Deconstructing The Controversial “Orphan Works” Copyright Legislation of 2008
Vol. 33, No. 3, 2008, Andres Quintana Esq.
On April 24, 2008, the U.S. House of Representatives and Senate introduced slightly different but equally controversial versions of the Orphan Works Act of 2008, which attempts to curtail the remedies available in “orphaned work” cases when the copyright owner is not identifiable and locatable. While certain special interest groups aver the new bills are improvements over comparable orphan works legislation withdrawn from committee in 2006, some advocacy groups still oppose the bills contending they retroactively constrain rights to “pictorial, graphic and sculptural” works without adequate safeguards. This article attempts to untangle the text of the pending orphan works legislation, identify potential complications with the current versions, and summarize the legislation’s practicable impact on the copyright system. A. Orphan Works Defined. According to the orphan works bills, an “orphan work” is any copyrighted work whose owner cannot be identified or located after a “reasonably diligent search.” An owner’s disassociation with its creative work may occur for motley reasons. For instance, if an author publishes a work anonymously, then the author may never have been publicly known. Or, perhaps the author’s identity was once known but the author’s information became missing with time. Or, even if the author is acknowledged, authenticating a chain of ownership or verifying the present owner may be impracticable under the circumstances. B. An Overview Of The Orphan Works Conundrum.
The commotion over “orphan works” stems from the omnibus revision to the Copyright Act in 1976 and subsequent Copyright Act enactments. i Specifically, the 1976 Act made obtaining and maintaining copyright protection for creative works substantially easier than the 1909 Act. Now, copyright protection subsists the moment an original work of authorship is fixed in a tangible medium of expression, and the work’s registration with the Copyright Office or publication with notice is unnecessary. Moreover, the 1976 Act, the Copyright Renewal Act of 1992 ii and the Sonny Bono Copyright Term Extension Act iii vitiated the registration renewal system to maintain copyright protection since it could create an excessive penalty on the unsuspecting copyright owner.iv C. H.R. 5889: Orphan Works Act of 2008.
The House bill would amend the Copyright Act in four ways. First, it would limit civil remedies in an infringement action involving “orphan works” if the infringer proves that: (1) the infringer performed and documented a reasonably diligent, good faith search to identify and locate the copyright owner, but failed to do so before using the work; (2) the infringer filed a Notice of Use with the Copyright Office before using the work; (3) the infringer provided attribution to the copyright owner, if known; and (4) the infringer complied with certain pleadings and discovery requirements should an infringement lawsuit later commence. 1. How Proposed Section 514 Would Limit Civil Remedies. The House bill creates an “orphan works” defense to a copyright infringement lawsuit. If an infringer is accused of copyright infringement, the infringer may curb or altogether eschew the owner’s remedies if the infringer can establish the work was “orphaned” and the infringer adhered to various search, filing, attribution, pleading and discovery requirements. How does an infringer demonstrate that work was “orphaned” before alleged use? How does an infringer comply with other proposed evidentiary and procedural requirements? How will a copyright owner still be reasonably compensated if the work is deemed “orphaned”? The House bill, unfortunately, does not fully answer these questions and leaves many details up to the Copyright Office (and presumably the federal courts) to explicate. a. Determination Of Orphaned Status.
Under the House bill, before using a work, the infringer must (1) perform and document a good faith diligent search for the copyright owner and (2) demonstrate an inability to locate the copyright owner. b. Compliance With The Proposed Notice Of Use Requirements.
After completing the diligent search, the infringer will be required to file a Notice of Use with the Copyright Office. These Notices are to be archived and maintained by the Copyright Office. Each Notice must incorporate at least the following information: (1) the type of creative work to be used, (2) a text description of the work, (3) a summary of the good faith diligent search undertaken to identify and locate the copyright owner, (4) all identifying information found during the search, (5) a certification the infringer undertook a good faith diligent effort, (6) the name of the copyright owner, if known, and (7) a description of the infringer’s intended uses for the work. If the infringer fails to file this Notice, the infringer cannot later raise an orphan works defense if the copyright owner claims infringement. c. Compliance With The Proposed Notice Of Use Requirements. If through conducting the diligent search, the infringer identifies the copyright owner “with a reasonable degree of certainty,” the infringer must then provide the copyright owner “attribution” in a manner that is “reasonable under the circumstances”. Presumably, this attribution is necessary if the infringer has identified but not located the copyright owner. Had the infringer unearthed both the identity and location of the copyright owner, then work would likely be ineligible for “orphaned” status. In addition, the infringer is required to include with the use of the “orphaned” work, some symbol or other notice of the use of the work, in a manner to be prescribed by the Copyright Office. Again, what “reasonable” means remains equivocal. d. Responding To Copyright Owner’s “Claim Notice”.
