[House Hearing, 109 Congress]
[From the U.S. Government Publishing Office]
REPORT ON ORPHAN WORKS BY
THE COPYRIGHT OFFICE
=======================================================================
HEARING
BEFORE THE
SUBCOMMITTEE ON COURTS, THE INTERNET,
AND INTELLECTUAL PROPERTY
OF THE
COMMITTEE ON THE JUDICIARY
HOUSE OF REPRESENTATIVES
ONE HUNDRED NINTH CONGRESS
SECOND SESSION
__________
MARCH 8, 2006
__________
Serial No. 109-94
__________
Printed for the use of the Committee on the Judiciary
Available via the World Wide Web: http://judiciary.house.gov
______
U.S. GOVERNMENT PRINTING OFFICE
26-410 WASHINGTON : 2006
_____________________________________________________________________________
For Sale by the Superintendent of Documents, U.S. Government Printing Office
Internet: bookstore.gpo.gov Phone: toll free (866) 512-1800; (202) 512�091800
Fax: (202) 512�092250 Mail: Stop SSOP, Washington, DC 20402�090001
COMMITTEE ON THE JUDICIARY
F. JAMES SENSENBRENNER, Jr., Wisconsin, Chairman
HENRY J. HYDE, Illinois JOHN CONYERS, Jr., Michigan
HOWARD COBLE, North Carolina HOWARD L. BERMAN, California
LAMAR SMITH, Texas RICK BOUCHER, Virginia
ELTON GALLEGLY, California JERROLD NADLER, New York
BOB GOODLATTE, Virginia ROBERT C. SCOTT, Virginia
STEVE CHABOT, Ohio MELVIN L. WATT, North Carolina
DANIEL E. LUNGREN, California ZOE LOFGREN, California
WILLIAM L. JENKINS, Tennessee SHEILA JACKSON LEE, Texas
CHRIS CANNON, Utah MAXINE WATERS, California
SPENCER BACHUS, Alabama MARTIN T. MEEHAN, Massachusetts
BOB INGLIS, South Carolina WILLIAM D. DELAHUNT, Massachusetts
JOHN N. HOSTETTLER, Indiana ROBERT WEXLER, Florida
MARK GREEN, Wisconsin ANTHONY D. WEINER, New York
RIC KELLER, Florida ADAM B. SCHIFF, California
DARRELL ISSA, California LINDA T. SANCHEZ, California
JEFF FLAKE, Arizona CHRIS VAN HOLLEN, Maryland
MIKE PENCE, Indiana DEBBIE WASSERMAN SCHULTZ, Florida
J. RANDY FORBES, Virginia
STEVE KING, Iowa
TOM FEENEY, Florida
TRENT FRANKS, Arizona
LOUIE GOHMERT, Texas
Philip G. Kiko, General Counsel-Chief of Staff
Perry H. Apelbaum, Minority Chief Counsel
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Subcommittee on Courts, the Internet, and Intellectual Property
LAMAR SMITH, Texas, Chairman
HENRY J. HYDE, Illinois HOWARD L. BERMAN, California
ELTON GALLEGLY, California JOHN CONYERS, Jr., Michigan
BOB GOODLATTE, Virginia RICK BOUCHER, Virginia
WILLIAM L. JENKINS, Tennessee ZOE LOFGREN, California
SPENCER BACHUS, Alabama MAXINE WATERS, California
BOB INGLIS, South Carolina MARTIN T. MEEHAN, Massachusetts
RIC KELLER, Florida ROBERT WEXLER, Florida
DARRELL ISSA, California ANTHONY D. WEINER, New York
CHRIS CANNON, Utah ADAM B. SCHIFF, California
MIKE PENCE, Indiana LINDA T. SANCHEZ, California
J. RANDY FORBES, Virginia
Blaine Merritt, Chief Counsel
David Whitney, Counsel
Joe Keeley, Counsel
Ryan Visco, Counsel
Shanna Winters, Minority Counsel
C O N T E N T S
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MARCH 8, 2006
OPENING STATEMENT
Page
The Honorable Lamar Smith, a Representative in Congress from the
State of Texas, and Chairman, Subcommittee on Courts, the
Internet, and Intellectual Property............................ 1
The Honorable Howard L. Berman, a Representative in Congress from
the State of California, and Ranking Member, Subcommittee on
Courts, the Internet, and Intellectual Property................ 2
The Honorable Zoe Lofgren, a Representative in Congress from the
State of California, and Member, Subcommittee on Courts, the
Internet, and Intellectual Property............................ 4
The Honorable Darrell Issa, a Representative in Congress from the
State of California, and Member, Subcommittee on Courts, the
Internet, and Intellectual Property............................ 4
WITNESSES
Mr. Jule L. Sigall, Associate Register for Policy and
International Affairs, Copyright Office of the United States,
The Library of Congress
Oral Testimony................................................. 5
Prepared Statement............................................. 8
Mr. Allan Adler, Vice President for Legal and Government Affairs,
Association of American Publishers, Inc.
Oral Testimony................................................. 18
Prepared Statement............................................. 20
Mr. David P. Trust, Chief Executive Officer, Professional
Photographers of America, Inc.
Oral Testimony................................................. 25
Prepared Statement............................................. 27
Ms. Maria A. Pallante, Associate General Counsel and Director of
Licensing, The Solomon R. Guggenheim Foundation
Oral Testimony................................................. 33
Prepared Statement............................................. 35
APPENDIX
Material Submitted for the Hearing Record
Prepared Statement of the Honorable Howard Berman, a
Representative in Congress From the State of California, and
Ranking Member, Subcommittee on Courts, the Internet, and
Intellectual Property.......................................... 53
Prepred Statement of the Honorable Zoe Lofgren, a Representative
in Congress from the State of California, and Member,
Subcommittee on Courts, the Internet, and Intellectual Property 54
Prepared Statement of the Honorable Maxine Waters, a
Representative in Congress from the State of California, and
Member, Subcommittee on Courts, the Internet, and Intellectual
Property....................................................... 55
Amended ``Appendix'' to the Prepared Statement of Maria A.
Pallante, Associate General Counsel and Director of Licensing,
The Solomon R. Guggenheim Foundation........................... 56
Letter and accompanying paper from the Advertising Photographers
of America (APA)............................................... 59
Prepared Statement of the American Society of Composers, Authors
and Publishers (ASCAP)......................................... 83
Letter and proposed legislative revision from the Artists Rights
Alliance (ARS)................................................. 89
Prepared Statement of Broadcast Music, Inc. (BMI)................ 94
Prepared Statement of Reed Stager, Executive Vice President,
Digimarc Corporation........................................... 95
Prepared Statement of the Directors Guild of America (DGA)....... 100
Letter from the Graphic Artists Guild............................ 105
Letter from the Illustrators' Partnership........................ 107
Prepared Statement of Association of Independent Video and
Filmmakers (AIVF), Doculink, Film Arts Foundation, FIND (Film
Independent), International Documentary Association (IDA), IFP
(Independent Feature Project), National Alliance for Media Arts
and Culture (NAMAC), National Video Resources (NVR), and Public
Knowledge0..................................................... 112
Letter to the Honorable Zoe Lofgren, a Representative in Congress
from the State of California, and Member, Subcommittee on
Courts, the Internet, and Intellectual Property from Lawrence
Lessig......................................................... 123
Prepared Statement of Jerry Brito, Legal Fellow, Mercatus Center
at George Mason University, and Bridget Dooling, Editor-in-
Chief, Federal Circuit Bar Journal............................. 132
Prepared Statement of Gerard Colby, President, National Writers
Union.......................................................... 133
Letter from David Sanger, President, the Stock Artists Alliance
(SAA).......................................................... 136
REPORT ON ORPHAN WORKS BY
THE COPYRIGHT OFFICE
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WEDNESDAY, MARCH 8, 2006
House of Representatives,
Subcommittee on Courts, the Internet,
and Intellectual Property,
Committee on the Judiciary,
Washington, DC.
The Subcommittee met, pursuant to call, at 2:08 p.m., in
Room 2141, Rayburn House Office Building, the Honorable Lamar
Smith (Chairman of the Subcommittee) presiding.
Mr. Smith. The Subcommittee on Courts, the Internet, and
Intellectual Property will come to order.
Thank you all for your interest and for your in presence in
being here. We will open with opening statements and then
proceed directly to hear from our witnesses today as well.
I recognize myself.
Today's hearing is an oversight hearing on the Copyright
Office Report on Orphan Work. The orphan works issue arises
when someone who wants to use a copyrighted work cannot find
the owner no matter how diligently they search. The owner may
have moved several times, died, or in the case of corporate
owners may have changed names or been bought out. This leaves
the potential user with no options even though they want to do
the right thing by paying a reasonable royalty to the copyright
owner of a photograph, book, or other work.
Responding to this issue, the Copyright Office has released
the adjusted statutory language that they believe will address
the orphan works issue in a balanced manner. I have heard from
a number of interested parties on the orphan works issue and
the language suggested by the Copyright Office from potential
owners and users of orphan works to others who are merely
concerned about the impact of any new orphan works legislation
on existing statutes.
I have long been a proponent of strong copyright
protections. So I look forward to hearing from the witnesses
today who are seeking to address the orphan works issue by
limiting the remedies for specific uses of orphan works. It is
important that copyright owners still receive a fair royalty
under an effective system if the owner does reappear to claim
ownership of his work.
Some copyright owners, such as photographers, illustrators,
and artists have unique business issues that are different from
those of other copyright owners. I look forward to hearing of
their specific concerns and whether or not this adjusted
language has adequately addressed them or can be modified to do
so in either statutory or report language. Numerous interested
parties have been meeting in numerous areas to develop
modifications to the copyright office language in order to
better protect their interests. The successful completion of
such negotiations will enable us to move an orphan works bill
in the coming weeks.
Moving a bill in Congress does not require unanimity.
Parties who feel that they can simply stop the legislative
process by failing to negotiate in good faith or at all tend to
be ignored. Maybe I should say left behind.
I look forward to working with other Members of the
Committee and interested parties to advance a near consensus
bill on the issue at hand.
That concludes my testimony. The gentleman from California,
Mr. Berman is recognized for his.
Mr. Berman. Thank you very much, Mr. Chairman, for
scheduling the hearing on the Copyright Office's report on
orphan works. Unfortunately for me, perhaps fortunately for you
and the other Members, I am going to have to leave a little
early because of another hearing in a different Committee. So I
would like to use the opening statement to raise some
questions.
I want to start out by commending the Copyright Office on
their legislative proposal. It's united a number of owner and
user groups in search of a solution to the orphan works
problem. The recommendation goes a long way to meeting users'
concerns of making beneficial uses of works when copyright
owners can't be found. This allows our society to be enriched
by access to works that otherwise and most likely would be
lost. All of this must coexist against the backdrop of
continuing to maintain the incentive for creators to pursue
their art.
So when it comes specifically to the category of owners of
visual arts work such as photographers and illustrators, which
seems to be a group that is most concerned about this proposal,
I want to raise some questions about the affect of the
Copyright Office proposal on an orphan works provision.
Currently, a user can begin a search by typing in search
terms in a registry, be it in the Copyright Office or from
musical works by contacting BMI or ASGAP. There is no
collective registry, however, for photographic or illustration
information which makes owner information in many instances
almost impossible to find. According to this proposal, if a
reasonable search and attribution allows one to qualify for a
limitation of on remedies, will most owners of photographs be
required to forego their normal remedies when the information
can't be found? That issue shy is to me the large elephant
remaining in the room.
Is the current copyright system layered by the orphan works
provision adequate to protect visual arts owners. The most
basic question seems unanswerable. Where does one even begin
the process of finding the owner information for most
illustrations or photographs? No doubt this question may be
addressed in part by some non-legislative solutions or possibly
legislative in that an appropriation is required.
For example, when I wrote to the Copyright Office about the
orphan works issue, I requested that they explore the viability
of creating an accurate, updated, and electronically searchable
data base of copyright ownership, how much would such a data
base cost. Currently on the Copyright Office's search file,
unless one has a registration number, the title, or the
author's name, one can't search for the work. Even with that
all that information, the search feature is extremely
rudimentary. With photographs, however, where often times there
is no title of the work, there is currently no mechanism to
search a description of the work and the possibility of
matching the work is limited since there is no thumbnail of the
photograph.
Granted, part of the problem has been exacerbated by
attempts to accommodate the needs of the photographers by
allowing group registration; however, if the orphan works
provision limits an owner's right to reasonable compensation
without access to statutory damages or attorneys fees, what's
the motivation for photographers to register their works in the
first place which gives them the opportunity to get those
remedies?
While some have stated that this issue should be resolved
outside the scope of this orphan works solution, I think we
have to be somewhat wary of going down a road that small
copyright owners claim will isolate them from the benefits of
the copyright system and potentially harm them. Currently,
copyright owners can use the threat of litigation with the
possibility of statutory damages and attorneys fees to hinder
unauthorized uses of their works. Under this orphan works
provision, while the use is still considered infringement, the
remedies are so limited that the likelihood of recovery of even
reasonable compensation becomes questionable. The cost of
litigation to determine reasonable compensation would often
times far exceed the actual reasonable compensation.
To discuss the orphan works recommendation without
addressing a core problem for major stakeholders in the process
alters the balance in maintaining the exclusive rights for
locatable copyright owners. Where but for the fact that there
is no adequate data base, some of these children could be
matched with their parents.
So the issues, I just wanted to raise. I know I'm taking a
little longer, but I'll make up for it on the other end. I
would hope the witnesses could address a few of these
questions.
For cases in which the Copyright Office has a registration
for a work with locatable information on its face, should there
be an exception or carve-out to the orphan works provision?
Should an owner, if able to show a registration, be able to
reclaim his right to statutory damage or attorneys fees? What
if the work was not only registered, but the owner took steps
to make his work locatable by providing a description of the
work? Would this make a difference? If the Copyright Office is
proposing that this data base be a voluntary data base
established by the photographers, should it we look at a later
enactment date to allow time for the photographers to acclimate
to this new scheme or perhaps provide a transition period?
Finally, would the witness be amenable to having the option of
a resolution of the orphan works issue in a small claims court
to reduce the cost to small copyright owners?
There are some other issues to consider, but it is in this
particular area that I thought that I would hope the witnesses
might address this discrete problem that I see in the proposal,
which I generally commend and appreciate the Copyright Office
submitting to us in response to our request.
Thank you Mr. Chairman.
Mr. Smith. Thank you, Mr. Berman.
The gentlewoman from California, Ms. Lofgren, is recognized
for an opening statement.
Ms. Lofgren. Thank you, Mr. Chairman. I would ask unanimous
consent to put my full statement in the record.
Mr. Smith. Without objection, so ordered.
Ms. Lofgren. To save time, I would just like to mention how
interested I am in the Copyright Office proposal. I think that,
as you know, I introduced a bill, H.R. 2408, that took a
somewhat different approach than the one proposed by the
Copyright Office. In my bill, I set forward a concept of a
national registry system to avoid their works becoming
orphaned. Under my bill, copyright holders would register their
works in a national registry after 50 years.
I recently received a letter from Professor Lawrence Lessig
of Stanford Law School in support of a registry system. I would
like to make that a part of the record. It is not my proposal,
but I am interested in what the witnesses might think. I think
it's been on the web.
Mr. Smith. Without objection, that proposal will be made a
part of the record as well as any other items that the
gentlewoman wants to submit as a part of her opening statement.
Ms. Lofgren. Thank you.
I would just like to note that one of the values that I had
hoped for in a registration approach is certainty on the of all
parties. On the other hand, the Copyright Office's proposal has
some benefits because it doesn't have the arbitrary 50-year
date, and I think there's value in that. On the other hand, I'm
not sure the certainty principle is there. So I'm interested in
all of the witnesses talking about what further efforts could
be made to provide certainty, and then certainly if you expend
money, time, and effort on an orphan work, you want to have
some level of certainty that you are doing so on firm ground.
I'm not sure that the proposal before us really gives that
level of certainty, and perhaps there is some way to do absent
a registry system or maybe that is the better system.
So thank you, Mr. Chairman, for allowing me. I don't
generally do opening statements, but I appreciate the
opportunity to do so today.
Mr. Smith. Thank you, Ms. Lofgren.
The gentleman from California, Mr. Issa, is recognized for
an opening statement.
Mr. Issa. Thank you, Mr. Chairman. I'll put my written
statement into the record to save time.
I just want to compliment and echo Mr. Berman's comments by
saying that if I can find what is unfindable on the Government
site by going to Google, then, in fact, we're not living up to
the expectations of the public, and I would hope that as we go
through this legislation or proposal and in the future that we
recognize that in a digital age, there should be nothing
unsearchable including, to be honest, a digital image from a
picture being matched with the entire data base of pictures.
That technology exists today, and I would hope during the
statements, we could discuss if not today, then when would we
have those capabilities so that there would not be a true
orphan of intellectual property, copyright property,
particularly in the Government's hands.
Thank you. I yield back.
Mr. Smith. Thank you, Mr. Issa.
Would our panelists stand so that you all can be sworn in?
[Witnesses sworn.]
Mr. Smith. Our first witness is Jule Sigall, the Associate
Register for Policy and International Affairs at the U.S.
Copyright Office. Mr. Sigall is the head of the Office of
Policy and International Affairs which assists the Register of
Copyrights in advising Congress and Executive Branch agencies
on domestic and international copyright policy matters. Mr.
Sigall is also an adjunct professor of law at the George
Washington University Law School where he teaches copyright.
Mr. Sigall is a graduate of Duke University and a suma cum
laude graduate of the Catholic university School of Law.
Our next witness is Allan Adler, Vice President for Legal
and Governmental Affairs for the Association of American
Publishers which represents book and journal publishing
industries. He deals with intellectual property, freedom of
speech, new technology, and other industry-related issues. Mr.
Adler holds a B.A. in history from the State University of New
York at Binghamton and a J.D. from the George Washington
University Law School.
Our next witness is David Trust, the Chief Executive
Officer of the Professor Photographers of America. Founded in
1880, the PPA is the world's largest nonprofit trade
association for professional photographers with 15,000 members.
Mr. Trust is also the CEO of the Alliance of Visual Artists.
The AVA is an umbrella group representing the interests of
photographer organizations which also represents the
International Association of Professional Event Photographers,
Commercial Photographers International, and the Student
Photographic Society as well. Mr. Trust graduated with a B.S.
in journalism from the University of Georgia.
Our final witness is Maria Pallante, the Associate General
Counsel and Director of Licensing at the Solomon R. Guggenheim
Foundation where she has managed intellectual property and
related business affairs since 1999. Ms. Pallante received her
J.D. from the George Washington University Law School, and her
B.A. from College Misericordia.
In closing, we should note, Mr. Trust, that you are at a
slight disadvantage today since you are the only one with no
connection to George Washington University School of Law. I
don't remember coming this close, I think, before to a clean
sweep by one law school with three having graduated from one.
You may be outnumbered, but not out testimonied, but we'll find
out.
Okay. Mr. Sigall we'll begin with you.
TESTIMONY OF JULE L. SIGALL, ASSOCIATE REGISTER FOR POLICY AND
INTERNATIONAL AFFAIRS, COPYRIGHT OFFICE OF THE UNITED STATES,
THE LIBRARY OF CONGRESS
Mr. Sigall. Thank you, Mr. Chairman.
Chairman Smith, Mr. Berman, and Members of the
Subcommittee, I am pleased to appear today on behalf of the
Copyright Office to testify about our report on orphan works.
We would like to thank Chairman Smith and Mr. Berman for
supporting our study in the report which we published at the
end of January.
As you summarized, Mr. Chairman, the term ``orphan works''
describes the situation where someone would like to use a
copyrighted work, but cannot identify and locate the copyright
owner. Even where the user makes a diligent effort to find the
owner, if the owner is not found, the user faces a dilemma. She
cannot determine whether the owner would permit the use. Where
the proposed use is infringing, the user cannot reduce the risk
of copyright liability because there is the possibility that a
copyright owner could bring an infringement action after that
use has begun.
In each situation, the productive and beneficial use may be
forestalled, not because the owner has asserted exclusive
rights or because the user and owner cannot agree on the terms
of a license, but merely because the user cannot locate the
owner. For many users, the risk of infringement liability even
though remote is enough to prompt them not to make use of the
work. This outcome is not in the public interest, especially
where the owner no longer exists or otherwise does not care to
restrain the use of the work.
Based on our study of this issue, we concluded the
following: The orphan works problem is real, but it is illusive
to quantify and describe comprehensively. Some orphan work
situations may be addressed by existing law, but many are not,
and legislation is necessary to provide a meaningful solution
to the orphan works problem as we know it today. The report
recommends with specific legislative language an amendment to
the Copyright Act's remedy section.
Our proposal is motivated by two primary goals. First, any
system to deal with orphan works should seek to make it more
likely a user finds the relevant owner in the first instance
and negotiates a voluntary agreement over the use of the work.
