[Congressional Bills 110th Congress]
[From the U.S. Government Publishing Office]
[S. 2913 Introduced in Senate (IS)]







110th CONGRESS
  2d Session
                                S. 2913

To provide a limitation on judicial remedies in copyright infringement 
                     cases involving orphan works.


_______________________________________________________________________


                   IN THE SENATE OF THE UNITED STATES

                             April 24, 2008

 Mr. Leahy (for himself and Mr. Hatch) introduced the following bill; 
  which was read twice and 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 ``Shawn Bentley 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, or any party with the authority to grant or 
        license such right, that is applicable to the infringement.
            ``(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) 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;
                            ``(iii) 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;
                            ``(iv) asserts in the initial pleading to 
                        the civil action the right to claim such 
                        limitations;
                            ``(v) consents to the jurisdiction of 
                        United States district court, or such court 
                        holds that the infringer is within the 
                        jurisdiction of the court; and
                            ``(vi) 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) 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, museum, 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.
                    ``(C) Exception to further limitation.--
                Notwithstanding the limitation established under 
                subparagraph (B), if the owner of an infringed 
                copyright proves, and a court finds, that the infringer 
                has earned proceeds directly attributable to the use of 
                the infringed work by the infringer, the portion of 
                such proceeds attributable to such infringement may be 
                awarded to the owner.
            ``(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) 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.
    ``(e) 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 that facilitates 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, if known, 
                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, 2011; 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 Comptroller General considers appropriate.
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