensed some of these pictures for exclusive use in various ads in the United States, and you make it a practice never to license your work for inexpensive or distasteful products.

But let’s say an infringer finds the annual report. He likes your pictures, sees no credit and does a “good faith” search that fails to identify you as the owner of the copyright. He begins selling cheap t-shirts bearing your art. Under current copyright law, your remedies would include statutory damages, attorney’s fees, impoundment and injunction for this flagrant infringement - because it’s damaged your exclusive right to license your work in high-end markets. But in an orphan works action, your remedy would be what? Reasonable compensation for use of your work on cheap t-shirts. And even that would be limited to whatever maximum the court might set and would be constructed not to deprive the infringer of the profits he made “in reliance” on his so-called failure to locate you.

Without the deterrent of statutory damages and attorneys fees - and without a permanent injunction against repeat offenses by the same t- shirt seller, this experience would now act as an incentive for the infringer to exploit other uncredited (and therefore, effectively orphaned) images by other artists. He’s discovered that infringing art is just a rational business decision. In turn, this would inspire yet other infringers.

Q: But right now it's pretty easy for somebody to infringe your work and hope you don't find out.

A: Yes, but current law almost certainly deters rampant infringement because the present remedies make infringement risky.

An infringer might guess that a particular work he wishes to use is unregistered. He might also guess that if he uses it without permission, no one will know. He might well guess correctly. But he can’t be sure. This uncertainty is the only mechanism the law now provides to enforce copyright compliance. There is no Copyright Office Police Force, no Copyright Bureau of Investigation. As creators, we have to police the infringement of our work ourselves and the full remedies currently available are the only weapons we have to do it with.

Q: But wouldn’t the Orphan Works bill improve this situation for artists by placing the burden of proof on the infringer to show he had performed a diligent search?

A: Only in legal theory. In real life, the burden of proof would be quite relative because no statute can conceivably define the merits of all the myriad arguments that infringers could use to claim they’ve made “a reasonably diligent search.” On the other hand, the law would place an impossible burden of diligence on rightsholders, because no artist will ever have the resources to police infringement of his work, which can occur anytime, anywhere in the world.

Q: But artists and photographers have been suffering intellectual theft for years. Why haven’t they unionized to fight this?

A: Because that would violate the law. The National Labor Relations Act does not allow independent contractors to unionize. Only employees can unionize and employees who create intellectual property create it in the name of — and for the benefit of- their employers.

Q: Then have visual artists considered creating registries to protect their work?

A: Let’s run down the basic problems with registries:

First, it would violate Berne to make artists rely on registries to protect their copyrights.

Second, even if you developed a registry, users couldn’t track millions of unmarked pictures without image recognition technology.

Third, image recognition technology is still in its infancy; this law would take effect in two years.

Fourth, even when this technology becomes available, hundreds of millions of images will still have to be deposited in a registry in a digital format before users could find them with a search engine. Many of these pictures will have been created since 1976 when the current copyright act was passed. That law promised artists their work would be protected even if it was not marked and registered. If the Orphan Works bill becomes law, any unmarked picture created since 1976 will become a potential orphan in 2008. Can legal scholars justify exposing to infringement millions of legitimate works created in compliance with existing law on the grounds that some of the images might be orphans?

Fifth, any foreign artist whose work would otherwise be protected by Berne would find his work a potential orphan in the US. These artists, many of whom don’t speak English, would be forced to monitor US registries to see that infringers haven’t laundered their work into the public domain, protected by a law unique to the US.

To sum up: Identifying the artist of an unmarked image requires a registry that has more than the artist’s contact information and list of works. Creating digital archives spanning 30 years of past work is an immense chore for artists who have to meet daily commercial obligations. Artists, like other creators, are trying to meet the organizational, financial and legal challenges necessary to create voluntary licensing systems. But it takes time, investment, and creative organization to achieve these goals.

Q: Then what would it take to persuade photographers and illustrators to support orphan works legislation?

A: Here’s what we said in oral testimony before the Senate, April 8, 2006: “We believe the orphan works problem can be and should be solved with carefully crafted, specific limited exemptions. An exemption could be tailored to solve family photo restoration and reproduction issues without otherwise gutting artists’ and photographers' copyrights. Usage for genealogy research is probably already covered by fair use, but could rate an exemption if necessary. Limited exemptions could be designed for documentary filmmakers. Libraries and archives already have generous exemptions for their missions. And if their missions are changing, they should abide by commercial usage of copyrights, instead of forcing authors to subsidize their for-profit ventures.”