Second, where the user cannot identify and locate the owner
after a reasonably diligent search, then the system should
permit that user to make use of the work subject to provisions
that resolve issues that arise if the owner surfaces after the
use has commenced.
Our proposed amendment follows the core concept that many
participants favor as an orphan works solution. If the user has
performed a reasonably diligent search but does not locate that
copyright owner, then the remedies for infringement by that
user should be limited. Both our written testimony and the
report go into the specifics of a recommendation. So I won't
spend much time on those details now. I would like to focus my
remarks today on the reactions that interested parties have
given to our report.
By and large, that reaction has been quite positive. A
diverse array of copyright owners and users, book publishers,
authors, libraries, archives, museums, motion picture studios,
record companies, educational institutions, documentary film-
makers and others all agree with our conclusion that the orphan
works issue is real and needs to be addressed and they agree
with the basic concept and structure of our proposed
legislation. Some of these groups have made constructive
suggestions for changes to the specific provisions, and we are
confident that further discussion among the interested parties
can resolve any remaining issues.
Certain groups representing individual copyright owners,
however, such as photographers, illustrators, and graphic
artists oppose our proposal. They argue that many of their
works will be inaccurately labeled orphan works because it is
often difficult to find the owner of a visual image, usually
because the name of the creator is not on copies of the work.
As Mr. Berman pointed out, the Copyright Office records are
text based and in many cases do not contain much, if any,
description of the subject matter of the image in part because
we have eased the registration requirements for photographers
at that request. So even if a photographer has registered his
works, a user may not be able to locate that owner.
In other words, these groups concede the very problem at
the heart of the report. A user seeking to locate a
photographer of an image that has no identifying information on
it faces a daunting challenge. Our proposal provides safeguards
for this problem in a number of ways. First, in most cases,
including all commercial uses, the user of an orphan work must
pay the copyright owner reasonable compensation if the owner
resurfaces. Also, the user will not be able to continue making
the use after the owner asserts his copyright except in defined
circumstances and even in that case must pay reasonable
compensation for that future use. So when critics say that our
proposal would strip thousands of photographers and other
visual artists of their rights, that is simply not true.
Photographers claim that bringing a lawsuit to collect
reasonable compensation will be prohibitively expensive. We
agree that legal actions to enforce copyrights are expensive
just as any access to our court system is costly. However, this
problem exists for visual images today regardless of whether
orphan works legislation is passed or not. More over, there are
nonlegal actions that photographers and others can take to
protect their copyrights. These steps include consistent
marking copies of their works, development of collective
licensing mechanisms, and employing technology to allow
effective searches where the user only has the image and no
contextual information for the work. Steps like these will also
ensure that visual images are locatable and that their works do
not become orphan works.
Regarding the expense of litigation, we noted in the report
that a new small claims procedure might also help individual
owners protect their copyright generally and also allow them to
obtain reasonable compensation if their work falls into the
orphan category. We will be pleased to work with the
Subcommittee and interested parties in exploring possible new
procedures; however, the key to enhancing copyright protection
in visual images is not increased litigation, but making it
easier for owners and users to find each other, which our
orphan work proposal encourages.
In conclusion, many users, especially cultural institutions
like libraries, museums, and archives, made clear that any
orphan work solution must include photograph and other visual
images given the persistent orphan works problems that exist
with these works. In fact, orphan works legislation may be the
catalyst needed to prompt the nonlegal marketplace reforms that
will most efficiently address the problems identified by these
creators. For this reason and others, Congress should not delay
its consideration and enactment of orphan works legislation.
Thank you for the opportunity to testify today and I look
forward to answering any questions that you might have.
[The prepared statement of Mr. Sigall follows:]
Prepared Statement of Jule L. Sigall
Chairman Smith, Ranking Member Berman, and Members of the
Subcommittee, I am pleased to appear before you on behalf of the
Copyright Office to testify about our Report on Orphan Works, published
in January of this year. In this testimony, we provide a description of
the orphan works issue and the contents of the Report, as well as a
discussion of some of the reactions to the Report we have received from
interested parties since its publication.
By and large the reaction has been quite positive. A broad and
diverse array of interests from both copyright owner and user
communities including book publishers, authors, libraries, archives,
museums, motion picture studios, record companies, educational
institutions, documentary filmmakers and others agree with the
Copyright Office's conclusion that the orphan works issue is real and
needs to be addressed, and they also agree in basic concept and
structure with the legislative solution proposed by the Report. Some of
these groups have made constructive suggestions for changes to specific
provisions of our proposal, and we are confident that issues raised by
these comments can be resolved with further discussion among the
interested parties.
Some individual authors and creators, however, primarily in the
photography and visual image industries, are opposed to our effort to
solve the orphan works problem, despite the fact that the proposal does
not remove copyright for orphan works, and requires, in most cases,
that the user pay the copyright owner reasonable compensation for the
use of the work. Their concerns stem mostly from the fact that legal
action to enforce their copyrights is expensive, often prohibitively
so. As described below and in the Report, the enforcement problems
faced by these creators are real and should be addressed, but they
exist whether or not orphan works legislation is passed. As a result,
these concerns do not justify any delay in addressing the orphan works
problem. In fact, enactment of orphan works legislation may be the
catalyst necessary to prompt the non-legal, marketplace reforms that
will most efficiently address the problems identified by photographers
and creators of visual images.
I. DESCRIPTION OF THE REPORT
A. Introduction and Background
The Report addresses the important issue of ``orphan works,'' a
term used to describe the situation where the owner of a copyrighted
work cannot be identified and located by someone who wishes to make use
of the work in a manner that requires permission of the copyright
owner. Even where the user has made a reasonably diligent effort to
find the owner, if the owner is not found, the user faces uncertainty--
she cannot determine whether or under what conditions the owner would
permit use. Where the proposed use goes beyond an exemption or
limitation to copyright, the user cannot reduce the risk of copyright
liability for such use, because there is always a possibility, however
remote, that a copyright owner could bring an infringement action after
that use has begun.
Concerns have been raised that in such a situation, a productive
and beneficial use of the work is forestalled--not because the
copyright owner has asserted his exclusive rights in the work, or
because the user and owner cannot agree on the terms of a license--but
merely because the user cannot locate the owner. Many users of
copyrighted works have indicated that the risk of liability for
copyright infringement, however remote, is enough to prompt them not to
make use of the work. Such an outcome is not in the public interest,
particularly where the copyright owner is not locatable because he no
longer exists or otherwise does not care to restrain the use of his
work.
The Copyright Office has long shared these concerns, and considered
the issue of orphan works to be worthy of further study. The Office was
pleased that in January 2005, Chairman Smith and Mr. Berman expressed
interest in the issue and supported the request from Senators Orrin
Hatch and Patrick Leahy to study the orphan works issue in detail, and
to provide a report with the Office's recommendations.
After that request, in January 2005, the Office issued a Notice of
Inquiry initiating this study. We received over 850 written initial and
reply comments from the public, and held three days of roundtable
discussions in late July in Washington, D.C. and Berkeley, California.
The Office subsequently met informally with various organizations
separately, in a effort to explore more specific issues raised in the
comments and roundtables; they were also invited to further express
their individual concerns. Our Report is the culmination of those
efforts.
II. DESCRIPTION OF ORPHAN WORKS SITUATIONS
Section III of the Report catalogs and organizes the various
situations described in the comments as ``orphan work'' situations. The
written initial and reply comments, most of which were authored by
individuals, described an enormous variety of problems and proposed
uses. It is difficult, however, to quantify the extent and scope of the
orphan works problems from these comments, for several reasons. First,
about 40% of the comments do not identify an instance in which someone
could not locate a copyright owner, and another significant portion
identified situations that were clearly not orphan work situations.
Still, about 50% of the comments identified a situation that could
fairly be categorized as an orphan works situation, and even more
instances were collected in comments filed by trade associations and
other groups. Thus, there is good evidence that the orphan works
problem is real and warrants attention, and none of the commenters made
any serious argument questioning that conclusion.
The Report describes the most common obstacles to successfully
identifying and locating the copyright owner, such as (1) inadequate
identifying information on a copy of the work itself; (2) inadequate
information about copyright ownership because of a change of ownership
or a change in the circumstances of the owner; (3) limitations of
existing copyright ownership information sources; and (4) difficulties
researching copyright information.\1\ It then describes other
situations raised by commenters that were alleged to be ``orphan work''
situations but upon closer inspection were outside the scope of the
inquiry. These included situations where the user contacted the owner,
but did not receive permission to use the work, either because the
owner did not respond to the request, refused the request, or required
a license fee that the user felt was too high. Other such problems
included general difficulties determining the status of copyright
protection for a given work, and problems related to the legal
protection accorded pre-1972 sound recordings.\2\
---------------------------------------------------------------------------
\1\ See United States Copyright Office, Report on Orphan Works 23-
34 (Jan. 2006) [hereinafter ``Report''].
\2\ See Report at 34-46.
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Finally, the Report catalogs the proposed uses that the commenters
indicated were most affected by the orphan works situations. In our
view these uses fall into one of four general categories: (1) uses by
subsequent creators who add some degree of their own expression to
existing works to create a derivative work; (2) large-scale ``access''
uses where users primarily wish to bring large quantities of works to
the public, usually via the Internet; (3) ``enthusiast'' or hobbyist
uses, which usually involve specialized or niche works, and also appear
frequently to involve posting works on the Internet; and (4) private
uses among a limited number of people.\3\
---------------------------------------------------------------------------
\3\ See Report at 36-40.
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III. LEGAL BACKGROUND
Section IV of the Report provides the legal backdrop for
consideration of the orphan works issue.\4\ First, it sets out the
historical factors that affect the orphan works problem by describing
how the issue is, in some respects, a result of the omnibus revision to
the Copyright Act in 1976. Specifically, the 1976 Act made obtaining
and maintaining copyright protection substantially easier than the 1909
Act. Copyrighted works are protected the moment they are fixed in a
tangible medium of expression, and do not need to be registered with
the Copyright Office. Also, the 1976 Act changed the basic term of
copyright from a term of fixed years from publication to a term of life
of the author plus 50 (now 70) years. In so doing, the requirement that
a copyright owner file a renewal registration in the 28th year of the
term of copyright was essentially eliminated.
---------------------------------------------------------------------------
\4\ See Report at 41-68.
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These changes were important steps toward the United States'
assumption of a more prominent role in the international copyright
community, specifically through accession to the Berne Convention,
which prohibits formalities like registration and renewal as a
condition on the enjoyment and exercise of copyright. Moreover, there
was substantial evidence presented during consideration of the 1976 Act
that the formalities such as renewal and notice, when combined with
drastic penalties like forfeiture of copyright, served as a ``trap for
the unwary'' and caused the loss of many valuable copyrights. These
changes, however, exacerbate the orphan works issue, in that a user
generally must assume that a work he wishes to use is subject to
copyright protection, and often cannot confirm whether a work has
fallen into the public domain by consulting the registration records of
the Copyright Office.
Section IV of the Report then goes on to describe existing
provisions of copyright law that might address the orphan works
situation in certain circumstances. While U.S. copyright law does not
contain an omnibus provision addressing all orphan works as such, it
does contain a few provisions that permit certain users to make certain
uses of certain classes of orphan works, and other provisions that
reduce the risk in using an orphan work. These provisions include
section 108(h), section 115(b), section 504(c)(2), and the termination
provisions (sections 203, 304(c), and 304(d)). These existing sections
provide models that may be useful in the development of an omnibus
orphan works provision.
This discussion demonstrates that the current Copyright Act does
not contain provision designed to address the orphan works situation
that is the subject of the Report. While some provisions, like section
108(h), might address the question for some users in certain
situations, in general a user faced with an orphan works situation will
not find a specific section or other provision of the Act on which he
might rely to make use of the work.
Nevertheless, we believe that the focus on developing legislative
text to address orphan works should not obscure the fact that the
Copyright Act and the marketplace for copyrighted works provide several
alternatives to a user who is frustrated by the orphan works situation.
Indeed, assessing whether the situations described to use in the
comments were true ``orphan works'' situations was difficult, in part
because there is often more than meets the eye in a circumstance
presented as an ``orphan works'' problem.
For purposes of developing a legislative solution we have defined
the ``orphan works'' situation to be one where the use goes beyond any
limitation or exemption to copyright, such as fair use. However, in
practice, most cases will not be so neatly defined, and a user may have
a real choice among several alternatives that allow her to go forward
with her project: making noninfringing use of the work, such as by
copying only elements not covered by copyright; making fair use;
seeking a substitute work for which she has permission to use; or a
combination of these alternatives. Indeed, evidence presented to us
indicates that users in the orphan works situation make exactly these
types of choices. Section IV of the Report describes some of those
alternatives and how they might be applicable to different scenarios
described in the comments.
Finally, Section IV of the Report sets out the international law
context for consideration of an orphan works solution. Specifically, it
describes the obligations that the various international copyright
treaties impose on the United States with respect to imposition of
formalities to copyright, limitations and exceptions to copyright and
copyright remedies.
IV. DESCRIPTION OF PROPOSED SOLUTIONS
Numerous comments received in the orphan works proceeding proposed
solutions to the orphan works problem, and Section V of the Report
catalogs and describes them. These solutions can be grouped into four
categories:
Solutions that already exist under current law and
practice. These were usually noted only in passing; commenters
(even commenters opposed to any orphan works provision) did not
take the position that the existing law is sufficient to solve
the orphan works problem.\5\
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\5\ See Report at 69.
Non-legislative solutions. An example of a solution
in this category is a proposal for improved databases for
locating owners of works. These solutions were also usually
noted only in passing, and were not advanced as sufficient to
fix the problem.\6\
---------------------------------------------------------------------------
\6\ See Report at 70.
Legislative solutions that involve a limitation on
remedies when a user uses an orphan work. The most substantive
comments fell into this category, and most of the comments by
professional organizations or academics fell into this
category.\7\
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\7\ See Report at 71-89.
Other legislative solutions. Examples of proposed
solutions in this category are deeming all orphaned works to be
in the public domain, or changing the tax or bankruptcy codes
to reduce the factors that cause orphan works to come into
existence in the first place.\8\
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\8\ See Report at 89.
As explained in Section V, most of the comments focused on various
aspects of the third category, legislative proposals involving a
limitation on remedies. Almost every commenter who advocated a
limitation-on-remedies system agreed that a fundamental requirement for
designation of a work as orphaned is that the prospective user have
conducted a search for the owner of the work, and that the search
results in the owner not being located. The commenters differed in the
types of searches they would consider adequate.
Many commenters were in favor of determining whether a search was
reasonable on an ``ad hoc'' or case-by-case basis, whereby each search
is evaluated according to its circumstances. This approach was offered
as having the advantage of flexibility to cover the wide variety of
situations that depend on the type of work and type of use involved.
Several others were in favor of a ``formal'' approach, whereby the
copyright owner is required to maintain his contact information in a
centralized location, and a user need only search those centralized
locations to perform a reasonable search. That approach was offered as
being more certain than the ``ad hoc'' approach.
The commenters also discussed the role that registries would play
in an orphan works system. Some proposed a mandatory registry for owner
information, which was opposed by several commenters as reinstating the
problematic features of the pre-1976 copyright law, and might violate
international obligations related to formalities. Many commenters
expressed support for voluntary registries of owner information that
could be consulted by users in performing their reasonable searches.
Some copyright owners expressed concern about even voluntary registries
as not offering much efficiency in certain cases, such as photographs.
Some commenters proposed that user registries be established in which a
user would file a notice that he intends to use a work for which he
cannot locate an owner. Both voluntary and mandatory user registries
were proposed. Concerns were raised as to whether user registries were
unnecessarily burdensome on owners, who might have to consult the
registry frequently to monitor use of their copyrights.
Other issues discussed by the commenters and described in Section V
include whether the orphan works system should be limited based on the
age of the work, on whether the work is unpublished, and on whether the
work is of foreign origin. Many commenters expressed the view that none
of these characteristics should disqualify any particular work; rather,
these aspects of a work should be considered in the determination of
whether the search for the owner was reasonable. Some commenters also
proposed that the use of orphan works be limited to non-profit
educational or cultural institutions.
Once a work has been designated as an orphan work, several comments
addressed whether the user would have to pay any fees for the use of
the work. A common suggestion was that the user be obligated to pay a
reasonable license fee if the copyright owner surfaced after use began.
Others proposed a low fixed statutory fee, such as $100 per work used,
and another suggestion was the actual damages caused by the use be
limited by a low statutory cap. Some participants favored the use of an
escrow that users would pay into upon use of the orphan work, with that
money distributed to owners if they surfaced.
If an owner does appear and claim infringement, most commenters
agreed that some limitation on the remedies for infringement is
essential to enabling the use of the work. Most agreed that statutory
damages and attorneys fees should not be available, because those
remedies create the most uncertainty in the minds of users. With
respect to injunctive relief, many commenters proposed that the orphan
work user be permitted to continue the use he had been making before
the owner surfaced, but that new uses of the work remain subject to
injunction and full copyright remedies.
V. CONCLUSIONS AND RECOMMENDATIONS
Section VI of the Report contains the Copyright Office's
conclusions and recommendations.\9\ Our conclusions are:
---------------------------------------------------------------------------
\9\ See Report at 92.
---------------------------------------------------------------------------
The orphan works problem is real.
The orphan works problem is elusive to quantify and
describe comprehensively.
Some orphan works situations may be addressed by
existing copyright law, but many are not.
Legislation is necessary to provide a meaningful
solution to the orphan works problem as we know it today.
The Report recommends that the orphan works issue be addressed by
an amendment to the Copyright Act's remedies section. The specific
language we recommend is provided at the end of the Report.\10\
---------------------------------------------------------------------------
\10\ See Report at 127.
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In considering the orphan works issue and potential solutions, the
Office has kept in mind three overarching and related goals. First, any
system to deal with orphan works should seek primarily to make it more
likely that a user can find the relevant owner in the first instance,
and negotiate a voluntary agreement over permission and payment, if
appropriate, for the intended use of the work. Second, where the user
cannot identify and locate the copyright owner after a reasonably
diligent search, then the system should permit that specific user to
make use of the work, subject to provisions that would resolve issues
that might arise if the owner surfaces after the use has commenced. In
the roundtable discussions, there seemed to be a clear consensus that
these two goals were appropriate objectives in addressing the orphan
works issues. Finally, efficiency is another overarching consideration
we have attempted to reflect, in that we believe our proposed orphan
works solution is the least burdensome on all the relevant
stakeholders, such as copyright owners, users and the federal
government.
The proposed amendment follows the core concept that many
commenters favored as a solution to the orphan works problem: if the
user has performed a reasonably diligent search for the copyright owner
but is unable to locate that owner, then that user should enjoy the
benefit of limitations on the remedies that a copyright owner could
obtain against him if the owner showed up at a later date and sued for
infringement. The recommendation has two main components:
the threshold requirements of a reasonably diligent
search for the copyright owner and attribution to the author
and copyright owner; and
the limitation of remedies that would be available if
the user proves that he conducted a reasonably diligent search.
The details of the recommendation are set out in Section VI,
followed by a discussion of some other proposals that we considered
carefully, but ultimately decided not to recommend.\11\
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\11\ See Report at 93-122.
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A. The Reasonably Diligent Search Requirement
Subsection (a) sets out the basic qualification the user of the
orphan work must meet--he must perform a ``reasonably diligent search''
and have been unable to locate the owner of the copyright in the work.
Such a search must be completed before the use of the work that
constitutes infringement begins. The user has the burden of proving the
search that was performed and that it was reasonable, and each user
must perform a search, although it may be reasonable under the
circumstances for one user to rely in part on the search efforts of
another user.
Several commenters complained of the situation where a user
identifies and locates the owner and tries to contact the owner for
permission, but receives no response from the owner. They suggested
that works in these situations should be considered orphan works. We
have concluded that such a solution is not warranted, as it touches
upon some fundamental principles of copyright, namely, the right of an
author or owner to say no to a particular permission request, including
the right to ignore permission requests. For this reason, once an owner
is located, the orphan works provision becomes inapplicable.
The proposal adopts a very general standard for reasonably diligent
search that will have to be applied on a case-by-case basis, accounting
for all of the circumstances of the particular use. Such a standard is
needed because of the wide variety of works and uses identified as
being potentially subject to the orphan works issues, from an untitled
photograph to an old magazine advertisement to an out-of-print novel to
an antique postcard to an obsolete computer program. It was not
possible for our Report to craft a standard that could be specific to
all or even many of these circumstances. Moreover, the resources,
techniques and technologies used to investigate the status of a work
also differ among industry sectors and change over time, making it hard
to specify the steps a user must take with any particularity.
