[Congressional Record Volume 154, Number 154 (Friday, September 26, 2008)]
[Senate]
[Pages S9867-S9872]
From the Congressional Record Online through the Government Publishing Office [www.gpo.gov]




                 SHAWN BENTLEY ORPHAN WORKS ACT OF 2008

  Mr. WHITEHOUSE. Mr. President, I ask unanimous consent that the 
Senate proceed to the immediate consideration of Calendar No. 738, S. 
2913.
  The PRESIDING OFFICER. The clerk will report the bill by title.
  The legislative clerk read as follows:

       A bill (S. 2913) to provide a limitation on judicial 
     remedies in copyright infringement cases involving orphan 
     works.

  There being no objection, the Senate proceeded to consider the bill, 
which had been reported from the Committee on the Judiciary, with an 
amendment to strike all after the enacting clause and insert in lieu 
thereof the following:

     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.--The term `materials' includes--
       ``(A) the records of the Copyright Office that are relevant 
     to identifying and locating copyright owners;
       ``(B) sources of copyright ownership information and, where 
     appropriate, licensor information, reasonably available to 
     users, including private databases;
       ``(C) technology tools and expert assistance; and
       ``(D) 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,

[[Page S9868]]

     including through text, sound, and image recognition tools.
       ``(2) 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.
       ``(3) 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.
       ``(4) 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;
       ``(v) consents to the jurisdiction of United States 
     district court, or, in the absence of such consent, if 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 
     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 ordinarily 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, makes use of 
     the materials and otherwise undertakes a diligent effort to 
     locate the owner of the infringed work. A diligent effort 
     will ordinarily be based on best practices, as applicable, 
     and any other actions reasonable and appropriate under the 
     facts relevant to that search, including further actions 
     based on facts uncovered during the initial search, and be 
     performed before, and at a time reasonably proximate to, the 
     infringement.
       ``(ii) 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).
       ``(iii) Use of resources for charge.--A qualifying search 
     under paragraph (1)(A)(i)(I) may include use of 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.
       ``(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, at least 1 statement of best 
     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, which will ordinarily include reference to 
     materials relevant to a search. The Register may maintain 
     more than 1 statement for each category or subcategory, as 
     appropriate.
       ``(ii) Consideration of relevant materials.--The Register 
     of Copyrights shall, from time to time, update or modify each 
     statement of best practices at the Register's discretion and 
     should, in maintaining and updating such statements, consider 
     materials and any relevant guidelines submitted to the 
     Register that, in the Register's discretion, are reasonable 
     and relevant to the requirements of a qualifying search, and 
     databases for pictorial, graphical, and sculptural works, 
     where appropriate and reasonably available for a given use.
       ``(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 if the infringer asserts in the action 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) has made an enforceable promise to pay reasonable 
     compensation to the 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.
       ``(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

[[Page S9869]]

     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 
     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.

     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.

  Mr. LEAHY. Mr. President, in January 2005, Senator Hatch and I wrote 
to the Register of Copyrights out of a concern that the length of 
copyright terms was having an unintended consequence of creating a 
class of ``orphan works''--works that may be protected by copyright, 
but whose owners cannot be identified or located. Creative works are 
collecting dust because those who would like to bring them to light are 
respectful of the copyright laws and will not use those works if they 
cannot locate the owners. This unfortunate situation is keeping 
creative and cultural works from the public, and does not advance the 
purpose of the copyright laws.
  Today, the Senate completes work on legislation I introduced along 
with Senator Hatch to remedy this situation. The Shawn Bentley Orphan 
Works Act of 2008 is designed to enable use of works whose copyright 
status and ownership is uncertain without the user facing prohibitive 
statutory damages.
  The act does not dramatically restructure current copyright law--it 
does not impose new registration requirements, nor does it provide for 
a transfer of copyright ownership or rights. The bill simply provides 
for a limitation on remedies in discrete, limited circumstances in 
which, among other things, the owner of the work is not locatable. Any 
infringer who wishes to use an orphan works limitation on remedies must 
perform a diligent search in good faith, document that search, and, in 
the event that the owner emerges, negotiate with the copyright owner in 
good faith regarding reasonable compensation. If any of these 
conditions, or others set forth in the bill, is not met, the limitation 
on remedies is unavailable and an infringer faces the full statutory 
damages as well as costs and attorney's fees.
  At its core, the bill seeks to unite users and copyright owners, and 
to ensure that copyright owners are compensated for the use of their 
works. It does not create any orphans, and it does not create a license 
to infringe. By providing an incentive to search, in the form of a 
limitation on remedies, more users will find more owners; more works 
otherwise hidden will be used; and more copyright owners will receive 
compensation. The Shawn Bentley Orphan Works Act will thus allow the 
public to enjoy works that are currently left unseen and unused. I hope 
the House can take up this measure, and send it to the President for 
signature.
  Mr. HATCH. Mr. President, I rise today to express my continued 
support for the Shawn Bentley Orphan Works Act of 2008, S. 2913, which 
I introduced with Senate Judiciary Committee chairman Patrick Leahy. 
This bill represents years of hard work and collaboration by the 
Senate, industry stakeholders, and U.S. Copyright Office officials. 
Passing S. 2913 is long overdue.
  I want to thank Chairman Leahy for naming S. 2913 as the Shawn 
Bentley Orphan Works Act of 2008. It honors my long-time staffer and 
former colleague, Shawn Bentley. As many of you may remember, Shawn 
worked for the Judiciary Committee for a decade and worked on several 
important pieces of landmark intellectual property legislation. In 
fact, he initiated what we have now introduced as an orphan works bill. 
Many in this body were greatly saddened by Shawn's untimely death at 
41. He was a one-of-a-kind individual. I believe this bill is a fitting 
way to acknowledge his continuing contributions to intellectual 
property law.
  Countless artistic creations around the country are effectively 
locked away in a proverbial attic and unavailable for the general 
public to enjoy because the owner of the copyright for the work is 
unknown. These are generally referred to as orphan works.
  Unfortunately, it is not always easy to identify an owner of a 
copyrighted work, and in many cases, information about the copyright 
holder is not publicly known. To make matters worse, many are 
discouraged from using these works for fear of being sued should the 
owner eventually step forward.
  Many libraries, museums, State and local historical societies, and 
archives across the country that have significant amounts of orphan 
works, which are not currently available publicly.
  Think of the new educational opportunities that will be opened to 
students, scholars, and the public alike when these works become 
accessible. The potential for learning, scholarship, and enjoyment of 
the works of previous generations are unlimited.
  Without doubt, passage of S. 2913 addresses the orphan works problem.