Q: But wouldn’t the Orphan Works Act strengthen the credibility of copyright law by showing that our copyright system can continue to work in a digital age? It would remove one arrow from the quiver of copyright foes, and make it harder to ignore copyright law by claiming it isn't practical any more.

A: Just the opposite. This bill would be retroactive, betraying all those artists who for 30 years didn’t do what the law didn’t require. Those artists could now see their copyrights cast to the winds. You don’t engender respect for the law by betraying those who have observed it.

Q: But remember what we're trying to do with orphan works legislation. We're trying to gain access to content that currently goes unused, while ensuring that if the owner surfaces they will be fairly compensated and have the possibility of stopping use if it is appropriate to do so.

A: The fundamental problem with the Orphan Works Act is that it’s drafted so broadly its use cannot be confined to real orphaned work situations. It will create a class of works that are not orphans but which will be caught in an orphan works net. This will open the door to widespread abuse. Artists will have to depend on vigilance and luck to detect infringements, then identify and locate infringers. If they don’t accept an infringer’s version of “reasonable compensation” they’ll be forced into the courts, perhaps not once or twice in their careers - but on a regular basis.


The Orphan Works Act will create a problem which it says can be solved by creating an entirely new branch of the Federal judiciary to deal with the problem. First, this is illogical. Second, the law is a blunt instrument and should be used only as a tool of last resort. Lawmakers cannot draft laws so precisely as to replace free market decisions. This is why we should not drive an entire class of market transactions into the courts, as the Orphan Works Act would do.

- Brad Holland and Cynthia Turner, for the Board of the Illustrators’ Partnership

This may be republished, posted or forwarded in its entirety to any interested party.

Berman Statement on Orphan Works

by Honorable Howard L. Berman, Ranking Member of the House Subcommittee on the Courts, the Internet and Intellectual Property

The following quotes are from the statement of the Honorable Howard L. Berman (D-CA) Ranking Member of the House Subcommittee on the Courts, the Internet and Intellectual Property. They were made May 23, 2006, during the Mark-up of H.R.5439, the "Orphan Works Act of 2006.”

"This bill incorporates many solutions to issues I raised at the hearing. Since that hearing the parties have worked diligently to reach consensus on many of the provisions of this legislation. However, there is yet more work to be done. I still share many of the concerns raised by the visual arts community and hope I can work with the Chairman before Full Committee mark-up to address them further.

"Many of the problems experienced by the visual arts community don't specifically concern orphan works but relate in general, to how the copyright system accommodates their art. Unfortunately, the overlay of the orphan works provision, on top of the current copyright scheme, exacerbates the problem. They worry that many of their works will end up as 'orphan works,' and argue this bill effectively removes their 'hammer' to prevent infringement...

"It is said that 'A picture is worth a thousand words.' The question here however, is how much it is worth in dollars. There remain a number of issues to address where the copyright owner of an orphan work resurfaces - for example, providing enough flexibility in determinations of reasonable compensation, and the necessary level of creativity in the new work to avoid an injunction. An especially important issue is the 'safe harbor' against monetary relief. For uses within this zone, a resurfacing copyright owner can claim no monetary relief whatsoever. We need to make sure that this zone is defined clearly and narrowly so that effective copyright protection is not forfeited...

"Current available picture matching technology is still in its infancy. If one of the motivations of this legislation is to facilitate market development of a database for visual arts - the effective date should correlate to a time where a database could realistically be functional.

"Furthermore, if the Copyright Office is the first stop of any reasonable diligent search - they should be armed with user-friendly search capability. It is time for the Copyright Office to move into the 21st Century.

For the full text of Rep. Berman’s statement, go to: http://www.house.gov/apps/list/speech/ca28_berman/orphan_works_hearing.html

Derivative Abuse

The Orphan Works bill contains a terrible new provision that gives an infringer exclusive rights to the entirety of an orphaned work if the infringer uses that work in a “derivative work.” A derivative work is one made by incorporating the work of others.