Section VI contains a discussion of several factors that commenters
identified as being relevant to the reasonableness of a search,
including:
The amount of identifying information on the copy of
the work itself, such as an author's name, copyright notice, or
title;
Whether the work had been made available to the
public;
The age of the work, or the dates on which it was
created and made available to the public;
Whether information about the work can be found in
publicly available records, such as the Copyright Office
records or other resources;
Whether the author is still alive, or the corporate
copyright owner still exists, and whether a record of any
transfer of the copyright exists and is available to the user;
and
The nature and extent of the use, such as whether the
use is commercial or noncommercial, and how prominently the
work figures into the activity of the user.
Importantly, our recommendation does not exclude any particular
type of work from its scope, such as unpublished works or foreign
works. Section VI explains why we believe that unpublished works should
not be excluded from this recommendation, and how the unpublished
nature of a work might figure into a reasonable search determination.
Our recommendation permits, and we encourage, interested parties to
develop guidelines for searches in different industry sectors and for
different types of works. Most commentators were supportive of
voluntary development of such guidelines. When asked whether the
Copyright Office should have authority to embody guidelines in more
formal, binding regulations to provide certainty, we were surprised to
hear that most user groups--whom we thought would desire more certain
rules for searches--opposed the Copyright Office issuing rules related
to search criteria. Based on our desire to maintain flexibility in the
reasonable search standard and this expressed opposition to formal
rulemaking, we have not proposed that the orphan works legislation
provide the Office with any rulemaking authority.
B. The Attribution Requirement
We also recommend one other threshold requirement for a user to
qualify for the orphan works limitations on remedies: throughout the
use of the work, the user must provide attribution to the author and
copyright owner of the work if such attribution is possible and as is
reasonably appropriate under the circumstances. The idea is that the
user, in the course of using a work for which he has not received
explicit permission, should make it clear to the public that the work
is the product of another author, and that the copyright in the work is
owned by another. While only a handful of commenters proposed a
requirement along these lines, we found several good reasons to support
this requirement, described in Section VI, including the notion that
attribution is critically important to authors, even those who consent
to free use of their works. The requirement of attribution should be a
flexible rule, and should not be interpreted in a strict way to create
unnecessarily another obstacle to the use of orphan works.
C. Other Alternatives Considered
There were two other mechanisms proposed to help address the orphan
works issue that we considered but ultimately concluded would not be
appropriate to recommend at this time. First, as noted above, some
commenters suggested that users should be required to file with the
Copyright Office some public notice that they have conducted a
reasonable search and intend to use an orphan work. While a centralized
registry of user certifications or notice of intent to use sounds
promising on the surface, upon closer examination there are potential
pitfalls that outweigh the benefits at this time, for reasons that we
describe in Section VI.
The other mechanism proposed by some commenters is a requirement
that orphan works users pay into an escrow before commencing use. In
our view, an escrow requirement in an ``ad hoc'' reasonable search
system like we recommend would be highly inefficient. Every user would
be required to make payment, but in the vast majority of cases, no
copyright owner would resurface to claim the funds, which means the
system would not in most cases actually facilitate payments between
owners and users of orphan works. We are sympathetic to the concerns of
individual authors about the high cost of litigation and how, in many
cases, the individual creator may have little practical recourse in
obtaining relief through the court system. We believe that
consideration of new procedures to address this situation, such as
establishment of a ``small claims'' or other inexpensive dispute
resolution procedure, would be an important issue for further study by
Congress.
D. Limitation on Remedies
If a user meets his burden of demonstrating that he performed a
reasonably diligent search and provided reasonable attribution to the
author and copyright owner, then the recommended amendment would limit
the remedies available in that infringement action in two primary ways:
First, it would limit monetary relief to only reasonable compensation
for the use, with an elimination of any monetary relief where the use
was noncommercial and the user ceases the infringement expeditiously
upon notice. Second, the proposal would limit the ability of the
copyright owner to obtain full injunctive relief in cases where the
user has transformed the orphan work into a derivative work like a
motion picture or book, preserving the user's ability to continue to
exploit that derivative work. In all other cases, the court would be
instructed to minimize the harm to the user that an injunction might
impose, to protect the user's interests in relying on the orphan works
provision in making use of the work.
1. Monetary Relief
A vast majority of the commenters in our study agreed that the
prospect of a large monetary award from an infringement claim, such as
an award of statutory damages and attorneys' fees, was a substantial
deterrent to users who wanted to make use of an orphan work, even where
the likelihood of a claim being brought was extremely low. Most of the
proposals for addressing the orphan works problem called for clear
limitations on the statutory damages and attorneys' fees remedies in
cases involving orphan works. Our recommendation follows this
suggestion by limiting the possible monetary relief in these cases to
only ``reasonable compensation,'' which is intended to represent the
amount the user would have paid to the owner had they engaged in
negotiations before the infringing use commenced. In most cases it
would equal a reasonable license fee, as that concept is discussed in
recent copyright case law.
While many commenters supported a general remedy like ``reasonable
compensation,'' some expressed concern about the impact that any
monetary remedy at all might have on their ability to go forward and
use orphan works. For example, museum representatives explained that
they would like to use hundreds or even thousands of orphan works in
their collections, so the potential of even a minimal monetary award
for each work, would, in their view, be prohibitive. Libraries and
archives made similar observations, noting their desire to make large
collections of orphan works accessible.
In our view, a general standard of reasonable compensation is the
right solution to this problem, for several reasons. First, with
respect to the concern about a chilling effect of any monetary remedy,
it must be noted that in nearly all cases where a diligent search has
been performed, the likelihood of a copyright owner resurfacing should
be very low, so that no claim for compensation is ever made. Second, it
should be clear that ``reasonable compensation'' may, in appropriate
circumstances, be found to be zero, or a royalty-free license, if the
comparable transactions in the marketplace support such a finding. Our
discussions with museums, universities and libraries indicated that in
many orphan works situations a low or zero royalty is likely to be the
reasonable compensation.
In addition, to make absolutely sure that the concerns of nonprofit
institutions like libraries, museums and universities about monetary
relief are assuaged, we recommend an additional limitation on monetary
relief where the user is making a non-commercial use of the work and
expeditiously ceases the infringement after receiving notice of the
infringement claim. In that case, there should be no monetary relief at
all. Libraries, archives and museums indicated that posting material on
the Internet was a primary use they would like to make of orphan works,
and that they would take down any material if a copyright owner
resurfaced. This additional provision provides certainty about their
exposure in that circumstance. If the organization wishes to continue
making use of the work, it would have to pay reasonable compensation
for its past use, and, as described below, for future use of the work.
2. Injunctive Relief
In addition to the limits on monetary relief, several commenters in
this proceeding suggested that limitations on injunctive relief were
needed as well. Most specifically, users who would like to create
derivative works based on orphan works, most notably filmmakers and
book publishers, stressed that the fear of an untimely injunction--
brought just as the book was heading to stores, or just before release
of the film--provides enough uncertainty that many choose not use the
work, even though the likelihood of such injunction is small.
In light of these comments, we recommend that injunctive relief for
infringement of an orphan work be limited in two ways. First, where the
orphan work has been incorporated into a derivative work that also
includes significant expression of the user, then injunctive relief
will not be available to stop the use of the derivative work, provided
the user pays reasonable compensation to the copyright owner. Second,
in all other cases, full injunctive relief is available, but the court
must account for and accommodate any reliance interest of the user that
might be harmed by an injunction. For example a full injunction will
still be available where a user simply republishes an orphan work, or
posts it on the Internet without transformation of the content.
E. Administrative Provisions
We also recommend two other administrative provisions. First, a
savings clause that makes clear that nothing in the new section on
orphan works affects rights and limitations to copyright elsewhere in
the Copyright Act, which is consistent with the structural approach of
placing the provision in the remedies chapter. Second, we recommend
that the provision sunset after ten years, which will allow Congress to
examine whether and how the orphan works provision is working in
practice, and whether any changes are needed.
F. International Context
The Notice of Inquiry asked questions about how any proposed
solution to the orphan works issue would comport with the United
States' international obligations in the various copyright treaties.
Our recommendation does not exclude foreign works from its scope, so it
must comport with the United States' international copyright
obligations. We believe that one of the primary advantages of the ad
hoc, reasonably diligent search approach is that it is fully compliant
with international obligations.
G. Application to Types of Uses
To further explain how our recommendation would work in practice,
Section VI takes the four general categories of users described in
Section III and describes how the recommended limitation on remedies
would apply in each scenario.\12\ The Section describes how the
Subsequent Creator, Large-Scale Access User, Enthusiast User and
Personal User would proceed under the recommendation. We believe that
nearly all orphan work situations are encompassed by one of those four
categories, so that if our recommendation resolves these users'
concerns in a satisfactory way, it will likely be a comprehensive
solution to the orphan works situation.
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\12\ See Report at 122-126.
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VI. REACTIONS TO THE REPORT
The reactions we have heard to our Report, for the most part, have
been overwhelmingly positive. A broad array of copyright owners and
copyright users: book publishers, libraries, archives, museums,
educational institutions, record companies, motion picture studios,
independent filmmakers, software publishers and others, have praised
the Report and support the basic concept and structure of the proposed
legislation. Several of these groups have pointed out specific features
of our recommendation that might create unintended consequences, or
suggested modifications to the language to address specific concerns.
In this section of the testimony, we comment on some of these
reactions and suggestions. As noted in the Report, we proposed specific
legislative language to help clarify our conclusions and
recommendations by giving interested parties a more concrete
understanding of what our conclusions entail. We also recognized that
interested parties might have suggested revisions that would improve
the clarity of the text or avoid unintended consequences of the
language that we proposed.\13\ In other words, we recognize that our
proposal is likely a starting point for legislation to address orphan
works, and would be pleased to work with the Committee, its staff and
interested parties on modifying that language. In general, however,
these groups are supportive of the overall approach, and the proposed
changes are issues that very likely can be resolved with further
discussion, and which will result in compromise draft legislation
supported by the vast majority of copyright owner and user interests.
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\13\ See Report at 93.
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A. The Problem of Photographs and Other Visual Images
The one exception to the broad support for our proposed legislation
involves certain groups representing individual copyright owners of
visual works, such as photographers, illustrators, and graphic artists.
They oppose our proposal, which was not unexpected, as many of them
filed comments in our proceeding recommending that no change be made to
the law to address the orphan works problem. They argue that many, if
not most, of their works will be inaccurately labeled orphan works,
because it is difficult and often impossible to find the copyright
owner of a visual image, usually because the name of the creator is not
on the copies of the works distributed to the public. Moreover,
existing sources of ownership information are text-based and often not
useful if the user only has the work, and not any other information
about the work, before him.
In other words, these groups concede the very problem that is at
the heart of the Report--a user seeking to locate a photographer or
illustrator of an image that has no identifying information on the work
itself faces a daunting challenge. The Copyright Office registration
records are text-based, and in most cases registration records do not
contain much, if any, description of the subject matter of the image.
Indeed, efforts by the Office to accommodate photographers by making it
easier to register photographs (e.g., the recent regulations permitting
group registration of published photographs), while responding to
complaints from photographers about the difficulties they have had in
registering their works, have probably made the registration system
less useful for determining copyright ownership of particular
photographs. So even if a photographer has registered his works with
the Copyright Office, it may be the case that a user will not be able
locate that owner.
Our proposal anticipates and provides safeguards for this situation
in a number of ways, primarily by preserving meaningful remedies for
owners of works that might be subject to the orphan works legislation.
First, in most cases, including all commercial uses, the user of an
orphan work is obligated to pay the copyright owner ``reasonable
compensation'' for the use prior to the time the owner resurfaces.
Also, the user will not generally not be able to continue making the
use after the owner asserts his copyright, unless the user meets the
requirements of Section 514(b)(2)(A), and even in that case will be
required to pay reasonable compensation to the owner going forward. And
in order for noncommercial users to avoid the requirement of reasonable
compensation, they must cease the infringement expeditiously after the
owner assert his rights, thus preserving future exploitation to the
owner's exclusive rights.
Despite being entitled to ``reasonable compensation'' and these
remedies in most orphan work cases, photographers oppose the proposal
because they claim that bringing a lawsuit to collect this compensation
will be prohibitively expensive. We agree that legal actions to enforce
copyrights in visual images are expensive for individual creators, just
as any access to our court system is costly. However, this problem
exists for copyrighted visual images regardless of whether orphan works
legislation is passed or not. Moreover, there are non-legal actions
that the photographers, illustrators and similar creators can take to
enforce and exploit their copyrights, and at the same time, help
eliminate the possibility that their works would fall into the orphan
works system.
As a practical matter, a marketplace of licenses and permissions
for use of photographs simply cannot exist where potential buyers
cannot find the sellers of rights in visual images. Creators of visual
images need to address the problem first and foremost, and primarily
through non-legal actions--through more consistent marking of copies of
their works, through development of mechanisms like collective
licensing organizations that can provide ownership and licensing
information to users, and by deploying technology to allow searches for
owners where the user only has the image and no contextual information.
Steps like these will help individual owners enforce and receive
payment for their copyrighted images, and, at the same time, ensure
that they are locatable and that their works do not become orphan
works. It is important that any legislative solution to address orphan
works include photographs and other visual images within its scope to
resolve the numerous orphan works problems that exist with these types
of works. Moreover, failing to include such works in the scope of the
legislation would likely allow visual image copyright owners to avoid
resolving these more fundamental problems with non-legal, marketplace
reforms.
As to the legal actions that individual creators can take to
enforce their rights, our Report acknowledges the real obstacle faced
by photographers and other individual copyright owners from the expense
of infringement lawsuits. We agree that a more efficient dispute
resolution procedure, such as a ``small claims'' procedure for
copyright infringement claims involving relatively small damage
amounts, would offer individual owners better access to legal
protection of their rights. Such a procedure would also allow these
owners to obtain the ``reasonable compensation'' they would be due
under our orphan works proposal even if their works fall into the
orphan category. We would be pleased to work with the Subcommittee and
interested parties in exploring possible new procedures. It should be
noted, however, that the key to creating a more efficient marketplace
for copyrighted visual images is not increased litigation, but making
it easier for owners and users to find each other, which our orphan
works proposal encourages.
In sum, we understand the concerns of photographers and other
visual image creators. They face difficulties exploiting their
copyright, particularly in light of new technology like the Internet,
and solutions to those problems, both legal and non-legal, should be
explored and developed. That fact, however, does not deny that there is
a very real problem of orphan works that needs to be addressed, and
those issues should not delay Congress in its consideration and
enactment of orphan works legislation.
B. Other Comments and Suggestions
The other comments and suggestions we have received concern
specific provisions in the Report's proposed language. First, some
groups remain concerned that a general standard of ``reasonable
compensation'' might result in high damage awards that would discourage
use of orphan works. For reasons set out in the Report, we think this
concern is unfounded, particularly in light of the exception that
limits monetary relief to no compensation where the use is
noncommercial and the user ceases the infringement when the owner
resurfaces.
One suggestion made to address this issue is for the statute to
define ``reasonable compensation'' with language from the Report that
specifies that it ``would equal what a reasonable willing buyer and
reasonable willing seller in the positions of the owner and user would
have agreed to at the time the use commenced, based predominantly by
reference to evidence of comparable marketplace transactions.'' \14\ We
agree that including language like this in the legislation would be a
helpful clarification. We also believe that legislative history
providing examples of how reasonable compensation would be determined
in different circumstances would also be helpful.
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\14\ See Report at 116.
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On the related question of whether the orphan work user's activity
is done ``without direct or indirect commercial advantage,'' which
would make that user potentially eligible for no monetary relief, our
Report attempts to recognize that some non-profit organizations engage
in different types of activity, some of which is commercial and some
non-commercial. Museums and other nonprofit organizations have asserted
that their activities involving the sale of books or other items using
copyrighted materials are simply a matter of ``cost recovery'' and
should not be considered commercial for the purposes of our proposal.
We cannot accept that proposition categorically, especially where the
institution has paid other located copyright owners for the use of
their works in the same book or product that contains the orphan work.
Nevertheless, we agree the drawing lines between situations is
difficult, and look forward to working with museums and others on
illustrative examples that can be used in the legislative history to
help draw those lines.
Second, some groups have expressed concern with our requirement
that the orphan work user attribute the author and copyright owner
during their use of the work. Specifically, museums and others have
said that determining the copyright owner, as opposed to the author, is
often difficult and confusing, and therefore it should not be required.
In our view, however, as the Report explains, attributing the copyright
owner, if possible, is an important piece of information that other
users and the public should be able to learn from the orphan work user.
It also will increase the likelihood that the owner will surface after
use begins and voluntary agreement over the use can be reached. If the
user is unsure of who owns the copyright, then it may not be possible
for him to attribute the copyright owner. Also, the manner of
attribution should be determined as is reasonable under the
circumstances. These two considerations, embodied in our proposal,
account for the concerns expressed about attributing the copyright
owner, and thus it should remain a requirement.
Third, with respect to injunctive relief provision of proposed
Section 514(b)(2)(A), some have expressed concern about what types of
works would be included in that provision. Specifically, some are
concerned that the use of the term ``derivative work'' might not be
broad enough to encompass works that our Report explains should be
included--the historical book which includes photographs or the
inclusion of a sculpture in a scene of a motion picture--because these
works do not necessarily ``transform'' or alter the underlying orphan
work. As we note in the Report, the concept behind this provision--with
which we have not heard disagreement--was to capture the situation
where the user creates a new work that relies to a significant extent
on the underlying orphan work, as contrasted with the situation where
the user merely republishes the orphan work, either alone or as part of
a compilation. We agree that the language in this section could be more
clear, and would be pleased to work with interested parties on ways it
could be amended to better reflect the concept that underlies it.
Fourth, several groups have expressed concerned about the sunset
provision, and have questioned how it applies where a use begins before
the 10-year period is over but continues afterward. It was our intent
to allow any user who begins use in reliance on the proposed Section
514 before the 10-year period is over to be able to benefit from the
provision, even after the 10-year period ends. Changing the word
``occurring'' to ``commencing'' would help make that clear, and we
would be pleased to discuss further changes to clarify this point. As
to whether a sunset provision is appropriate, it is likely that at
least some minor--and perhaps some major--adjustments to the orphan
works legislation will be advisable after we have had a few years'
worth of experience with it.\15\ We certainly do not believe that the
provisions of the orphan works legislation should actually expire. But
without a sunset provision, it may be difficult to persuade a future
Congress to modify the existing legislation if it is deemed to be
``good enough.'' Requiring reauthorization after a reasonable number of
years will ensure that Congress will, as a practical matter, have
little choice but to ask itself at that point whether and how the
existing regime can be improved.
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\15\ To that end, we would also welcome a study at some point
before the end of the 10-year period to assess how the orphan works
legislation is working, even if no sunset provision is enacted.
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As noted above, we would be pleased to work with the Committee, its
staff and the interested parties on these or any other issues related
to our proposal. We have been greatly encouraged by the generally
positive reaction so far, and hope that balanced, comprehensive and
effective legislation to address this important issue can be introduced
and enacted in the near future.
Mr. Smith. Thank you, Mr. Sigall.
Mr. Adler.
TESTIMONY OF ALLAN ADLER, VICE PRESIDENT FOR LEGAL AND
GOVERNMENT AFFAIRS, ASSOCIATION OF AMERICAN PUBLISHERS, INC.
Mr. Adler. Thank you, Mr. Chairman, Mr. Berman, Ms.
Lofgren.
As both users and producers of copyrighted works, book
publishers have considerable experience with the frustration
caused by the orphan works problem in seeing necessary
permissions to incorporate photos, illustrations, and other
discrete third-party copyrighted works into the histories,
biographies, and other kinds of literary works they publish.
AAP was gratified to learn that the Copyright Office report
recommended the same basic framework that the book publishing
community has proposed, and we have been hopeful of reaching a
consensus since learning that representatives of the library,
higher education, museums, and scholarly society communities
have endorsed an initiative that was strikingly similar to the
AAP proposal in almost all key respects.
In general, we think the Copyright Office did an excellent
job in its report, wisely rejecting a variety of orphan work
proposals that seemed excessively complex, discriminatory,
costly, or bureaucratic in favor of advocating a relatively
straightforward flexible and self-executing scheme. By its
terms, the Copyright Office proposal may be viewed as a fine-
tuning of statutory law because it would not impose any new
prerequisites for registration or enforcement of copyright or
in any way affect the duration of copyright, the scope of
copyright liability, or the applicability of fair use or other
defenses against infringement.
