[Congressional Bills 110th Congress]
[From the U.S. Government Publishing Office]
[S. 2913 Referred in House (RFH)]







110th CONGRESS
  2d Session
                                S. 2913


_______________________________________________________________________


                    IN THE HOUSE OF REPRESENTATIVES

                           September 27, 2008

               Referred to the Committee on the Judiciary

_______________________________________________________________________

                                 AN ACT


 
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) Notice of claim of infringement.--The term `notice of 
        claim of infringement' means, with respect to a claim of 
        copyright infringement, a written notice sent from the owner of 
        the infringed copyright or a person acting on the owner's 
        behalf to the infringer or a person acting on the infringer's 
        behalf, that includes at a minimum--
                    ``(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 
                that work;
                    ``(C) an address and telephone number at which the 
                owner of the infringed copyright or a person acting on 
                behalf of the owner may be contacted; and
                    ``(D) information reasonably sufficient to permit 
                the infringer to locate the infringer's material in 
                which the infringed work resides.
            ``(2) Owner of the infringed copyright.--The `owner of the 
        infringed copyright' is the owner of any particular exclusive 
        right under section 106 that is applicable to the infringement, 
        or any person or entity with the authority to grant or license 
        such right on an exclusive or nonexclusive basis.
            ``(3) Reasonable compensation.--The term `reasonable 
        compensation' means, with respect to a claim of 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 506, and subject to subparagraph (B), in an 
                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, to 
                                locate and identify the owner of the 
                                infringed copyright; and
                                    ``(II) was unable to locate and 
                                identify an owner of the infringed 
                                copyright;
                            ``(ii) provided attribution, in a manner 
                        that is reasonable under the circumstances, to 
                        the legal owner of the infringed copyright, if 
                        such legal owner was known with a reasonable 
                        degree of certainty, based on information 
                        obtained in performing the qualifying search;
                            ``(iii) included with the public 
                        distribution, display, or performance of the 
                        infringing work a symbol or other notice of the 
                        use of the infringing work, the form and manner 
                        of which shall be prescribed by the Register of 
                        Copyrights, which may be in the footnotes, 
                        endnotes, bottom margin, end credits, or in any 
                        other such manner as to give notice that the 
                        infringed work has been used under this 
                        section;
                            ``(iv) asserts in the initial pleading to 
                        the civil action eligibility for such 
                        limitations; and
                            ``(v) 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 eligibility 
                        for the limitations, including a detailed 
                        description and documentation of the search 
                        undertaken in accordance with paragraph (2)(A) 
                        and produces documentation of the search.
                    ``(B) Exception.--Subparagraph (A) does not apply 
                if the infringer or a person acting on behalf of the 
                infringer receives a notice of claim of infringement 
                and, after receiving such notice and having an 
                opportunity to conduct an expeditious good faith 
                investigation of the claim, the infringer--
                            ``(i) fails to engage in negotiation in 
                        good faith regarding reasonable compensation 
                        with the owner of the infringed copyright; or
                            ``(ii) fails to render payment of 
                        reasonable compensation in a reasonably timely 
                        manner after reaching an agreement with the 
                        owner of the infringed copyright or under an 
                        order described in subsection (c)(1)(A).
            ``(2) Requirements for searches.--
                    ``(A) Requirements for qualifying searches.--
                            ``(i) In general.--A search qualifies under 
                        paragraph (1)(A)(i)(I) if the infringer, a 
                        person acting on behalf of the infringer, or 
                        any person jointly and severally liable with 
                        the infringer for the infringement, undertakes 
                        a diligent effort that is reasonable under the 
                        circumstances to locate the owner of the 
                        infringed copyright prior to, and at a time 
                        reasonably proximate to, the infringement.
                            ``(ii) Diligent effort.--For purposes of 
                        clause (i), a diligent effort--
                                    ``(I) requires, at a minimum--
                                            ``(aa) a search of the 
                                        records of the Copyright Office 
                                        that are available to the 
                                        public through the Internet and 
                                        relevant to identifying and 
                                        locating copyright owners, 
                                        provided there is sufficient 
                                        identifying information on 
                                        which to construct a search;
