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.