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Bills have been introduced in the United States House of Representatives and Senate to address the status of so-called “orphan” works. The bills differ in signifi­cant ways from one another and from the orphan works bill that was introduced in 2006 in the 109th Congress. With respect to the bill introduced in the 109th Congress (H.R. 5439) I wrote in Communication Arts (Design Annual, 2006) that, “In fact, the Orphan Works bill is simply an appealing description for what should be called free use or, less politely, theft. Every­one roots for an orphan to be adopted, but what if we called the bill the Protection of Copyright Theft Act?…The potential magnitude of the unrecompensed taking of creative work is staggering.” The leading trade groups for visual creators opposed the bill and it died a well-deserved death.

THE LEGISLATIVE BACKGROUNDThe fate of the bills in the 110th Congress is not so clear. In particular, the House bill (H.R. 5889) sponsored by Repre­sentative Howard L. Berman of California has adopted a number of provisions to safeguard copyright owners while the Senate bill (S. 2913) tracks closely with the House bill introduced in 2006 and opposed by the community of artists.

The 2006 House bill (H.R. 5439) allowed the use of a work without permission if the user has “performed and documented a reasonably diligent search in good faith to locate the owner of the infringed copyright.” If the search does not locate the owner of the copyright, then the user may proceed to use the work. Even though this use is technically an infringement, the penalties for the infringement are minimal or nonexistent. Should a copyright owner discover such an infringement, the owner can only obtain “reasonable compensation” and the infringement can continue. In addition, the owner is not allowed to seek damages, cost or attorney’s fees, which the owner would normally be allowed to seek in a copyright infringement suit if the work has been registered prior to the infringement. Should the infringement be “without any purpose of direct or indirect commercial advantage and primarily for a charitable, religious, scholarly, or educational purpose,” and the usage ceases after the copyright owner complains, then the owner would not even have the right to ask for reasonable compensation.

One central problem of H.R. 5439 is the requirement that a potential user conduct a “reasonably diligent search.” This required searching the “records of the Copyright Office” as well as other sources to find information as to copyright owner­ship. Since only the tiniest fraction of copyright-pro­tected works of visual art are registered with the Copyright Office and no other source even remotely approaches being definitive with respect to owners’ identities, any “reasonably diligent search” will probably not find the copyright owner of a work.

THE NEW SENATE BILLThe Judiciary Committee has reported S. 2913 to the Senate for further action. In the course of the Committee’s delibera­tions, the original bill was replaced by a bill that closely resembled the 2006 House bill. Under the bill’s provisions, an infringer is not subject to penalties if before using the work the infringer performed in good faith a “reasonably diligent search” but could not find the copyright owner. With respect to what is a reasonably diligent search, the Register of Copyrights will issue best practices with respect to searching relevant records of the Copyright Office, private databases and online databases as well as the use of technology tools and expert assistance. In addition, the use has to give what­ever attribution is possible with respect to the work. Monetary compensation is limited to “reasonable compensation” based on what a “willing buyer and a willing seller would have agreed with respect to the infringing use of the work immediately before the infringing work began.”

The Senate bill differs from the 2006 House bill by adding to the “educational, religious, or charitable” exemption from liability, the requirement that the infringer be, “a nonprofit education institution, museum, library, archives, or a public broadcasting entity…or any of such entities’ employees…” Another new requirement is that any usage pursuant to the Senate bill would have to include a mark indicating this in a form that would be prescribed by the Register of Copyrights. In addition, “useful articles” containing pictorial, graphic or sculptural works are excluded from being considered orphan works. These are small concessions that improve the bill from the viewpoint of creators but go nowhere near far enough to make the bill acceptable for copyright creators.

THE NEW HOUSE BILLFrom the creators’ viewpoint, the new bill introduced in the House (H.R. 5889) contains positive features missing from the Senate bill. The key improvement is a requirement that infringers file a Notice of Use with the Register of Copyrights before using a work. Such a Notice of Use would include the following information: (1) the type of work; (2) a description of the work; (3) a summary of the search for the copyright owner; (4) the owner, author, title or other identifying infor­ma­tion to the extent that the infringer knows any of this; (5) a certification that the search was done in good faith; and (6) the infringer’s name and how the infringer will use the work. The notices would be kept in an archive and made available pursuant to regulations that would be adopted by the Copyright Office.

