Appeal to House Judiciary

December 8, 2008

The Honorable John Conyers, Jr.
Chairman Committee on the Judiciary
U.S. House of Representatives
2426 Rayburn House Office Building
Washington, D.C. 20515

Dear Chairman Conyers:

On behalf of more than 81 professional organizations – and more than half a million small business owners, we are writing to express our grave concern about the controversial Orphan Works Act of 2008 (HR 5889). We’ve been advised that the Judiciary Committee may try to place it on the Suspensions Calendar and pass it by unanimous consent. Please don’t allow this to happen. This is no way to pass a controversial bill opposed by your constituents. It would strip them of their intellectual property rights without due process.

None of the organizations or businesses listed in the attached sheet – and the number is growing as more people learn about it – had a voice in drafting this bill, yet all citizens stand to be harmed by it. We believe that an orphan works bill can be perfected, but we do not believe there is time to perfect it in a lame duck session. We are therefore urging that this bill be held over until the next Congress, when we would pledge the positive input of the creative community to see that a true orphan works bill is passed.

When Chairman Berman held the single open hearing on this bill March 13th before the Subcommittee on the Courts, the Internet and Intellectual Property, he acknowledged that it was not a true orphan works bill. Let us quote him exactly:

“[W]e should correct a misnomer,” [he said]. “The works we’re talking about are not orphans...The more accurate description... is probably an unlocatable copyright owner...But for the sake of ease we’ll keep talking about them as if they’re orphans.”

With all due respect to the Congressman, if this bill is not about orphaned work, we do not think it should be passed as if it were one. Conversely, if its goal is to make the work of ordinary citizens available as commercial content to large internet databases, such a transfer of rights should be openly and transparently debated on its own merits.

An orphaned work is a work whose author has died or abandoned his copyrights. This bill would redefine an orphan as “a work by an unlocatable author.” This would radically re-define the ownership of private property. This bill, as written, would permit any person to infringe any work by any author at any time for any reason – no matter how commercial or distasteful – so long as the infringer found the author sufficiently hard to find. Since everybody can be hard for somebody to find, this voids every rights holder’s exclusive right to his or her own intellectual property as required by the U.S. Copyright Act. It creates the public’s right to use private property as a default position, available to anyone whenever any property owner fails to make himself sufficiently available to any would-be user.

The Orphan Works bill is being presented as a minor adjustment to Copyright Law. It is not. This bill – in both houses of Congress – would affect the most personal form of private property that exists – the work that citizens create themselves, the work they use to make a living, the work they use to express their time on Earth. It would affect any form of creative expression – from professional artwork to family photos, home videos, songs and lyrics – and anything that anyone has ever been placed on the Internet. It would affect the work of living authors who are still actively licensing their work.

The stated purpose of the bill is to benefit libraries and museums. But if so, why have the doors been opened wide for commercial infringement?

On the premise that culture will be harmed if authors can’t be found, this bill would “pressure” copyright holders to surrender access to their commercial inventory, metadata and licensing information to privately owned commercial databases. Unregistered work would be vulnerable to potential infringement. Since no rational business owner would voluntarily turn over private business information to outside commercial interests without agreed upon compensation, this is a troubling prospect for millions of creators and small business owners. And since copyright holders would have to digitize their entire inventory at their own expense to comply, this bill would socialize the cost of compliance while privatizing the profits from creative work.

The bill’s drafters have relied on the 2006 Report on Orphan Works, issued by the Copyright Office. But the Copyright Office studied the specific subject of orphaned work. They did not inquire into the workings of commercial markets and there is no evidence in their report that business clients are unable to find the living authors they wish to work with. No evidence whatsoever. This bill has been drafted behind closed doors, without a needs-assessment study, an economic impact analysis, or an evaluation of how the public would be affected by this transfer of private property from individuals to giant commercial databases.

The first – and so far only – effort to assess the economic impact of this legislation on the creative community came on August 8, 2008 when the Office of Advocacy of the Small Business Administration conducted an Orphan Works Roundtable in New York City. Participants represented artists, writers, photographers, songwriters, musicians, performers and many collateral small businesses. Panelists stressed several key points:

• The high cost of compliance would make it impossible for many small business owners
to comply; yet
• Failure to comply could lead to loss of intellectual property.
• The loss of exclusive rights would breach the sanctity of contracts, and
• Devalue the work of rights holders in their derivative markets.

For the 81 groups in the enclosed list, the most troubling part of this has been our near-total exclusion from the legislative process. To counter the protests of copyright holders, special interests have tried to dress up the House bill with complicated provisions, calling them “speed bumps” for infringers. For example, the House bill requires an infringer to perform a “qualifying search” – where a qualifying search is defined as one that is reasonable and diligent but reasonable diligence is left for the courts to define. Who wants to go to court to seek payment after your work has been used? We’re business people. We make our livings through voluntary business transactions, not lawsuits. Any bill that drives business decisions into the courts is bad for business and bad for the courts.

To understand this bill, we have to go to the heart of the matter. By defining millions of works as orphans on the premise that some might be, this bill will allow Internet content providers to profit by harvesting and monetizing the work of ordinary citizens, providing their databases with content they could never afford to create themselves nor license from authors.

In light of the meltdown on Wall Street, we do not think it’s wise for Congress to concentrate our nation’s copyright wealth in the hands of a few corporate databases. The contents of these databases would be more valuable than secure banking information. Yet this bill would compel small business owners to subsidize their business models. That means it would be the assets of ordinary citizens at risk in the event of their failure, mismanagement or corruption. The consequences of this step will be far-reaching, long lasting, perhaps irreversible and will strike at the heart of property ownership.

On July 11th, on behalf of all those who wish to see a true orphan works bill, the Illustrators’ Partnership, Artists Rights Society and Advertising Photographers of America submitted Amendments to the Subcommittee on Courts, the Internet and Intellectual Property.* The Amendments have never been considered. A new Congress would have the opportunity to do so. Please do not allow this legislation to pass until it can be subjected to an open, informed and transparent public examination.

Sincerely,

Brad Holland, Illustrators' Partnership
212.226.3675, brad-holland@rcn.com

Cynthia Turner, Illustrators' Partnership
850.231.4112, cynthia@cynthiaturner.com

Dr. Theodore Feder, President, Artists Rights Society
212.420.9160, tfeder@arsny.com

Martin Trailer, President, Advertising Photographers of America
800.272.6264, Martin.Trailer@APAnational.com


*H.R. 5889 Amendments available here:
http://ipaorphanworks.blogspot.com/2008/07/hr-5889-amendments.html

Orphan Works: A Public Knowledge Postmortem

"Orphan works relief was vigorously opposed by visual artists... And while we have thought some of their concerns misguided, they did a fine job of organizing and getting their voices heard."

That was the rueful conclusion Monday from the President of Public Knowledge. She was conducting a postmortem on her blog to explain why their last minute efforts to pass the Orphan Works Act failed last week.

Public Knowledge is one of the key special interest groups driving orphan works legislation. And while interested parties around the country were being told all week that the bill was dead, she now confirms that there was a secret last minute push to pass it:

"[W]ith the country's financial crisis raging [she writes] and Congress in the middle of deliberations over a bill to rescue our financial institutions, there was still an opportunity to get a bill done. But how? The best option was to get either House Courts, Internet and Intellectual Property Subcommittee Chairman Berman or House Judiciary Committee Chairman Conyers to take the Senate bill that passed and put it on the 'suspension calendar,' which is the place largely non-controversial legislation gets put so that it will get passed quickly. There can be no amendments to bills placed on the suspension calendar, but it needs a 2/3 majority to pass (italics added).

"On Saturday, September 27," she continues, she and others "were on the phone imploring the members to move the bill...":

"The negotiations went on for hours and hours on Thursday into Friday, but in the end, PK, working with the user community (libraries, documentary filmmakers, educational institutions and the College Art Association) could not agree with [sic] on language with the House staff. Late Friday afternoon, the House voted in favor of a bailout bill and everybody went home. Time had run out." http://www.publicknowledge.org/node/1783

Public Knowledge has a "Six Point Program" to undo existing copyright law. "Orphan Works Reform" is Number 5. http://www.publicknowledge.org/node/1245 And while they're "disappointed" they weren't able to pass the bill this session, she advises supporters to "focus on what positive things came out of the process, so [they] can move forward quickly next year."


PK says artists have learned their lesson

In her opinion, one of the "positive things" to "come out of the process" is that:

"[V]isual artists, graphic designers and textile manufacturers who opposed orphan works relief now understand that they must change their business models." (Italics added.)

Artists "must change their business models"? Is that a sound we hear from inside the Trojan Horse?

Whatever happened to the claim that this bill was only a minor tweak to copyright law - to let libraries and museums digitize their collections of old work - or let families duplicate photos of grandma?

That was the argument lawmakers heard last spring, when the bill was rolled out suddenly, scripted for quick and easy passage. But now that the anti-copyright lobby has had to fight for it, they've dropped their guard. Now it's time to openly lecture artists that the world is changing and we'd better get used to registering our work with privately owned "databases" -- at least if we want to ensure that our works won't become orphaned.