However, AAP, like other orphan works stakeholders, does
have some concerns about the Copyright Office's draft statutory
language to implement its recommendations. With respect to the
important issue of the conduct of a reasonably diligent search,
AAP generally agrees with the Copyright Office approach and we
think that the Copyright Office has provided helpful
explanations and examples in its report which should be
included in legislative history to inform how the analysis and
factors will be employed in determining whether a particular
search satisfies the statutory standard, but we have some
questions regarding when it should be appropriate for an orphan
work user to qualify for the statutory limitation on remedies
in reliance on the results of a previous third-party search
rather than a user's own reasonably diligent search, and we
think that we need further detail in the statutory language and
explanations and legislative history on three sets of issues:
First, clarifying that a reasonably diligent search
conducted by the user's employees acting within the scope of
their employment or by a third-party acting in an agency
capacity on behalf of the user should qualify the user for
statutory limitation on remedies in the same way as would a
search conducted by a user.
Secondly, we want to clarify that any person who engages in
a related infringing use of the same work as the user who
conducted a reasonably diligent search should qualify for the
statutory limitations on remedies based on the user's search
without conducting their own reasonably diligent search at
least where the related infringing use occurs pursuant to a
license from the user or the user's licensee. The example in
our industry would be if an author has conducted the reasonably
diligent search, we would hope that the publisher, the printer,
the licensee who is authorized to do paperback versions of the
book would not all have to do their own separate reasonably
diligent searches in order to rely on the limitation of
remedies.
Third, there is the important other situation of so-called
piggybacking on a previously conducted search, but in those
instances, there would be a second user of the work who is not
tied in any way to the original user by a license or other
basis for asserting the claim of legal privity and the use of
the work by the second user would be different from and
unrelated to the use of the work by the original user. Our
concern there is that if the standard is simply one of
reasonableness under the circumstances, that may lead second
users to do nothing other than determine whether a previous
reasonably diligent search has been conducted by another user
in which case they would perpetuate a mistaken notion that
orphan works is a designation which adheres to the work in
question and creates a status for the work that governs all of
its future uses by any users. This would be contrary to the
more accurate and appropriate view that orphan works
designation actually applies to the work only in connection
with a particular use by particular user or users.
The attribution requirement that the Copyright Office would
also require in order for the user to be able to rely upon the
statutory limitation of remedies is somewhat troubling. The
attribution requirement, predictably in these kinds of cases if
we are trying to identify the author and the copyright owner,
will be not terribly reliable, and in those circumstances, we
are concerned that requiring attribution as a condition for
obtaining the limitation on remedies is likely to mean that an
emerging copyright owner will sue and basically attack the
attribution to make the individual user not subject to the
limitation on remedies. So we would hope that this could be
clarified.
There are other respects in which we would hope to be able
to clarify the plan proposed by the Copyright Office. We would
hope most of that could be done through examples and
illustrations contained in legislative history while retaining
a fairly simple statutory framework for orphan works treatment.
[The prepared statement of Mr. Adler follows:]
Prepared Statement of Allan Adler
Thank you for inviting me to appear here today on behalf of the
Association of American Publishers (``AAP'') to discuss the U.S.
Copyright Office ``Report on Orphan Works.''
As you may know, AAP is the principal national trade association of
the U.S. book publishing industry, representing some 300 member
companies and organizations that include most of the major commercial
book and journal publishers in the United States, as well as many small
and non-profit publishers, university presses and scholarly societies.
AAP members publish hardcover and paperback books and journals in every
field of human interest. In addition to publishing print materials,
many AAP members are active in the emerging market for ebooks, and also
produce computer programs, databases, Web sites and a variety of
multimedia works for use in online and other digital formats.
BACKGROUND
AAP has been on the public record urging the need to resolve the
problem of ``orphan works'' at least since the proceedings that
resulted in the issuance of the Copyright Office ``Report on Copyright
and Digital Distance Education'' in May 1999. Book publishers
understand the central issue to concern how U.S. copyright law might
permit uses of a copyrighted work that implicate the exclusive rights
of the copyright owner, when the uses are not authorized by any of the
statutory limitations or exceptions applicable to such rights and the
would-be users cannot locate the copyright owner in order to obtain
required permission.
As both users and producers of copyrighted works, book publishers
have a fundamental interest in advocating the widespread availability
and use of copyrighted works consistent with established principles of
copyright law. They also have considerable experience in seeking
necessary permissions to incorporate photographs, illustrations and
other discrete, third-party copyrighted works into the histories,
biographies and other kinds of copyrighted literary works they publish.
For these reasons, book publishers fully understand the frustration
that can arise when the desire to incorporate a third-party work as
part of a new work being prepared for publication is thwarted by a
concern over potential infringement liability based not on the
copyright owner's refusal to authorize such use of the third-party work
but on the inability of the publisher--or author--of the new work to
locate that copyright owner in order to request the permission that is
necessary to legally make the intended use.
When the Copyright Office invited public comment on ``orphan
works'' in a ``Notice of Inquiry'' published early last year, AAP
(working jointly with the Association of American University Presses
and the Software and Information Industry Association) submitted
Comments and Reply Comments that urged modest revisions in copyright
law to mitigate the risk of infringement liability, and thereby
encourage otherwise infringing uses of copyrighted works, in the
typical ``orphan works'' situation where permission for use is required
by law but cannot be obtained due to the user's inability to locate the
copyright owner. AAP and several member publishers subsequently
participated in the public roundtable discussions of ``orphan works''
that were conducted by the Copyright Office.
THE COPYRIGHT OFFICE REPORT ON ORPHAN WORKS
When the Copyright Office published its ``Report on Orphan Works''
in January of this year, AAP was gratified to learn that the Report
recommended the same basic framework that the book publishing community
had proposed for dealing with the ``orphan works'' problem. AAP had
been hopeful that a consensus would grow around that basic framework
after its review of submitted Comments and Reply Comments made clear
that numerous representatives of the library, higher education, museum
and scholarly society communities had endorsed a proposal from the
Glushko-Samuelson Intellectual Property Clinic at American University
that was strikingly similar to the AAP proposal in almost all key
aspects.
In general, AAP believes that the Copyright Office did an excellent
job of evaluating the diverse ideas that were proposed in submitted
Comments and Reply Comments regarding how the uncertain status of
``orphan works'' might be addressed so that users of such works will
not be needlessly discouraged from incorporating them in new creative
efforts or making them available to the public.
From the perspective of the book publishing community, the
Copyright Office wisely rejected a variety of proposed ``orphan works''
schemes that seemed excessively complex, discriminatory, costly or
bureaucratic, in favor of advocating a relatively simple, uniform,
flexible and self-executing way of addressing the problem. Its
minimalist approach seems calculated to require the fewest possible
changes to current U.S. copyright law, no impact on U.S. obligations
under international copyright agreements, and the least possible
bureaucratic impact on governmental entities, as well as on owners and
users of copyrighted works. By its terms, it may be characterized as a
``fine tuning'' of statutory law that would not impose any new
prerequisites for registration or enforcement of copyright, or in any
way affect the duration of copyright, the scope of copyright liability,
or the applicability of ``fair use'' or other defenses against
infringement.
The core concept of the Copyright Office recommendation, which also
constitutes the basic premise of the proposal advanced by AAP, is
fairly straightforward:
If the infringing user of a copyrighted work has first performed a
reasonably diligent but, ultimately, unsuccessful search to locate the
copyright owner to obtain permission before engaging in an infringing
use of the work, then that infringing user generally would be entitled
to have the benefit of limitations on the compensation and injunctive
remedies that the copyright owner could obtain if the owner turns up
subsequent to the commencement of such infringing use and sues on the
grounds of infringement.
Clearly, however, the Copyright Office draft legislative language,
despite or, perhaps, because of its relative brevity, is already
generating concerns regarding the potential implications of an enacted
statutory scheme for different ``orphan works'' stakeholders, including
book publishers.
For example:
Reasonably Diligent Search: AAP generally agrees with the Copyright
Office that its requirement for the user to conduct a ``good faith,
reasonably diligent search'' to locate the copyright owner, as one of
two threshold eligibility requirements to qualify for the limitations
on remedies, should be deermined on a case-by-case basis measured
against a flexible standard of reasonableness in the totality of the
circumstances. Moreover, in our view, the Copyright Office Report
contains a number of helpful explanations and examples that clarify the
kind of analysis and factors to be employed in determining whether a
particular ``search'' satisfies the statutory standard. The inclusion
of this guidance in the legislative history of the related statutory
language, combined with the prospect that private stakeholders will
develop and highlight the availability of voluntary guidelines and
ownership information resources on a sector-by-sector basis within the
communities that use and produce copyrighted works, should make it
unnecessary for Congress to provide a more detailed treatment of the
standard in statutory language, especially if the legislative history
is further developed to address other issues related to the meaning of
the standard issue.
However, with respect to the question of when it should be
appropriate for a would-be user to be eligible for the limitations on
remedies in reliance upon the results of a previous third-party search,
rather than the user's own search efforts, AAP believes further detail
in the statutory language, as well as explanations in the legislative
history, may be warranted to address three sets of issues.
First, it should be made clear that a reasonably diligent search
conducted by a would-be user's employees acting within the scope of
their employment, or by a third-party acting in an agency capacity on
behalf of the user, will qualify the user for the statutory limitations
on remedies in the same way as would such a search conducted by the
user. Enactment of the proposed ``orphan works'' scheme will create new
business opportunities in the marketplace for third parties offering
professional search services, and AAP believes the statutory language
itself should anticipate such a development.
Second, it should be made clear that any person who engages in a
related infringing use of the same work as the user who conducted a
reasonably diligent search, should be able to qualify for the
limitations on remedies based on the user's search where the related
infringing use occurs pursuant to a license from the user or the user's
licensee. For example, if the original user of the ``orphan work'' is
an author who incorporates the work into a new work pursuant to
conducting a search that meets the statutory standard, then the
publisher of the new work, as well as the publisher's distributors and
licensees, would also qualify for the limitations on remedies without
having to each conduct their own search for the copyright owner of the
original work. AAP urges that this form of ``piggybacking'' on a
previously-conducted search should be addressed in the statutory
language, with legislative history providing additional explanation and
examples to clarify the kind of ``related'' infringing uses and users
that would qualify for such reliance.
Third, if possible, the statutory language should address other
instances of potential ``piggybacking'' on previously-conducted
searches that will arise in situations where the second user of the
work is not tied to the original user by any license or other basis for
asserting a claim of legal privity, and the use of the work by the
second user is different from and unrelated to the use of the work by
the original user.
In its consideration of permissible reliance in the context of
unrelated uses, the Copyright Office has taken the view that ``the test
is whether it was reasonable under the circumstances for that second
user to do so--there should not be any per se rule preventing or
permitting one user's `piggybacking' on another's search.'' See Report,
p. 96-97. While AAP is sympathetic to the idea of applying an objective
``reasonableness'' standard in these determinations, there is a real
danger that this view of the second user's ability to use the work
under the protection of the limitations on remedies may lead such
users, as a matter of practice, to not make any independent effort to
locate the copyright owner other than to determine whether a previous
search was conducted by another user. This could have the unfortunate
effect of perpetuating the mistaken notion that ``orphan work'' is a
designation which, once applied, adheres to the work in question and
creates a status for that work that governs all of its future uses by
all users, instead of reflecting the more accurate and appropriate
notion that the designation applies to the work only in connection with
a particular use by a particular user or users.
AAP does not suggest that a subsequent unrelated user should never
be permitted to reasonably rely on the results of a previous search
conducted by another user. However, we urge that any treatment of this
issue should avoid conveying the idea that a subsequent user would
qualify for the limitations on remedies simply by reference to the
previous search efforts of another user. The statutory language and
supporting legislative history should make clear that, as a general
rule, the responsibility to conduct a reasonably diligent search for
the copyright owner prior to using an ``orphan work'' attaches to each
use of the work, rather than to each user. This will help to ensure
that a reasonable legal process established to provide for the use of
``orphan works'' without undue risks of infringement liability will not
degenerate into a means by which such works are treated, in common
practice, as though they were no longer subject to copyright
protection.
Attribution: In addition to conducting a ``good faith, reasonably
diligent search'' for the copyright owner, the Copyright Office
recommendation requires that an infringing user of an ``orphan work''
must, ``throughout the course of the infringement, provide attribution
to the author and copyright owner of the work, if possible and as
appropriate under the circumstances,'' in order to qualify for the
limitations on remedies. Insofar as U.S. copyright law contains no
general requirement for attribution when third-party works are used, it
is unclear why attribution should be required for a use under ``orphan
work'' treatment, especially since the ``orphan work'' situation will
predictably be one in which the accuracy of any attribution to the
copyright owner frequently will be inherently suspect.
In justifying its attribution requirement as a condition for
obtaining the limitations on remedies, the Copyright Office claims that
such notice will facilitate market transactions by alerting the author
and copyright owner to the use of their work; preserve the author's
ability to pursue ``moral rights''-type interests in the work; curb
abusive use of such works under the ``orphan works'' scheme; and not
impose undue burdens on the user. But, given the circumstances in which
such notice will be provided, it is likely that the provided
attribution in many instances may be more misleading than informative.
The Copyright Office explains in its Report that the purpose of the
attribution is not so much to identify the actual author or copyright
owner, but to ``make it as clear as possible to the public that the
work is the product of another author, and that the copyright is owned
by another.'' See Report, p. 110. It also urges that the attribution
requirement ``should be a flexible rule, and should not be interpreted
in a strict way to unnecessarily create another obstacle'' to an
``orphan works'' use. See Report, p. 112. But, while the inclusion of
such comments in the legislative history will be helpful to ensure
that, as the Copyright Office states, ``formalistic errors or similar
omissions in the attribution should not be cause to disqualify the user
from the orphan works category,'' AAP remains concerned that requiring
attribution as a condition for obtaining the limitations on remedies
could make a questionable attribution a litigation target for an
emergent copyright owner who may want to challenge the infringing
user's entitlement to such protection, notwithstanding the user's
satisfaction of the ``reasonably diligent search'' requirement.
Congress should consider whether, in light of these concerns, if
attribution is to be required at all pursuant to the ``reasonable under
the circumstances'' standard urged by the Copyright Office, it should
not be made a condition for obtaining the limitations on remedies.
Limitations on Remedies: Overall, AAP believes the Copyright Office
has done a good job in developing and articulating proposed
``limitations on remedies'' policies. Its handling of the availability
of ``reasonable compensation'' for the copyright owner who comes
forward subsequent to the commencement of a qualifying ``orphan work''
use seems fair and reasonable in most respects, as does its approach to
the availability of injunctive relief. However, AAP does have a few
concerns about the Copyright Office recommendations.
Limitation on Remedies--Monetary Relief: Inherent in the very
concept of ``orphan work'' treatment, as urged by AAP and recommended
by the Copyright Office, is the expectation that the issue of
``reasonable compensation'' is unlikely to arise in the vast majority
of cases. If the ``reasonably diligent search'' requirements for
obtaining limitations of remedies are implemented in good faith by
would-be users of ``orphan works,'' such users will seldom, if ever,
subsequently encounter a claim for monetary relief by the copyright
owner. Nevertheless, in those cases where a copyright owner does
subsequently surface, the point of the ``reasonable compensation''
provision is to put the owner and user, to the greatest extent
possible, in the respective positions they would have occupied in an
ordinary marketplace negotiation occurring prior to the infringing use,
where the amount paid to the owner by the user would represent what a
reasonable willing user would have paid a reasonable willing owner
based on knowledge and evidence of comparable marketplace transactions.
However, the copyright owners of certain types of works are
apparently concerned that the proposed implementation of the
limitations-on-remedies principle, which would eliminate the
availability of an award of attorney fees and costs to the emergent
copyright owner, as well as the availability of actual or statutory
damages, may not provide sufficient economic incentive for them to
pursue a claim of infringement in circumstances where the infringing
user unreasonably refuses to pay reasonable compensation to the owner.
For this reason, in the interest of fairness, AAP would support a
revision of the Copyright Office's proposed statutory language that
would give the federal courts discretion to award reasonable attorney
fees and costs to a prevailing plaintiff-owner if the court finds that
such fees and costs were incurred as the result of bad faith or other
unreasonable behavior on the part of the infringing user in dealing
with an owner's request for reasonable compensation.
In addition, even if they are not defined in statutory language,
AAP would urge Congress to make sure that the practical meaning and
application of ``reasonable compensation,'' ``direct or indirect
commercial advantage,'' and other key terms that establish the
limitations on monetary relief in the statutory scheme are fully
explained in legislative history. Among other things, the legislative
history should make clear that actions by the infringing user other
than selling copies of the infringed work may constitute ``commercial
advantage,'' and that the provision's purpose in providing a safe
harbor for infringing uses ``performed without any purpose of direct or
indirect commercial advantage'' is not to lay a foundation for the
assertion of a general ``personal use'' or ``private use'' exemption
from infringement liability but only to effectuate the limitations on
remedies for non-profit infringing uses that qualify for ``orphan
work'' treatment, regardless of whether the user is an individual or an
entity.
Limitation on Remedies--Injunctive Relief: AAP generally supports
the distinctions that are drawn in the Copyright Office proposed
statutory language regarding the availability of injunctive relief.
However, AAP believes that the attempt by the Copyright Office to use
the concept of ``derivative works'' in describing the circumstances
where injunctive relief may not be awarded to ``restrain the
infringer's continued preparation and use'' of a new work that
``recasts, transforms or adapts'' the infringed work is awkward,
confusing and inconsistent with the kind of results that the Copyright
Office seeks to effectuate as described in its Report. For example,
although the discussion in the body of the Report clearly contemplates
that this limitation shall apply where the infringed work is a photo or
manuscript that the infringing user incorporates into a new literary
work, such a use of the infringed work does not constitute the creation
of a ``derivative work'' based on that infringed work. Moreover, it is
questionable as to whether the concept of ``incorporation'' of the
infringed work into a new work is in any meaningful way captured by the
terms in the draft statutory language that characterize how the use of
the infringed work in connection with the new work affects the
infringed work (i.e., it is not clear that such use ``recasts,
transforms or adapts'' the infringed work).
AAP believes that these issues are more drafting problems than
disagreements over the concept of limiting injunctive relief, and
believes they can be addressed in a manner that is consistent with the
Copyright Office recommendation in this area. However, there is another
issue regarding the limitation on injunctive relief that was not
addressed in the Copyright Office report but warrants your
consideration.
AAP believes that a serious problem of unfairness to copyright
owners and, potentially, for U.S. adherence to its international treaty
obligations will arise if State entities are permitted to claim the
proposed ``limitation of remedies'' protection for their attempts to
engage in ``orphan works'' use.
As the result of a series of federal court decisions on the
sovereign immunity of States under the Eleventh Amendment, State
entities cannot be liable for monetary damages resulting from their
acts of copyright infringement. They may, however, be subject to
injunctions prohibiting further infringing use of copyrighted works.
Since the proposed ``orphan work'' scheme would, in some circumstances,
allow the copyright owner of the infringed work to obtain monetary
damages (in terms of court-determined ``reasonable compensation'') but
not injunctions, letting State entities avail themselves of the
``orphan work'' scheme would mean that a copyright owner who comes
forward to confront a State entity that is an infringing user would be
unable to get either an injunction (under the ``orphan works'' scheme)
or, if the State entity balks at providing ``reasonable compensation,''
a monetary award (under the existing case law) and, thus, would be left
with no recourse. This would be a patently unfair result, which almost
certainly would violate U.S. obligations under the TRIPs Agreement,
among others. Accordingly, in order to avoid this situation, the
``orphan work'' scheme should not be available to limit injunctive
relief against a State entity unless the State is willing to waive its
sovereign immunity in connection with its entities' ``orphan works''
uses.
Sunset: The Copyright Office recommendation would ``sunset'' the
``orphan works'' scheme 10 years after the date of enactment. This
makes no sense to AAP because the impact of such a ``sunset''
requirement is likely to be extremely disruptive to infringing users
who have relied on the protection of the statutory ``orphan works''
scheme for ongoing infringing uses of infringed works. If the goal of
the ``sunset'' requirement is to permit Congress to evaluate the way in
which the ``orphan works'' scheme has operated, it makes more sense to
impose a ``Report to Congress'' requirement whereby the Copyright
Office can conduct its evaluation and report its findings to Congress
without creating problems for infringing users in their reliance on
``orphan works'' treatment of their infringements.
Effective Date: Although the issue of an effective date for
implementation of the statutory ``orphan works'' scheme was not
addressed by the Copyright Office, AAP believes the effective date
should be the date of enactment. However, we understand that some
stakeholders may want to delay the effective date for implementation in
order to provide time for their communities to become familiar with the
intended operation of the enacted scheme, and to develop the voluntary
guidelines and owner information resources that will help facilitate a
fair and efficient implementation of ``orphan works'' treatment.
Accordingly, AAP would not be opposed to a delayed effective date of
one year after the date of enactment.
Conclusion
AAP is aware of problems that photographers, museums and certain
other users and producers of copyrighted works claim the Copyright
Office proposal will cause for their constituencies. Some of these
stakeholder concerns may require only a tweaking of the Copyright
Office draft legislative language so that it more accurately reflects
and properly implements certain policy and operational objectives that
are specifically discussed in the body of the Report; others, however,
may require dealing with more organic complaints regarding the overall
Copyright Office proposal and its alleged inadequacies from the
perspective of these and other communities of users or producers of
copyrighted works.