House negotiators have removed the requirement that infringed art be used in a derivative that contains substantial original expression. This means an infringer could now simply crop or desaturate your work, then use it again with complete immunity from prosecution. Here’s how the law would change:

Under current copyright law, you have exclusive rights to the original work you create. This includes the right to prepare new, derivative works from your old works, or to authorize (or refuse to authorize) others to do so. If someone creates a derivative work by infringing yours, current law doesn’t entitle them to copyright protection. Here’s what the current law says:

103(a) The subject matter of copyright as specified by section 102 includes compilations and derivative works, but protection for a work employing preexisting material in which copyright subsists does not extend to any part of the work in which such material has been used unlawfully.
http://straylight.law.cornell.edu/uscode/html/uscode17/usc_sec_17_00000103----000-.html#a

But under the Orphan Works amendment, an infringer could now confiscate this exclusive right - not by creating a substantially new work — but simply by infringing yours. The infringer would receive full copyright protection. Here’s what the bill says:

“(d) COPYRIGHT FOR DERIVATIVE WORKS. —Notwithstanding section 103(a), the infringing use of a work in accordance with this section shall not limit or affect the copyright protection for a work that uses the infringed work.’’ http://www.illustratorspartnership.org/01_topics/article.php?searchterm=00214

This measure will have far reaching implications. For example, it will undermine your ability to negotiate exclusive rights with clients —particularly buyouts for advertising or institutional clients - because neither party in a business transaction can guarantee exclusivity.

It will also let opportunists capture the full rights to existing work. Stockhouses, for example could harvest “orphan” works, modify the work slightly and claim it as their own. These “derivative works” would then become the wholly-owned, fully-protected copyrighted work of the stockhouse.

And free culture advocates could now appropriate orphaned work and embed it with the viral Creative Commons share-alike license. See Orphaned Art and a Copyright Virus, http://www.illustratorspartnership.org/01_topics/article.php?searchterm=00190

This provision has been expanded from the original Copyright Office proposal. It was added during closed door negotiations. Put it at the head of your list of things that are wrong with this entire Orphan Works project.

— Brad Holland and Cynthia Turner, for the Board of the Illustrators’ Partnership

To read H.R. 5439 - The Orphan Works Act of 2006, go to http://thomas.loc.gov

This may be republished, posted or forwarded in its entirety to any interested party.

Assault on Copyright

First the good news. It appears that the Orphan Works bill won’t let someone infringe your work just by saying he couldn’t find copyright information on the work itself. He’ll have to say he’s also made a good faith effort to find you through other means. The bad news is you can either take his word that he’s done so or you can take him to Federal court.

We haven’t had time to get a professional analysis of the Orphan Works bill yet, but on first reading - and in spite of a few beneficial changes - it still appears to be not an orphan works bill at all, but a frontal assault on copyright, “the dawn of a new, user-focused era in copyright legislation” as one giddy legal scholar wrote yesterday.

The most striking aspect of the official bill remains its casual no-fault attitude toward infringement. The language treats copyright abuse as just another form of copyright usage:

“...the remedies for infringement shall be limited under subsection (b) if the infringer sustains the burden of proving, and the court finds, that—(A) before the infringing use of the work began, the infringer, a person acting on behalf of the infringer, or any person jointly and severally liable with the infringer for the infringement of the work— (i) performed and documented a reasonably diligent search in good faith to locate the owner of the infringed copyright; but (ii) was unable to locate the owner; and... [etc.]” (our emphasis).

Try substituting “thief” or “theft” for “infringer” and “infringement” and it’s clear what a stunning reversal of common sense this bill embodies toward the treatment of private property.

The second striking aspect is the bill's unhealthy reliance on the courts to resolve the abuses the bill itself will generate. We make our living licensing the rights to our work. Our time is already consumed adjusting to short deadlines and shifting business conditions. We shouldn’t have to make traipsing to Federal court a routine part of our business experience just to get paid for the use of our work.

Then there’s the matter-of-fact assumption that good faith infringement can be easily and reliably established, either in or out of a courtroom. It can’t. Yet this bill will make it the touchstone for establishing whether someone has the unauthorized right to use our work.

With all due respect, this bill needs to be more than just changed. It needs to be opposed. Other countries are finding ways to solve the orphan works problem without a wholesale weakening of creators’ rights. Why can’t we?

-Brad Holland and Cynthia Turner, for the Board of the Illustrators’ Partnership

This may be republished, posted or forwarded in its entirety to any interested party.

