[Congressional Bills 110th Congress]
[From the U.S. Government Publishing Office]
[H.R. 5889 Introduced in House (IH)]
110th CONGRESS
2d Session
H. R. 5889
To provide a limitation on judicial remedies in copyright infringement
cases involving orphan works.
_______________________________________________________________________
IN THE HOUSE OF REPRESENTATIVES
April 24, 2008
Mr. Berman (for himself, Mr. Smith of Texas, Mr. Conyers, and Mr.
Coble) introduced the following bill; which was referred to the
Committee on the Judiciary
_______________________________________________________________________
A BILL
To provide a limitation on judicial remedies in copyright infringement
cases involving orphan works.
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 2008''.
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:
``Sec. 514. Limitation on remedies in cases involving orphan works
``(a) Definitions.--In this section, the following definitions
shall apply:
``(1) Materials and standards.--The term `materials and
standards' includes--
``(A) the records of the Copyright Office that are
relevant to identifying and locating copyright owners;
``(B) sources of copyright ownership information
reasonably available to users, including private
databases;
``(C) industry practices and guidelines of
associations and organizations;
``(D) technology tools and expert assistance,
including resources for which a charge or subscription
fee is imposed, to the extent that the use of such
resources is reasonable for, and relevant to, the scope
of the intended use; and
``(E) electronic databases, including databases
that are available to the public through the Internet,
that allow for searches of copyrighted works and for
the copyright owners of works, including through text,
sound, and image recognition tools.
``(2) Notice of claim for infringement.--The term `notice
of the claim for infringement' means, with respect to a claim
for copyright infringement, a written notice that includes at a
minimum the following:
``(A) The name of the owner of the infringed
copyright.
``(B) The title of the infringed work, any
alternative titles of the infringed work known to the
owner of the infringed copyright, or if the work has no
title, a description in detail sufficient to identify
it.
``(C) An address and telephone number at which the
owner of the infringed copyright may be contacted.
``(D) Information from which a reasonable person
could conclude that the owner of the infringed
copyright's claims of ownership and infringement are
valid.
``(3) Owner of the infringed copyright.--The `owner of the
infringed copyright' is the legal owner of the exclusive right
under section 106 that is applicable to the infringement in
question, or any party with the authority to grant or license
that right.
``(4) Reasonable compensation.--The term `reasonable
compensation' means, with respect to a claim for infringement,
the amount on which a willing buyer and willing seller in the
positions of the infringer and the owner of the infringed
copyright would have agreed with respect to the infringing use
of the work immediately before the infringement began.
``(b) Conditions for Eligibility.--
``(1) Conditions.--
``(A) In general.--Notwithstanding sections 502
through 505, and subject to subparagraph (B), in a
civil action brought under this title for infringement
of copyright in a work, the remedies for infringement
shall be limited in accordance with subsection (c) if
the infringer--
``(i) proves by a preponderance of the
evidence that before the infringement began,
the infringer, a person acting on behalf of the
infringer, or any person jointly and severally
liable with the infringer for the
infringement--
``(I) performed and documented a
qualifying search, in good faith, for
the owner of the infringed copyright;
and
``(II) was unable to locate the
owner of the infringed copyright;
``(ii) before using the work, filed with
the Register of Copyrights a Notice of Use
under paragraph (3);
``(iii) provided attribution, in a manner
that is reasonable under the circumstances, to
the owner of the infringed copyright, if such
owner was known with a reasonable degree of
certainty, based on information obtained in
performing the qualifying search;
``(iv) included with the use of the
infringing work a symbol or other notice of the
use of the infringing work, in a manner
prescribed by the Register of Copyrights;
``(v) asserts in the initial pleading to
the civil action the right to claim such
limitations;
``(vi) consents to the jurisdiction of
United States district court, or such court
holds that the infringer is within the
jurisdiction of the court; and
``(vii) at the time of making the initial
discovery disclosures required under Rule 26 of
the Federal Rules of Civil Procedure, states
with particularity the basis for the right to
claim the limitations, including a detailed
description and documentation of the search
undertaken in accordance with paragraph (2)(A).
