Time To Act

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

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

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

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

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

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

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

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

Technology is Not the Solution

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

Frequently Asked Questions About Orphan Works

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

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

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

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

A: Three reasons:

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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


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

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

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

Berman Statement on Orphan Works

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

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

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

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

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

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

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

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

Derivative Abuse

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

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

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

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

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

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

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

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

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

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

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

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

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

Assault on Copyright

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

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

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

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

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

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

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

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

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

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

Infringer’s Bill of Rights

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

109TH CONGRESS
2D SESSION H. R. 5439

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

IN THE HOUSE OF REPRESENTATIVES

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

A BILL

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

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

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

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

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

Ҥ 514. Limitation on remedies in cases involving orphan works

“(a) LIMITATION ON REMEDIES.—

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

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

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

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

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

“(2) DEFINITIONS; REQUIREMENTS FOR SEARCHES.—

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

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

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

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

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

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

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

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

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

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

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

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

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

“(1) MONETARY RELIEF.—

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

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

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

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

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

“(2) INJUNCTIVE RELIEF.—

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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


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

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