Infringer’s Bill of Rights

Review the Orphan Works Bill and try substituting “thief” or “theft” for “infringer” and “infringement “ and it’s clear what a stunning reversal of common sense this bill embodies toward the treatment of private property:

109TH CONGRESS
2D SESSION H. R. 5439

To amend title 17, United States Code, to provide for limitation of remedies
in cases in which the copyright owner cannot be located, and for other
purposes.

IN THE HOUSE OF REPRESENTATIVES

Mr. SMITH of Texas introduced the following bill; which was referred to the
Committee on ____________________________

A BILL

To amend title 17, United States Code, to provide for limitation of remedies in cases in which the copyright owner cannot be located, and for other purposes.

Be it enacted by the Senate and House of Representatives of the United States of America in Congress assembled,

SECTION 1. SHORT TITLE.
This Act may be cited as the “Orphan Works Act of 2006’’.

SEC. 2. LIMITATION ON REMEDIES IN CASES INVOLVING ORPHAN WORKS.

(a) LIMITATION ON REMEDIES.—Chapter 5 of title 17, United States Code, is amended by adding at the end the following new section:

Ҥ 514. Limitation on remedies in cases involving orphan works

“(a) LIMITATION ON REMEDIES.—

“(1) CONDITIONS.—Notwithstanding sections 502 through 505, in an action brought under this title for theft of copyright in a work, the remedies for theft shall be limited under subsection (b) if the thief sustains the burden of proving, and the court finds, that—

“(A) before the theft of the work began, the thief, a person acting on behalf of the thief, or any person jointly and severally liable with the thief for the theft of the work—

“(i) performed and documented a reasonably diligent search in good faith to locate the owner of the stolen copyright; but

“(ii) was unable to locate the owner; and

“(§) the stolen use of the work provided attribution, in a manner reasonable under the circumstances, to the author and owner of the copyright, if known with a reasonable degree of certainty based on information obtained in performing the reasonably diligent search.

“(2) DEFINITIONS; REQUIREMENTS FOR SEARCHES.—

“(A) OWNER OF STOLEN COPYRIGHT.—
For purposes of paragraph (1), the ‘owner’ of a stolen copyright in a work is the legal or beneficial owner of, or any party with authority to grant or license, an exclusive right under section 106 applicable to the theft.

“(§) REQUIREMENTS FOR REASONABLY DILIGENT SEARCH.—(i) For purposes of paragraph (1), a search to locate the owner of a stolen copyright in a work—

“(I) is ‘reasonably diligent’ only if it includes steps that are reasonable under the circumstances to locate that owner in order to obtain permission for the use of the work; and

“(II) is not ‘reasonably diligent’ solely by reference to the lack of identifying information with respect to the copyright on the copy or phonorecord of the work.

“(ii) The steps referred to in clause (i)(I) shall ordinarily include, at a minimum, review of the information maintained by the Register of Copyrights under subparagraph (C).

“(iii) A reasonably diligent search includes the use of reasonably available expert assistance and reasonably available technology, which may include, if reasonable under the circumstances, resources for which a charge or subscription fee is imposed.

“(C) INFORMATION TO GUIDE SEARCHES.—The Register of Copyrights shall receive, maintain, and make available to the public, including through the Internet, information from authoritative sources, such as industry guidelines, statements of best practices, and other relevant documents, that is designed to assist users in conducting and documenting a reasonably diligent search under this subsection. Such information may include—

“(i) the records of the Copyright Office that are relevant to identifying and locating copyright owners;

“(ii) other sources of copyright ownership information reasonably available to users;

“(iii) methods to identify copyright ownership information associated with a work;

“(iv) sources of reasonably available technology tools and reasonably available expert assistance; and

“(v) best practices for documenting a reasonably diligent search.

“(b) LIMITATIONS ON REMEDIES.—The limitations on remedies in a case to which subsection (a) applies are the following:

“(1) MONETARY RELIEF.—

“(A) GENERAL RULE.—Subject to subparagraph (B), an award for monetary relief (including actual damages, statutory damages, costs, and attorney’s fees) may not be made, other than an order requiring the thief to pay reasonable compensation for the use of the stolen work.

