Orphan Works 2008: House and Senate Bills Introduced

Two orphan works bills were introduced to begin to bring balance back to copyright law--to help find owners and encourage new and creative uses of unexploited copyrighted works. Both the U.S. Senate and House of Representatives have introduced orphan works legislation (S. 2913, the Shawn Bentley Orphan Works Act of 2008, H.R. 5889: The Orphan Works Act of 2008), rooted in the same language based on the previous Smith Bill, which was based on the Copyright Office's recommendation. It's been a long time coming and from working with staff, I know they're very happy to have the bills finally introduced. Reps. Howard Berman (D-CA),Howard Coble (R-NC), John Conyers (D-MI), Lamar Smith (R-TX), (Chairman and Ranking Members of House Judiciary Committee Subcommittee on Courts, the Internet, and Intellectual Property and Full Judiciary Committee Chairman and Ranking Member respectively) and Sens. Patrick Leahy (D-VT) and Orrin Hatch (R-UT), and their incredible staff members are to be congratulated for working to address concerns of both the user and owner communities.

The concept behind orphan works is simple: after a fruitless search to find the rightful owner, a searcher may the use a copyrighted work without the fear of hefty copyright infringement damages. Independent and documentary film makers, libraries, archives, and museums all have collections of orphaned works that they would like to transform into new works or display, but because they cannot find the owner to ask permission or license the work, the threat of copyright infringement (which carries statutory damages as high as $150,000 per work) freezes them in their tracks. These users already conduct exhaustive searches to track down owners, but for 99.999% of these orphans, the owners cannot be found for a number of reasons: a work wasn't registered, ownership was transferred but never recorded, a corporation went out of business, or the author died without heirs. The almost 20 page bills are drafted to address the 0.001% of the cases out there, to assure owners that the incentives for creation are not lost.

And both bills go a long way to address the fears of owners while at the same time trying to bring visual works owners into the 21st century. Safeguards are put in place to ensure that users put "diligent effort" into their "qualifying searches" (previously known as "reasonably diligent" searches). The Copyright Office will maintain and make available helpful search guidelines from owners and users in the industry and if challenged a court will consider whether the user's actions were reasonable and appropriate for the circumstances and whether the user employed the applicable best practices. This will promote the creation and development of search guidelines and will help to match more orphans with their owners. The Copyright Office will also have to certify market-based registry services for visual art. We proposed and have written a lot about this idea to address the owners' problem of an ineffective registry. It's not all that complex: because the Copyright Registry's online search provides woefully inadequate results (only text based searches and results, no ability to compare digital works against an index of images), the market will fill the gaps so long as they meet some basic requirements. A number of services already exist to answer this call and this provision will further spur innovative uses of modern visual recognition technology--of which, unfortunately, visual artists have never collectively taken advantage.

In the unlikely event of an owner resurfacing, the bill provides for them to be reasonably compensated, and if the user acts in bad faith, the full panoply of copyright infringement damages rains down on them. This was done out of concern, again, for visual artists who have repeatedly said they're not going to be able to take a claim to court because the value is too low. To go even further, the bills require the Register of Copyright to conduct a study (much like the one that lead to the creation of this orphan works legislation) on remedies for small copyright claims.

But now that the bills are introduced, that doesn't mean the hard work is over. The two bills aren't the same. First, the Senate bill is what I'll call the "clean version." It's language is at the root of the House bill without the additional gimmes for owners. It has the characteristics of what I described above and, in PK's opinion, would need very little tweaking, if any. One provision we would like to see is in the registry certification requirements, that these registries be free for public searches and machine readable. While we understand the desire to remain laissez-faire and not put requirements on market actors, these registries are essentially taking over for a failure of a government agency and resource--the Copyright Office's Registry. If it were the government doing the job, it would of course be required to make the contents of its resources available to the public. If the goal is to drag visual artists into the light to make sure they can be found, allowing independent registries to become locked-up silos cuts the other way. We look forward to working with Senate staff on this issue.

The House version is, again, good at its roots, but resembles more of a well decorated Christmas tree. Hung on it, you'll find a "Notice of Use Archive" (NUA), a prohibition on using orphans on useful articles, a registration premium, and an extended effective date. The NUA will be housed at the Copyright Office as a repository to which users will have to formally submit their diligent effort searches. We were initially told that this archive would be "dark," in that its contents would only be revealed when a user was sued, but it's not that limited in the House bill as introduced, though a lot of discretion is given to the Copyright Office on how to develop the NUA. Yes, users will be documenting their search, but to require an extra formal filing to a repository will be costly, perhaps more expensive than reasonable compensation if the user were able to negotiate with the owner. If it's not dark, it also raises privacy and "copyright troll" concerns--as users will be announcing themselves like fish in a barrel, and because only a description of the work (not a copy of the work) is required, every photographer that thinks they've taken a photo that fits a description is going to be pestering the user and claiming ownership. The stated goals were to educate users as to how to conduct a search (we think the guidelines will do a better job), and to assure owners that searches were being conducted (if the archive is dark, the owner doesn't know anything anyways). To top it off, to fall within this whole orphan works limitation, users must submit their search--if not, the user is an infringer.

I've described the useful articles exception before. Unfortunately, it's real and painted with broader brush because it covers all kinds of works, not just visual works. It's a carve out that isn't limited to the textile constituency that asked for it, and puts U.S. copyright law in the odd position of preferring certain kinds of works and uses to others.

The House bill gives a court the discretion to take into account the value (if any) of a copyright registration when considering reasonable compensation. Truthfully, it's the most watered down version of the language we've seen. In the context of orphan works, it's all too often irrelevant whether or not the work is registered because users do find valid registrations, but still cannot identify and locate the rightful owner--because the record wasn't maintained or the company went out of business. This registration premium is meant to somehow reward owners for registering their works in the first place, but it's misguided because it would still reward owners for not maintaining the registration that could have actually lead to the owner being found.

The effective date in the House bill is 2013, compared to the 2011 date in the Senate, but both have an earlier trigger, dependent on the Office's certification of at least two visual registries. We think that even with our suggested additional "open" requirement, existing services could meet these requirements today. Still, we'd like the dates to match, preferring the earlier one to the later.

There's still work to be done, but today's introduction is a big step forward. Having a bill out there with specific language helps a lot. Some of the visual artists are going to be already lining up to take their pot-shots at the bill. They'll try to add more exceptions and carve-outs as poison pills so users will have no use for the legislation. We hope that doesn't happen and will work hard with our film maker, library, museum, public television, and archive allies to make sure it doesn't. We're going to need your help, too, so sign-up on our site, join the FaceBook Rescue Orphan Works Cause, and stay tuned for an Action Alert to write your Member of Congress. Again, many thanks to the House and Senate Judiciary Committee staff for all their work on this, the first pro-user change to Copyright Law in almost two decades.

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