Book publishers are ready, willing and able to work with Congress,
the Copyright Office and all interested stakeholders to refine the
Copyright Office draft legislative language and implement its
underlying core concept for addressing the ``orphan works'' problem. In
the interest of avoiding the pitfalls of attempting to craft
unnecessarily lengthy and detailed statutory language, AAP urges that
efforts to resolve outstanding issues should focus, wherever
appropriate and to the greatest extent possible, on the creation of a
negotiated consensus legislative history that incorporates specific
examples and illustrations to clarify the purpose and intended
operation of the ``orphan works'' statutory scheme.
Once again, thank you for this opportunity to present AAP's views
on the Copyright Office ``Report on Orphan Works.''
Mr. Smith. Thank you, Mr. Adler.
Mr. Trust.
TESTIMONY OF DAVID TRUST, CHIEF EXECUTIVE OFFICER, PROFESSIONAL
PHOTOGRAPHERS OF AMERICA, INC.
Mr. Trust. Thank you, Mr. Chairman.
Mr. Chairman and Ranking Member Berman and Members of the
Committee, we thank you for the opportunity to testify
concerning the Copyright's report on orphan works. As you
mentioned, I'm here representing Professional Photographers of
America. We have also received endorsement or support from the
American Society of Media Photographers, our good friends
there. The Picture Archives Council of America, and the
American Society of Picture Professionals have each contacted
us separately to endorse the statement that we are about to
make.
The 130,000 professional photographers in the United States
are quite literally the copyright owner next door, earning on
average less than $35,000 a year. They are middle class
American entrepreneurs found in every congressional district.
While they are among the smallest copyright-owning businesses,
photographers can easily create more than 20,000 works a year,
each one having a relatively modest dollar value. They are the
group most likely to have their works fall into the orphan
category.
Now, some would have you believe that all orphan works are
willfully abandoned, that photographers don't value those
works. It indicates a lack of understanding about the
photographic industry. The truth is that an artist who marks
his work and takes every reasonable step to make herself known
can still have her images labeled as orphan. In the commercial
context, this occurs at alarming frequency when editorial or
advertising images are not properly credited or have metatags
removed before publication to the internet.
For the retail photographer, the threat comes from both
unauthorized copies that do not contain attribution as well as
from clients who make the photographer's contact information
inaccessible by doing perfectly innocent things like gluing
images into albums. Quite contrary to the Copyright Office's
statement, 90 percent of our members mark their work. They are
available.
Now, because of their position in the marketplace and the
ease with which their work falls into orphan status, a change
in the law that might only cause a ripple for a large
corporation is enough to capsize the person earning power of
photographers and other visual artists. Unfortunately, it is
our feeling that the Copyright Office proposal on orphan works
while well-intended effectively tosses independent visual
artists over the side of the copyright boat. It attempts to
correct a bad situation by creating another bad situation.
Of particular concern with the proposal is the limitation
on and in some cases the elimination of monetary damages, the
denial of any monetary relief if the infringer's use of the
orphan work is not for commercial advantage and if the
infringer stops the use when notified by the rightful owner.
The proposal fails to recognize that for the vast majority of
professional photographers, noncommercial personal use copying
undermines the entire market for their work. In addition, most
photography infringements have long been completed by the time
they are discovered. So requiring that an infringer cease the
infringement is at best meaningless.
If enacted, this provision would create the perverse result
of a copyright owner proving infringement but receiving no
monetary award at all, no compensation, no legal fees, no
costs, no reasonable royalty, just a congratulatory handshake
and a bill from her attorney. We find this to be patently
unfair.
Now, we do understand that this elimination of damages for
certain orphan infringements was included to address the
concerns of nonprofit museums, libraries, and archives. We want
to be part of finding a solution. However, we implore the
Committee to use a scalpel rather than a chain saw when carving
out an exemption for such uses. The standard in the proposal is
simply too broad. Even in cases where reasonable royalty is
called for, the Copyright Office proposal will not work in the
real world. For almost all visual artists, and orphan works
infringement will never generate enough in damages to make a
suit economically viable or even to make a threat of such a
lawsuit credible. There is no incentive for individuals of ill
will not to claim every work is an orphan work.
Some creators have suggested making attorney fees available
in order to solve this problem. While we believe this to be a
reasonable solution, our friends in the user community don't.
This apparent impasse points to a larger problem. The fact is
individual copyright owners, whether of regular or orphan
works, find it economically impossible to gain any sort of
meaningful relief through the courts. Without access to
statutory damages and attorney fees, enforcing rights in
Federal District Court simply is not a real option.
In order to solve the damages issue for orphan works and to
provide relief for individual copyright owners, we propose the
creation of an optional administrative proceeding to decide low
value copyright cases, a small claims-type procedure. Elements
of our proposal were included in our response to the Copyright
Office's Notice of Enquiry, and we've included proposed
statutory language in our written testimony as well. We believe
that orphan works and the accessibility of damages are
inseparably linked. How could they not be? Without a mechanism
for encouraging payment by infringers, the orphan works
proposal is simply a way to skirt a creator's rights.
Concluding, we are eager to see the problem of orphan works
solved. We recognize that it is a problem. However, we must
ensure that our legislative cure for the problem is free of
side effects that will do irreparable harm to an entire class
of copyright owners. We urge you to consider the devastating
affect this legislation would have in its present form. Again,
let us not try to solve a bad situation by creating another bad
situation.
Mr. Chairman and Members of the Committee, again, we thank
you for the opportunity to bring the problems of independent
copyright owners to your attention.
[The prepared statement of Mr. Trust follows:]
Prepared Statement of David P. Trust
Mr. Chairman, Ranking Member Berman and members of the committee,
thank you for the opportunity to testify regarding the Copyright
Office's proposal on orphan works.
As the CEO of Professional Photographers of America, I am here
today representing 33,000 professional photographers. This includes PPA
and it affiliates, as well as three other organizations that have
endorsed our testimony: the International Association of Professional
Event Photographers, Commercial Photographers International and the
Student Photographic Society.
According to the latest available data, professional photography is
a nearly $18 billion a year industry. While the industry as a whole is
a robust contributor to the economy, the individual businesses that
make up the industry are fragile. The 129,000 individual professional
photographers in the United States are quite literally the copyright
owner next door. They work an average of 45 hours a week and earn less
than $35,000 a year. As middle-class Americans and entrepreneurs,
photographers typically work in studios having less than three full-
time employees and they can be found in every Congressional district.
While they are among the smallest copyright-owning businesses,
photographers also produce a higher volume of works than other artists.
While almost all other copyright industries are based on the mass
distribution of a limited number of relatively lucrative copyrights, a
photographer will create more than 20,000 works a year with each
copyrighted image having a relatively modest dollar value.
Because of these business conditions, we believe photographers are
also the group most likely to have their works fall into the orphan
category. While some groups would have you believe that all orphan
works are willfully abandoned, the truth is that a photographer or
other visual artist who marks his work and takes every reasonable step
to make himself known to the world can still have his images labeled as
orphans. In the commercial context, this occurs with alarming frequency
when images published in editorial or advertising spreads are not
properly credited. For the retail photographer, the threat comes from
both unauthorized copies that do not contain attribution, as well as
clients who make the photographer's contact information inaccessible by
doing perfectly innocent things like gluing images into albums.
This susceptibility to having their works labeled as orphans and
the business model dictated by the marketplace, means that a change in
the law that might only cause a ripple for a large corporate copyright
owner is enough to capsize the earning power of photographers and other
independent visual artists.
Unfortunately, we believe the Copyright Office proposal on orphan
works, while certainly well intentioned, effectively tosses independent
visual artists over the side of the copyright boat.
The fact remains, and the Copyright Office acknowledges in its
report, that individual copyright owners often find it impossible to
gain any sort of meaningful relief under the current copyright statute.
The orphan works proposal makes a bad situation worse by exponentially
increasing the risks for individual copyright owners who are forced to
pursue an infringer in court.
That being said, PPA does not oppose the creation of a properly
constructed orphan works regime. Such a system would still limit
damages against infringers who have made a reasonable, good-faith
search for the current owner of a work and have failed to locate them.
However, it would also recognize the value of an artist's work and
provide a mechanism that makes it economically feasible for artists to
enforce their rights against infringers who refuse to pay a reasonable
royalty.
Before providing PPA's proposal for such a system, we offer our
comments and suggestions on the original proposal by the Copyright
Office.
SECTION 514(A): SEARCH AND ATTRIBUTION REQUIREMENTS
We believe the Copyright Office's requirement of a good faith,
reasonably diligent search combined and attribution when possible,
provides a solid framework for determining if a use qualifies as an
orphan work.
However, we do have two reservations regarding this section of the
proposal. The first comes not from the statute itself, but from the
Copyright Office's unwillingness to lead groups of creators and users
to develop guidelines to assist courts in determining what constitutes
a ``good faith, reasonably diligent search'' and when attribution is
appropriate.
We agree wholeheartedly with the assessment that a statutory
definition of a good faith, diligent search would be too rigid;
however, the Copyright Office's notion of allowing various user and
artists' groups to develop their own criteria independent of another
provides too much opportunity for confusion and chaos. By having
multiple ``reasonable'' search standards within the same industry, the
Copyright Office proposal increases the probability of conflicting
judicial decisions. This lack of guidance will make it more difficult
for people of good faith to know when their search is sufficient, and
allows those with less than noble intentions an opportunity to skirt
the law.
While the development of search guidelines under the oversight of
the Copyright Office is our preference, PPA is also willing to consider
the inclusion of very concrete examples of what does and does not
constitute a reasonable search in the legislative history of any orphan
works bill that is passed. While such legislative history would not be
all-inclusive, it would provide at least provide some minimal guidance
to judges and yield greater predictability in their decisions.
Our second concern deals with the language of the subsection on
attribution. We believe the requirement of attribution when ``possible
and as appropriate'' serves the goal of making it easier for the
rightful owner of an orphan work to discover its use. However, there
have been some concerns regarding the possibility that a user would
accidentally mislabel a work. The concern is that subsequent viewers of
the work might be misled as to the true identity of the work's author.
In order to mitigate this problem, PPA proposes that in addition to
requiring attribution when appropriate, the statutory language should
also require that user indicate that the work is being used as an
orphan work. This will provide a clear signal that any attribution of
ownership is provisional and should not necessarily be relied upon by
subsequent users.
SECTION 514(B)(1): LIMITATIONS ON REMEDIES: MONETARY RELIEF
The limitation on remedies section is where we feel the Copyright
Office proposal falls apart. While we firmly believe that some
reduction in available damages is both necessary and desirable in an
orphan works setting, those damages must also be accessible.
The language of the proposed statute puts the burden on the
copyright owner to prove their work had fair-market value and creates a
rapid race to the bottom when it comes to compensation for artists.
Under this proposal, the less an infringer pays for other photography,
the more advantageous their position when defending against an
infringement claim.
The entire approach to this issue turns the traditional assessment
of copyright damages on its head. Rather than look at the harm done to
the copyright owner, this proposal attempts to impose the terms of a
fictional transaction that looks primarily at what a reasonable buyer
would have been willing to pay. In addition to giving a ``buyer's
veto'' to an infringer, this approach completely ignores the fact that
different artists use radically different business models. For
instance, large corporate owners that license millions of royalty-free
images a year, semi-professionals who are just happy to be published
somewhere and independent professionals who normally sell only limited
usage rights all suffer differing degrees of harm when their work is
infringed. Unfortunately, the proposal at hand forces all of these
copyright owners into a single mold, without regard for their
individual circumstances.
In addition to ignoring the damage to the copyright owner, limiting
compensation to a ``reasonable royalty'' creates a system in which it
is impossible for independent artists to enforce their rights. While a
``reasonable royalty'' seems perfectly rational in theory, the reality
is that when you are paying hundreds of dollars an hour in legal fees,
the damages in this proposal become worthless. For almost all visual
artists, an orphan works infringement will never generate enough in
damages to make a suit economically viable or even to make the threat
of such a lawsuit credible. As such, the Copyright Office proposal
provides no incentive for an infringer to voluntarily pay for their use
of an orphan work. We believe that any orphan works legislation must
provide for compensation that is accessible in the event that an
infringer refuses a reasonable request for payment.
If the ``reasonable royalty'' standard is ultimately adopted, PPA
recommends that in addition to providing some cost-effective mechanism
for collecting damages, that the burden of proving damages be shifted
so that the only evidence the artist needs to come forward with is the
amount the artist, or an artist who is similarly situated, would
normally charge for such a use. The burden would then be on the
infringer to show that the claimed royalty is not a reasonable one.
While the reasonable royalty approach to damages is problematic, it
pales in comparison to the damage that the elimination of all monetary
relief for uses without any purpose of direct or indirect commercial
advantage.
This provision ignores the fact that for many photographers
eliminating monetary relief for non-commercial uses destroys the
economic value of their works. That is to say, for the vast majority of
professional photographers, allowing non-commercial personal use
copying of purported orphan works would ravage the entire market for
their work. In addition, most photography infringements have long been
completed by the time they are discovered, so requiring that an
infringer cease the infringement is, at best, meaningless.
This provision is particularly harmful in that it traps artists who
make every reasonable effort to make themselves known to the world, but
who fall victim to a third party who fails to properly identify the
artist when distributing the work.
Two brief examples:
Scenario A: A wedding photographer provides images to
a client and properly marks the work. Later, the wedding client
places the images in an album using adhesives that make viewing
the copyright information impossible. A few years pass, and the
memory of the client becomes clouded as to the exact identity
of their photographer. At that point, the child of the client
decides to distribute copies of the wedding album to the bride
and grooms' descendants--finding it impossible to identify the
photographer from the prints themselves or from his parents--he
proceeds with his plan under the orphan works exception. The
photographer discovers the distribution of the albums and
attempts to seek redress for the infringement.
Scenario B: A photographer's work is used in an
advertising campaign. While the photographer leaves identifying
metadata in the digital file and marks any prints that leave
her studio, the standard in the advertising world is to not
provide a credit line when an agency publishes the work. A
subsequent user sees the image and wants to use it. Finding no
credit line identifying the photographer, this subsequent user
contacts the company whose product was advertised and perhaps
even the ad agency, but no one who currently works there can
recall who created the image or they simply refuse to take the
time to talk to him. The subsequent user then posts the image
his personal web page on an online community where the image is
copied thousands of times over.
Under the proposed statute, neither of these photographers has a
financial remedy for these infringements, even though they took
reasonable steps to make themselves known or knowable to all subsequent
users. In short, this provision of the statute creates not just a
``trap for the unwary,'' but for the savvy rights holder as well.
In its report, the Copyright Office alludes to the fact that this
particular provision is designed to reduce the uncertainty non-profit
libraries, museums and archives face when they display and reproduce
massive collections of photographs legitimately believed to be
orphaned. We are sympathetic to these concerns, but suggest that the
legislative equivalent of a scalpel, rather than a chainsaw, be used to
carve out a damages exception to address their concerns.
SECTION 514(B)(2): LIMITATIONS ON REMEDIES, INJUNCTIVE RELIEF
In contrast to the section on monetary relief, we believe that the
limitation on injunctive relief is a reasonable one. We commend the
Copyright Office for taking economic considerations into account and
striking a fair balance between the rights of artists and the
investment a subsequent user may make in creating derivatives from an
orphaned work.
SECTION 512(C) AFFECT ON RIGHTS, LIMITATIONS AND DEFENSES
While we believe that this verbiage may simply be excess, we
understand the desire of certain parties to make this point as clear as
possible and we see no compelling reason to eliminate it.
SECTION 514(D)--THE SUNSET PROVISION
Based on the public comments of organizations on both sides of the
orphan works issue, it appears that there is broad agreement that
whatever legislation is passed should not have a 10-year sunset
provision attached to it.
Rather than having all of the involved parties repeat their efforts
in 2016, PPA supports language that would require the Copyright Office
to report to the Congress on the effect of this legislation five years
after passage. While it is our sincere hope that we will take the
necessary time to develop legislative language that gets it right the
first time, such a provision would afford a good opportunity to make
any necessary adjustments to the legislation.
ADDITIONAL RECOMMENDATIONS FOR ORPHAN WORKS LEGISLATION
There are two items not contained in the Copyright Office proposal
that we believe must be included in any legislation designed to address
the issue of orphan works.
The first item is a window of time between any passage of the Act
and its effective date. Such an interval would allow time for owner and
user groups to work together and develop reasonable search guidelines.
It would also provide an opportunity to for organizations to set-up,
promote and populate voluntary artist registries. As such, we recommend
that no orphan works legislation become effective until two years after
the date of passage.
Our other recommendation is mentioned in the Copyright Office
report on orphan works. It is our sincere belief that any orphan works
legislation must contain provisions that make it possible for an
independent artist to obtain the relief promised by the statute.
Anything less would do significant harm to photographers, illustrators
and other visual artists. Simply put, filing a federal copyright suit
is simply not an option in any area where attorney fees and statutory
damages are unavailable. Indeed, many photographers have discovered
that under the current law the actual damages from almost all
photographic infringements are too low to make a suit economically
viable or even to make the threat of a suit credible. While this
problem is currently limited to high-volume creators who find it
practically impossible to register their work with the U.S. Copyright
Office, the creation of an orphan works regime has the potential to put
any copyright owner in this unenviable position.
Some creators have suggested making attorney fees available in
order to solve this problem. While we believe this to be a reasonable
solution, our friends in the user community are quick to point out that
the possibility of paying a large award of attorney fees has the net
effect of making orphan works unusable.
In order to solve this impasse, Professional Photographers of
America proposes the creation of an administrative or other proceeding
to decide low-value copyright cases; or, as some have called it a
``small claims copyright court.''
THE COURT OF SMALL COPYRIGHT CLAIMS
Elements of our proposal for the administrative adjudication of
small copyright claims were included in our initial response to the
Copyright Office's notice of inquiry. While the Copyright Office
mentioned that this area was deserving of additional study in the
orphan works report, it deemed the idea to be outside the scope of its
assigned task. While that view may be technically correct, we believe
that without some mechanism for making ``reasonable royalty'' damages
accessible to artists, any proposed legislation on orphan works is
simply unworkable.
Regardless of the actual mechanism employed, we envision a ``court
of small copyright claims'' that would offer the following features:
If the actual damages claimed by a copyright
plaintiff are below a certain dollar limit, he or she may elect
to submit the claim to the court of copyright claims, rather
than federal district court.
By submitting the dispute to this type of copyright
proceeding, the plaintiff will not be eligible for statutory
damages.
Damage awards in this proceeding would be tied
directly to the value of the infringement. In order to produce
a sufficient deterrent to infringement, and to avoid the
creation of a de facto compulsory licensing scheme, damages
should be set at a small multiple of the actual damages, with a
higher damages multiplier applied when infringement is found to
be willful.
A defendant in this administrative proceeding who
successfully proves an orphan works or innocent infringement
defense would only be liable for a reasonable royalty as
determined by the tribunal.
All other defenses available under Title 17 would
apply.
If the tribunal determines that an infringement claim
was brought frivolously, or if the defendant offered no non-
frivolous defense, the tribunal may award costs and fees to the
opposing party.
Copyright registration shall have no effect on the
availability of damages available in this proceeding. However,
in order to preserve and further the mission of the Copyright
Office and Library of Congress a work must be registered prior
to submitting a claim to this proceeding.
We should also point out that such a copyright small claims court
could also be useful in deciding disputes related to counter-
notifications issued under 17 U.S.C. Sec. 512(g). This will allow both
sides to get an official determination as to whether online access to a
particular work must be disabled in a timely fashion.
CONCLUSION
Professional Photographers of America is eager to see a solution to
the problem of orphan works. However, any legislative prescription
aimed at curing this particular ill should be free of damaging side
effects that will do irreparable harm to an entire class of copyright
owners. As such, we ask the committee to take great care and
deliberation before moving forward.
We once again emphasize the fact that without an alternative to
federal district court, the damages orphan works proposal will be
impossible to obtain. As such, they provide no incentive to an
infringer to honor a reasonable request for payment. This factor alone
makes the Copyright Office's original orphan works proposal a vehicle
for widespread harm to, and in some cases outright abuse of, the
copyright interests of individual owners. We have attached sample
legislative language detailing a mechanism that would make it possible
to both limit damages against infringers of orphan works, while still
making those damages accessible to a legitimate copyright owner.
As we move forward, it is our hope that we can work with all
parties to develop a solution that encourages the use of truly orphaned
works and provides adequate relief to copyright owners when they
surface.
Mr. Chairman, Ranking Member Berman and members of the committee,
we again thank you for the opportunity to bring the problems of
independent copyright owners to your attention.