                                            ``(bb) a search of 
                                        reasonably available sources of 
                                        copyright authorship and 
                                        ownership information and, 
                                        where appropriate, licensor 
                                        information;
                                            ``(cc) use of appropriate 
                                        technology tools, printed 
                                        publications, and where 
                                        reasonable, internal or 
                                        external expert assistance; and
                                            ``(dd) use of appropriate 
                                        databases, including databases 
                                        that are available to the 
                                        public through the Internet; 
                                        and
                                    ``(II) shall include any actions 
                                that are reasonable and appropriate 
                                under the facts relevant to the search, 
                                including actions based on facts known 
                                at the start of the search and facts 
                                uncovered during the search, and 
                                including a review, as appropriate, of 
                                Copyright Office records not available 
                                to the public through the Internet that 
                                are reasonably likely to be useful in 
                                identifying and locating the copyright 
                                owner.
                            ``(iii) Consideration of recommended 
                        practices.--A qualifying search under this 
                        subsection shall ordinarily be based on the 
                        applicable statement of Recommended Practices 
                        made available by the Copyright Office and 
                        additional appropriate best practices of 
                        authors, copyright owners, and users to the 
                        extent such best practices incorporate the 
                        expertise of persons with specialized knowledge 
                        with respect to the type of work for which the 
                        search is being conducted.
                            ``(iv) Lack of identifying information.--
                        The fact that, in any given situation,--
                                    ``(I) a particular copy or 
                                phonorecord lacks identifying 
                                information pertaining to the owner of 
                                the infringed copyright; or
                                    ``(II) an owner of the infringed 
                                copyright fails to respond to any 
                                inquiry or other communication about 
                                the work,
                        shall not be deemed sufficient to meet the 
                        conditions under paragraph (1)(A)(i)(I).
                            ``(v) Use of resources for charge.--A 
                        qualifying search under paragraph (1)(A)(i)(I) 
                        may require use of resources for which a charge 
                        or subscription is imposed to the extent 
                        reasonable under the circumstances.
                    ``(B) Information to guide searches; recommended 
                practices.--
                            ``(i) Statements of recommended 
                        practices.--The Register of Copyrights shall 
                        maintain and make available to the public and, 
                        from time to time, update at least one 
                        statement of Recommended Practices for each 
                        category, or, in the Register's discretion, 
                        subcategory of work under section 102(a) of 
                        this title, for conducting and documenting a 
                        search under this subsection. Such statement 
                        will ordinarily include reference to materials, 
                        resources, databases, and technology tools that 
                        are relevant to a search. The Register may 
                        maintain and make available more than one 
                        statement of Recommended Practices for each 
                        category or subcategory, as appropriate.
                            ``(ii) Consideration of relevant 
                        materials.--In maintaining and making available 
                        and, from time to time, updating the 
                        Recommended Practices in clause (i), the 
                        Register of Copyrights shall, at the Register's 
                        discretion, consider materials, resources, 
                        databases, technology tools, and practices that 
                        are reasonable and relevant to the qualifying 
                        search. The Register shall consider any 
                        comments submitted to the Copyright Office by 
                        the Small Business Administration Office of 
                        Advocacy. The Register shall also, to the 
                        extent practicable, take the impact on 
                        copyright owners that are small businesses into 
                        consideration when modifying and updating best 
                        practices.
            ``(3) Penalty for failure to comply.--If an infringer fails 
        to comply with any requirement under this subsection, the 
        infringer is not eligible for a limitation on remedies under 
        this section.
    ``(c) Limitations on Remedies.--The limitations on remedies in an 
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 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, archives, or a public 
                broadcasting entity (as defined in subsection (f) of 
                section 118), or any of such entities' employees acting 
                within the scope of their employment, 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 a notice of claim 