But of course that was the agenda all along.


PK says not all artists are misguided

PK'sPresident wants Congress to know that not all artists are "misguided" - only those that oppose the bill. Currently, 80 professional groups do.

By contrast, she cites the Graphic Artists Guild as an example of artists who have learned their lesson. She praises GAG as "enlightened," because GAG supported the House version of the bill. She quotes a recent letter from GAG's President in which he admonished artists to "get real about this Orphan Works scare":

"I don't think Orphan Works is going to have a dramatic influence on how we do business [he wrote], but I hope it has awakened us all to the importance of tending to business issues. If we as a community invested a fraction of the energy we've expended on an apocalyptic vision of Orphan Works into protecting our own creations, protesting unfair contracting practices or writing letters to low-paying publishers, we'd be in a far better market position than we are today. The fact is that we give away more in the every day practice of our businesses than the government could ever take from us."

We replied to the GAG letter weeks ago, when it was first circulated to artists. We obviously disagree. Indeed, we'd point out that what the community of artists is doing by opposing this bill is "protecting our own creations":

• The Orphan works bill would have a dramatic affect on business, because it would let people infringe our work without our knowledge, consent or payment.

• Most people who succeed in our field do "treat art as a business."

• People who are bad at business can't be used as proof that successful people must change their business models.

• You can't justify exposing an artists' property to theft by telling him he didn't write enough "letters to low-paying publishers."

• What artists do or don't "give away" on their own doesn't justify government's taking anything from them.

• It's counter-intuitive to tell small business owners we should accept a bill that's bad for business to prove that we've "awakened to the importance of tending to business."

• If we don't fight to keep the work we create, that would be the ultimate failure to tend to business.

A full response to the entire GAG letter is here: http://ipaorphanworks.blogspot.com/2008/09/orphan-works-why-bet-against-ourselves.html


The Orphan Works Act was based on a premise and a conclusion:

• The premise is that the public is being harmed because it doesn't have enough contact information to locate copyright owners.

• The conclusion is that artists must change their business models.

• What's lacking is any evidence in between.

The Orphan Works Act was based on recommendations by the Copyright Office. But the Copyright Office studied the specific subject of orphaned work. They did not study the business models of artists who are alive, working and managing their copyrights. That means there can be no meaningful conclusions drawn from their study to dictate that such artists must change their business models.

From the beginning, artists have said we'd support a true orphan works bill. We've submitted precise amendments that would make one out of this bill. http://ipaorphanworks.blogspot.com/2008/07/hr-5889-amendments.html Our amendments have never been considered.

Instead, as PK's President noted in her postmortem, their last minute strategy for passing the bill would have "put it on the 'suspension calendar.'" And "[t]here can be no amendments to bills placed on the suspension calendar..."

The anti-copyright lobby is well funded. They have powerful backers. They've warned us they'll be back next year.

We should take them at their word.

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

The Orphan Works Act: Responses to the House Judiciary Committee

The following statements about the Orphan Works Act were sent from the House Judiciary Committee to a Congressman. The Congressman asked for responses from visual artists. The language in the statements is quoted verbatim from the Judiciary Committee document.

Judiciary Committee: An infringement today will continue to be one after enactment of orphan works legislation. Critics of orphan works measures frequently seem to miss this point, often wrongly suggesting that an orphan works law will legitimize infringing acts.

Illustrators' Partnership: No one is missing the point. Under this bill, infringements may continue to be infringements, but millions will be infringements in name only. That’s because these bills would remove any effective remedy for the infringement whenever the infringer can successfully assert an orphan works defense. The defense need not be valid, only successful. That means we’ll see millions of so-called “good faith” infringements, among which bad actors will be able to hide like needles in a haystack.

What bad actor, if caught, will have a Perry Mason Moment and admit he’s guilty of willful infringement? Not if he can assert an orphan works defense and dare the artist to sue. And under this bill, any artist who sues will have to be sure of winning, because without the possibility of statutory damages and attorneys’ fees, it’ll be too expensive to lose. Since lawyers will be unwilling to accept such cases on contingency (because there’s no guarantee the infringer will have to pay), this law will effectively deprive rights holders of legal counsel, expert witnesses, court costs, etc. - the very tools they’d need to legally prove bad faith.

Judiciary Committee: Orphan works proposals are tailored to address the remedies that will be available under certain prescribed circumstances. In an instance where a good faith user has performed and documented a qualifying search and satisfied each of the other statutory conditions (i.e. filed a notice of use with the Copyright Office, placed an orphan notice on their use, etc.) the user will ordinarily be subject to the payment of reasonable compensation to the owner of the orphaned work if that owner is later identified.

Illustrators' Partnership: Note the key phrase: “if that owner is later identified.” Infringements can occur anytime, anywhere in the world, so most will never be discovered by rights holders. This undermines the case for “reasonable compensation,” because compensation can’t be reasonable if it’s never paid.

Judiciary Committee: Reasonable compensation is intended to reflect the amount a willing buyer and willing seller would have negotiated for a licensed use prior to the infringement. Contrary to popular criticism, [reasonable compensation] is not an amount that must be accepted by an owner that is dictated by the user after infringement.

Illustrators' Partnership: Several points:

• Since orphan works transactions will occur only after infringement, the copyright owner will have no leverage to bargain for more than the infringer is willing or able to pay.
• Unless the owner accepts the infringer’s offer, he’ll have to go to federal court.
• If the court accepts the infringer’s claim that the infringer made a reasonably diligent effort to find the owner,
• Then it becomes the owner’s burden to prove the market value of his work; but
• To prove this, the owner will have to prepare a legal case with expert witnesses;
• These are expenses the owner will not be able to recover from the infringer.
• Filing fees, legal expenses and court costs could well exceed the so-called “reasonable fee.”
• And now the Catch 22:
• There’d be no limit to the amount of damages and legal fees the infringer could get from the owner in a countersuit.

Judiciary Committee: [Reasonable compensation] is intended to approximate the results of a market-place negotiation. In many cases, reasonable compensation will approximate the amount a copyright owner would have received as actual damages. The amount may also approximate the amount of statutory damages that would have been awarded by a court.

Illustrators' Partnership: Regardless of whatever the bill is “intended” to do, these intentions are unlikely to translate so cleanly into the rough and tumble of the marketplace. In real life, it’s safe to assume that serial infringers of orphan works will establish low “reasonable” fees, which will effectively become the legal standard for “reasonable compensation” in lawsuits regarding orphan work uses. Artists might never agree to these low fees if contacted “prior to infringement,” but they’d have no choice but to accept them if “offered” after the fact.

Judiciary Committee: The House bill requires that the user of an orphan work engaged in a qualified search to identify the owner prior to and proximate to the use; that the search was properly documented; that a notice of use was filed with the Copyright Office; that detailed best practices to be promulgated by the Copyright Office for conducting such a search were followed; or that an orphan works symbol was placed on the infringing use.

Illustrators' Partnership: These provisions are of no use to a rights holder unless he goes to court. And as business people, we make our livings from voluntary business transactions, not expensive lawsuits with all the uncertainty that comes with them.

In fact, uncertainty in commercial markets will be this bill’s chief legacy. The language of the drafts defines an infringer’s “qualifying search” as one that is reasonably diligent. But reasonable diligence is never defined. The Copyright Office has said that these ambiguous terms will be left to the courts to define on a case-by-case basis. But since any work might become an orphan in one legal proceeding and not in another, it’ll take a decade of expensive lawsuits and appeals to learn how the law will ultimately define these vague terms. Since artists are unlikely to have the resources for litigation, infringers may generally win by default. Why should copyright owners have to go to court on a regular basis to contest the diligence of an infringer’s search or to prove the value of their own property for uses they never authorized?

Judiciary Committee: As an explicit measure to discourage malicious actors who might seek to exploit the orphan works limitation in furtherance of commercial piracy, the House bill was expressly amended to prohibit the limitation from being used in connection with the production of useful articles (i.e. coffee mugs, wallpaper, rugs, clothing, etc.). So the [use of art on a] coffee mug [for] example is expressly prohibited by the House bill even in a circumstance where the user theoretically sought to meet the aforementioned statutory pre-conditions.

Illustrators' Partnership: Commercial piracy is not limited to rip-offs of art on “useful articles.” If the bill’s drafters have exempted designs for coffee mugs, wallpaper, rugs and clothing, then they’ve conceded that the bill will lead to the piracy of visual art. Having acknowledged that, why would they permit other forms of art to be pirated? Are designs on coffee mugs more deserving of protection than medical illustrations, editorial cartoons, news photos, book illustrations, advertising art, fine art?

Judiciary Committee: There is no present requirement for an author to register their work or place a copyright notice on it to qualify for the protection of U.S. copyright law. It is false that registration will become mandatory after the enactment of orphan works legislation. There is nothing in either the House or Senate versions of the bills that will require copyright owners to register their works or place copyright notices on them to enjoy copyright protection.