ATTACHMENT
Mr. Smith. Thank you, Mr. Trust.
Ms. Pallante.
TESTIMONY OF MARIA PALLANTE, ASSOCIATE GENERAL COUNSEL AND
DIRECTOR OF LICENSING, THE SOLOMON R. GUGGENHEIM FOUNDATION
Ms. Pallante. Thank you, Chairman Smith, Members of the
Subcommittee. I appreciate the invitation to be here today.
I would like to state for the record that my testimony has
been endorsed by 18 cultural and educational organizations
representing a combined 144,000 museums, libraries,
universities, and archives and more than 135,000 independent
historians, educators, artists, and scholars who want to make
productive use of orphan works. It is our view that the orphan
works amendment has one ultimate goal. It should help to make
cultural heritage more broadly available to the public;
therefore, it must give users the confidence necessary to take
works outs of obscurity.
Scholars, museums, libraries, and universities struggle
every day to balance the rights of lost copyright holders on
the one hand with the mission of making letters, manuscripts,
and photographs available for educational purposes on the other
hand. At times, we are all also custodians, that is we have
millions of working works in our institutional collections and
we care for these at our own expense to the ultimate benefit of
the public. For us, the importance of an orphan works solution
cannot be stressed enough.
We would like to recognize the Copyright Office for its
leadership on this topic over the past year. Their report on
orphan works is a tremendous contribution. On balance, we found
it to be accurate, insightful, and comprehensive. In fact, we
and a majority of parties who commented during the office
proceedings completely agree with many of its findings. Such
consensus is remarkable in an undertaking as innovative as an
orphan works amendment.
For example, we agree with others that actual and statutory
damages should be unavailable to a copyright claimant in an
orphan works context. We agree that with respect to searching
for a copyright owner, the standards of due diligence must be
general and flexible. We agree that in order to be meaningful,
orphan works must include unpublished works and works of
foreign origin. And we agree that there should be some
additional protection available to those of us who use orphan
works for non-commercial purposes. These are complex points,
but in our view, the Copyright Office got them right.
This said, we do have a few concerns with the proposed
statutory language. I should note, however, that we have spoken
with Jule in the Copyright Office as well as others in the
copyright industry, including Allan and the publishers, and we
are confidence that these concerns can be addressed.
First, we believe the statutory language should define
reasonable compensation. We like and suggest the definition
that is quoted in the report itself. We also believe there must
be clear and thoughtful legislative history with detailed
examples of compensation, including illustrations where the
user is a nonprofit library, museum, archive, university, small
publisher, or independent scholar and the use is typically
free.
Second, to qualify for this safe harbor provision, the
copyright office suggests that a use must be made, quote,
without any purpose of direct or direct commercial advantage,
unquote. This phrase requires clarification. For example, as
nonprofit institutions, we produce books in accordance with our
educational missions, but we do sell them for the same reason
we charge admissions to exhibitions, to cover the cost of
production.
We need confirmation that the creation and sale of mission-
related publications are uses undertaken without any purpose of
direct or indirect commercial advantage. Likewise, though
independent scholars may sometimes earn royalties, this does
not make their activities commercial. On a related point with
respect to the safe harbor, we agree that users should cease
activity expeditiously if an owner emerges, but we hope the
term can be clarified to allow users some time to actually
verify the claims.
Third, because orphan works will often, perhaps most often,
be incorporated into other works of authorship, we would like
to see language that more clearly defines the circumstances
under which a user may avoid an injunction in cases of books,
films, art works, and web sites.
Fourth, we agree that users should credit authors when
known but disagree that users should credit copyright owners.
Crediting authors is a question of scholarship. The latter,
crediting copyright owners, is pointing to err in the orphan
context. We would hate to see additional confusion in the
marketplace.
Fifth and last, we oppose a sunset provision, but would
like to see a follow-up study by the Copyright Office within 7
years from the passage of legislation.
In closing, we recognize that orphan works legislation is a
complicated undertaking which requires consideration of diverse
constituencies. We appreciate the concerns of photographers in
particular. Photography is important to the cultural sector. In
past days, we have had conversations with several
representatives of this important community, including David,
in an effort to better understand their issues. We are quite
confident that Congress can achieve a solution that is fair to
all.
Thank you.
[The prepared statement of Ms. Pallante follows:]
Prepared Statement of Maria Pallante
Mr. Smith. Thank you, Ms. Pallante.
Let me say at the outset before I direct my questions to a
particular witness that it is my impression there is, with the
possible exception of the photographers, general agreement on
say, 80 to 90 percent of the statutory language that has been
offered by the Copyright Office. And we'll come back to the
photographers in a minute, but I saw you nod your head, Ms.
Pallante, and assume that's true, Mr. Adler, based upon your
testimony as well.
Mr. Sigall, I just want to thank you for the work that the
Copyright Office has done. Believe me, to achieve agreement on
80 to 90 percent is a high level of accomplishment, indeed. So
we appreciate all the effort that you put into it. In just a
minute, I'm going to give you Mr. Adler a chance to respond to
some of the concerns that have been mentioned, but on the way
there, Ms. Pallante, I had a first question for you.
Ms. Pallante. Yes.
Mr. Smith. There were a number of examples that you gave
where you felt that the statutory language could be improved if
language was more clearly defined. One example you gave was
reasonable compensation. I'm not sure you can define reasonable
compensation. We'll see if they can come up with it. I think
there's too many possible objects involved. I think usually we
use the standard that's reasonable at that particular time
involving that particular, as I say, object, and I don't know
that you're going to be able to more clearly define that.
However, just the fact that you think that that's
achievable and the language can be defined in such a way that
it would be helpful to your membership, I think is good. Also,
as you know, there's already a fairly large carve-out for a
memberships such as yours, and they've gone a long ways, I
think, to try to accommodate some of your concerns. But I'm
pleased to hear how optimistic you are about taking those last
final steps.
Mr. Trust, initially I was going to ask you to repeat all
your concerns, but you did such a good job in your testimony, I
think I'm going to skip directly to the response and give you a
chance to respond to the suggestions that Mr. Sigall and Mr.
Adler might make.
Gentlemen, I wanted to ask you if you would respond
directly to the concern by the photographers. I do think we're
going to get there in the end, and I know that there's good
faith negotiations that are ongoing and I hope you all will be
able to conclude those negotiations in the next week or two,
and I'm sure you will be able to; but how do you propose
addressing the concerns of the photographers, if you intend to
address them at all, and as I understand it, there are some
areas for compromise, and would you fairly quickly go into
those areas too?
Mr. Sigall, we'll start with you and then go to Mr. Adler.
Mr. Sigall. Thank you, Mr. Chairman, and thank you for the
kind words. We are very pleased to have participated in this
effort.
I think with respect, a part of our testimony was designed
to make sure we understand the different areas where the
photographers claims are relevant. Some of it is relevant to
the orphan works proposal and some of it is relevant to larger
questions about enforcement of copyright generally. With
respect to our proposal and the proposal to solve the orphan
works problem, I think we've heard of two suggestions that
might alleviate the problem.
The first would be some exception to the limitation on
remedies for the situation where the user refuses to negotiate
with the resurfacing owner in good faith. There is a question
of how you define that and how you get that language right, but
in that situation, where the owner resurfaces and asks for
reasonable compensation and there is no good faith negotiation,
then perhaps at that point statutory damages and attorneys fees
might become available for photographers who have timely
registered their copyrights before the infringement occurred.
So the current status quo rules would still apply.
The caveat on that kind of solution is that you don't want
to recreate the orphan works problem again by creating
uncertainty in the mind of the user that they might be hit with
that liability, but I think we can come to some language that
avoids that.
The second suggestion, I think which was mentioned in Mr.
Trust's testimony, was the one about delaying the effective
date of any legislation for a short period of time, maybe a
year, which I think would help both in terms of helping
individual creators start developing systems so that they can
be found and located and also help develop some of the criteria
for reasonably diligent search for both users and creators to
understand what the scope of the orphan works designation would
be.
I think those are two suggestions to our proposal that
would help address the problems.
Mr. Smith. Thank you, Mr. Sigall.
Mr. Adler, do you have anything to add to that?
Mr. Adler. I would only say that I think the book
publishing industry would support the recommendations made by
Jule just now with respect to both attorneys fees and perhaps a
delayed implementation date, effective date for legislation. We
are somewhat in conflict over this issue because, of course,
photographs are precisely the kind of third-party copyrighted
work that book publishers exhaust a great deal of effort and
resources in having to license. I think that probably Mr. Trust
would agree that book publishers generally are not a source of
situations where these works are being published generally
without attribution. For the most part, the works are licensed
and they are attributed.
So I think we would have to think through what additional
types of specific remedies we might be able to afford to them
that would not have an adverse impact on the problem that
already exists for book publishers with respect to photos that
are orphan works.
Mr. Smith. Okay. Mr. Trust, the two remedies that you heard
Mr. Sigall just mention, how do they sound to you?
Mr. Trust. Well, I think the exception to the remedies is
certainly a step in the right direction, and we're grateful for
that. We would like to pursue that, obviously, but please
understand it still requires the filing of a lawsuit in Federal
Court.
Mr. Smith. Which, as you pointed out, not everybody can
afford and especially if the royalty is so small it's hard to
justify the cost?
Mr. Trust. Yes, sir. If you're a $30,000 a year
photographer, $35,000 a year photographer, $300 is a lot of
money.
Mr. Smith. Right.
Mr. Trust. $300 determines whether or not your daughter
gets to play soccer, your son gets to play baseball.
Mr. Smith. What about a small claims court?
Mr. Trust. Well, we're very much in favor of the idea of a
small claims option for copyright issues. We think that that
solves an awful lot of the problem. As far as the waiting
period, that is wait a year, that is in our testimony. We're in
favor of that.
Mr. Smith. Okay. Thank you, Mr. Trust.
I just want to say that we have been joined by the
gentleman from South Carolina, Mr. Inglis, but I turned around
and that individual has been replaced by the gentleman from
California who has already been recognized today. I appreciate
his attendance, but I look forward to others returning as well.
The gentle woman from California, Ms. Lofgren, is
recognized for her questions.
Ms. Lofgren. Thank you, Mr. Chairman.
I think we've actually made some progress here and I think
that's very--it is not exactly what I thought it would be, but
I think it is important and probably workable, although I think
we have a few more things yet to do.
One of the questions I had, it's easier conceptually to
think about this in the context of nonprofit uses, frankly,
than for profit uses, and yet the issue of orphan works isn't
just about nonprofit use. It's about the culture being able to
take advantage of material that's essentially been abandoned,
and that is important for all of us, and sometimes that use
will be a commercial use.
I'm wondering, Mr. Adler, about your comment about
reliance, if I could just explore that. I was trying to think
of a circumstance where you did a diligent search, couldn't
find the copyright owner, and so the publisher and the printer
and the like rely on this, and then later the screen writer
relies on it and is not in the chain that you've described. Why
shouldn't the screen writer be able to rely on that?
Mr. Adler. Well, Ms. Lofgren, I wouldn't disagree with you.
I think that what we've asked for is that, in particular
legislative history more so than in the statutory language,
that we try to provide examples of these kinds of successive
chains of interest. You can't call them chains of title because
there's really no ownership interest that passes from hand to
hand, but there clearly are certain types of business models
where one party with full expectation of the other is going to
be relying on, for example, the fact that when an author
transfers copyrights to a publisher, they will provide in the
contract a warranty with respect to the fact that they're not
infringing somebody else's copyright, and the publisher will
rely on that.
Now, in contracts, there will be indemnification agreements
that deal with the situations where those warranties fail. We
don't have the ability to, I think, impose that on this kind of
a process, but therefore I think it would be helpful if we
could define the kinds of chains of relationships that should
qualify for reliance upon a previously done reasonably diligent
search in order to qualify for a subsequent limitation on
remedies.
Ms. Lofgren. I'm also thinking that when you get to
reasonable damages, wouldn't it be important also in that to
identify the risks taken by the individual who exploited what
they thought was an orphan work? For example, I think Justice
Breyer--I don't know if he was right or not--identified that 95
percent of what is protected is not being exploited and a lot
has just been abandoned. Some of that is film, and to restore
film is very expensive, and you want to be sure before you sink
that kind of money into it that you're not going to end up
holding the bag for it financially.
So I think we need to make clear that reliance, good faith
reliance, after following the rules of trying to determine
ownership is going to be protected in the financial area. Does
anybody disagree with that?
The other question I have is really whether the--I
understand the language is purposely general, and I value that.
On the other hand, having watched the patent courts go crazy
with conjunctive relief, I'm a little bit nervous about things
that aren't actually in statute and whether we can rely safely
on examples and legislative history, because the one thing we
do want to have is some certainty in the system. That's one of
the values of a registration proposal that this would replace
in my bill, and I don't have a problem with that because there
are other values with this; but if we don't have certainty in
the system so that people know if they do one, two, three, and
four, that they're safe, then we really won't have achieved our
goal.
Is there a thought about how we could have that certainty
here?
Mr. Sigall. That was an issue that came up a lot in the
discussions at the roundtables and during our study, most on
the question of what exactly does a reasonable search entail;
and the conclusions, especially from the user-based community,
was that it's better to take what--uncertainly is also
sometimes called inflexibility of having--because the
situations of use and the types of works being used is so
varied and can happen in different situations, you need that.
What most people also agreed to do, though, was to start
building voluntary criteria as to what a reasonable due
diligent search is on a sector-by-sector basis for the film
industry or for the photography industry.
Ms. Lofgren. That makes sense.
Mr. Sigall. And you can develop those. At some point, you
can formalize those in some way to make clear. The question of
exactly how to do that is one that's still open, but I think
the best place to start is with the development of those kinds
of criteria and then we can decide how to best----
Ms. Lofgren. And that would be something the Copyright
Office could take the lead on.
Mr. Sigall. We could take the lead on it. Most user groups
when we proposed having some sort of rule-making authority to
codify these things were opposed to that, at least for now. So
there's different mechanisms and vehicles by way that these
criteria can be formalized, but at least we should start
getting that out.
Ms. Lofgren. You can could do it in a collaborative manner.
Mr. Sigall. I think that's right, and we can get that
information out to both users and owners so they know a little
bit more about what the scope of the statute is.
Ms. Lofgren. I realize my time is over. I wonder if I could
just say--I know Mr. Trust wants to say something, but I just
want to thank Ms. Pallante for her comment about creators
versus copyright owners. I hadn't really thought about that,
but you're right. Michael Jackson isn't The Beatles and we
ought to make a distinction between the creator and the
copyright holder.
And I wonder if Mr. Trust had a final comment.
Mr. Smith. Without objection, the gentlewoman is recognized
for an additional minute, and that minute will be used by Mr.
Trust, I think, to respond to the question.
Mr. Trust. Congresswoman Lofgren , we certainly share some
of your concern in that. We feel like there is some sort of, if
not definition, some sort of samples or examples of what a
reasonably diligent search would entail, if those don't exist,
people of goodwill, good people who want to find the owners,
won't know where to look in some cases people, and people who,
frankly, just want to get around the issue, their feet won't be
held to the fire, so to speak.
So we share your concern. We certainly think if not in the
legislation where it could be loosely defined, there needs to
be quite a bit in the legislative history. We're in favor of
having something even loose in the legislation just to help the
process.
Ms. Lofgren. Finally, and I don't expect an answer now,
Professor Lessig did raise the issue of the Berne Convention
and that there might be problems relative to this proposal. I'm
wondering if anybody has thought about that, and if you have
thoughts after the hearing, if you could share them.
Mr. Smith. Thank you, Ms. Lofgren.
The gentleman from California, Mr. Issa, is recognized for
his questions.
Mr. Issa. Thank you, Mr. Chairman.
You know, I always wrestle with copyright law because
trademark is kind of easy to understand. You have affirmative
responsibility if you're to keep your trademark and you can own
it in perpetuity. Patents are easy to understand because
they're for a finite period subject to renewal fees and they're
published and they're very clear and they're available in a
single searchable data bank, and then you have this infinite
amount of things, some of them great creative works, some of
them a snapshot technically. And I'm not trying to put all your
photographers with snapshots, but I'm a snapshot. So I have to
look and say are all my pieces anything other than whatever
happened when the shutter opened, some of which look okay.
In the series of reforms that are being proposed, I have
one particular question of why something isn't there, and that
is in trademarks, we have constructive abandonment law. It's
very clear that if you don't take reasonable steps, your
trademark becomes abandoned. Now, that's obviously something
you can end up in Federal Court debating because nobody ever
thinks they abandon it. Even when they wrote ``we're never
going to make that product again and we hate that name'', if
somebody else starts using it, sometimes they change their
mind.
Is it possible that, in fact, we can put more material--of
course, we're not exactly talking about orphans. We're talking
about things that were intended to be orphans. Can we, in fact,
find language that puts more into the public domain, more
expediously by making it clear that, as Judge Breyer is
paraphrased to have said, 95 percent of what is protected is,
in fact, not in use?
Mr. Sigall.
Mr. Sigall. I think the main impediment to a system like
constructive abandonment and trademark law is the international
copyright system which prohibits the imposition of formalities
on the enjoyment and exercise of the copyright. So to the
extent like in trademark law or in patent law there's a
requirement that you have file something with a centralized
office or do some other formal requirement to maintain or enjoy
the protection, that would run afoul of the international
system which is incorporated in the TRIPS agreement with the
WTO system.
So there are external constraints on the kinds of
mechanisms that you might apply to solve this problem, and a
large part of our report is devoted to analyzing the various
solutions that people have brought up and how they fit within
that framework. Part of the reason we chose the recommendation
that we did and I think for the reasons that the parties
support it is because it avoids any of those problems, because
it's an ad hoc case-by-case basis. It is somewhat more
uncertain, but also more flexible, but it as avoids any
problems or suggestion that we're imposing a formality or other
requirement that is prohibit by the international system.
So that's, I think, the benefit of the proposal that we put
out, is that it's perfectly consistent with that system.
Mr. Issa. I appreciate that, but isn't that creative
ambiguity erased when the court rules and precedent becomes
there and it does the same thing as what legislation would have
done? You say it's case by case, but as we all know, case makes
case law which makes law.
Mr. Sigall. If the courts were to impost a hard and fast
requirement that someone would have to--has to put notice in
order to avoid being an orphan work or something like that,
those situations might arise, but the question, that really
remains to be seen, and we'll have to see how the courts go
with that. I would hope that the courts are mindful of
international obligations that we do live under in the
copyright system.
Mr. Issa. Okay. Mr. Trust, I have a question for you.
Particularly as to photographers, the fact that you're not
going to get the normal statutory presumption, which is a value
tool and does put people on the defensive when they simply take
something and say, Well, I didn't know who owned it, would you
feel more comfortable--and I know you've covered some of this
in your testimony, but wouldn't you feel more comfortable if,
in fact, we said set some--and we talked about examples, but we
created something that made it clear that there are standards
and if those standards of search are not reasonably conducted,
then, in fact, statutory damages would apply? Is that something
you would feel is worth our effort to continue looking for?
Mr. Trust. Well, I think of course. I think all of
photographers would be feel better knowing that before someone
declared something that they created an orphan, that there was
some standard that other people could look at and determine
based on that standard whether they had actually conducted a
search. Now, for some, they may say, Well, I looked in the
yellow pages; that was a search. You know what? It might be a
search. In a specific case, that could actually be the search,
but for the majority of works, yeah. I think photographers are
nervous about that very fact, people saying I looked in the
phone book, I didn't see the name that I thought might be
there, therefore we used it because it was an orphan work. And
if that's the case, the exact example that you're talking about
will encourage people to participate more fully in the search
process and conducting reasonably diligent searches.
Mr. Issa. Can I suggest, and Mr. Chairman's indulgence, if,
in fact, during a period of time somebody found you and paid
you a royalty, would that be sufficient in your opinion for us
to say that that should be codified as if somebody else could
find you and somebody else negotiated and somebody else paid,
then, in fact, there should be some peril that these eight
people are finding you and paying and this one says he couldn't
find you and thus says sorry?
Mr. Trust. Clearly, yes. We think that there should be some
peril if the others managed to find a photographer and then one
claimed to have conducted a diligent search and couldn't find
him. Now, the reason we say this is because photographers,
active photographers, are not that hard to find. In this
discussion, we're talking about works that have been created
some time ago. Existing photographers, photographers who are in
business, it will require little more than a Google search to
find.
Mr. Issa. Thank you for using my example.
Mr. Trust. To find them. And so it won't take much to find
active photographers. They're not hiding. These are active
businesses. They want people to find them. They're not trying
to keep themselves concealed.
The issue really is completely around works that were
created some time back, and those photographers may or may not
still be in business.
Mr. Issa. Thank you, Mr. Chairman. Thanks for letting me
make my point.
Mr. Smith. Sure. Thank you, Mr. Issa.