``(B) Exception.--Subparagraph (A) does not apply
if, after receiving notice of the claim for
infringement and having an opportunity to conduct an
expeditious good faith investigation of the claim, the
infringer--
``(i) fails to negotiate reasonable
compensation in good faith with the owner of
the infringed copyright; or
``(ii) fails to render payment of
reasonable compensation in a reasonably timely
manner.
``(2) Requirements for searches.--
``(A) Requirements for qualifying searches.--
``(i) In general.--For purposes of
paragraph (1)(A)(i)(I), a search is qualifying
if the infringer undertakes a diligent effort
to locate the owner of the infringed copyright.
``(ii) Determination of diligent effort.--
In determining whether a search is diligent
under this subparagraph, a court shall consider
whether--
``(I) the actions taken in
performing that search are reasonable
and appropriate under the facts
relevant to that search, including
whether the infringer took actions
based on facts uncovered by the search
itself;
``(II) the infringer employed the
applicable best practices maintained by
the Register of Copyrights under
subparagraph (B); and
``(III) the infringer performed the
search before using the work and at a
time that was reasonably proximate to
the commencement of the infringement.
``(iii) Lack of identifying information.--
The fact that a particular copy or phonorecord
lacks identifying information pertaining to the
owner of the infringed copyright is not
sufficient to meet the conditions under
paragraph (1)(A)(i)(I).
``(B) Information to guide searches; best
practices.--
``(i) Statements of best practices.--The
Register of Copyrights shall maintain and make
available to the public, including through the
Internet, current statements of best practices
for conducting and documenting a search under
this subsection.
``(ii) Consideration of relevant materials
and standards.--In maintaining the statements
of best practices required under clause (i),
the Register of Copyrights shall, from time to
time, consider materials and standards that may
be relevant to the requirements for a
qualifying search under subparagraph (A).
``(3) Notice of use archive.--The Register of Copyrights
shall create and maintain an archive to retain the Notice of
Use filings under paragraph (1)(A)(i)(III). Such filings shall
include--
``(A) the type of work being used, as listed in
section 102(a) of this title;
``(B) a description of the work;
``(C) a summary of the search conducted under
paragraph (1)(A)(i)(I);
``(D) the owner, author, recognized title, and
other available identifying element of the work, to the
extent the infringer knows such information with a
reasonable degree of certainty;
``(E) a certification that the infringer performed
a qualifying search in good faith under this subsection
to locate the owner of the infringed copyright; and
``(F) the name of the infringer and how the work
will be used.
Notices of Use filings retained under the control of the
Copyright Office shall be furnished only under the conditions
specified by regulations of the Copyright Office.
``(4) Penalty for failure to comply.--If an infringer fails
to comply with any requirement under this subsection, the
infringer is subject to all the remedies provided in section
502 through 505, subject to section 412.
``(c) Limitations on Remedies.--The limitations on remedies in a
civil action for infringement of a copyright to which this section
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 infringer to
pay reasonable compensation to the legal or beneficial
owner of the exclusive right under the infringed
copyright for the use of the infringed work.
``(B) Further limitations.--An order requiring the
infringer to pay reasonable compensation for the use of
the infringed work may not be made under subparagraph
(A) if the infringer is a nonprofit educational
institution, library, or archives, or a public
broadcasting entity (as defined in subsection (f) of
section 118) and the infringer proves by a
preponderance of the evidence that--
``(i) the infringement was performed
without any purpose of direct or indirect
commercial advantage,
``(ii) the infringement was primarily
educational, religious, or charitable in
nature, and
``(iii) after receiving notice of the claim
for infringement, and after conducting an
expeditious good faith investigation of the
claim, the infringer promptly ceased the
infringement,
except that if the legal or beneficial owner of the
exclusive right under the infringed copyright proves,
and the court finds, that the infringer has earned
proceeds directly attributable to the infringement, the
portion of such proceeds so attributable may be awarded
to such owner.
