Orphan Works Bill Analysis

I’ve been tracking the controversial Orphan Works Act of 2008. Today I received a “bill alert” from the Alliance of NY State Arts Organizations that includes some great analysis, which I think comes from Americans for the Arts:

H.R. 5889, the “Orphan Works Act of 2008″ introduced by Representative Howard Berman (D-CA) in the House, and S. 2913, “The Shawn Bentley Orphan Works Act of 2008″ introduced by Senator Patrick Leahy (D-VT), seek to amend the Copyright Act of 1976 by limiting certain liabilities of potential copyright infringers depending on whether a reasonable due diligence search before use is made according to guidelines established for the U.S. Copyright Office (USCO) by Congress.

New Copyright Search Criterion and Database Proposal
To achieve this goal, the legislation sets forth rules that govern whether an infringer is either a bad faith user or a good faith user to determine what damages are available to the copyright holder or what liability has been limited to the user. The bills differ slightly on implementation, but rely on similar criterion for qualifying a copyright user for certain liability exemptions:

1. give notice of usage to USCO (House version);
2. conduct a search of USCO certified searchable independent databases for pictorial, graphic and sculptural works administered under agency rules and best practices;
3. and, that these actions were taken before using the work.

The establishment and certification of electronic databases that facilitate searches for pictorial, graphic and sculptural works is a critical development in this legislation. The bills seek to propose certification guidelines in which a database must list the copyrighted work’s authors, contact information, and image or description - all searchable by text or image with the latest advances in security. In addition, the databases must be available to the public through the Internet by 2011 in the Senate, and 2013 in the House, which will serve as effective dates for the new infringement criterion.

Doubts have been raised primarily by the visual arts community that the search criteria will not adequately protect artists that have volumes of images that may or may not be registered in databases that have not yet been constructed by the USCO. The potential for an image or work to get cleared for usage by a system of registries that are privately contracted by USCO rules but whose effectiveness is not proven, would allow damages to be limited for many works that may not be litigated because of the prohibition on legal fees for good faith users. Some in the visual artists see this legislation as shifting the burden of copyright protection to the holder by making their work’s inclusion in the registries as part of the final say on a diligent search.

Meeting these criterions would then qualify as a “good faith search” or “diligent effort,” thereby exempting the copyright user from statutory damages (as much as $150,000 per infringement) and legal fees. A bad faith user who has not met the criterion is still liable for all the available remedies to the copyright holder (statutory and compensatory damages and legal fees) as is current practice.

Natural Right to Copyright and other exemptions
The natural right to copyright is not changed by the proposed legislation. Compensatory damages - the amount that a willing buyer and seller would have agreed to before infringement - are always available to the copyright owner should they later be found. Also, museums (Senate version), archives, nonprofit educational institutions, and public broadcasting receive a specific protection from monetary liability if acting in good faith.

There is also a concern that the legislation allows continued usage of a copyright that is integrated into another original work - one that consists primarily of the infringer’s expressions. The infringer’s new work can be continued if:

1. they made a good faith reasonable search;
2. reasonable compensation is paid to the copyright holder;
3. and attribution is made despite discovery of the copyright holder.

The bills as they are presently constructed may be amended and address some of the issues previously discussed above.

Congressional Action
Markups are currently scheduled for May 7th and 8th in the committees of jurisdiction in the House and Senate, respectively. We will keep the field informed as to what changes may be implemented and the progress of the legislation as further consideration is scheduled. If you have suggestions, comments or concerns regarding this legislation, please contact: Gladstone Payton, Associate Director for Federal Affairs, Americans for the Arts payton@artsusa.org

Report on May 7th House Subcommittee Consideration
On May 7 the House Judiciary Subcommittee on the Courts, the Internet, and Intellectual Property held a mark up of H.R. 5889, the “Orphan Works Act of 2008.” Markups consist of opening up the bill to a first round of amendments that may be considered in the full committee markup at later consideration. During this markup, Chairman Berman used a manager’s amendment as substitute for the base bill that now mirrors the Senate companion bill S.2913 by adding a provision that limits damages against museums, as well as archives, libraries, public broadcasting and nonprofit educational institutions. The House bill had not included museums in its original form. As well, the manager’s amendment would add that both parties must agree on what constitutes “reasonable compensation.”

Members of the subcommittee each then spoke briefly on the concerns for the bill, but without offering any amendments, deciding that discussion of germane amendments would be better suited for a soon-to-be scheduled briefing for interested stakeholders and then the full committee markup. The briefing will provide another opportunity to submit proposed changes to committee staff in writing.

Many Members voiced concerns but also willingness to work to on the more “controversial” aspects of the proposed legislation. Namely, the minimum standards, best practices, and statutory guidelines that will constitute a reasonable due diligent search were the most talked about topics. The bill’s chief sponsors and committee members acknowledged that more specificity and statutory guidance will be needed before a final bill is reported out for floor consideration. Other topics included further protection for nonprofit institutions and addressing ambiguity on what is commercial use of an orphan work.