Let me observe that I think there have been good questions
today and reasonably enlightened answers, and this has been
very helpful to me and I'm sure to others as well. Also, let me
emphasize that I do hope that you all will come to an agreement
on specific language that will help refine some of the terms
that Mr. Adler mentioned and Ms. Pallante mentioned and Mr.
Trust is worried about.
Is it reasonable to feel that by the last week of this
month you could some kind of a general agreement on the
statutory language and have reached accommodations? Mr. Sigall,
does that sound like a possibility to you?
Mr. Sigall. That certainly sounds like a possibility to us.
Most of the discussions have been taking place between the
private sector representatives, and we've been informed of them
and we've started to participate in them. I think that sounds
reasonable from the Copyright Office's perspective.
Mr. Smith. Mr. Adler, does that sound reasonable to you?
Mr. Adler. There are other stakeholders who are, of course,
not necessarily represented.
Mr. Smith. Right, not present.
Mr. Adler. But we have begun conversations with them and we
would hope to be able to continue the dialogue toward that end.
Mr. Smith. And toward the end of the month.
And Ms. Pallante.
Ms. Pallante. Yes. Absolutely. The cultural sector is
nothing if not reasonable.
Mr. Smith. Okay. So you think by the end of the month is a
reasonable amount of time?
Ms. Pallante. Absolutely.
Mr. Smith. Okay. Mr. Trust, I obviously tried to box you in
here.
Mr. Trust. I hadn't noticed.
Mr. Smith. What do you think?
Mr. Trust. I would echo the comments of Mr. Adler. There
are other stakeholders here that we don't represent.
Mr. Smith. We know that. There's lots of them, but still--
--
Mr. Trust. But we certainly feel like we can work with
everyone to help pull them together.
Mr. Smith. By the end of the month?
Mr. Trust. And make substantial progress, yeah, and do it
by the end of the month.
Mr. Smith. Great. Thank you all. We look forward to your
work product.
We stand adjourned.
[Whereupon, at 3:08 p.m., the Subcommittee was adjourned.]
A P P E N D I X
----------
Material Submitted for the Hearing Record
Prepared Statement of the Honorable Howard L. Berman, a Representative
in Congress from the State of California, and Ranking Member,
Subcommittee on Courts, the Internet, and Intellectual Property
Mr. Chairman,
Thank you for scheduling this oversight hearing on the Copyright
Office's report on orphan works. Unfortunately, I have to leave the
hearing a little early, so my opening statement will be a little
unconventional--in that it will consist of the questions I would like
to ask, but may not get a chance to. Before I begin though, I must
commend the Copyright Office on their legislative proposal, which seems
to have united many owner and user groups in search of a solution to
the orphan works problem.
Clearly, the recommendation goes a long way to meeting users
concerns of making beneficial uses of works when copyright owners
cannot be found. This allows our society to be enriched by access to
works that otherwise, and most likely, would be lost. However, this
must all co-exist against the backdrop of maintaining the incentive for
creators to pursue their art. When it comes specifically to the
category of owners of visual art works such as photographers and
illustrators, I have some concerns about the effect of the orphan works
provision.
Currently, a user can begin a search by typing in search terms in a
registry, be it the copyright office, or for musical works by
contacting BMI or ASCAP--however, there is no collective registry for
photographic or illustration information making owner information, in
many instances, almost impossible to find. Therefore, according to this
proposal, if a reasonable search and attribution allows one to qualify
for a limitation on remedies, will most owners of photographs be
required to forgo their normal remedies when the information cannot be
found?
This issue is the elephant in the room. Is the current copyright
system layered by the orphan works provision adequate to protect visual
arts owners? After all, the most basic question seems unanswerable:
Where does one even begin the process of finding the owner information
for most illustrations/photographs?
No doubt this question may be addressed in part by some non-
legislative solutions--or possibly legislative in that an appropriation
is required. For example, when I wrote to the Copyright Office about
the orphan works issue I requested that they ``explore the viability of
creating an accurate, updated and electronically searchable database of
copyright ownership.'' How much would such a database cost?
Currently on the Copyright Office search site, unless one has a
registration number, the title, or the author name, one cannot search
for the work. Even with all that information, the search feature is
extremely rudimentary. With photographs however, where often times
there is no title to the work, there is currently no mechanism to
search a description of the work and the possibility of matching the
work is limited, since there is no thumbnail of the photograph.
Granted, part of the problem has been exacerbated by attempts to
accommodate the needs of the photographers by allowing group
registration. However, if the orphan works provision limits an owner's
right to reasonable compensation, without access to statutory damages
or attorneys fees, what is the motivation for photographers to register
their works in the first place?
While some have stated that this issue should be resolved outside
the scope of this orphan works solution, I think we must be wary of
going down a road that small copyright owners claim will isolate them
from the benefits of the copyright system and potentially harm them.
Currently, copyright owners can use the threat of litigation with the
possibility of statutory damages and attorneys fees to hinder
unauthorized uses of their works. Under this orphan works provision,
while the use is still considered infringement, the remedies are so
limited that likelihood of recovery, of even reasonable compensation,
becomes questionable. The cost of litigation to determine reasonable
compensation would often-times far exceed the actual reasonable
compensation.
To discuss the orphan works recommendation without addressing a
core problem for major stakeholders in the process alters the balance
in maintaining the exclusive rights for locatable copyright owners--
where but for the fact that there is no adequate database--some of
these children could be matched with their parents.
Some of the issues I would hope the witnesses could address are the
following:
For cases in which the Copyright Office has a registration for a
work with locatable information on its face, should there be an
exception/carve-out to the orphan works provision? Should an owner, if
able to show a registration, be able to reclaim his right to statutory
damages or attorneys fees?
What if a work was not only registered, but the owner took the
steps to make his work locatable by providing a description of the
work--would this make a difference?
If the Copyright Office is proposing that this database be a
voluntary database established by the photographers, should we look at
a later effective date to allow time for the photographers to acclimate
to this new scheme or perhaps provide a transition period?
Finally, would the witnesses be amendable to having the option of
resolution of the orphan works issue in a small claims court to reduce
the costs to small copyright owners?
Of course, there are additional issues to consider such as the
definition of derivative work, sovereign immunity, the right of an
``interested party'' to reacquire or exploit the work, all I'm sure
which be addressed during the on-going negotiations. This is a great
first step and I look forward to working with the Chairman and the
parties in moving ahead with orphan works legislation.
__________
Prepared Statement of the Honorable Zoe Lofgren, a Representative in
Congress from the State of California
I want to thank the Copyright Office for initiating its proceeding
seeking comment on orphan works, and for issuing this report. I am glad
to see that the Copyright Office recognizes a problem with orphan
works, and glad to see such a comprehensive analysis based on the
comments in its proceedings. There is nearly universal recognition that
reforms in our copyright system are needed so that orphan works can
reenter circulation to the public.
As you know, I have for quite some time believed that the problem
of orphan works is a great one. In too many instances, libraries,
museums, publishers, authors, filmmakers and others seek to reuse
existing works, sometimes in derivative works, sometimes merely for
such simple things as screening or displaying those works. But they are
unable to find the original copyright holders, and out of fear of an
infringement action that might arise down the road, these existing
works and derivative works remain unused and inaccessible.
Just to give one particularly perverse example, I have heard of
instances where library collections have sought to actually preserve
original nitrate film masters, but cannot resolve the copyright
ownership. As a result, they are unable to display the films in order
to help secure funding for their preservation. It is an ironic result
of copyright law indeed if it functions to lose historic works forever
for posterity, rather than preserving them for the public.
I agree with the principles adopted in the Copyright Office's
report. Those seeking to use orphan works should use due diligence to
find the copyright holder, and if they can't locate the owner, they
should be enabled to use the work without fear of infringement
liability somewhere down the road.
I am interested in hearing more from the Copyright Office about the
specific solution it proposed. My view of the Copyright Office proposal
is that it essentially would create a new legal defense for the use of
orphan works, a legal defense to the full range of monetary and
injunctive relief available in an infringement lawsuit.
As you know, I introduced a bill, H.R. 2408, that took a somewhat
different approach than the one proposed by the Copyright Office. In my
bill, I set forward the concept of a national registry system. To avoid
their works becoming orphaned, under my bill copyright holders would
register their works in a national registry after 50 years.
I recently received a letter from Professor Lawrence Lessig of
Stanford Law School in support of a registry system. His letter
suggests some modifications to the registry system I proposed in my
bill. Mr. Chairman, with your permission I'd like to add Professor
Lessig's letter to the record for this hearing, and I'd like to ask the
witnesses for their reactions to Professor Lessig's proposal.
One of the values I had hoped for in a registration approach is
that it would create certainty for both copyright holders and those
wishing to use orphan works. On the other hand, one of the values I see
in the Copyright Office's proposal is that it would allow the use of
orphan works immediately, rather than only after waiting 50 years. I am
eager to understand how we can create more legal certainty under the
Copyright Office's proposal, for both copyright holders and users of
orphan works. I want users of orphan works to be able to know as much
as possible about what their rights and obligations are before making
use of those orphan works. I am also interested in hearing from the
other witnesses their thoughts on creating a registry system as opposed
to a new defense to infringement, and how we can create legal certainty
for copyright holders and users under either approach.
Thank you Mr. Chairman.
__________
Prepared Statement of the Honorable Maxine Waters, a Representative in
Congress from the State of California
Chairman Smith and Ranking Member Berman, I thank you for holding
today's hearing on orphan works. From the initial request for a report
made by the Chairman, the Ranking Member, and Senators Hatch and Leahy
to the actual issuance of the ``Report on Orphan Works,'' due diligence
has been undertaken in order to elicit a healthy analysis of the status
of specific orphan works.
It is very important to the advancement of technology that orphan
works either be utilized with proper permission or expounded upon after
its entrance into the public domain. However, I do sympathize with
those who advise lawmakers to keep some of the current regulations
intact that ensure that copyright owners receive remuneration for
unauthorized duplication or use of this property.
The draft statutory language crafted by the Copyright Office offers
plenty of latitude for orphan works to be utilized. While the proposed
10-year sunset provision in section 514(d) has been widely criticized,
it is prudent for this body to set a deadline by which it must assess
the effectiveness of the new language. The sunset does not pose a
threat to any parties; if, at the end of the sunset, it is determined
that a sufficient number of parties benefit from the section, Congress
will leave it intact, undoubtedly.
Today's hearing is important, not only insofar as this body reviews
the Copyright Office's report. In addition, through the testimony of
our distinguished witnesses and the record created by our queries to
them, we will analyze the feasibility and need for other fixes required
in the area of orphan works, such as the issue of digital rights to
published works. The court dockets are replete with cases such as the
ones against internet content giant Google where publishers argue that
works are impermissibly featured on the site, while Google rebuts this
contention by citing the orphan works dilemma. Our suggestion for
improvements to the law must include proper treatment of this issue.
I thank the panel of witnesses and the Subcommittee leadership for
today's hearing, and I yield back.
Amended ``Appendix'' to the Prepared Statement of Maria A. Pallante,
Associate General Counsel and Director of Licensing, The Solomon R.
Guggenheim Foundation
Letter and accompanying paper from the
Advertising Photographers of America (APA)
Prepared Statement of the American Society of Composers,
Authors and Publishers (ASCAP)
Letter and proposed legislative revision from the
Artists Rights Alliance (ARS)
Prepared Statement of Broadcast Music, Inc. (BMI)
Chairman Smith, Ranking Member Berman, and Members of the
Subcommittee, Broadcast Music, Inc. (``BMI'') is pleased to submit its
written comments for the hearing record on the Copyright Office's
legislative proposal for how to deal with the problem of so-called
``orphan works''. BMI commends the Subcommittee for holding a hearing
on the complex and important goal of creating a new copyright law
system designed to facilitate the use of copyrighted content whose
owners/creators cannot be located. BMI thanks Marybeth Peters and the
Copyright Office for their extensive work on this subject made at your
behest. BMI urges the Congress to proceed deliberately and with caution
in this area, however, because any orphan works regime that Congress
may adopt entails the risk of unfairly compromising the rights and
economic interests of this country's creators.
STATEMENT
BMI is a music performing right licensing organization whose
business centers on licensing of public performances of over 6.5
million musical works by a wide spectrum of users, including digital
and analog broadcasting entities such as radio, broadcast television,
cable, satellite and the Internet, as well as restaurants, stores,
concerts, background music services, aerobics and dance studios, and
many more. BMI's fundamental and lawful role is to license to these
users the ``public performing'' right in musical works on behalf of its
over 300,000 affiliated songwriters, composers and music publishers.
The majority of these songwriters are neither performers nor major
recording artists and therefore do not receive income from making sound
recordings of their own music, or from concert tours, television
appearances, commercial endorsements, sales of souvenirs or any other
activities enjoyed by recording artists. As a result, the majority of
BMI's affiliated songwriters and publishers are the consummate ``small
businessmen and women'' who depend on their BMI royalties for a major
portion of their income.
BMI also has entered into reciprocal license agreements with more
than 70 foreign performing right societies worldwide that permit BMI to
license in the U.S. the public performing right in many thousands of
musical works by foreign songwriters and composers. Through these
reciprocal agreements, BMI also collects royalties from those societies
for performances of BMI musical works occurring overseas. BMI operates
as a non-profit making business and does not retain earnings. Instead
BMI returns all license fees collected, less operating expenses, as
royalties to its affiliated songwriters, composers, and music
publishers whose works are publicly performed.
Last year BMI submitted comments to the Copyright Office in its
orphan works proceeding. In those comments, BMI contended that at least
with respect to the public performing right in musical works, the
orphan works scenario should not be a problem because the performing
rights organizations, BMI, the American Society of Composers, Authors
and Publishers (``ASCAP'') and SESAC, together represent the rights to
in excess of 99% of copyrighted music. The significance of this is that
a user seeking to license the public performing right in music can
obtain licenses from the performing rights organization whose
repertoire includes that work.
BMI and ASCAP also maintain extensive proprietary databases of
copyright information as well as contact information for their
respective affiliates and members. BMI pioneered an online database
greatly facilitating the public's ability to identify the copyright
owners of BMI musical works. The Harry Fox Agency also submitted
comments to the Office that it is able to identify publishers for
purposes of mechanical rights licensing. In the circumstances, it is
not likely that a user will encounter a work for which licensing and/or
contact information is not available.
Although the Copyright Office's report takes notice of the
existence and the efficacy of collective licensing organizations,\1\
the Office's legislative proposal does not itself reflect the role that
collective licensing organizations can play in reducing the incidents
of orphan works problems. Jule Sigall did candidly acknowledge in his
written testimony on behalf of the Office that the adoption of the
proposed legislation by Congress might galvanize the non-music
copyright industries to create collective licensing organizations
similar to the music performing rights organizations. Mr. Sigall stated
that: ``In fact, enactment of orphan works legislation may be the
catalyst necessary to prompt the non-legal marketplace reforms that
will most efficiently address the problems identified by photographers
and creators of visual images.'' \2\ The logic of this statement is
apparent.
---------------------------------------------------------------------------
\1\ See Office Report at pp. 30-31.
\2\ Sigall Testimony at page 2.
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While most commentators would agree that adherence to the Berne
Convention would preclude any orphan works legislation that called for
mandatory registration of works, it appears that the Office's proposal
creates a scenario in which, for all practical purposes, a copyright
owner must keep his or her address on file somewhere that is publicly
available in order to preserve the economic value of his or her
copyright rights. Even if the creator is capable of meeting this
burden, the creator must ensure that the corporate entity owning or
controlling the copyright (e.g., a work-for-hire owner) is similarly
locatable. In addition to public access to contact information, there
must be adequate assurance that someone coming across a copy of the
work can reasonably link it to that particular creator or copyright
owner. In this regard, concern has been expressed that the Office's
proposal for attribution to copyright owners by orphan works users
(which should be helpful to authors) may actually lead to improper or
incorrect information being put on works by orphan works' users, which
in turn could lead to reliance by subsequent orphan works users on
incorrect data when they do their searches. All of this tends to argue
for the creation of collective licensing organizations in non-music
fields.
BMI is confident that the Committee will be able to address the
many difficult issues presented by orphan works situations. BMI
believes that any legislation adopted by Congress should, at a minimum,
be accompanied by legislative history that addresses the case of a
copyrighted work for which a license is available through a readily
locatable collective licensing organization, such as the music
performing rights organizations. The legislative history should clarify
that: (1) a reasonably diligent good faith search to locate the owner
should include research of databases of collective licensing
organizations which may have the rights to license to the user; and (2)
if a license is available from the collective (which itself is an
``owner'' of non-exclusive rights in the work) and is not taken, the
work would not be considered ``orphaned'' (stated otherwise, the search
would not be considered reasonable within the meaning of the Act). Such
a provision would serve as a further incentive to the marketplace
``reform'' being advocated by the Copyright Office.
BMI also believes that orphan works treatment should not be allowed
for any uses subject to statutory compulsory licenses (e.g. sections
111, 115, 118 and 119) where Congress has created the means of access
to a license and the Copyright Royalty Board has established the fees,
and there are established methods and practices for dealing with
unidentified works.
David Trust of the Professional Photographers of America
association testified that in the case of uses that have relatively
small value, it will not be cost efficient for the owner of an orphan
work to negotiate a reasonable fee when the incentives created by
statutory damages and attorneys fees are removed from the negotiating
equation. Jule Sigall testified that a ``small claims'' court for
copyright owners could be the solution to this problem but the cost of
going to even a small claims court is going to be relatively high in
some cases. Attorneys fees should therefore be available to copyright
owners who have to pursue legal remedies such as reasonable license
fees for orphan works uses, at least in cases of flagrant and willful
disregard of the owners' economic interest.
CONCLUSION
Mr. Chairman, BMI applauds your efforts and initiative--and those
of the Copyright Office--in this challenging area of law. Collective
licensing organizations such as BMI can serve as a cost-effective
marketplace solution to orphan works licensing and BMI believes that at
a minimum the legislative history to any orphan works bill should
reflect this valuable role by specifying that reasonable searches
include licensing through such organizations where available.
__________
Prepared Statement of Reed Stager, Executive Vice President,
Digimarc Corporation
EXECUTIVE SUMMARY
In 2005, the U.S. Copyright Office embarked on a study of the
issues raised by ``orphan works''--copyrighted works whose owners may
be impossible to identify and locate. Concerns had been raised that the
uncertainty surrounding ownership of such works might needlessly
discourage subsequent creators and users from incorporating such works
in new creative efforts, or from making such works available to the
public.
Digimarc is pleased to have the opportunity to submit written
testimony to the Judiciary Committee Oversight Hearing on ``The Report
on Orphan Works by the Copyright Office'' and the role digital
watermarking technology can play in providing content identification
and copyright communication to address the issue of orphan works.
Balancing the needs of consumers with the rights of content owners
is of paramount importance. Consumers deserve to have access to the
content options available to them. Content owners and artists deserve
to be recognized and compensated for their work. But the rapid
proliferation of technology has made this balancing act increasingly
difficult. The U.S. Supreme Court recently tackled this issue in Metro-
Goldwyn-Mayer Studios v. Grokster, in which the court ruled that file-
sharing networks (also known as peer-to-peer or P2P networks) can be
held liable when their users illegally exchange copyrighted material.
In its ruling, the Court identified digital watermarking as a
technology that can be used by rights holders and file-sharing networks
to communicate copyrights and deter piracy and illegal use of
copyrighted entertainment content.
Digital watermarking technology is currently available from many
suppliers such as Digimarc, Philips Electronics, Dolby Laboratories,
Thomson, Verance, Activated Content, Verimatrix, Jura, Teletrax, GCS
Research, Signum Technologies, Nielsen Media Research and others.
Digital watermarking can enable content identification and
copyright communication on a broad scale and can provide a range of
solutions for identifying, securing, managing and tracking digital
images, audio, video, and printed materials. In fact, digital
watermarking technology has already been adopted by many photographers,
movie studios, record labels, television broadcasters, and corporate
enterprises as a way to identify, protect and manage the rights to
their content while still offering their consumers the convenience and
portability they have become accustomed to.
Digital watermarks can identify copyrighted content and associated
rights, during and after distribution, to determine copyright ownership
enable rights management policy while enabling innovative new content
distribution and usage models. Digital watermarks are broadly deployed
with billions of watermarked objects and hundreds of millions of
watermark detectors in the market, supporting various applications.
We believe that policy makers can facilitate the adoption of
technologies such as digital watermarking to enable content owners and
users to improve their level of collaboration to help address the
challenge of orphan works. In particular, we urge the Committee to
consider:
1. Amending Chapter 5 of the Copyright Act , expressly
authorizing courts to consider whether a copied digital work
included a publicly-readable digital watermark--by which the
copyright owner could have been identified and contacted--in
determining whether infringement of the work was ``willful;''
2. If provisions akin to those proposed by the Glushko/
Samuelson Copyright Clearance Initiative are adopted, then
listing a search for a publicly-readable digital watermark--by
which the copyright owner could have been identified and
contacted--as one of the factors appropriate for consideration
in determining whether a user's inquiry was a ``reasonable
efforts search;'' and
3. Recommending that the Copyright Office host a web page with
information about digital watermark reader software that can be
freely downloaded by the public, to check audio, video and
image content for watermarked data by which the copyright owner
of such content may be identified and contacted.