“(B) EXCEPTIONS.—(i) An order requiring the thief to pay reasonable compensation for the use of the stolen work may not be made under subparagraph (A) if—

“(I) the theft is performed without any purpose of direct or indirect
commercial advantage and primarily for a charitable, religious, scholarly, or educational purpose, and

“(II) the thief ceases the theft expeditiously after receiving notice of the claim for theft, unless the copyright owner proves, and the court finds, that the thief has earned proceeds directly attributable to the theft.

“(ii) If the thief fails to negotiate in good faith with the owner of the stolen work regarding the amount of reasonable compensation for the use of the stolen work, the court may award full costs, including a reasonable attorney’s fee, against the thief under section 505, subject to section 412.

“(2) INJUNCTIVE RELIEF.—

“(A) GENERAL RULE.—Subject to subparagraph (B), the court may impose injunctive relief to prevent or restrain the stolen use, except that, if the thief has met the requirements of subsection (a), the relief shall, to the extent practicable, account for any harm that the relief would cause the thief due to its reliance on having performed a reasonably diligent search under subsection (a).

“(§) SPECIAL RULE FOR NEW WORKS.—In a case in which the thief recasts, transforms, adapts, or integrates the stolen work with the thief’s original expression in a new work of authorship, the court may not, in granting injunctive relief, restrain the thief’s continued preparation or use of that new work, if the thief—

“(i) pays reasonable compensation to the owner of the stolen copyright for the use of the stolen work; and

“(ii) provides attribution to the owner of the stolen copyright in a manner that the court determines is reasonable under the circumstances.

“(C) TREATMENT OF PARTIES NOT SUBJECT TO SUIT.—The limitations on remedies under this paragraph shall not be available to a thief that asserts in an action under section 501(b) that neither it nor its representative acting in an official capacity is subject to suit in Federal court for an award of damages to the copyright owner under section 504, unless the court finds that such thief has—

“(i) complied with the requirements of subsection (a) of this section;

“(ii) made a good faith offer of compensation that was rejected by the copyright owner; and

“(iii) affirmed in writing its willingness to pay such compensation to the copyright owner upon the determination by the court that such compensation was reasonable under paragraph (3) of this subsection.

“(D) CONSTRUCTION.—Nothing in subparagraph (C) shall be deemed to authorize or require, and no action taken pursuant to subparagraph (C) shall be deemed to constitute, an award of damages by the court against the thief.

“(E) RIGHTS AND PRIVILEGES NOT WAIVED.—No action taken by a thief pursuant to subparagraph (C) shall be deemed to waive any right or privilege that, as a matter of law, protects such thief from being subject to suit in Federal court for an award of damages to the copyright owner under section 504.

“(3) REASONABLE COMPENSATION.—In establishing reasonable compensation under paragraph (1) or (2), the owner of the stolen copyright has the burden of establishing the amount on which a reasonable willing buyer and a reasonable willing seller in the positions of the owner and the thief would have agreed with respect to the stolen use of the work immediately before the theft began.

“(c) PRESERVATION OF OTHER RIGHTS, LIMITATIONS, AND DEFENSE.—This section does not affect any right, limitation, or defense to copyright theft, including fair use, under this title. If another provision of this title provides for a statutory license when the copyright owner cannot be located, that provision applies in lieu of this section.

“(d) COPYRIGHT FOR DERIVATIVE WORKS.—Notwithstanding section 103(a), the stolen use of a work in accordance with this section shall not limit or affect the copyright protection for a work that uses the stolen work.’’.

(b) CONFORMING AMENDMENT.—The table of sections for chapter 5 of title 17, United States Code, is amended by adding at the end the following new item:
“514. Limitation on remedies in cases involving orphan works.’’.

(c) EFFECTIVE DATE.—The amendments made by this section shall apply only to stolen uses that commence on or after June 1, 2008.

SEC. 3. REPORT TO CONGRESS ON AMENDMENTS.
The Register of Copyrights shall, not later than December 12, 2014, report to the Committee on the Judiciary of the House of Representatives and the Committee on the Judiciary of the Senate on the implementation and effects of the amendments made by section 2, including any recommendations for legislative changes that the Register considers appropriate.

SEC. 4. INQUIRY ON REMEDIES FOR SMALL COPYRIGHT CLAIMS.
(a) IN GENERAL.—The Register of Copyrights shall conduct an inquiry with respect to remedies for copyright theft claims seeking limited amounts of monetary relief, including consideration of alternatives to disputes currently heard in the United States district courts. The inquiry shall cover theft claims to which section 514 of title 17, United States Code (as added by section 2 of this Act), apply, and other theft claims under title 17, United States Code.