The House bill reflects the prospect that the copyright owner whose work is at risk of “orphan” status may discover the infringer’s actual or potential use. If so, the copyright owner can deliver to the infringer a “notice of the claim for infringement.” The bill does not indicate when the “notice of the claim” should be delivered, if ever. Nonetheless, the bill states that this “notice” must be in writing and contain the copyright owner’s name and contact information, the title of the work (or, if the work is without title, a sufficiently detailed description of it), and the information from which a “reasonable person could conclude” the copyright owner’s claims of ownership and infringement are valid. e. Compliance With Post-Filing Requirements.
Assuming an infringement lawsuit still ensues, an infringer must also satisfy two additional conditions to maintain an orphan works defense. First, the infringer must assert the defense in the initial pleading. Second, as part of its Federal Rule 26 initial discovery disclosures, the infringer must state with particularity the basis for the right to claim the defense, including a detailed description and documentation of the good faith diligent search to identify and locate the copyright owner before using the work. f. What Civil Remedies Are Limited.
If an infringer has demonstrated a diligent search before use, submitted the requisite Notice of Use, properly handled a copyright owner’s “notice of claim” (if any), and complied with the pleading and discovery requirements after a lawsuit is commenced, the infringer may limit the remedies available in the dispute. g. Exemption For Non-Profit Infringers.
The House bill expressly exempts claims for “reasonable compensation” against nonprofit educational institutions, libraries, archives and public broadcasters where: (1) the use is made without purpose of commercial advantage, (2) the use is made “primarily” for educational, religious or charitable purposes, and (3) the infringer “promptly” ceases the use after the copyright owner comes forward. In any event, the copyright owner is entitled to any “proceeds” received by the infringer directly attributable to the infringement. Finally, the States’ abilities to avoid payment under the doctrine of sovereign immunity are “limited.” h. Derivative Works Provision.
Finally, notwithstanding Section 103(a) of Copyright Act (which currently prohibits an infringer from copyrighting a derivative work that has been infringed), if an infringer qualifies for the “orphan work” defense, the infringer can still assert copyright protection in a compilation or derivative work even if such compilation or derivative work employs preexisting material that has been “used unlawfully.” 2. Effective Date & Retroactive Application.
Under the House bill, the limitation and/or elimination of civil remedies for pictorial, graphic and sculptural works would take effect the earlier of: (1) the date on which the Copyright Office certifies at least two “separate and independent searchable, comprehensive databases” for these works; or (2) January 1, 2013, regardless of whether the databases exist or are certified. In contrast, for all other works, the effective date would January 1, 2009, less than six months away. 3. The Study On Small Copyright Claims Court.
The House bill directs the Copyright Office to study the feasibility of creating alternate means of resolving copyright disputes “seeking small amounts of monetary relief.” Whether an alternative dispute resolution regime is feasible remains to be seen. The proposed bill fails to define “small amounts” or set forth any instruction on how facts in a disputatious infringement lawsuit will be established absent fact and expert discovery and the like. The Copyright Office would have to report Congress within two years after enactment. 4. The Proposed Database of “Pictorial, Graphic And Sculptural Works.”
The Copyright Office must certify electronic and publically available databases that facilitate the search for pictorial, graphic and sculptural works. Although the Copyright Office is tasked with establishing the “process and standards” for such databases, the databases must collect and store the following: (1) the contact name and information for author (if readily available), (2) the name of the copyright owner if different from the author, (3) the title of work (if the work has a title), (4) a copy of the work (for visual images) or a description “sufficient to identify the work,” (5) mechanisms that allow search and identification of the work by both text and image, and (6) security measures to protect against unauthorized access to or copying of the databases’ information and content. The Copyright Office must make a list of certified databases available to the public over the Internet. 5. The Proposed Study On Copyright Deposits.