Illustrators' Partnership: That’s because Congress cannot ”require” artists to register their work without openly violating the Berne Convention, NAFTA, TRIPS, WIPO and WTO treaties. Yet in reality, the effect of this legislation will be the same as compulsory registration: artists who don’t register their work will find it vulnerable to orphan infringement. Or to put it another way: the bill would not impose registration on rights holders; it will just endanger the work of those who don’t impose registration on themselves.

Judiciary Committee: As previously noted, a "user" of an orphan work will be required by the House bill to, inter alia, file a "notice of use" with the Copyright Office prior to use and required to place an orphan works symbol, which will be prescribed by the Copyright Office, on their work.

Illustrators' Partnership: As currently written, the “notice of use” is a dark archive. That means if someone infringes your work and has filed a Notice of Use, you wouldn’t know about it unless:

• you discover you’ve been infringed;
• you sue the infringer in federal court;
• the infringer asserts an Orphan Works defense.
• Only then can you file a request to see if your work is in the archive.
• In other words, the notice of use is of no probative value to the rights holder at all, unless by luck, he finds that he’s been infringed and has to go to court.

As for the orphan works symbol to be “prescribed by the Copyright Office” and placed on all so-called orphaned work: it will act as a “come-and-get-it notice,” signaling to new infringers that a copyrighted work has already been orphaned by previous infringers and is therefore free for further exploitation.

Judiciary Committee: Orphan Works critics claim that copyright protection will no longer exist at the moment of creation under an orphan works structure, that new requirements will be imposed. No new statutory requirements are imposed on copyright owners to establish protection or ownership nor is the manner for determining ownership altered by the House bill. (Italics added)

Illustrators' Partnership: Note the modifier “statutory.” To repeat, we understand that the Copyright Office cannot propose statutory registration requirements. That would explicitly violate international copyright law and copyright-related treaties. Instead, the Copyright Office has proposed that Congress “limit” the remedies for Infringement: this pulls the teeth out of copyright law because:

• Remedies for infringement are the only means rights holders have to protect their work from thieves.
• There is no Copyright Bureau of Investigation; no Copyright Police Force.
• Rights holders have to police their own copyrights, and
• Penalties for infringement are the only weapon the law gives us.
• Remove those penalties and you remove uncertainty in the minds of bad actors.
• Under current law, if an infringer wants to rip off your work, he can guess that a.) you may never find out about it; and b.) it may not be registered.
• He may guess correctly but – he can’t be sure.
• This uncertainty is the key safeguard against infringement, because
• If the bad actor guesses wrong, he’ll be liable under current law for statutory damages of up to $150,000 per infringement, plus attorneys fees.
• This is a powerful incentive for a thief not to risk stealing work. So
• In the real world, uncertainty in the mind of a bad actor is the only weapon we have to protect our copyrights.
• Remove that uncertainty and you remove the only realistic safeguard the law provides.

Judiciary Committee: [Critics charge that c]opyright owners will be statutorily required to "register" their works with private databases that have yet to be created to protect their exclusive rights in an orphan works environment. There is no such requirement in the House bill.

Illustrators' Partnership: For the third time: we acknowledge that international agreements with our foreign trading partners prohibit Congress from “statutorily” requiring registration. But the proposal for commercial registries (now referred to in the bill as “databases”) has been there from the beginning. See page 106 of the Copyright Office’s 2006 Report on Orphan Works:

“[W]e believe that registries are critically important, if not indispensable, to addressing the orphan works problem...It is our view that such registries are better developed in the private sector..." http://www.copyright.gov/orphan/orphan-report.pdf

And on January 29 2007, twenty visual arts groups met in Washington D.C. with attorneys from the Copyright Office. The attorneys stated that the Copyright Office would not create these “indispensable” registries because it would be “too expensive.” So I asked the Associate Register for Policy & International Affairs:

Holland: If a user can’t find a registered work at the Copyright Office, hasn’t the Copyright Office facilitated the creation of an orphaned work?
Carson: Copyright owners will have to register their images with private registries.
Holland: But what if I exercise my exclusive right of copyright and choose not to register?
Carson: If you want to go ahead and create an orphan work, be my guest!
- From my notes of the meeting

The fact that this law would orphan unregistered work presents copyright owners with a Hobson’s Choice: either digitize your life’s work and metadata at your own expense and entrust it to privately-owned commercial “databases” or - see it exposed to potential infringement. But why should any rational business person voluntarily give access to his commercial inventory and client contact information to outside business interests?

Judiciary Committee: One of the ends of orphan works legislation is to facilitate the ability of copyright owners to receive greater compensation for the use of their works.

Illustrators' Partnership: If this were true, we would not be spending our own time and money opposing this bill. But in fact over 60 creators organizations do oppose it: http://capwiz.com/illustratorspartnership/home/ These groups represent hundreds of thousands of illustrators, photographers, fine artists, writers, songwriters, performers and countless small businesses that serve and are dependent on the creative community.

Judiciary Committee: To facilitate [licensing] transactions, it is desirable and necessary for prospective users to have the means of identifying the owner of the work as well as the ability to contact them to seek to negotiate a license.

Illustrators' Partnership: Absolutely true, but it’s incorrect to assume this bill is necessary for that purpose. As successful business people, we don’t need government to legislate a quasi-compulsory license to replace our voluntary business transactions. We know how to make ourselves available to clients and we know how to negotiate licenses.

According to the Licensing Industry Merchandising Association, licensing is now a $187 billion dollar industry. Creators are responsible for a robust sector of the U.S. economy. We employ and support agents, directories, source books, web sites, archives, internet portals and other advertising venues to make ourselves available to users. Not only we, but all these hundreds of thousands of small businesses will be harmed, not helped, by a bill that removes effective protections for the work we create and trade in.

Judiciary Committee: The more owners voluntarily contribute to the creation of a meaningful and accessible public record of their works, which includes licensing information, the better for all parties. This includes the owner, potential users who are searching for them and the general public who will benefit from new uses of creative works.

Illustrators' Partnership: Again, why should any business owner be required to give his licensing information to outside business interests? Consider the potential for unauthorized use or abuse! Moreover, many artists, such medical illustrators, frequently enter into confidentially agreements with their clients, agreeing to protect their clients’ trade secrets, patient or victim information and medical litigation materials from exploitation. These agreements would preclude them from displaying their work and client information in a public record.

Judiciary Committee: While the law will not, in any way, require owners to register their works or copyright information with any private entity, the fact is that the easier it is for an owner to be identified and located, the less likely it is that a user will be able to prevail in the assertion of a claim that the work was an orphan and that the owner could not be identified and/or located.

Illustrators' Partnership: For the fourth time: to say that the law will not “require” registration is misleading. The problem with “voluntary” registries is that you can’t find a picture in a registry if it’s not there. That means that any picture – published or unpublished, professional or personal – that hasn’t been registered in one of these commercial databases could be declared an orphan for legal purposes, even if the artist is alive, easily accessible to clients and prudently managing his copyrights.

Registries would merely benefit two classes: a.) infringers – who could use a non-productive search to declare unfound works as orphans; and b.) owners of registries, who could cut themselves in on the multi-billion dollar licensing industry, currently functioning well without them.

Judiciary Committee: [But] if the owner can be easily found, then the orphan works limitation will in no way restrict the range of damages that are available to them in an instance of infringement. (Italics added.)

Illustrators' Partnership: Several points:

• The presumption that owners of contemporary work can’t be “easily found” is false. An owner may be hard to find if he’s died or abandoned his copyrights – that would be a true orphaned work. But this bill re-defines an orphan as any work by any author that any potential user ever finds hard to find. Sooner or later, that could be every work by every author. This bill will define millions of works as orphans on the premise that some may be.

• Why must an owner be “easily found” by any parties other than those whom the owner chooses to do business with? Is there a national emergency in visual images that requires legislation to regulate this sector of the free market?

• There is no need for government intervention here. We are professionals. We’re alive, working and managing our copyrights. We can be located. Our clients locate us all the time. But that doesn’t mean that anyone anywhere can find us. And frankly, why should it? What if 1000 people can find me but one person can’t? Why should that person get a free pass to use my intellectual property? Won’t that give infringers an incentive not to find rights holders? Basing a law on this questionable premise is not solving an orphaned work problem. It’s legalizing the taking of private property.

• The argument that artists can always resolve orphan works disputes in court is a measure of the bill’s most serious defect: Any law that drives business decisions into the courts is bad for business and bad for the courts.

• We believe our work benefits the public by being published through the channels where we wish to publish it. The current copyright law works by giving us the incentive to keep doing this. But authors’ rights are exclusive. Public interest cannot compel any creator to publish his work. So by what right of eminent domain can government give members of the public the right to publish his work for him? We’re only asking Congress to protect this basic property right.

Judiciary Committee: [Critics charge that] orphan works bill will change the laws that relate to the group registration of photographs and the registration of other types of collected works. Among other things, [they say] the expense to register will increase exponentially since works will all need to be registered individually. Nothing in the bills requires or supports this allegation.