``(C) Effect of registration on reasonable
compensation.--If a work is registered, the court may,
in determining reasonable compensation under this
paragraph, take into account the value, if any, added
to the work by reason of such registration.
``(2) Injunctive relief.--
``(A) General rule.--Subject to subparagraph (B),
the court may impose injunctive relief to prevent or
restrain any infringement alleged in the civil action.
``(B) Exception.--In a case in which the infringer
has prepared or commenced preparation of a work that
recasts, transforms, adapts, or integrates the
infringed work with a significant amount of the
infringer's original expression, any injunctive relief
ordered by the court--
``(i) may not restrain the infringer's
continued preparation or use of that new work;
``(ii) shall require that the infringer pay
reasonable compensation to the legal or
beneficial owner of the exclusive right under
the infringed copyright for the use of the
infringed work; and
``(iii) shall require that the infringer
provide attribution, in a manner that is
reasonable under the circumstances, to the
owner of the infringed copyright, if requested
by such owner.
``(C) Limitations.--The limitations on injunctive
relief under subparagraphs (A) and (B) shall not be
available to an infringer if the infringer asserts in
the civil action that neither the infringer or any
representative of the infringer acting in an official
capacity is subject to suit in the courts of the United
States for an award of damages to the legal or
beneficial owner of the exclusive right under the
infringed copyright under section 106, unless the court
finds that the infringer--
``(i) has complied with the requirements of
subsection (b); and
``(ii) has made an enforceable promise to
pay reasonable compensation to the legal or
beneficial owner of the exclusive right under
the infringed copyright.
``(D) Rule of construction.--Nothing in
subparagraph (C) shall be construed to authorize or
require, and no action taken under such subparagraph
shall be deemed to constitute, either an award of
damages by the court against the infringer or an
authorization to sue a State.
``(E) Rights and privileges not waived.--No action
taken by an infringer under subparagraph (C) shall be
deemed to waive any right or privilege that, as a
matter of law, protects the infringer from being
subject to suit in the courts of the United States for
an award of damages to the legal or beneficial owner of
the exclusive right under the infringed copyright under
section 106.
``(d) Exclusion for Fixations in or on Useful Articles.--The
limitations on monetary and injunctive relief under this section shall
not be available to an infringer for infringements resulting from
fixation of a work in or on a useful article that is offered for sale
or other distribution to the public.
``(e) Preservation of Other Rights, Limitations, and Defenses.--
This section does not affect any right, limitation, or defense to
copyright infringement, including fair use, under this title. If
another provision of this title provides for a statutory license that
would permit the infringement contemplated by the infringer if the
owner of the infringed copyright cannot be located, that provision
applies instead of this section.
``(f) Copyright for Derivative Works and Compilations.--
Notwithstanding section 103(a), an infringer who qualifies for the
limitation on remedies afforded by this section with respect to the use
of a copyrighted work shall not be denied copyright protection in a
compilation or derivative work on the basis that such compilation or
derivative work employs preexisting material that has been used
unlawfully under this section.''.
(b) Technical and Conforming Amendment.--The table of sections for
chapter 5 of title 17, United States Code, is amended by adding at the
end the following:
``514. Limitation on remedies in cases involving orphan works.''.
SEC. 3. DATABASE OF PICTORIAL, GRAPHIC, AND SCULPTURAL WORKS.
(a) Establishment of Database.--
(1) In general.--The Register of Copyrights shall undertake
a certification process for the establishment of an electronic
database to facilitate the search for pictorial, graphic, and
sculptural works that are subject to copyright protection under
title 17, United States Code.