PROBLEM
Today, a large number of ``orphan works''--presumably copyrighted
works whose owners cannot be identified or located--exists. Typically,
such works are excerpts or newly digitized versions of books, movies,
photos, and music whose ownership information has been stripped away or
lost during distribution, re-formatting or editing.
Unfortunately for those individuals and organizations seeking
permission to use such works, much of this rich material ends up left
untouched due to the fact that ownership cannot be determined.
In its study of the problem, the U.S. Copyright Office solicited
responses from the public. From libraries and business to legal
institutions and individuals, the problem of orphan works is clear. A
few examples from the responses:
198 works from 397 were deemed to have unresolved
copyright issues during the digitization of The Core Historical
Literature of Agriculture by the A.R. Mann Library at Cornell
University.
More than 100,000 photographs made by participants on
oceanographic voyages had no identifying photographer or
copyright information, causing The Scripps Archives at the
University of California, San Diego to only publish 4,000 of
these images online.
Countless other libraries, universities, artists,
teachers and students have been unable to use works because of
the inability to identify or locate copyright owners.
SOLUTION: IDENTIFYING COPYRIGHTED MATERIAL WITH DIGITAL WATERMARKING
When music, movies, images, programming or books are digitized,
their identity (the detailed information about the content, its
copyright ownership or the purchaser's rights) is often lost, having
been reduced to ones and zeros that only computers can read. This makes
the content difficult to manage, protect and track, leaving the door
wide open for both casual--and malicious--digital piracy and copyright
infringement.
As a result, content often circulates anonymously, without
identification of the owner, or without an easy means to contact the
owner/distributor to obtain rights for use.
The U.S. Supreme Court recently tackled this issue in Metro-
Goldwyn-Mayer Studios v. Grokster, in which the court ruled that file
sharing networks (also known as peer-to-peer or P2P networks) can be
held liable when their users illegally exchange copyrighted material.
In its ruling, the Court identified digital watermarking as a
technology that can be used by rights holders and file-sharing networks
to communicate copyrights and deter piracy and illegal use of
copyrighted entertainment content.
Digital watermarking is the science of hiding extra information,
such as identification or control signals, in media content. For
example, the digital ``pixels'' making up a movie or a photograph can
be slightly altered in value to represent extra information, while not
visibly impairing the appearance of the movie to human viewers.
The extra information represented by digital watermarks travels
with the content--persisting through changes in file format, and
through transformation between digital and analog form.
Digital watermarks enable copyright holders to communicate their
ownership, usually with a public detector, enabling infringement
detection and promoting licensing. A digital watermark embedded within
a piece of content can carry a persistent copyright owner identifier
that can be linked to information about the content owner and copyright
information in an associated database or to appropriate usage rules and
billing information. Digital watermarks are broadly deployed with
billions of watermarked objects and hundreds of millions of detectors
in the market, supporting various applications.
For example, photographs can be embedded with the photographer
owner's ID to determine copyright information and usage rights. The
same can occur with video (e.g., TV news and commercials), DVDs, and
music.
CASE STUDY EXAMPLE: DIGITAL IMAGES
Millions of copies of Digimarc's digital watermark reader software
are currently in distribution, and thousands of creative professionals,
organizations and businesses use digital watermarking to embed
copyright notification information into their content, such as images.
Leading image-editing applications, from companies like Adobe, Cerious
Software, Corel, Jasc software include Digimarc watermarking technology
as a standard feature.
These Digimarc-aware applications are capable not only of embedding
digital watermarks, but also of reading and detecting digital
watermarks already embedded in digital images. When an image is opened
within one of these applications, the Digimarc auto-detection software
quickly scans the image for the presence of a digital watermark. If a
digital watermark is present, the application displays a copyright
symbol (c) in the title bar of the image window, providing an instant,
visual cue that copyright and ownership information are available by
reading the Digimarc digital watermark. The passive detection and
proactive notification are key features of Digimarc's copyright
communication system.
The digital watermark can provide a link to a publicy-accessible
database, where complete contact details for the copyright holder or
image distributor are stored. This makes it easy for the viewer to
license the image, license another one like it, or commission new work.
In addition to the embedder and reader plug-ins within many image
editing applications, Digimarc also offers its own stand-alone reader
product for detecting digital watermarks within images on your desktop
or on the web. This free reader download enables users to detect
digitally watermarked images directly from Internet Explorer or Windows
Explorer. If a digital watermark is present, the image displays a ``D''
symbol in the lower right corner of the image.
By simply clicking an ``Image Info'' button, the user viewing an
image can link directly to the publicly accessible database, to obtain
complete contact details for the image owner or distributor.
Once an image contains a digital watermark, it can be searched and
monitored as the image is distributed over the public Internet to
determine its location and compliance with usage rights.
The Digimarc MarcSpider image tracking service scans the web and
reports to image owners and distributors where their digitally
watermarked images are found. This service enables photographers, web
content developers, stock photography libraries, corporations and other
users and creators of digital images to discover both authorized and
unauthorized uses of their works migrating across the web.
The core of Digimarc MarcSpider technology is a search engine that
crawls through publicly accessible areas of the Internet looking for
digitally watermarked images. It scans hundreds of millions of pieces
of information, locating Digimarc-watermarked images and reporting back
to their owners where and when they were found.
Through the information found in the digital watermark, anyone with
a Digimarc ``reader'' (available in the stand-alone free software
reader as well as in the plug-ins) can obtain complete contact details
about an image's creator and/or its distributor, making it simple to
license the image, license another one like it, or commission new work.
Current digital watermarks are robust against attack. Attempts to
impair a digital watermark require impairing the host content, e.g.,
making a movie blurry, or a song noisy. Moreover, such tampering with a
copyright protection measure can trigger liability under the Digital
Millennium Copyright Act.\1\
---------------------------------------------------------------------------
\1\ E.g., Section 1202(b) provides ``No person shall, without the
authority of the copyright owner or the law, (1) intentionally remove
or alter any copyright management information, . . . (3) distribute,
import for distribution, or publicly perform works, copies of works, or
phonorecords, knowing that copyright management information has been
removed or altered . . .''
---------------------------------------------------------------------------
IN SUMMARY: POLICY RECOMMENDATIONS
Digital watermarks are available and widely deployed today, and can
help speed and facilitate deployment of online digital content by
enabling identification of copyrighted content, facilitating rights
management policy, and enhancing consumer experiences.
Content owners can digitally watermark image, audio and video now
for forensic tracking, copyright notification and monitoring. We
believe that policy makers can facilitate the adoption of technologies
that can enable content owners and users to improve their level of
collaboration to help address the challenge of orphan works. In
particular, we urge the Committee to consider:
1. Amending Chapter 5 of the Copyright Act , expressly
authorizing courts to to consider whether a copied digital work
included a publicly-readable digital watermark--by which the
copyright owner could have been identified and contacted--in
determining whether infringement of the work was ``willful;''
2. If provisions akin to those proposed by the Glushko/
Samuelson Copyright Clearance Initiative are adopted, then
listing a search for a publicly-readable digital watermark--by
which the copyright owner could have been identified and
contacted--as one of the factors appropriate for consideration
in determining whether a user's inquiry was a ``reasonable
efforts search;'' and
3. Recommending that the Copyright Office host a web page with
information about digital watermark reader software that can be
freely downloaded by the public, to check audio, video and
image content for watermarked data by which the copyright owner
of such content may be identified and contacted.
In addition to addressing these ideas through direct legislation,
the avenue of legislative report language could also be considered.
Courts, for instance, could be invited to consider an award of enhanced
damages if an infringement plaintiff proves that it marked the copied
content with a digital watermark by which the copyright owner of such
content could have been identified and contacted. Similarly, courts
could be invited to consider a defendant's unsuccessful attempt to
identify or contact a copyright owner by reference to such a digital
watermark in assessing a reduced damages award. Private sector
organizations, such as the various library associations, could be urged
to develop best practice models leveraging advances in technology of
the kind discussed above.
In conclusion, we appreciate the opportunity to share our thoughts
on ways in which technology can be used to help address the growing
challenge of orphan works. We stand ready to assist in whatever manner
may be helpful as the Copyright Office and the Judiciary Committee
address the orphan works issue.
Prepared Statement of the Directors Guild of America (DGA)
Letter from the Graphic Artists Guild
Letter from the Illustrators' Partnership
Prepared Statement of Association of Independent Video and Filmmakers
(AIVF), Doculink, Film Arts Foundation, FIND (Film Independent),
International Documentary Association (IDA), IFP (Independent Feature
Project), National Alliance for Media Arts and Culture (NAMAC),
National Video Resources (NVR), and Public Knowledge
Letter to the Honorable Zoe Lofgren, a Representative in Congress from
the State of California, and Member, Subcommittee on Courts, the
Internet, and Intellectual Property from Lawrence Lessig
Prepared Statement of Jerry Brito, Legal Fellow, Mercatus Center at
George Mason University, and Bridget Dooling, Editor-in-Chief, Federal
Circuit Bar Journal
Mr. Chairman and Members of the Committee:
We appreciate the opportunity to enter written testimony into the
record of the Committee's hearing on orphan works. Jerry Brito is a
research fellow with the Regulatory Studies Program of the Mercatus
Center, a 501(c)(3) research, educational, and outreach organization
affiliated with George Mason University. Bridget Dooling is a law
student and the editor-in-chief of the Federal Circuit Bar Journal, a
legal journal at George Mason University.\1\
---------------------------------------------------------------------------
\1\ This testimony reflects only the views of its authors and does
not represent an official position of George Mason University or their
other affiliations.
---------------------------------------------------------------------------
We recently completed an analysis of the orphan works problem and
evaluated several of the leading proposed solutions. Our study, which
is published in the current issue of the Michigan Telecommunications
and Technology Law Review, is attached as an appendix to this
testimony.\2\
---------------------------------------------------------------------------
\2\ The study can also be found at 12 Mich. Telecomm. Tech. L. Rev.
75 (2005).
---------------------------------------------------------------------------
While our proposed legislative solution differs from the one
proposed by the Copyright Office, we concur with the analysis in its
Report on Orphan Works. We would like to highlight a few conclusions of
our own analysis that we think might be helpful to your deliberations.
The orphan works problem was created in large part by
the elimination of formalities that resulted from the United
States' ascension to the Berne Convention. While the
reintroduction of formalities into U.S. Copyright law might
help fix the orphan works problem, it is not a practical
solution unless we are prepared to abrogate Berne and other
international intellectual property treaties.
The Supreme Court has made clear in at least 74 years
of jurisprudence that the grant of temporary monopoly rights to
creators is a secondary concern of the Constitution's Copyright
Clause. The primary aim is the furtherance of creative
innovation that benefits the public at large.\3\ With that in
mind, it is not unthinkable for a reasonable solution to the
orphan works problem to impinge somewhat on the existing rights
of authors if doing so serves the public interest.
---------------------------------------------------------------------------
\3\ Fox Film Corp. v. Doyal, 286 U.S. 123, 127 (1932) (``[T]he
primary object in conferring the [copyright] monopoly lie[s] in the
general benefits derived by the public from the labors of authors.'');
United States v. Paramount Pictures, Inc., 334 U.S. 131, 158 (1948)
(``The copyright law . . . makes reward to the owner a secondary
consideration.''); Twentieth Century Music Corp. v. Aiken, 422 U.S.
151, 156 (1975) (``The immediate aim of our copyright law is to secure
a fair return for an `author's' creative labor. But the ultimate aim
is, by this incentive, to stimulate artistic creativity for the general
public good.''); Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S.
340, 349-50 (1991) (``The primary objective of copyright is not to
reward the labor of authors but `to promote the Progress of Science and
the useful Arts.' ''); Fogerty v. Fantasy Inc., 510 U.S. 517, 524
(1994) (``The primary objective of the Copyright Act is to encourage
the production of original literary, artistic, and musical expression
for the good of the public.'').
An efficient solution to the orphan works problem
will create an incentive for authors to take every reasonable
step to identify themselves so that would-be users of their
---------------------------------------------------------------------------
works can find them and seek their permission.
An efficient solution to the orphan works problem
will create an incentive for would-be users of a work to take
every reasonable step, in good faith, to identify the work's
copyright owner in order to acquire permission to use the work.
Perfunctory attempts to seek permission, or sham attempts made
in bad faith, should not qualify a user for protection.
To protect both copyright owners and would-be users,
courts should apply any orphan works protection on a case-by-
case basis. Only through case-by-case analysis can would-be
users' claims that they could not locate an owner be fairly
judged. A categorical approach-defining a class of works as
orphan works and automatically limiting liability for using
works in that class-impinges on authors' rights more than is
necessary to address the orphan works problem.
If a user of an orphan work is found by a court to
have conducted a reasonable search in good faith, she should
not be subject to any monetary liability. This will help create
the needed incentive for authors to take steps to make
themselves locatable. Additionally, it would eliminate the need
for courts to have to speculate on what would be reasonable
compensation for use of a work. Of course, users should have to
acquire permission before they can make future uses of the
work.
If a user of an orphan work is found by a court to
have conducted a reasonable search in good faith, she should
not be subject to injunction where the orphan work is part of a
derivative work that includes her own expression. This will
help create the incentive for authors to take steps to make
themselves locatable. Additionally, it will foster the creation
of new works that would otherwise go unrealized if the
possibility of injunction existed.
Orphan works are not a transitory problem.
Additionally, Congress may modify the Copyright Act any time it
becomes necessary. Therefore, there is no reason why an orphan
works amendment to the Copyright Act should include a sunset
provision.
The orphan works problem undermines the purpose of copyright law,
which is ``[t]o promote the Progress of Science'' \4\ to ensure ``broad
public availability of literature, music, and the other arts.'' \5\ It
stifles this goal by putting a large swath of the public domain in
doubt and by making it practically impossible to locate many
rightsholders to license their works. Some have suggested solutions
that require an overhaul of U.S. copyright law, but these solutions are
impractical and unnecessary. Recognizing this, Congress should enact a
safe harbor from copyright infringement liability for those who conduct
a reasonable search in good faith for a work's copyright holder before
using the work. Doing so would remove the unfortunate choice between
using an orphan work and bearing the risk of infringement litigation,
or abstaining from the very derivative use that the copyright laws are
intended to encourage.
---------------------------------------------------------------------------
\4\ U.S. CONST. art. I, Sec. 8.
\5\ Twentieth Century Music Corp. v. Aiken, 422 U.S. 151, 156
(1975).
---------------------------------------------------------------------------
We hope our findings are useful to the Committee as it weighs
various options for orphan works reform.
__________
Prepared Statement of Gerard Colby, President, National Writers Union
The National Writers Union--UAW Local 1981 welcomes the U.S.
Copyright Office study of orphan works. Freelance writers' ownership
rights have long been ignored and abused. The lawsuit New York Times v
Tasini and the related class action lawsuits, as well as similar
lawsuits won by freelencers in recent years, indicate that this
situation has led to freelancers losing considerable income. A major
contributor to this abuse and loss of income is the difficulty of
keeping track of rights owners when the owners are individuals and
small businesses.
The National Writers Union maintains that a registry and licensing
agency (or agencies) are essential to ease of use of copyrighted works
in compliance with the law. As Justice Ruth Bader Ginsberg explained in
the majority decision in New York Times v Tasini, there is a simple way
for prospective users to gain access to copyrighted material: pay for
it. Private licensing agencies already exist and are ready means to
access copyrighted material, including when the individual rights owner
may not be available for one reason or another.
Remedies such as the Canadian Copyright Board are partial and
insufficient. At best, they allow others to use a work. They do not
insure that rights owners get the income that such use earns. While
allowing others to use a work is a critical goal of copyright law, the
law must also relieve the harm done to infringed rights owners and
protect them against further harm. As the summary to the present study
makes clear, current means of relieving the harm have largely failed.
There seems no means of relieving that harm other than a registry and
licensing agency.
It would be inappropriate of a government agency, including the
Copyright Office to establish either of these functions either as a
monopoly or in competition with private enterprise.
While we sincerely applaud Congress and the Copyright Office for
undertaking this study, we also note that the study would be
unnecessary if the publishing industry had the same protections as the
music and entertainment industries. In these industries, use and
protection alike are facilitated by registries, licensing agencies,
unions, and associations. Little such facilitation exists in the
publishing industry, leading to problems such as the one presently
under study. The above industries provide a ready model for the
publishing industry, one that, if it were adopted, would remove the
obstacles to lawful use that lay the foundation for such lawsuits as
New York Times v Tasini.
SPECIFIC QUESTIONS:
1. Nature of the Problems Faced by Subsequent Creators and Users
Identification and communication with the current owner of the
desired right is the key difficulty. The owner is often not the
registered copyright holder, and there are often multiple owners of
multiple rights to a single work. For instance, newspapers and
magazines that obtain first serial rights to freelance writers'
contributions will register the issue but not the individual works
under the copyright holder. A potential user only knows of the
publication, and the publication will not know the name or location of
the owner or owners of the works' remaining rights. Even if a
freelancer registers the work separately, it is highly unlikely that s/
he will go to the expense of re-registering the work every time s/he
changes address or makes modifications to an original work. However, s/
he would maintain a current address with a registry/licensing agency
that was paying her royalties for uses of the work.
2. Nature of ``Orphan Works'': Identification and Designation
Any passive system that allows use without actively contacting the
rights owner and soliciting her agreement is not only inadequate for
protecting the rights of the owner of the work; it is standing
copyright law on its head, asserting a form of eminent domain for
private use that has already alarmed much of the nation when applied to
real estate. Such permitted use will violate the purpose and meaning of
the copyright clause of the Constitution ``To promote the Progress of
Science and useful Arts, by securing for limited Times to Authors and
Inventors the exclusive Right to their respective Writings and
Discoveries.'' Article 1, Section 8.
This guarantee of exclusive ownership for a limited time was
designed to encourage the growth of culture and commerce of the new
nation, and it has, until recent times, worked well for the nation. Now
this constitutional right is under attack by those who seek to use
technology's advances in digital reproduction and Internet
communication and commerce for their own commercial gain through
advertising sales and fees by employing only a ``good faith effort'' to
find the rightsowner and secure permission to use the rightsowner's
property. Post facto compensation does not remove the legal burden
under the Constitution to secure the rightsowner's permission. Nor will
such change in copyright law protect the rights owner but will allow
practices that will mislead the intellectual property community and the
broader citizenry into believing permission by the rightsholder exists
and that traditional copyright protection under the Constitution is
still honored in this land.
3. Formal Approach
A registry should be a private rather than government enterprise. A
registry can only work if it is policed, and, in this case, private
enterprise in the form of licensing agencies would be adequate to meet
most market demands (Here we leave aside the problem of widespread
copying and recopying over the Internet for commercial gain, which
licensing agencies and even government agencies are challenged to
address).
Likewise, elaborate systems of optional registration will not serve
to facilitate use by marketers to end users, and, further, will confuse
rights owners. In the National Writers Union's quarter century of
experience, many freelancers and even some publishers often assume that
registration with the Copyright Office is unnecessary because copyright
is automatic once the work is put into tangible form. But when the
complicated system of additional protections, legal deadlines,
compensatory versus statutory damages, and so on, that are provided by
registration are explained to them, their eyes often glaze over and
they either defer or look for lawyers. The present system, in fact, is
one that only a lawyer can like, with the exception that requiring
registration to gain access to the full protection of the law
(statutory damages) creates an onerous and unnecessary burden on the
rights owner which, unless undertaken, does not attract lawyers to take
up the rights owner's plea for relief. Yet another complicated system
of optional registration would compound the problems that the system
already fails to remedy.
4. Nature of ``Orphan Works'': Age
Adjusting requirements according to the age of a work is a needless
complication that further interferes with understanding and compliance.
KISS should be the watchword.
5. Effect of a Work Being Designated ``Orphaned''
Official designation of a copyrighted work as ``orphaned'' would,
of course, be unnecessary in a system of registries and licensing
agencies, which can better assure legal use of copyrighted work and
compliance with the law. Arbitrarily declaring a copyrighted work, the
property of a citizen, an ``orphan'' merely sets the stage for the work
being effectively declared a ward of the state as a prelude to a rights
grab by a third party seeking to exploit the ``orphan'' for commercial
advantage. Let us be sure, instead, that the United States is not
moving business practices back in time to when kidnapping and
exploiting of ``orphans'' was tolerated, never mind legally condoned.
Letter from David Sanger, President, the Stock Artists Alliance (SAA)