It is true that there are already intrinsic and systematic limitations on the ability to search for individual works that are registered as part of a "group" or "collection." Today, there is no meaningful public record of individual works that an owner chooses to register in this fashion. This situation results, in part, from the persistent desire of copyright owners to limit the expense of registration. But the decision to register works individually or collectively is today an independent decision that is exercised by owners who presumably conduct a cost-benefit analysis of the value of individual registration. Nothing in the House bill mandates changes here nor fundamentally alters this cost-benefit analysis calculation. That said, the Congress may, independent of whether or not an orphan works bill is enacted, want to consider potential improvements in the copyright registration process in an oversight or legislative capacity but the timing for doing so as well as any decision to do so is speculative.

Illustrators' Partnership: At the recent SBA Roundtable (see below), one photographer said he had already registered over half a million images with the Copyright Office. Yet under this bill, he’d have to “voluntarily” re-register every single one of those images again, this time with privately-owned databases. How many databases? Who knows? And when a database fails, would he have to re-register his work again and again?

Under this bill, every rights holder will face this issue because:

• The number of works created by the average visual artist far exceeds the volume of the most prolific creators of literary, musical and cinematographic works;
• The cost and time-consumption to individual artists of registering tens of thousands (or with photographers, hundreds of thousands) of visual works, at even a low fee, would be prohibitive; therefore:
• Under this law, every artist would see thousands of his creations potentially orphaned from the moment of creation.
• No registry would be meaningful until billions of pre-existing works (both published and unpublished) from artists (both living and dead) have been digitized, color corrected, keyworded and registered; but
• Few, if any, living artists could afford the time and expense of digitizing and registering a backlog of tens (or hundreds) of thousands of their own works; therefore:
• Countless working artists would find countless existing works vulnerable to infringement from the moment this bill takes effect.

Judiciary Committee: Much of the confusion about the potential impact of orphan works legislation appears to derive from a misperception about the eligibility and availability of statutory damages to owners in infringement actions. Statutory damages are not ordinarily available to copyright owners. They are available to only those copyright owners who have registered the particular work that is infringed with the Copyright Office prior to the infringement or within three months of publication. When available, statutory damage awards generally range from $750 to $30,000. Where the infringement is proven by the owner to have been willful, the court, in its discretion, may increase the statutory damage award up to $150,000.

Illustrators' Partnership: The issue of statutory damages is a real one and we’ve already addressed it. But debating it apart from its impact on business misses the point. Artists rarely go to court and would prefer never to have to. We oppose the Orphan Works Act for fundamental reasons: it’s a bill too far!

In drafting this legislation, the Subcommittee has relied on the 2006 Report on Orphan Works issued by the Copyright Office. But the Copyright Office studied the specific subject of orphaned work. Their study did not inquire about the workings of commercial markets and there is no evidence in their report that a market failure in commercial markets exists. This fact was summarized in a joint position paper published July 15, 2008 by the Association of Independent Music Publishers & the California Copyright Conference:

“In 2004, The Copyright Office initiated a theory, with the enthusiastic support of the anti-copyright lobby, that the public was being harmed because it did not have enough current contact information for authors and owners. The Copyright Office then requested orphan works legislation without having conducted a needs assessment study, an independent audit of its registration and copyright history records, an economic impact analysis, or an evaluation of how the public, society and authors would be affected by reduced quantity and quality of art, film, television, music, video games and other copyrighted works in the future.” http://www.brandaideblog.com/pdf/Position_Statement.pdf

Because the Copyright Office never presented evidence to justify their proposed changes to commercial markets, hundreds of thousands of creators respectfully ask that this bill be withheld until it can be re-written as a true orphan works bill. Three groups: The Illustrators’ Partnership of America, the Artists Rights Society and the Advertising Photographers of America have jointly submitted amendments that would do that. These amendments can be accessed here: http://ipaorphanworks.blogspot.com/2008/07/hr-5889-amendments.html

Brad Holland
Illustrators’ Partnership
9.1.08

Orphan Works Update July 15

The Orphan Works Mark-up for this week has been postponed. This gives us more time to email and fax members of the House Judiciary Committee. Write and ask them to support the amendments submitted jointly by the Illustrators' Partnership, the Artists Rights Society and the Advertising Photographers of America.

http://ipaorphanworks.blogspot.com/2008/07/hr-5889-amendments.html

These amendments would:

• Insure that the bill will only affect true orphaned work;
• Insure that the bill will not violate international trade agreements;
• Insure that the bill will not take effect until a market impact survey concludes it will not harm existing commercial markets.

Otherwise, ask them not to vote this bill out of committee until Congress can hold proper hearings into the harm it will do to small businesses, individual creators and ordinary citizens.

Our sample letter to House Judiciary Committee members can be deep linked here: http://capwiz.com/illustratorspartnership/issues/alert/?alertid=11618481

Contact information for House Judiciary Committee members can be accessed here: http://ipaorphanworks.blogspot.com/2008/07/house-judiciary-committee-contact-list.html

View the Orphan Works Forum Webcast from the Society of Illustrators:
http://www.unitedpgremote.com/society/soi_2008_05_04.html

Orphan Works Markup

We've had word that the House Judiciary Committee may mark-up the Orphan Works Bill this week. This is the session where Committee Members will propose, accept and reject amendments to H.R. 5889. After markup, the bill could be reported out of the House Committee and go to the floor for a vote.

We've submitted several critical amendments for consideration: These would limit the scope of the bill to affect only true orphaned work. Unless such amendments are adopted, we believe the bill should not be reported out until its impact on small businesses can be determined. Here's our summary of the issues at stake in the House version of this bill:

Q What is the Orphan Works Act?
A: A proposed amendment to copyright law that would impose a radically new business model on the licensing of copyrighted work.

Q: How would it do that?
A: It would force all creators to digitize their life's work and hand it over to privately-owned commercial databases or see it exposed to widespread infringement by anyone, for any purpose, however commercial or distasteful.

Q: How would it hurt me if I didn't register my work?
A: The bill would let infringers rely on for-profit registries to search for your work. If your work is not in the databases, it's a potential "orphan."

Q: What about my unpublished work?
A: The bill would apply to any work, from professional paintings to family snapshots, home videos, etc., including published and unpublished work and any work ever placed on the internet.

Q: How would these databases work?
A: No one has yet unveiled a business plan, but we suspect they'd operate like stock houses, promoting themselves as one-stop shopping centers for licensing art. If you've registered your work with them, they'll probably charge you maintenance fees and commissions for clearing your work. If you're a publisher or art director, they'll probably charge you search fees. If you're an infringer, they'll probably charge you a search fee and issue orphan certificates for any unregistered work you'd like to infringe. We assume different registries may have different terms, and any start-up terms will of course be subject to change.

Q: How will the bill affect the market for commissioned work?
A: It will be a gold mine for opportunists, favoring giant image banks over working artists. Some companies will probably sell access to orphans as royalty-free work -- or they'll harvest orphans and bundle them for sale as clip art. Other companies can harvest orphans, alter them slightly to make "derivative works" and register the derivatives as their own copyrighted product. Freelancers would then be forced to compete against their own lost art - and that of their colleagues - for the new commissions they need to make a living.

Q: But the bill's sponsors say the bill is just a small adjustment to copyright law.
A: No, it's actually a reversal of copyright law. It presumes that the public is entitled to use your work as a primary right and that it's your legal obligation to make your work available.

Q: But isn't the House bill an improvement over the Senate version?
A: Only for those who intend to operate commercial databases. These registries will exist to make money. To make money, they'll have to do a lively business in clearing work for infringements. That means making their databases infringer-friendly.

Q: But isn't the House bill better because it requires an infringer to file a Notice of Use, documenting their intent to infringe?
A: The House bill creates a very low threshold for infringers to meet. They'd only have to file a text description (not the image itself) of the work they want to infringe, plus information about their search and any ownership information they've found.

Q: But won't that let artists consult the archive to see if their work has been infringed?
A: No, as currently written, the Notice of Use is a dark archive, which means you won't have access to it. If someone infringes your work and has filed a Notice of Use, you wouldn't know about it.

Q: Then how would I know if my work is in the Dark Archive?
A: You wouldn't, unless a.) you discover you've been infringed; b.) you sue the infringer in federal court; c.) the infringer asserts an Orphan Works defense. Then you can file a request to see if the infringer has filed a Notice of Use to infringe your work.

Q: Then what good does it do me for the infringer to file a Notice of Use?
A: It's of no probative value to you at all unless you go to court. And if you do, you'd better be sure of winning because otherwise, without the possibility of statutory damages and attorneys' fees, it will be too expensive for you to sue. If the Notice of Use helps anyone, it actually helps the infringer: it lets him prove in court that he followed the prescribed protocol to "legally" infringe your work.

Q: Then shouldn't we ask Congress to change the Dark Archive to an open one?
A: This would still place an impossible burden on you. Can you imagine routinely slogging through a "lost and found" containing millions of text descriptions of works to see if something sounds like one of the hundreds or thousands of illustrations you may have done?

Q: So should the infringement archive be changed to display images rather than text descriptions?
A: If so, you'd have a come-and-get-it archive for new infringers to exploit works that have already been identified as orphans by previous infringers.

