04.24.08

Introduction Of The Shawn Bentley Orphan Works Act Of 2008

Judiciary Leaders Introduce Bipartisan, Bicameral Orphan Works Legislation Leahy, Hatch, Berman, Smith Introduce IP Legislation

WASHINGTON (Thursday, April 24, 2008) – Leading members of the Senate and House Judiciary Committees today introduced bipartisan, bicameral legislation to preserve so-called “orphan works” – works that may be protected by copyright, but whose owners cannot be found.  Potential users of orphan works often fail to display or use such works out of concern that they may be found liable for statutory damages, amounting to as much as $150,000.

Legislation to address those concerns was introduced today in the Senate by Judiciary Committee Chairman Patrick Leahy (D-Vt.) and Sen. Orrin Hatch (R-Utah), a senior member and former chairman of the panel, and in the House by Rep. Howard Berman (D-Calif.), chairman of the House Judiciary Committee's Subcommittee on Courts, the Internet, and Intellectual Property and Rep. Lamar Smith (R-Texas), ranking member of the House Judiciary Committee.  The bill is co-sponsored in the House by Judiciary Committee Chairman John Conyers (D-Mich.) and Rep. Howard Coble (R-N.C.)  The legislation would enable users to exhibit orphan works if, after a thorough, documented search, the copyright owners are unable to be located.  The legislation outlines the criteria for such a search, and provides for court review to determine if a search has been adequate and done in good faith.  If the copyright owner later emerges, the user must pay reasonable compensation to the owner.  The bill also includes provisions to further protect owners of these orphaned copyrights, should any user exhibit bad faith.

“This legislation will help bring together potential users and owners of orphan works,” said Leahy.  “But also as important, it will allow the public to view works that may remain orphaned.  A Vermonter can restore a family photograph from three generations ago, even when the original photographer is no longer available to give permission.  With this bill, we can preserve important parts of our personal and national heritage, without giving a free license to infringe on established copyright protections.”

“There are thousands of artistic creations around the country that are effectively locked away and unavailable for the general public to enjoy because the owner of the work is unknown.  Identifying the owner of a copyrighted work is difficult in many cases and represents a huge liability to those who would bring the work into the public domain without permission,” Hatch said. “This bill represents a commitment from Congress to unlock orphan works so the general public may once again enjoy them.”

“Too many valuable works are unused because their creators are unknown, and potential users fear excessive liability,” said Berman.  “We must act to lower the legal barriers that keep these works from the public.”

“Millions of copyrighted works are effectively ‘locked up’ and unable to be enjoyed by the public due to our current copyright system,” said Smith.  “As a result, investments in new works and expositions by libraries, museums and others are frequently not undertaken due to the possibility of lawsuits and large statutory damage awards.  By placing reasonable limitations on liability, while ensuring that owners receive compensation for the use of their works, the bills introduced today will help reduce uncertainty and encourage creativity.”

Leahy, Hatch, Berman and Smith have longstanding interests in intellectual property issues, and have introduced copyright legislation in the 110th Congress, including a bipartisan, bicameral bill to reform the patent system.

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Section-by-section for background is below.

Statement Of Senator Patrick Leahy (D-Vt.)

On Introduction Of The Shawn Bentley Orphan Works Act Of 2008

April 24, 2008

 

Today, I join once again with Senator Hatch to introduce a bill that will have a significant and positive impact on our cultural heritage.  Hundreds of thousands of so-called “orphan works” – works that may be protected by copyright, but whose owners cannot be indentified or located – are collecting dust.  Despite tremendous interest in using these orphan works in new collections and new creations, they often languish unseen, because those who would like to bring them to light, and to the attention of the world, fear the prospect of prohibitively expensive statutory damages.  In other instances, the copyright in an orphan work may have expired, but potential users lack the information to be certain of the propriety of going forward with its use.

 

The Shawn Bentley Orphan Works Act of 2008 will remedy this situation.  It will help potential users of orphan works find the owners of those works, and it will help the owners to receive compensation.  The works will no longer be orphans; their owners will reap the financial benefits of their use, while the public reaps the creative benefits.  More creative works will be used, contributing to our cultural and artistic heritage, and more creators will receive compensation for use of their work.

 

Our legislation permits the use of an orphan work only if the potential user performs and documents a good faith search for the copyright owner.  If users cannot locate and contact copyright owners, they may use the orphan work.  But if copyright owners later make themselves known, and if users have performed a search that qualifies under this legislation, owners are entitled to reasonable compensation.  The user will not be liable for full statutory damages in those circumstances, but if a user does not perform that good faith search, the user will face up to $150,000 in statutory damages. 

 

In practical terms, then, what does this mean?  It means that a woman in Vermont can restore a wedding photograph of her grandparents, even if she cannot locate the photographer to get permission to do so.  It means that a library can display letters of American soldiers wrote during World War II, even if the library cannot contact the soldiers or their descendents.  It means that museums can exhibit Depression-era photographs, even if they cannot determine the name of the photographer. 