                        of infringement, and having an opportunity to 
                        conduct an expeditious good faith investigation 
                        of the claim, the infringer promptly ceased the 
                        infringement.
            ``(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. 
                If the infringer has met the requirements of subsection 
                (b), the relief shall, to the extent practicable and 
                subject to applicable law, account for any harm that 
                the relief would cause the infringer due to its 
                reliance on subsection (b).
                    ``(B) Exception.--In a case in which the infringer 
                has prepared or commenced preparation of a new work of 
                authorship that recasts, transforms, adapts, or 
                integrates the infringed work with a significant amount 
                of original expression, any injunctive relief ordered 
                by the court may not restrain the infringer's continued 
                preparation or use of that new work, if--
                            ``(i) the infringer pays reasonable 
                        compensation in a reasonably timely manner 
                        after the amount of such compensation has been 
                        agreed upon with the owner of the infringed 
                        copyright or determined by the court; and
                            ``(ii) the court also requires that the 
                        infringer provide attribution, in a manner that 
                        is reasonable under the circumstances, to the 
                        legal 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 or a representative of the 
                infringer acting in an official capacity if the 
                infringer asserts that neither the infringer nor 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 for the infringement, 
                unless the court finds that the infringer--
                            ``(i) has complied with the requirements of 
                        subsection (b); and
                            ``(ii) pays reasonable compensation to the 
                        owner of the exclusive right under the 
                        infringed copyright in a reasonably timely 
                        manner after the amount of reasonable 
                        compensation has been agreed upon with the 
                        owner or determined by the court.
                    ``(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.
    ``(d) Preservation of Other Rights, Limitations, and Defenses.--
This section does not affect any right, or any 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 use contemplated by the infringer, 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 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.
    ``(f) Exclusion for Fixations in or on Useful Articles.--The 
limitations on remedies under this section shall not be available to an 
infringer for infringements resulting from fixation of a pictorial, 
graphic, or sculptural work in or on a useful article that is offered 
for sale or other commercial distribution to the public.''.
    (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.''.
    (c) Effective Date.--
            (1) In general.--The amendments made by this section 
        shall--
                    (A) take effect on the later of--
                            (i) January 1, 2009; or
                            (ii) the date which is the earlier of--
                                    (I) 30 days after the date on which 
                                the Copyright Office publishes notice 
                                in the Federal Register that it has 
                                certified under section 3 that there 
                                exist and are available at least 2 
                                separate and independent searchable, 
                                electronic databases, that allow for 
                                searches of copyrighted works that are 
                                pictorial, graphic, and sculptural 
                                works, and are available to the public; 
                                or
                                    (II) January 1, 2013; and
                    (B) apply to infringing uses that commence on or 
                after that effective date.
            (2) Definition.--In this subsection, the term ``pictorial, 
        graphic, and sculptural works'' has the meaning given that term 
        in section 101 of title 17, United States Code.

SEC. 3. DATABASES OF PICTORIAL, GRAPHIC, AND SCULPTURAL WORKS.

    The Register of Copyrights shall undertake a process to certify 
that there exist and are available databases that facilitate a user's 
search for pictorial, graphic, and sculptural works that are subject to 
copyright protection under title 17, United States Code. The Register 
shall only certify that databases are available under this section if 
such databases are determined to be effective and not prohibitively 
expensive and include the capability to be searched using 1 or more 
mechanisms that allow for the search and identification of a work by 
both text and image and have sufficient information regarding the works 
to enable a potential user of a work to identify or locate the 
copyright owner or authorized agent. Prior to certifying that databases 
are available under this section, the Register shall determine, to the 
extent practicable, their impact on copyright owners that are small 
businesses and consult with the Small Business Administration Office of 
Advocacy regarding those impacts. The Register shall consider the 
Office of Advocacy's comments and respond to any concerns.

SEC. 4. 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. 5. 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 that title.
    (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. 6. 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 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 Comptroller General considers appropriate.

            Passed the Senate September 26 (legislative day, September 
      17), 2008.

            Attest:

                                                NANCY ERICKSON,

                                                             Secretary.