Q: The bill's sponsors say the House version includes specific instructions on the requirements for diligent searches.
A: No, read the bill. It's full of ambiguous terms like "reasonable" and "diligent" that can only be decided by courts on a case-by-case basis. That could take a decade of expensive lawsuits and appeals. How many millions of copyrights will be orphaned before we learn how the courts ultimately define these vague terms?

Q: Then what can we do to improve this bill?
A: We don't believe the bill can be patched up to mitigate its harm to creators. The Orphan Works matter should be solved with carefully defined expansions of fair use to permit reproduction by libraries and archives, or for family photo restoration and duplication. Narrow exceptions like these would also meet the needs of other orphan works usage without violating artists' rights as defined by the 1976 Copyright Act, The Berne Convention and Article 13 of the TRIPs Agreement. These copyright-related international trade treaties are not just a matter of law. They codify longstanding business practices that have passed the test of time.

Q: What can we do now to oppose this legislation?
A: If you're opposed to the House bill in its current form, contact members of the full House Judiciary Committee. Ask them to adopt our amendments limiting the scope of the bill to affect only true orphaned work. Tomorrow, we'll email you a short basic letter which you may use as a template.

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

Over 60 organizations are united in opposing this bill in its current form. Illustrators, photographers, fine artists, songwriters, musicians, and countless licensing firms all believe this bill will harm their small businesses.

Don't Let Congress Orphan Your Work
To use the Orphan Works Opposition Website just go to this link:
http://capwiz.com/illustratorspartnership/home/

Put in your zip code and follow the instructions. Your letters will be addressed and sent automatically. It takes less than 2 minutes to fight for your copyrights.

H.R. 5889 Amendments

Introduction

As rights holders, we can summarize our hopes for the Orphan Works Act simply: to see that it becomes a true orphan works bill, with no unnecessary spillover effect to damage the everyday commercial activities of working artists. We’d be happy to work with Congress to accomplish this. No legislation regarding the use of private property should be considered without the active participation of those whose property is at stake.

On June 5, 2008 the European Union announced an orphan works regime that would permit European libraries, museums and archives to digitize their collections of orphaned work. We believe a bill of similar specificity in the U.S. would not only solve the problems confronting libraries and archives here, it would harmonize U.S. policy with our trading partners.

We believe this could be accomplished by a precise expansion of USC, Title 17, § 108: Limitations on exclusive rights: Reproduction by libraries and archives. Unlike the present bill, which covers all works for any use by creating a new, all-encompassing § 514: Limitation on Remedies, this approach - a precise expansion of Fair Use - would not lead to the widespread violation of exclusive rights under the 1976 Copyright Act, Article 9 of the Berne Convention and Article 13 of TRIPS. We believe similar orphan works situations - family photo restoration and duplication, personal genealogy usage of orphan works, and orphan works rights clearance for documentary filmmakers – can all be resolved in a similar manner, by carefully and precisely expanding Fair Use: USC, Title 17, § 107: Limitations on exclusive rights.

We note that a current law already exists to limit statutory damages to not less than $200 for “orphan works” infringements by an employee or agent of a nonprofit educational institution, library, archive or public broadcasting entity acting within the scope of his or her employment. See USC, Title 17, § 504 (c) 2 (i) and (ii): Remedies for infringement: Damages and profits.

With this specific exemption already on the books, we believe similar solutions could be arrived at amicably by working with members of the creative community who are familiar with how copyright law intersects with standard business practice. This kind of imaginative solution should win widespread praise from all parties, while preserving the sanctity of existing copyright-related contracts. It would protect the small businesses that are the heart and soul of the creative community and would continue to act as an on-going incentive to further the creation of new work.

______________________________________

Suggested Amendments to H.R. 5889
The Orphan Works Act of 2008

Submitted on Behalf of
The Illustrators’ Partnership of America
Artists Rights Society
Advertising Photographers of America

to the
Committee on the Judiciary
U.S. House of Representatives

by
Brad Holland, Co-Founder & Director and Cynthia Turner, Director
Illustrators’ Partnership of America

Dr. Theodore Feder, President
Artists Rights Society

Constance Evans, National Executive Director
Advertising Photographers of America

Amendments to H.R.5889
The Orphan Works Act of 2008

Amendment 1: Limitation on Scope of Use of Orphan Works and Qualifying Users of Orphan Works

This act shall only apply to the usage by the cultural heritage sector for the express purpose of digitization, online access, preservation, education and other noncommercial purposes of orphan works contained within the collections of not for profit libraries, archives or museums that have been accredited by a recognized national authority and approved by the Register of Copyrights.

Recommended as an amendment to USC, Title 17, § 108: Limitations on exclusive rights: Reproduction by libraries and archives. This amendment clarifies U.S. Orphan Works legislation to preserve and access cultural heritage, recognizing that in particular older material may include works whose rightsholders are not identifiable or, if they are identifiable, can no longer be located while emphasizing respect for copyright, exclusive rights, related rights and economic rights regarding the use of orphan works. It emphasizes the need for adequate certainty when cultural institutions deal with orphan works, with respect to their digitization and online accessibility within the framework of the libraries, museums and archives for the lawful use of orphan works. It harmonizes S. 2913 with the June 4, 2008 i2010 European Union Digital Libraries Initiative: Agreement between Cultural Institutions and Rightsholders on Orphan Works. It preserves contemporary commercial markets and the exclusive rights of contemporary creators who are alive, in business and managing their copyrights by “confining limitations and exceptions to exclusive rights to certain special cases, which do not conflict with a normal exploitation of the work, and do not unreasonably prejudice the legitimate interests of the rights holder” in accordance with the TRIP’s 3-Step test. It makes S.2913 compliant with the Berne Convention for the Protection of Literary and Artistic Works and its prohibition on registries.

Amendment 2: Parity for Visual Artists and Textile Designers

(Version 1) On Page 14, line 23, after “in or on a useful article” and before “that is offered for sale or other distribution to the public” insert: “or, in the case of a work of visual art, in or as part of a collective work,”.

(Version 2) On page 14, line 14, after “in or on a useful article” and before “that is offered for sale or other distribution to the public” insert “or in the case of a work of visual art, in or as part of a collective work or standing alone.” (Underlining is provided for the purpose of highlighting the differences with version one.)

This amendment extends to illustrators and other creators of visual images the same protection afforded by the bill to authors of designs – such as textile designs – that are included in other works. Version one is limited to works of art that are included in another – larger work – and, therefore is most parallel to the provision regarding works that are included in useful articles. Version 2 expands the amendment to include free standing works, such as works of fine art that often are included in collective works following their creation.


Amendment 3: The Copyright Office is Best Able to Maintain the Database

On page 15, lines 15 and 16 delete “undertake a certification process for the establishment of” and insert “create”.

On page 15, delete lines 20 through 25, and insert the following:

“(2) STANDARDS FOR THE COPYRIGHT OFFICE DATABASE – The electronic database created pursuant to subsection (a) (1) of this section shall contain – ”

On page 17, delete all after “shall” on line 11 through line 22 and insert “not take effect until the Copyright Office has made available to the public, online and at no cost to authors, the database created pursuant to subsection (a) (1) of Section 3.

This amendment requires the Copyright Office to create a publicly searchable electronic database of works of visual art that can serve as a basis for conducting searches involving such works under this bill. The Copyright Office and the Library of Congress are more capable of creating such a database than any private sector organization due to the fact that the copies of all visual images that have been registered with the Copyright Office already are archived in the Library of Congress and the Library is in the process of digitizing these images through its “digital library” project. This leverages the existing registration system to support the objectives of this bill and relieves visual artists – who are in almost all cases individuals with limited financial resources – of any requirement to establish the means to protect themselves against infringement of their works.


Amendment 4: The Act Should Not Violate U.S. Treaty Obligations with Respect to Article 5 (2) of the Berne Convention on Literary and Artistic Works Prohibiting Registration for Foreign Works

On page 20, after line 19, insert the following new section:

“SEC. 8. Relationship to Foreign Works Protected Under the Berne Convention on Literary and Artistic Works.

This Act shall not apply to works of foreign authors.”

Article 5 (2) of the Berne Convention on Literary and Artistic Works provides that “The exercise of their (authors’) rights shall not be subject to any formality.” Compliance with this provision is required of all countries, including the United States that adhere to the TRIPS Agreement under Article 9 of that treaty. By requiring that all copyright holders must register their works in electronic databases as a condition of protection against infringement as orphan works H.R. 5889 violates these treaty obligations prohibiting the imposition of formalities on non-U.S. nationals as a pre-condition to enforcement of their copyrights. The Copyright Act currently requires that works created by U. S. domiciliaries be registered with the Copyright Office and accompanying copies be deposited with the Library of Congress as a pre-condition to bringing an infringement action in a Federal Court. Also, in the case of U.S. domiciliaries registration prior to infringement is a condition of the right to receive statutory damages. Both of these provisions are limited to U.S. –based authors only because to do otherwise would violate Berne Article 5 (2) and TRIPS Article 9. A similar limitation to U.S. domiciliaries is necessary with regard to this legislation to avoid violating the international treaties.