 

What this bill does not do is create a “license to infringe.”  In any of the above instances, if the users do not conduct a good faith search for the copyright owner, those users are in the same boat they are in now when it comes to infringement.  This bill does not change the basic premise of copyright law:  If you use the copyrighted works of others, you must compensate them for it.  As an avid photographer, I understand what it means to devote oneself to creative expression, and I applaud anyone with the talent and commitment to make a living doing so.  Orphan works are too important to our families, our communities, and our culture to go left unseen and unused. 

 

I thank Senator Hatch for his help in developing this legislation, and I look forward to working with him to ensure that this bill becomes law.  I am especially pleased to name this bill for Shawn Bentley.  Several years ago, Shawn died, tragically young, but he left behind a legacy of affection and regard for all of us who knew him.  He served Senator Hatch as a counsel for intellectual property, and it was he who first inspired this effort on orphan works.  Naming this bill for him is a testament to his dedication to the issue, and his value to the Judiciary Committee.

 

I ask unanimous consent that the full bill text be included in the Record.

 

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SHAWN BENTLEY ORPHAN WORKS ACT OF 2008

SECTION-BY-SECTION

For Background

 

Sec. 1. Short Title.  Cited as the “Shawn Bentley Orphan Works Act of 2008”.

 

Section 2. Limitation on Remedies in Cases Involving Orphan Works.    

 

In general.—The Act creates a new section 514 of title 17, which provides a limitation on remedies in certain instances of copyright infringement in which the user of the work is unable to locate the owner of the work despite having conducted a diligent search. 

 

Conditions on eligibility.  To qualify for this section, a user must (1) perform and document a good faith – but ultimately unsuccessful – search for the owner of the copyright in the work being used prior to such use; (2) provide attribution if the identity, but not location, of the owner is known; and (3) include with the use of the infringing work a symbol, indicating the author was not located, in a manner the Copyright Office will prescribe. 

 

Pre-litigation requirements.  If the owner later emerges and provides notice of infringement to the user, the user must negotiate reasonable compensation in good faith and render any such compensation agreed upon in a timely fashion. 

 

Requirements in litigation.  If the owner files an action for infringement, the user must assert the right to a limitation on remedies under this section in its initial pleading; consent to, or be held to be subject to, the jurisdiction of the court; and provide documentation of the qualifying search to the owner at the time of the initial discovery disclosures. 

 

Qualifying searches.  A court, in determining whether a search is diligent, shall consider factors including whether (1) actions taken in a search are reasonable and appropriate in a given situation, (2) the infringer employed the applicable best practices maintained by the Copyright Office, and (3) the search took place immediately prior to use.  The fact that a work lacks identifying information pertaining to the owner is not sufficient to meet this standard. 

 

The Copyright Office is charged with maintaining publicly available statements of best practices.  The statements of best practices may include using Copyright Office records, private registries, industry practices and guidelines, technology tools, and electronic databases, which may require a charge or subscription fee. 

 

Limitation on remedies.  If the user qualifies for a limitation on remedies under this section, but the user and owner do not agree on reasonable compensation, a court may determine and award reasonable compensation, defined as the amount to which a willing buyer and a willing seller would have agreed immediately prior to use. 

 

No award of damages may be made if the user is a nonprofit educational institution, museum, library, archive, or a public broadcasting entity and such user can demonstrate that the infringement was not performed for direct commercial advantage; the infringement was primarily educational, religious or charitable in nature; and, the user promptly ceased infringement after receiving notice.  Proceeds directly attributable to the use may be awarded to the owner. 

 

A court may impose injunctive relief except in the case of a work that has been recast or integrated with a significant amount of the infringer’s original expression. 

 

The limitations on remedies under this section are not available if the infringer asserts it is not subject to the courts of the United States for an award of damages and refuses to pay reasonable compensation.

 

Preservation of other rights, limitations and defenses.  This section clarifies that other rights, limitations and defenses, such as fair use, are preserved and ensures that if a statutory license is applicable to the use, that provision applies instead of this section.

 

Derivative works and compilations.  This section clarifies that a user who qualifies under this section shall not be denied copyright protection in a compilation or derivative work based on the orphan work contained in the compilation or derivative work.    

 

Section 3. Database of Pictorial, Graphic, and Sculptural Works.  The Copyright Office must create and undertake a certification process for the establishment of electronic databases of visual works.  Certain requirements for any such registry are prescribed.  The Copyright Office will post a list of all certified registries on the Internet. 

 

Section 4. Effective Date.  The Act has a staggered effective date.  For pictorial, graphic, and sculptural works, the effective date will be the earlier date of (a) the date on which the Copyright Office certifies at least 2 separate registries under Section 3, or 
(b) January 1, 2011.  For all other works, the effective date will be January 1, 2009. 

 

Section 5.  Report to Congress.  The Register of Copyrights must report to the House and Senate Judiciary Committees on the implementation of the Act by 
December 12, 2014.

 

Section 6. Study on Remedies for Small Copyright Claims.  The Register of Copyrights must conduct a study to determine the feasibility of instituting a small claims procedure for instances of infringement involving smaller amounts of monetary relief.  The Register shall present a report on the study, including any legislative suggestions, not later than 2 years after the date of enactment.

 

Section 7. Study on Copyright Deposits.  The Comptroller General must conduct a study examining the function of the deposit requirement in the copyright registration system and report to Congress within 2 years after the date of enactment, making any administrative, regulatory or legislative recommendations.

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