This archive would presumably allow creators and their organi­zations to police the types of usage taking place, although the bill is not clear on this point and it is possible that the archive would be “dark” (i.e., with access not allowed to the public) as opposed to transparent. It’s quite important that the archive be transparent, since its most important potential use is to allow copyright owners to search for usage of their works. If it is transparent, it will be far better than entrusting infringers to search but placing no affirmative requirement on them to make a public record of the use. Since infringers should be going to the trouble to search, the requirement that a Notice of Use be filed seems like a small burden compared to the benefit of coming within the protection proposed by the concept of orphan works.

The new House bill would echo the Senate bill’s requirement that a mark specified by the Register of Copyrights accompany any use of an orphan work. It would also exclude from pro­tection as an orphan work any use of art in a “useful article that is offered for sale or other distribution to the public.”

The Register of Copyrights would also create a process to certify electronic databases that could then be used for the “diligent search” for the copyright owner that must be made by the infringer. For “pictorial, graphic, and sculptural works” the effective date under the new House bill would be the earlier of: (1) when the Copyright Office certifies at least two “separate, comprehensive, electronic databases,” or (2) January 1, 2013. The Senate bill also has a certification process for databases, but with a lower standard as to what the databases are to contain.

WHAT TO DO?The House bill’s improvements in terms of protections for creators have created a dilemma for creators’ organizations. If this is close to the best bill possible from the creators’ point of view, should their organizations support it? The answer turns on a subtlety. If this “favorable” bill is not enacted, is it likely that a much worse bill will be enacted in the future? If so, perhaps creators’ organizations support this bill despite being basically against the concept of orphan works.

Vic Perlman, general counsel and managing director of the American Society of Media Photographers (ASMP), argues that, “Everyone else wants an orphan works amendment, except for several groups of individual creators: Museums, libraries, individuals, the Copyright Office, lawmakers, public interest groups—they all want it.” Not only is support for the measure widespread among large users, but Perlman foresees the likeli­hood that a much less favorable version of the bill will eventu­ally be enacted if the current House bill does not become law. “As of now,” he says, “we know that Rep. Howard Berman [who sponsored the new House bill] will be moving out of the chair of the House Subcommittee on Courts, the Internet and Intellectual Property. It is not certain who will take his place, but whoever it is, his successor will not be starting out with the same kind of photographer-friendly track record as Chairman Berman.”

The difficulty with this analysis is that creators are called on to support a bill for pragmatic reasons that they instinctually oppose. And what if the supposition that a worse bill will eventually pass is incorrect? Could creators and their organi­za­tions be persuaded to support a measure that would never have passed in any form? On the other hand, what if the House bill isn’t enacted and, later, a more onerous bill does become law? Will we keep our purity by never supporting orphan works but suffer the undocumented infringement that such a law would allow?

THE LONG AND WINDING ROADOf course, enactment of any bill requires its movement through numerous steps. In both the House and the Senate, the bills have to be voted out of committee and approved by the full chamber. Then there is a Conference Committee between the House and Senate to reconcile differences between their respec­t­ive versions of the bill. While the ASMP would support the current House version of the bill, that support might very well be withdrawn if the bill is changed to lessen the pro­tections for creators. As Perlman points out, “The odds of any bill com­ing out of Conference Committee looking the same as it did when it went in are pretty small. However, we don’t know how hard the respective sides will want to fight to keep their differ­ences in the final version or how successful they will be. When you add in the timing factor, there is real uncertainty as to whether the bills will ever get as far as Conference Committee.”

On balance, it’s likely that the good provisions for creators won’t survive the legislative process, so that in the end all the creators’ organizations will be able to join together in oppos­ing the compromise bill that emerges. But if the House bill goes through the process relatively unchanged, the calcula­tions will become far more difficult. Should such a bill be supported from the fear that otherwise the future may hold something worse? Should it be opposed despite the risk that the future may hold something worse?

Personally, I think opposition is the best course. If the bill is going to be enacted, to oppose it may also limit its negative aspects. But I understand the realpolitik view, and the process ahead will be an interesting one. ca

Author’s note: This article was written several months before the publication of this issue of  Communication Arts. For readers who would like to check on the current status of the orphan works bills, the Library of Congress maintains a Web site called Thomas that tracks the movement of federal legislation. Readers can go to www.thomas.loc.gov and search under “orphan works” to find out what is happening with respect to both the House and the Senate versions of the bill.

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