(b) PROCEDURES.—The Register of Copyrights shall publish notice of the inquiry under subsection (a), providing a period during which interested persons may submit comments on the inquiry, and an opportunity for interested persons to participate in public roundtables on the inquiry. The Register shall hold the public roundtables at such times as the Register considers appropriate.

(c) REPORT TO CONGRESS.—The Register of Copyrights shall, not later than 1 year after the date of the enactment of this Act, prepare and submit to the Committee on the Judiciary of the House of Representatives and the Committee on the Judiciary of the Senate a report on the inquiry conducted under this section, including such recommendations that the Register considers appropriate.


To read the Orphan Works Bill: http://www.illustratorspartnership.org/01_topics/article.php?searchterm=00214

This may be republished, posted or forwarded in its entirety to any interested party.

Orphan Works Bill Released in House

After nearly three months of closed-door negotiations, the House Subcommittee on Courts, the Internet and Intellectual Property has drafted an Orphan Works bill.

It incorporates a number of changes that will improve the draft language originally proposed by the Copyright Office. These changes will limit the damage the original proposal would have caused, but there are still major areas that will put artists’ and photographers’ work at risk.

Over the next several days, we’ll try to summarize where we stand and we’ll call on you again to join us and other organizations in a coordinated letter writing campaign to your House representatives. Your letters have made a big difference so far. We need to persevere. Thanks as always for your patience and support.

The Board of the Illustrators’ Partnership

Bill Text – “The Orphan Works Act of 2006”