Amendment 5: The Act Should Not Violate U.S. Treaty Obligations Under Article 13 of the TRIPS Agreement relating to Limitations and Exceptions

On page 17, delete all after “shall” on line 11 through line 22 and insert “not take effect until the Register of Copyrights, the Secretary of Commerce and the United States Trade Representative have certified in a joint communication to the President of the Senate and the Speaker of the House of Representatives that this Act does not violate Article 13, regarding limitations and exceptions, of the Agreement on Trade Related Aspects of Intellectual Property Rights.

This amendment assures that this legislation would not violate U.S. treaty obligations with regard to works of visual art under the three step test required of any exceptions and limitations to exclusive rights of copyright owners under Article 13 of the TRIPS Agreement. That Article requires that legislation passed by any signatory state “shall confine limitations or exceptions to exclusive rights to certain special cases which do not conflict with a normal exploitation of the work and do not unreasonably prejudice the legitimate interests of the right holder.” (emphasis supplied.) Failure to meet the requirements of TRIPS Article 13 would expose the United States to claims of unfair trading practices under the WTO Treaty and expose U.S. industry to retaliatory actions by signatories to the WTO Treaty and the TRIPS Agreement.


Amendment 6: Impact on Small Business Entities

On page 17, delete all after “shall” on line 11 through line 22 and insert “not take effect until the Small Business Administration has certified in a joint communication to the President of the Senate and Speaker of the House of Representatives that individuals and small businesses will effectively be able to prevent through their own due diligence and at reasonable cost their works from becoming orphaned by complying with the provisions of this Act.”

The bill contemplates a system of private registries that must be used by copyright owners to provide a means of searching for ownership information regarding their works. If an artist or other copyright owner fails to use the services of one of these registries an infringer who uses such a registry to meet the “reasonable search” obligation will be able to do so with no possibility of locating the rights holder. In such a situation the rights holder’s work will automatically be orphaned. The cost and complexity of using the services of these private – presumably for-profit – registries is unknown. However, the Copyright Office has testified that that the cost and complexity of its maintaining such a registry is to great for it to manage. The Copyright Office has taken this position even though it operates on a budget of over $300 million and already maintains a digitized database of the works registered with it and the Library of Congress maintains an archive of deposits of best copies that must accompany copyright registration. All visual artists are small businesses or sole proprietorships. Before placing a financial and administrative burden on them that they may not be able to meet, the Congress should have the advice of the government agency responsible for the well being of such small businesses and sole proprietorships.


Amendments 7: “Best Practices”

On page 8, line 17 delete “(ii) and insert (iii).

On page 8, after line 16 insert the following new subsection (B) (ii):

“(ii) BEST PRACTICES. – The best practices maintained by the Register of Copyrights shall:

(1) include only practices recommended either by authors or organizations representing solely authors of the class of works addressed by the best practices;

(2) require use of existing identification systems, including all databases currently maintained by the Library of Congress;

(3) include the name or names of any identifiable person including the publisher, distributor, artist, designer, and art director associated with the work or the use of the work;

(4) may not include best practices recommended by non rights holders or any other databases owned, maintained, or financed directly or indirectly by infringers.

On page 17 delete all after “section 2” through line 22 and insert: “shall take effect only after the date on which the Copyright Office certifies best practices under section 3.”

This amendment provides that the “best practices” that are adopted for databases of works be established by those who know those works the best – the class of authors that has created them. Especially in the case of the visual arts, it is the artists themselves who best understand how to create a workable database. In any event infringers should not be in the position of creating the system that immunizes them from liability for their violation of the copyright law. To do otherwise would be putting the fox in charge of the chicken coop.


Amendment 8: Safe Harbor for Not for Profit Institutions

On page 10, delete all after “if the infringer is” on lines 21 and 21 through line 23 and insert “a not for profit library, archive or museum accredited by a recognized national authority and approved by the Register of Copyrights and the infringer has not used the infringed work for any purpose of direct or indirect commercial advantage such as marketing, promotion of brands, products or services.

This amendment is directed at that provision of the Act that provides a safe harbor that virtually immunizes the infringer from any meaningful liability provided that that infringer is a non profit archive, library or museum. This undoubtedly is directed at institutions such as the National Holocaust Museum, whose representative has testified at hearings that lead to the bill’s introduction. Visual artists recognize the special circumstances associated with such non profit libraries, museums and archives. This amendment will assure that only institutions that legitimately fall into this category receive the benefits of the safe harbor. And, it would assure that such institutions do not unfairly use the safe harbor to compete commercially against the very creators whose works they are dedicated to preserving. Commercial exploitation does not deserve a sweeping safe harbor.

This amendment also removes nonprofit educational institutions from safe harbor infringement protection to prevent the special harm that will be exerted on medical education and the advancement of science. Medical illustrators create critically accurate visualizations for nonprofit organizations, universities and research foundations. § 107 already generously covers scholarship. Any other use by non-profits needs to be licensed according to existing copyright law and protect an artist's exclusive rights, regardless of whether the orphan work user’s use involves a direct or indirect commercial advantage. Adding a new provision that essentially performs the same function as fair use under § 107 may erode that body of established law, while providing no more certainty than applying § 107 and its related case law to the other provisions of the Act.


Amendment 9: Review by the Department of Justice on the Impact on the Judiciary and the Need for a Small Claims Court

On page 17, delete all after “shall” on line 11 through line 22 and insert “not take effect until the Department of Justice has certified in a joint communication to the President of the Senate and Speaker of the House of Representatives that the relief provided under the bill will not be less in most cases than the legal costs – including attorneys’ fees, court costs, and costs of discovery – necessary for a plaintiff effectively to litigate an action for infringement in a United States District Court. The certification by the Department of Justice also shall advise Congress on the impact of the Act on the federal court system and whether an alternative system of administrative litigation should be substituted for the existing system of remedies for copyright infringement.”

On page 16 through page 18 delete lines 16 through18 and renumber Sec. 7 as Sec. 6.

Section 6 of the bill recognizes that the remedies afforded rights holders by the bill may not be sufficient to support effective enforcement under the current system of infringement litigation in United States District Courts. However, the bill gives the Register of Copyrights the mandate to study this issue and report to Congress on the advisability of a different system of litigation. This is an issue that is within the authority and expertise of the Department of Justice, not the Copyright Office. This amendment gives responsibility for advising Congress on matters relating to the federal court system to the Department of Justice, not the Copyright Office. Further, given the acknowledgment inherent in the study authorized by Section 6 that there is a serious possibility that the judicial remedies provided by the bill will be too expensive for rights holders in relation to the damage awards they will receive, the bill should not go into effect until the Congress has had the expert opinion of the Department of Justice.


Amendment 10: Sunshine for the Notice of Use Archive

On page 9, line 2, after “shall create and maintain an archive” insert “that is publicly accessible without charge through the Internet”.

On Page 9, line 7, before “(A)” insert “Part I”

On page 9, line 21, after “used” insert:

“(G) a best edition copy of the image to be infringed from a commercially available, non-infringing publication or other source;

(H) a precise list of the infringing uses, including the print run, number of copies, geographic of any work that includes the infringed work, and the media such as print, Internet, or broadcast in which the infringed work is being distributed;

(I) the legal name of the infringer and all those associated with the diligent search and the proposed use, such as employers, institutions or corporate entities associated with the infringement;

(J) a working telephone number at which the infringer may be contacted that will be answered by the infringer;

(K) a unique identifying number for the infringing use issued and maintained by the Copyright Office;

(L) and, the Federal ID tax number, or social security number of the infringer or infringing entity.

Part II, to be completed within 30 days from the infringing use,

(M) a best edition copy of the infringing work.”

This amendment deals with the requirement of the bill that infringers file notice with the Copyright Office prior to infringement. If this requirement is to have any meaning the database of such notices must be easily available to rights holders so that they can effectively use it to make sure that their work is not classified as an orphan and that they can contact the infringer to be in a position to negotiate whether or not to license the work prior to infringement. This bill assures that rights holders will have the access they need to the notices filed with the Copyright Office and the information they need to contact and effectively negotiate with the entity desiring to use their works before that entity becomes an infringer.


Amendment 11: Modify Exclusion for Fixation in or on Useful Articles

On page 14, line 19, after “EXCLUSION FOR” AND BEFORE “FIXATIONS” insert “INFRINGEMENTS PROMOTING COMMERCIAL PRODUCTS OR SERVICES AND FOR”

On page 14, line 22, after “infringements” insert “promoting commercial products or services, or”

On page 14, line 23, after “useful article” and before “that is offered” insert “, or packaging or other media intended to promote such article,”

On page 14, end of line 24, after “public” and before “.” insert “, or where an infringer aggregates copies of orphan works and offers to distribute such copies of orphan works to other persons or organizations in exchange for compensation resulting from sale, subscription, licensing, advertising revenue or other means.”

This amendment expands the scope of the useful objects exclusion and prohibits the aggregation of orphan works for purposes of sale or distribution. The real need for use of orphan works for cultural heritage and preservation purposes does not in any way justify the commercial exploitation of orphan works.