[[Page S9870]]

  Yesterday, Marybeth Peters, Register of the Copyrights, wrote the 
following about the importance of orphan works legislation:

       The legislation is sensible: it would ease the orphan 
     problem by reducing, but not eliminating, the exposure of 
     good faith users. But there are clear conditions designed to 
     protect copyright owners. A user must take all reasonable 
     steps, employ all reasonable technology, and execute the 
     applicable search practices to be submitted to the Copyright 
     Office by authors, associations, and other experts.
       The user must meet other hurdles, including attaching an 
     orphan symbol to the use, to increase transparency and the 
     possibility that an owner may emerge. If an owner does 
     emerge, the user must pay `reasonable compensation' or face 
     full liability. Reasonable compensation will be mutually 
     agreed by the owner and the user or, failing that, be decided 
     by a court; but it must also reflect objective market values 
     for the work and the use. This framework would facilitate 
     projects that are global (think rare text in the hands of a 
     book publisher) as well as local (think family portraits in 
     the hands of a photo finisher), while preserving the purpose 
     and potential of copyright law. It would not inject orphan 
     works prematurely into the public domain, create an automatic 
     exception for all uses, or create a permanent class of orphan 
     works. Nor would it minimize the value of any one orphan work 
     by mandating a government license and statutory rate.

  Ms. Peters continues by stating:

       Some critics believe that the legislation is unfair because 
     it will deprive copyright owners of injunctive relief, 
     statutory damages, and actual damages. I do not agree.

  Let me repeat, The Register of Copyrights does not believe the 
legislation is unfair, or that it will deprive copyright owners of 
injunctive relief, statutory damages, and actual damages.
  With 43 years of experience working in the Copyright Office, 14 of 
them as the Register, I trust that Ms. Peters knows a few things about 
copyright law. And I want to take this opportunity to thank her and her 
staff and the many other stakeholders for their tremendous assistance 
in crafting this important legislation.
  I also want to thank my counsel Matt Sandgren and Aaron Cooper, 
Senator Leahy's counsel, for their perseverance and hard work on this 
initiative.
  In my view, a solution to the orphan works problem is achievable and 
the pending legislation is both fair and responsible. I urge my 
colleagues to pass S. 2913 without further delay.
  Mr. WHITEHOUSE. Mr. President, I ask unanimous consent that the Kyl 
amendment at the desk be agreed to; the committee-reported amendment, 
as amended, be agreed to; the bill, as amended, be read the third time 
and passed; the motions to reconsider be laid upon the table; and that 
any statements be printed in the Record.
  The PRESIDING OFFICER. Without objection, it is so ordered.
  The amendment (No. 5669) was agreed to, as follows:

  (Purpose: To modify provisions relating to diligent efforts, guide 
searches, recommend practices, imitations on injunctive relief, and for 
                            other purposes)

       On page 19, line 21, strike all through page 20, line 12.
       On page 20, line 13, strike ``(2)'' and insert ``(1)''.
       On page 21, line 10, strike ``(3)'' and insert ``(2)''.
       On page 21, line 16, strike ``(4)'' and insert ``(3)''.
       On page 23, line 15, insert ``and'' at the end.
       On page 23, strike lines 16 through 20.
       On page 23, line 21, strike ``(vi)'' and insert ``(v)''.
       On page 25, line 1, strike all through page 27, line 7 and 
     insert the following:
       ``(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.
       On page 30, strike lines 1 through 15 and insert the 
     following:
       ``(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.
       On page 31, line 23, insert ``commercial'' after ``other''.
       On page 33, line 17, insert ``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.'' 
     after the period.

  The committee amendment in the nature of a substitute, as amended, 
was agreed to.
  The bill (S. 2913), as amended, was ordered to be engrossed for a 
third reading, was read the third time, and passed, 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:

[[Page S9871]]

       ``(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--

[[Page S9872]]

       ``(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.

     

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