[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.