Examples illustrating the primary basis for orphan works legislation invariably include (1) the Holocaust Museum’s inability to make use of photographs and letters in their collection, and (2) a family that has a photograph of a deceased relative, and is unable to contact the photographer, and thus unable to reproduce the image for personal usage. Other examples of course include libraries, archives and other similar organization seeking to use orphan works for cultural heritage or educational purposes, entirely legitimate examples illustrating the need for amending copyright law to allow for such uses. However, never is there an example such as “Advertising agency McCann Erickson could not use a photograph in its worldwide $20 million advertising campaign for Microsoft because they could not locate the photographer.”

Visual artists have a broad spectrum of tools at their disposal for marketing, distributing, and presenting their works for licensing across the global marketplace. For example, in the world of photography, photographers not only use their own websites, direct mail and email marketing campaigns to market their works and their services, but also use third party sites, commissioned agents, and publications expressly purposed for such use. In addition, photographers successfully market and distribute their work using stock agencies, where customers can search databases of millions of images, find an image to suit almost any purpose, supplied by any of tens of thousands of photographers, and purchase the right to use the image.

While the need for cultural heritage and preservation use of orphan works is clear, there is no reasonable justification for disrupting the marketplace for commercial usage of works by allowing the usage of orphan works for commercial purposes.

This amendment prohibits commercial services that could aggregate orphan works for sale to third parties. Such transactions would not be labeled as a “sale” or “license” but would likely be masked as subscription fees for qualifying searches. This would result in broad distribution of orphan works on a scale that would frustrate the attempt by any rights holder to secure reasonable compensation from third party users.


Amendment 12: Copyright in Derivative Works

On page 15, on line 10, after “103(a)” and before “an infringer” insert: “but subject to injunctive relief under subsection (c)(2),”

On page 15, line 13, after “copyrighted work” and before “shall not be denied” insert “to which the infringer contributes significant original expression, resulting in a derivative work or compilation, the infringer”

On page 15, at end of line 16 insert: “The infringer’s copyright protection in a derivative work based in whole or in part on a work infringed under this section shall not entitle the infringer to remedies under this Title in the event that the owner of the copyright in the infringed work infringes on such derivative work in the normal course of exploiting the owner’s copyright.”

This proposed amendment establishes a threshold of significant original expression, and ensures the consideration of the previous section regarding injunctive relief. The amendment also enjoins the infringer from copyright claims against the owner, in the event that the owner creates derivatives similar to the infringer’s derivative based on the owner’s work.

In the Bill the threshold for derivative works is very low. The contribution of any original expression to an orphan work results in a derivative, owned by the infringer. The derivative work, no longer an orphan, may be marketed, freely distributed and licensed to third parties by the infringer. Such use by the infringer of the derivative work may not only occur in direct competition with the owner of the orphan on which the derivative is based (without knowledge of the owner), but may otherwise cause market confusion, as competitors acquire and make use of each other’s works.

Comments on S. 2913, The Shawn Bentley Orphan Works Act of 2008

From
Illustrators' Partnership of America
Advertising Photographers of America
Artists Foundation of Massachusetts

Respectfully submitted to

Majority Staff
Chairman, Patrick Leahy

and

Minority Staff
Ranking Member Senator Arlen Specter
Subcommittee on Intellectual Property
Committee on the Judiciary
U.S. Senate

April 30, 2008

Mr. Chairman and Members of the Subcommittee, on behalf of the Illustrators’ Partnership of America, the Advertising Photographers of America, the Artists Foundation of Massachusetts and our many thousands of members nation wide, we are submitting our comments on S. 2913, the "Shawn Bentley Orphan Works Act of 2008." We respectfully request consideration of this document for inclusion in the record of the Senate Judiciary Subcommittee on Intellectual Property. While this statement is being filed by our specific organizations, it reflects a statement previously submitted to the Copyright Office by the Illustrators’ Partnership and endorsed by 42 national and international organizations representing a broad spectrum of the commercial artists, fine artists and photographers who make their living from the exercise of the exclusive rights guaranteed to them by the U.S. and international copyright law and treaties.

Creators endorse the concept of an orphan works solution that would be give libraries and museums access to work whose authors have died or otherwise abandoned their copyrights. Many artists use older works in one way or another and most would welcome any clarity that the law can provide regarding the use of true orphaned work. We believe the orphan works problem can be and should be solved with carefully crafted, specific, limited exemptions. For example:

• An exemption could be tailored to solve family photo restoration and reproduction issues.
• Usage for genealogy research is probably already covered by fair use, but could rate an exemption if deemed necessary.
• Limited exemptions could be designed for documentary filmmakers.
• Libraries and archives already have generous exemptions for their missions. However, if they believe they need expanded access to work whose authors are hard to find, we’d suggest that Congress adopt a variant of the Orphan Works clearance system in use in Canada.

Canada has created a statutory licensing scheme that allows licenses for the use of published works to be issued by the Copyright Board of Canada on behalf of unlocatable copyright owners.

The license is issued by the Canadian Copyright Board. Decisions are made on a case-by-case basis through application to the Board. If the Board is satisfied by the applicant’s efforts of e-mails, phone calls, written correspondence, approaches to copyright collectives, Internet searches, etc., then it may issue a non-exclusive license which is valid only in Canada, subject to any terms and conditions it sees fit. http://www.library.yale.edu/~llicense/ListArchives/0507/msg00096.html

A system such as this would serve potential users of orphaned work by allowing them to clear rights in an orderly, verified way. Therefore we respectfully ask that the Senate conduct further hearings to resolve the specific problem of providing public access to true orphaned works. Our objections to S.2913 – which incorporates the proposals made by the Copyright Office – is that its effects cannot be limited to old or abandoned copyrights. Their recommendations would endanger the rights of artists who are alive, working and managing their copyrights. Although the Senate and House bills differ slightly, the effect of either would be devastating to commercial markets in which freelance artists and photographers work, as well as for the licensing and other collateral small businesses that serve, and are dependent on, creators.

Indeed, the Copyright Office proposals have been written so broadly that it will affect anyone who produces visual images of any kind, from professional paintings and photographs to family snapshots and home videos. Any published or unpublished work, including any pictures that reside or have ever resided on the web, will become potential orphans if this bill becomes law.

This unprecedented expansion of the public domain makes this legislation much more than an issue of copyright infringement. Its unintended consequences would amount to a violation of private property and potentially, of privacy itself. It will discourage individuals from publishing their works in any free or easily accessible forum. It will force us to pay protection money to middlemen to “protect” work we have created ourselves. It will drive into the court decisions that should be made in the marketplace. It represents a radical departure from existing business models and copyright law. It is one reason – if hardly the only one – why international copyright law, specifically Article 5 (2) of the Berne Convention, prohibits the requirement of “any formality” as a pre-condition to the enjoyment of full copyright.

Our objection to these bills is that they would force anyone who creates a visual work, whether the work is professional or personal, published or unpublished, to register it with as-yet-to-be-created commercial registries. This would endanger any unregistered work, because as users came to rely on registries to conduct a “reasonably diligent search” for rights holders, any works not found in the registries could be infringed as orphans.

These proposals would have a disproportionate impact on visual artists because paintings, drawings and photographs are often published without contact information, credit lines can be removed easily by others and the pictures themselves separated from the publications in which they appeared.

Moreover, the average visual artist produces infinitely more individual works than even the most prolific author or songwriter. The cost to the artist in time and money of registering and maintaining thousands or tens of thousands of registrations will inevitably result in countless managed copyrighted works falling through the cracks and into the royalty-free market. Yet the Copyright Office has stated explicitly that failure of the artist to meet this nightmarish bureaucratic burden would signal to infringers that these works had been orphaned and were subject to legal infringement.

The consequences of this blanket stripping of copyright protection will be a gold mine for opportunists. Within two weeks of the issuance of the Orphan Works Report in 2006, nearly all the domain names associated with orphan works were registered by commercial interests in preparation for the profit-taking that will result if this legislation is passed. This bill will allow stock agencies and commercial archives to harvest these newly-created “orphans,” alter them slightly to make them “derivative works,” then copyright these derivatives as their own “creative” works. Freelancers could then be forced to compete against their own lost art – and that of their colleagues – for the new commissions they need to make a living.

The Orphan Works Act goes far beyond current concepts of fair use. It would have the effect of forcing freelance creators to risk their own bodies of work to subsidize the start-up businesses of untested search technologies and untried business models – models which would inevitably favor the aggregation of images into corporate databases over the licensing of copyrights by the lone artists who actually create the art. This would strike a blow at the heart of art itself.