by Rep. Lamar Smith, et al

109TH CONGRESS 2D SESSION H. R. ____ To amend title 17, United States Code, to provide for limitation of remedies in cases in which the copyright owner cannot be located, and for other purposes. IN THE HOUSE OF REPRESENTATIVES Mr. SMITH of Texas introduced the following bill; which was referred to the Committee on ____________________________ A BILL To amend title 17, United States Code, to provide for limitation of remedies in cases in which the copyright owner cannot be located, and for other purposes. 1 Be it enacted by the Senate and House of Representa- 2 tives of the United States of America in Congress assembled, 3 SECTION 1. SHORT TITLE. 4 This Act may be cited as the “Orphan Works Act 5 of 2006’’. Page 2 1 SEC. 2. LIMITATION ON REMEDIES IN CASES INVOLVING 2 ORPHAN WORKS. 3 (a) LIMITATION ON REMEDIES.—Chapter 5 of title 4 17, United States Code, is amended by adding at the end 5 the following new section: 6 “ß 514. Limitation on remedies in cases involving or- 7 phan works 8 “(a) LIMITATION ON REMEDIES.— 9 “(1) CONDITIONS.—Notwithstanding sections 10 502 through 505, in an action brought under this 11 title for infringement of copyright in a work, the 12 remedies for infringement shall be limited under 13 subsection (b) if the infringer sustains the burden of 14 proving, and the court finds, that— 15 “(A) before the infringing use of the work 16 began, the infringer, a person acting on behalf 17 of the infringer, or any person jointly and sev- 18 erally liable with the infringer for the infringe- 19 ment of the work— 20 “(i) performed and documented a rea- 21 sonably diligent search in good faith to lo- 22 cate the owner of the infringed copyright; 23 but 24 “(ii) was unable to locate the owner; 25 and Page 3 1 “(B) the infringing use of the work pro- 2 vided attribution, in a manner reasonable under 3 the circumstances, to the author and owner of 4 the copyright, if known with a reasonable de- 5 gree of certainty based on information obtained 6 in performing the reasonably diligent search. 7 “(2) DEFINITIONS; REQUIREMENTS FOR 8 SEARCHES.— 9 “(A) OWNER OF INFRINGED COPYRIGHT.— 10 For purposes of paragraph (1), the ‘owner’ of 11 an infringed copyright in a work is the legal or 12 beneficial owner of, or any party with authority 13 to grant or license, an exclusive right under sec- 14 tion 106 applicable to the infringement. 15 “(B) REQUIREMENTS FOR REASONABLY 16 DILIGENT SEARCH.—(i) For purposes of para- 17 graph (1), a search to locate the owner of an 18 infringed copyright in a work— 19 “(I) is ‘reasonably diligent’ only if it 20 includes steps that are reasonable under 21 the circumstances to locate that owner in 22 order to obtain permission for the use of 23 the work; and 24 “(II) is not ‘reasonably diligent’ solely 25 by reference to the lack of identifying in- Page 4 1 formation with respect to the copyright on 2 the copy or phonorecord of the work. 3 “(ii) The steps referred to in clause (i)(I) 4 shall ordinarily include, at a minimum, review 5 of the information maintained by the Register 6 of Copyrights under subparagraph (C). 7 “(iii) A reasonably diligent search includes 8 the use of reasonably available expert assistance 9 and reasonably available technology, which may 10 include, if reasonable under the circumstances, 11 resources for which a charge or subscription fee 12 is imposed. 13 “(C) INFORMATION TO GUIDE 14 SEARCHES.—The Register of Copyrights shall 15 receive, maintain, and make available to the 16 public, including through the Internet, informa- 17 tion from authoritative sources, such as Indus- 18 try guidelines, statements of best practices, and 19 other relevant documents, that is designed to 20 assist users in conducting and documenting a 21 reasonably diligent search under this sub- 22 section. Such information may include— 23 “(i) the records of the Copyright Of- 24 fice that are relevant to identifying and lo- 25 cating copyright owners; Page 5 1 “(ii) other sources of copyright owner 2 ship information reasonably available to 3 users; 4 “(iii) methods to identify copyright 5 ownership information associated with a 6 work; 7 “(iv) sources of reasonably available 8 technology tools and reasonably available 9 expert assistance; and 10 “(v) best practices for documenting a 11 reasonably diligent search. 12 “(b) LIMITATIONS ON REMEDIES.—The limitations 13 on remedies in a case to which subsection (a) applies are 14 the following: 15 “(1) MONETARY RELIEF.— 16 “(A) GENERAL RULE.—Subject to sub- 17 paragraph (B), an award for monetary relief 18 (including actual damages, statutory damages, 19 costs, and attorney’s fees) may not be made, 20 other than an order requiring the infringer to 21 pay reasonable compensation for the use of the 22 infringed work. 23 “(B) EXCEPTIONS.—(i) An order requiring 24 the infringer to pay reasonable compensation Page 6 1 for the use of the infringed work may not be 2 made under subparagraph (A) if— 3 “(I) the infringement is performed 4 without any purpose of direct or indirect 5 commercial advantage and primarily for a 6 charitable, religious, scholarly, or edu- 7 cational purpose, and 8 “(II) the infringer ceases the infringe- 9 ment expeditiously after receiving notice of 10 the claim for infringement, 11 unless the copyright owner proves, and the 12 court finds, that the infringer has earned pro- 13 ceeds directly attributable to the infringement. 14 “(ii) If the infringer fails to negotiate in 15 good faith with the owner of the infringed work 16 regarding the amount of reasonable compensa- 17 tion for the use of the infringed work, the court 18 may award full costs, including a reasonable at 19 torney’s fee, against the infringer under section 20 505, subject to section 412. 