[Congressional Record Volume 154, Number 66 (Thursday, April 24, 2008)]
[Senate]
[Pages S3405-S3407]
From the Congressional Record Online through the Government Publishing Office [www.gpo.gov]

      By Mr. LEAHY (for himself and Mr. Hatch):
  S. 2913. A bill to provide a limitation on judicial remedies in 
copyright infringement cases involving orphan works; to the Committee 
on the Judiciary.
  Mr. LEAHY. Mr. President, today, I join once again with Senator Hatch 
to introduce a bill that will have a significant and positive impact on 
our cultural heritage. Hundreds of thousands of so-called ``orphan 
works''--works that may be protected by copyright, but whose owners 
cannot be identified or located--are collecting dust. Despite 
tremendous interest in using these orphan works in new collections and 
new creations, they often languish unseen, because those who would like 
to bring them to light, and to the attention of the world, fear the 
prospect of prohibitively expensive statutory damages. In other 
instances, the copyright in an orphan work may have expired, but 
potential users lack the information to be certain of the propriety of 
going forward with its use.
  The Shawn Bentley Orphan Works Act of 2008 will remedy this 
situation. It will help potential users of orphan works find the owners 
of those works, and it will help the owners to receive compensation. 
The works will no longer be orphans; their owners will reap the 
financial benefits of their use, while the public reaps the creative 
benefits. More creative works will be used, contributing to our 
cultural and artistic heritage, and more creators will receive 
compensation for use of their work.
  Our legislation permits the use of an orphan work only if the 
potential user performs and documents a good faith search for the 
copyright owner. If users cannot locate and contact copyright owners, 
they may use the orphan work. But if copyright owners later make 
themselves known, and if users have performed a search that qualifies 
under this legislation, owners are entitled to reasonable compensation. 
The user will not be liable for full statutory damages in those 
circumstances, but if a user does not perform that good faith search, 
the user will face up to $150,000 in statutory damages.
  In practical terms, then, what does this mean? It means that a woman 
in Vermont can restore a wedding photograph of her grandparents, even 
if she

[[Page S3406]]

cannot locate the photographer to get permission to do so. It means 
that a library can display letters of American soldiers wrote during 
World War II, even if the library cannot contact the soldiers or their 
descendents. It means that museums can exhibit Depression-era 
photographs, even if they cannot determine the name of the 
photographer.
  What this bill does not do is create a ``license to infringe.'' In 
any of the above instances, if the users do not conduct a good faith 
search for the copyright owner, those users are in the same boat they 
are in now when it comes to infringement. This bill does not change the 
basic premise of copyright law: If you use the copyrighted works of 
others, you must compensate them for it. As an avid photographer, I 
understand what it means to devote oneself to creative expression, and 
I applaud anyone with the talent and commitment to make a living doing 
so. Orphan works are too important to our families, our communities, 
and our culture to go left unseen and unused.
  I thank Senator Hatch for his help in developing this legislation, 
and I look forward to working with him to ensure that this bill becomes 
law. I am especially pleased to name this bill for Shawn Bentley. 
Several years ago, Shawn died, tragically young, but he left behind a 
legacy of affection and regard for all of us who knew him. He served 
Senator Hatch as a counsel for intellectual property, and it was he who 
first inspired this effort on orphan works. Naming this bill for him is 
a testament to his dedication to the issue, and his value to the 
Judiciary Committee.
  I ask unanimous consent that the full bill text be included in the 
Record.
  There being no objection, the text of the bill was ordered to be 
printed in the Record, as follows:

                                S. 2913

       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;

[[Page S3407]]

       ``(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.
                                 ______