The Copyright Office has cited their 2005 study of orphan works to extrapolate a claim of widespread failure in commercial markets. But they have provided no evidence of this. Speaking at “Orphan Works: A Search for Solutions,” hosted by the Progress and Freedom Foundation, March 31, 2006 Jule Sigall, then Associate Register for Policy & International Affairs, U.S. Copyright Office, explained that Congress needed to “push” artists and photographers to change the ways in which their “sectors” do business (page 23 of the transcript):

[A]t this stage, in respect to the [Orphan Works] legislation...the real question we need to ask and answer is, what kinds of provisions put the right pressure [on photographers and illustrators] to get to that point? Who needs to be pushed there? I mean... I use this line a lot, photographers and illustrators like to say, “We haven’t collectivized...” This is a problem, generally, for their marketplace. It’s hard to have a marketplace where buyers can’t find sellers.
(Emphasis added) http://www.pff.org/events/pastevents/033106orphanworks.asp

Nothing expresses the looking glass logic of the Copyright Office proposals better than this apparent belief by the bill’s “principal author” that an amendment legalizing the infringement of millions of commercial copyrights is necessary in order for buyers to find sellers in the field of visual arts. Even a cursory glance at our field refutes this logic:

Consider magazines such as Vanity Fair, The New Yorker, Time or Vogue. All of them and countless others are filled from cover to cover with photographs and art. How can anyone seriously argue that in the visual arts “sector” “buyers can’t find sellers”? Or look at the countless images published in newspapers, trade publications, medical journals, ads, annual reports, posters, brochures, catalogues, postcards, greeting cards, surface and fabric design. How can anyone be surrounded by this sea of images and still argue that the intellectual rights of the creators must be jeopardized in order to “pressure” them to rely on private, for-profit registries – on the premise that unless this is done, illustrators and photographers will be too hard for the users of images to find?

To the contrary, an entire food chain of collateral markets already exists to facilitate the process by which image buyers successfully find image sellers: Agents, commercial directories, trade shows, ads in trade publications, direct mail, web sites and e-mail solicitations all attest to the fact that hundreds of thousands of creators are engaged daily in the robust business of making themselves accessible to potential users. All of these businesses will be hurt by a bill that legalizes the infringement of the work they trade in. None will be helped by placing on them the onerous and costly burden of registering and maintaining tens of thousands of individual copyright registrations, not to mention the impossible burden of trying to monitor infringements of their work, which can occur anytime, anywhere in the world.

The Library of Congress already holds millions of visual deposits of registered visual works. These registrations can only be searched by text description.

As part of the Library of Congress' digitizing initiative to create digital access to its collections, it should begin with the Copyright Office records of VA registrations, and create the very database described by S.2913. The database should not expose the works to public view online where they could be stolen. Instead, it should allow searchers to upload an orphan image to be matched against the collection via image-recognition technology, and return the rightsholders name and contact information to the searcher.

Any government-mandated image registry should not be in the private sector. If Copyright law requires registration for full copyright protection, and Copyright law is to now be amended to require an image registry to maintain full copyright protection of visual works, then the Copyright Office should first provide a searchable image-recognition database of registered works, and bring its collections into compliance to honor the registrations it has issued for decades.

On January 29 2007, twenty visual arts groups met in Washington D.C. with attorneys from the Copyright Office. The attorneys stated that the Copyright Office could not and would not create the registries this bill would require because it would be “too expensive.” The following exchange took place between a representative of the Illustrators Partnership and the new Associate Register of Policy and International Affairs for the Copyright Office:

Holland: If a user can’t find a registered work at the Copyright Office, hasn’t the Copyright Office facilitated the creation of an orphaned work?
Carson: Copyright owners will have to register their images with private registries.
Holland: But what if I exercise my exclusive right of copyright and choose not to register?
Carson: If you want to go ahead and create an orphan work, be my guest!
– From the author’s notes of the meeting

This exchange suggests that if Copyright Office proposals become law:

• Unregistered work will be considered a potential orphan from the moment an artist creates it.

• In the U.S., copyright will no longer be the exclusive right of the copyright holder.

We believe strongly that this legislation as now written violates the obligations and commitments of the United States under Article 5 (2) of the Berne Convention on Literary and Artistic Rights which states:

“The enjoyment and the exercise of these rights shall not be subject to any formality.” (Emphasis added)

This Berne Convention principle has been incorporated into the Universal Copyright Convention and Article 13 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). These agreements acknowledge narrow limitations and exceptions to the exclusive right of copyright – so long as the exceptions don’t exceed the constraints of the TRIPS Three-Step Test:

“Member [countries] shall confine limitations and exceptions to exclusive rights to:
(1) certain special cases
(2) which do not conflict with a normal exploitation of the work
(3) and do not unreasonably prejudice the legitimate interests of the rightsholder.”

Legal scholars Jane Ginsburg and Paul Goldstein have warned that Orphan Works legislation must precisely define the scope of its mandate or fail to meet the three-step-test. As they wrote in their submission to the Orphan Works Study:

“[T]he diversity of [orphan works] responses highlights the fundamental importance of precisely defining the category of "orphan" works. The broader the category, or the lower the bar to making the requisite showing of due diligence, the greater the risk of inconsistency with our international obligations to uphold authors’ exclusive rights under copyright. Compliance with Berne/TRIPs is required by more than punctilio; these rules embody an international consensus of national norms that in turn rest on long experience with balancing the rights of authors and their various beneficiaries, and the public. Thus, in urging compliance with these technical-appearing rules, we are also urging compliance with longstanding practices that have passed the test of time.” 1., p. 1, OWR0107-Ginsburg-Goldstein (Emphasis added).

We do not believe the Copyright Office proposals address the concerns of professors Goldstein and Ginsburg and would, if enacted, subject the United States to complaints of treaty non-compliance at the World Trade Organization. And we would expect the international reprographic and artists rights societies which endorsed our submissions to the U.S. Copyright Office would be able successfully to encourage their governments to bring such complaints.

As the world’s leading creator and exporter of copyrighted works, the credibility of efforts of the United States to secure effective international enforcement of copyright would be materially weakened by the enactment of this proposed legislation. Certainly any law that prevents effective remedies or imposes arbitrary burdens on the right to bring infringement actions – much less provide for compensation for de minimis uses – would be seized upon by those in other countries who wish to defend piracy of U.S. works.

In addition to our concerns about the coercive licensing aspects of this legislation we would like to acquaint the subcommittee with the unique characteristics of illustration and other visual works of art that distinguish us from those who create other categories of copyrighted works such as literary works, songs and films. Unlike these other categories of works, works of visual art lack universally accepted titles that would allow users to search for them by name. Therefore the role of image recognition technology is critical. This technology is still in its infancy, is untested, and its use raises a number of very practical concerns. Among these concerns:

- The number of works created by the average visual artist far exceeds the volume of the most prolific creators of literary, musical and cinematographic works;

- The cost and time-consumption to individual artists of registering tens of thousands of visual works, at even a low fee, would be prohibitive; therefore

- Every artist would see thousands of his creations potentially orphaned from the moment of creation.

- No registry would be meaningful until billions of pre-existing works (both published and unpublished) from artists (both living and dead) have been digitized; but

- Few, if any, living artists could afford the time and expense of digitizing and registering a backlog of tens of thousands of their own works; therefore

- Countless working artists would find countless existing works orphaned from the moment they create them.

Further, we have a number of unanswered questions about how the registries that are key to this legislative scheme would work, such as:

- Who is to be trusted with this [these] valuable database(s)?

- Why should any professional creator be forced to entrust his or her entire creative inventory to the control of other commercial entities?

- What happens when a registry is hacked?

- What happens when it’s acquired?

- The contents of these image registries will be more valuable than secure banking information. What happens when the terms of service are changed?

- What happens when registration fees become prohibitive?

- What if individual artists cannot afford to maintain their immense bodies of work in competing registries?

Finally, we are concerned that, even if artists do comply with these coercive measures, they might still find their work orphaned. Let’s say an artist registers tens of thousands of images with one or more commercial registries. A user searches for one of his images and makes a match. The user contacts the artist and asks to use the art for a silly or distasteful ad. Or he asks to use the art for free. Most artists already see such inquiries and we know there aren't enough hours in the day to deal with them. Yet under this law, we would be obligated to respond to every irresponsible request! All this uncertainty would drive ordinary business transactions into the courts where uncertainties would multiply: judges unfamiliar with commercial markets would routinely have to render decisions regarding countless disputes in fields in which they lacked expertise.

The imposition of coerced registration in the U.S. could force foreign rightsholders to pay to register their work with U.S. registries, inviting foreign governments and business to retaliate in unpredictable ways.

Finally, many of the images to be affected by these proposals will be works created since 1976, when the current copyright act was passed. That law promised artists that their art would be protected even if it was not marked and registered. Yet if the Copyright Office proposals become law, any unmarked picture created in compliance with the 1976 law will become an instant orphan. Countless rightsholders will be penalized for not having registered their work with commercial registries that did not exist at the time and do not yet exist, even now.

We appreciate the opportunity to submit these comments and look forward to working with the subcommittee to address our concerns.


Respectfully submitted,

Brad Holland
Co-Founder
Illustrators’ Partnership of America

Cynthia Turner
Board Member
Illustrators’ Partnership of America

Constance Evans, National CEO
Martin Trailer, National President
Advertising Photographers of America

Katheen Bitetti
Artist & Executive Director
Artists Foundation of Massachusetts