21 “(2) INJUNCTIVE RELIEF.— 22 “(A) GENERAL RULE.—Subject to sub- 23 paragraph (B), the court may impose injunctive 24 relief to prevent or restrain the infringing use, 25 except that, if the infringer has met the re- Page 7 1 quirements of subsection (a), the relief shall, to 2 the extent practicable, account for any harm 3 that the relief would cause the infringer due to 4 its reliance on having performed a reasonably 5 diligent search under subsection (a). 6 “(B) SPECIAL RULE FOR NEW WORKS.—In 7 a case in which the infringer recasts, trans- 8 forms, adapts, or integrates the infringed work 9 with the infringer’s original expression in a new 10 work of authorship, the court may not, in 11 granting injunctive relief, restrain the infring- 12 er’s continued preparation or use of that new 13 work, if the infringer— 14 “(i) pays reasonable compensation to 15 the owner of the infringed copyright for 16 the use of the infringed work; and 17 “(ii) provides attribution to the owner 18 of the infringed copyright in a manner that 19 the court determines is reasonable under 20 the circumstances. 21 “(C) TREATMENT OF PARTIES NOT SUB- 22 JECT TO SUIT.—The limitations on remedies 23 under this paragraph shall not be available to 24 an infringer that asserts in an action under sec- 25 tion 501(b) that neither it nor its representative Page 8 1 acting in an official capacity is subject to suit 2 in Federal court for an award of damages to 3 the copyright owner under section 504, unless 4 the court finds that such infringer has— 5 “(i) complied with the requirements of 6 subsection (a) of this section; 7 “(ii) made a good faith offer of com- 8 pensation that was rejected by the copy- 9 right owner; and 10 “(iii) affirmed in writing its willing- 11 ness to pay such compensation to the copy- 12 right owner upon the determination by the 13 court that such compensation was reason- 14 able under paragraph (3) of this sub- 15 section. 16 “(D) CONSTRUCTION.—Nothing in sub- 17 paragraph (C) shall be deemed to authorize or 18 require, and no action taken pursuant to sub- 19 paragraph (C) shall be deemed to constitute, an 20 award of damages by the court against the in- 21 fringer. 22 “(E) RIGHTS AND PRIVILEGES NOT 23 WAIVED.—No action taken by an infringer pur- 24 suant to subparagraph (C) shall be deemed to 25 waive any right or privilege that, as a matter of Page 9 1 law, protects such infringer from being subject 2 to suit in Federal court for an award of dam- 3 ages to the copyright owner under section 504. 4 “(3) REASONABLE COMPENSATION.—In estab- 5 lishing reasonable compensation under paragraph 6 (1) or (2), the owner of the infringed copyright has 7 the burden of establishing the amount on which a 8 reasonable willing buyer and a reasonable willing 9 seller in the positions of the owner and the infringer 10 would have agreed with respect to the infringing use 11 of the work immediately before the infringement 12 began. 13 “(c) PRESERVATION OF OTHER RIGHTS, LIMITA- 14 TIONS, AND DEFENSE.—This section does not affect any 15 right, limitation, or defense to copyright infringement, in- 16 cluding fair use, under this title. If another provision of 17 this title provides for a statutory license when the copy- 18 right owner cannot be located, that provision applies in 19 lieu of this section. 20 “(d) COPYRIGHT FOR DERIVATIVE WORKS.—Not- 21 withstanding section 103(a), the infringing use of a work 22 in accordance with this section shall not limit or affect 23 the copyright protection for a work that uses the infringed 24 work.’’. Page 10 1 (b) CONFORMING AMENDMENT.—The table of sec- 2 tions for chapter 5 of title 17, United States Code, is 3 amended by adding at the end the following new item: “514. Limitation on remedies in cases involving orphan works.’’. 4 (c) EFFECTIVE DATE.—The amendments made by 5 this section shall apply only to infringing uses that com- 6 mence on or after June 1, 2008. 7 SEC. 3. REPORT TO CONGRESS ON AMENDMENTS. 8 The Register of Copyrights shall, not later than De- 9 cember 12, 2014, report to the Committee on the Judici- 10 ary of the House of Representatives and the Committee 11 on the Judiciary of the Senate on the implementation and 12 effects of the amendments made by section 2, including 13 any recommendations for legislative changes that the Reg- 14 ister considers appropriate. 15 SEC. 4. INQUIRY ON REMEDIES FOR SMALL COPYRIGHT 16 CLAIMS. 17 (a) IN GENERAL.—The Register of Copyrights shall 18 conduct an inquiry with respect to remedies for copyright 19 infringement claims seeking limited amounts of monetary 20 relief, including consideration of alternatives to disputes 21 currently heard in the United States district courts. The 22 inquiry shall cover infringement claims to which section 23 514 of title 17, United States Code (as added by section 24 2 of this Act), apply, and other infringement claims under 25 title 17, United States Code. Page 11 1 (b) PROCEDURES.—The Register of Copyrights shall 2 publish notice of the inquiry under subsection (a), pro- 3 viding a period during which interested persons may sub- 4 mit comments on the inquiry, and an opportunity for in- 5 terested persons to participate in public roundtables on 6 the inquiry. The Register shall hold the public roundtables 7 at such times as the Register considers appropriate. 8 (c) REPORT TO CONGRESS.—The Register of Copy- 9 rights shall, not later than 1 year after the date of the 10 enactment of this Act, prepare and submit to the Com- 11 mittee on the Judiciary of the House of Representatives 12 and the Committee on the Judiciary of the Senate a report 13 on the inquiry conducted under this section, including 14 such recommendations that the Register considers appro- 15 priate.