(2) Process and standards for certification.--The process
and standards for certification of the electronic database
required under paragraph (1) shall be established by the
Register of Copyrights, except that certification may not be
granted if the electronic database does not contain--
(A) the name of all authors of the work, and
contact information for any author if the information
is readily available;
(B) the name of the copyright owner if different
from the author, and contact information of the
copyright owner;
(C) the title of the copyrighted work, if such work
has a title;
(D) with respect to a copyrighted work that
includes a visual image, a visual image of the work,
or, if such a visual image is not available, a
description sufficient to identify the work;
(E) one or more mechanisms that allow for the
search and identification of a work by both text and
image; and
(F) security measures that reasonably protect
against unauthorized access to, or copying of, the
information and content of the electronic database.
(b) Public Availability.--The Register of Copyrights--
(1) shall make available to the public through the Internet
a list of all electronic databases that are certified in
accordance with this section; and
(2) may include any database so certified in a statement of
best practices established under section 514(b)(5)(B) of title
17, United States Code.
SEC. 4. EFFECTIVE DATE.
(a) In General.--With respect to works other than pictorial,
graphic, and sculptural works, the amendments made by section 2 shall
apply to infringements that commence on or after January 1, 2009.
(b) Pictorial, Graphic, and Sculptural Works.--With respect to
pictorial, graphic, and sculptural works, the amendments made by
section 2 shall--
(1) take effect on the earlier of--
(A) the date on which the Copyright Office
certifies under section 3 at least 2 separate and
independent searchable, comprehensive, electronic
databases, that allow for searches of copyrighted works
that are pictorial, graphic, and sculptural works, and
are available to the public through the Internet; or
(B) January 1, 2013; and
(2) apply to infringing uses that commence on or after that
effective date.
(c) Publication in Federal Register.--The Register of Copyrights
shall publish the effective date described in subsection (b)(1) in the
Federal Register, together with a notice that the amendments made by
section 2 take effect on that date with respect to pictorial, graphic,
and sculptural works.
(d) Definition.--In this section, the term ``pictorial, graphic,
and sculptural works'' has the meaning given that term in section 101
of title 17, United States Code.
SEC. 5. REPORT TO CONGRESS.
Not later than December 12, 2014, the Register of Copyrights shall
report to the Committee on the Judiciary of the Senate and the
Committee on the Judiciary of the House of Representatives on the
implementation and effects of the amendments made by section 2,
including any recommendations for legislative changes that the Register
considers appropriate.
SEC. 6. STUDY ON REMEDIES FOR SMALL COPYRIGHT CLAIMS.
(a) In General.--The Register of Copyrights shall conduct a study
with respect to remedies for copyright infringement claims by an
individual copyright owner or a related group of copyright owners
seeking small amounts of monetary relief, including consideration of
alternative means of resolving disputes currently heard in the United
States district courts. The study shall cover the infringement claims
to which section 514 of title 17, United States Code, apply, and other
infringement claims under such title 17.
(b) Procedures.--The Register of Copyrights shall publish notice of
the study required under subsection (a), providing a period during
which interested persons may submit comments on the study, and an
opportunity for interested persons to participate in public roundtables
on the study. The Register shall hold any such public roundtables at
such times as the Register considers appropriate.
(c) Report to Congress.--Not later than 2 years after the date of
the enactment of this Act, the Register of Copyrights shall prepare and
submit to the Committee on the Judiciary of the Senate and the
Committee on the Judiciary of the House of Representatives a report on
the study conducted under this section, including such administrative,
regulatory, or legislative recommendations that the Register considers
appropriate.
SEC. 7. STUDY ON COPYRIGHT DEPOSITS.
(a) In General.--The Comptroller General of the United States shall
conduct a study examining the function of the deposit requirement in
the copyright registration system under section 408 of title 17, United
States Code, including--
(1) the historical purpose of the deposit requirement;
(2) the degree to which deposits are made available to the
public currently;
(3) the feasibility of making deposits, particularly visual
arts deposits, electronically searchable by the public for the
purpose of locating copyright owners; and
(4) the impact any change in the deposit requirement would
have on the collection of the Library of Congress.
(b) Report.--Not later than 2 years after the date of the enactment
of this Act, the Comptroller General shall 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 study conducted under this
section, including such administrative, regulatory, or legislative
recommendations that the Register considers appropriate.
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