Under the House bill, the U.S. Comptroller General would be directed to study the functions of the deposit requirement in copyright registration, including the historical purpose of the deposit requirement, the degree to which deposits are available to the public, the feasibility of making deposits (particularly visual arts deposits) electronically searchable by the public for purposes of locating copyright owners, and the impact any change in the deposit requirement would have on the Library of Congress’ collection. Again, the Copyright Office would have to report Congress within two years after enactment. D. S. 2913: The Shawn Bentley Orphan Works Act of 2008.
The Senate version of the Orphan Work Act was also introduced on April 24, 2008. This version essentially mirrors the House version except for three differences. First, the Senate version does not exempt the use of “orphaned” art on useful articles, like textiles, mugs, t-shirts, etc. Second, the Senate version could potentially take effect earlier than the House Bill, but with the same retroactive application. Specifically, the limitation and/or elimination of civil remedies for pictorial, graphic and sculptural works would take effect the earlier of: (1) the date on which the Copyright Office certifies at least 2 visual art registry databases that are available to the public, or January 1, 2011, regardless of whether the databases exist or are certified. Finally, the Senate version does not require the infringer to file a notice of use in a new infringement database to be maintained by Copyright Office. E. Analysis & Practical Considerations.
Given that the House and Senate bills have received public support from influential Congressional members, academic institutions, museums and publishers and various associations, the enactment of some version of the Orphan Works law is likely this year. Indeed, the Copyright Office calls the proposed legislation “necessary to provide a meaningful solution to the orphan works problem.” x However, as introduced, the pending legislation raise more questions than they answer. Here are a few of these open issues:
ABOUT THE
AUTHOR
i
Notice of Inquiry, U.S. Copyright Office, January 26, 2005 (available at http://www.copyright.gov/fedreg/2005/70fr3739.html.)
ii
Pub.L. No. 102-307, 106 Stat. 264 (1992).
iii
Pub.L. No. 105-298, 112 Stat. 2827 (1998).
iv
Notice of Inquiry, U.S. Copyright Office, January 26, 2005 (available at http://www.copyright.gov/fedreg/2005/70fr3739.html.)
v
The Berne Convention article 5(2) “no formalities” requirement has been incorporated by reference into both the Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS”), and the WIPO Copyright Treaty (“WCT”). See Agreement on Trade-Related Aspects of Intellectual Property Rights, Apr. 15, 1994, art. 9.1, Marrakesh Agreement Establishing the World Trade Organization, Annex 1C, Legal Instruments--Results of the Uruguay Round vol. 31, 33 I.L.M. 81, 87 (1994); WIPO Copyright Treaty, Apr. 12, 1997, art. 3, S. Treaty Doc. No. 105-17 (1997), 36 I.L.M. 65, 69 (1997). The WIPO Performances and Phonograms Treaty (“WPPT”) contains an express “no formalities” provision without reference to the Berne Convention. See WIPO Performances and Phonograms Treaty, Apr. 12, 1997, art. 20, S. Treaty Doc. No. 105-17 (1997), 36 I.L.M. 76, 80 (1997).
vi
Kahle v. Gonzales, 487 F.3d 697, 699 (9TH Cir, 2007).
vii
U.S. Copyright Office, Report On Orphan Works, January 2008, p.17 (available at http://www.copyright.gov/orphan/orphan-report-full.pdf).
viii
U.S. Copyright Office, Report On Orphan Works, January 2008, p.7 (available at http://www.copyright.gov/orphan/orphan-report-full.pdf).
ix
Copyright: Orphan Works. American Library Association (2006-08). Retrieved on 2006-11-28.
x
Copyright: Orphan Works. American Library Association (2006-08). Retrieved on 2006-11-28.
xi
See generally 471 U.S. 539, 550-555 (1985).
xii
http://www.artistsfoundation.org/talkingpoints.html.
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