By David Carney/Tech Law Journal



House IP Subcommittee Approves Orphan Works Bill

May 7, 2008. The House Judiciary Committee's (HJC) Subcommittee on Courts, the Internet and Intellectual Property (SCIIP) amended and approved HR 5889 [LOC | WW | PDF], the "Orphan Works Act of 2008".

The Subcommittee approved by unanimous voice vote a managers' amendment [4 pages in PDF] offered by Rep. Howard Berman (D-CA) and others.

Rep. Zoe Lofgren (D-CA) offered, but later withdrew, three amendments. See, (1, 2, and 3).

Rep. Adam Schiff (D-CA) offered, but later withdrew, two amendments. (See, 1 and 2.)

The Subcommittee then approved the bill as amended, by voice vote. Rep. Steve Chabot (R-OH) voted no.

Rep. Berman, the Chairman of the SCIIP, stated that the HJC will hold a closed meeting with interested parties before the full Committee mark up. Speaking with reporters after the markup he predicted that the full Committee markup would be in "much less than two months, but not necessarily next week".

See also, TLJ mark up of HR 5889, showing changes made by the managers' amendment, and changes that would be made by each of the Lofgren and Schiff amendments, if adopted.

The Senate Judiciary Committee (SJC) held a business meeting on May 8, 2008. Its version of this bill, S 2913 [LOC | WW], the "Shawn Bentley Orphan Works Act Of 2008", was on the agenda. However, the SJC held over consideration of this bill until its meeting next week.

Rep. Berman, Rep. Lamar Smith (R-TX), Rep. John Conyers (D-MI), and Rep. Howard Coble (R-NC) introduced HR 5889 on April 24, 2008.

Also, similar bills were considered, but not enacted into law, in the 109th Congress. See, HR 5439 (109th), the "Orphan Works Act of 2006". Another version of it was made a part of HR 6052 (109th), the "Copyright Modernization Act of 2006". However, neither bill became law.

See also, stories titled "House CIIP Subcommittee Holds Hearing on Orphan Works" in TLJ Daily E-Mail Alert No. 1,326, March 9, 2006, "Rep. Smith Introduces Orphan Works Act of 2006" in TLJ Daily E-Mail Alert No. 1,377, May 24, 2006, and "House CIIP Subcommittee Approves Orphan Works Act of 2006" in TLJ Daily E-Mail Alert No. 1,378, May 25, 2006.

The introduction of legislation followed the Copyright Office's (CO) release of its report [133 pages in PDF] titled "Report on Orphan Works". See, story titled "Copyright Office Recommends Orphan Works Legislation" in TLJ Daily E-Mail Alert No. 1,302, February 2, 2006. The primary author of the report, Jule Sigall, subsequently went to work for Microsoft. See, story titled "Jule Sigall Joins Microsoft" in TLJ Daily E-Mail Alert No. 1,510, December 27, 2006.

HR 5889 is supported by large aggregators and distributors of creative works. It is opposed by individual creators, and particularly by photographers, illustrators, and other creators of visual works.

The bill would significantly limit remedies available to the copyright owner for infringement of copyrighted works when the infringer "proves by a preponderance of the evidence" that before infringing, it "performed and documented a qualifying search, in good faith, for the owner of the infringed copyright" and "was unable to locate the owner".

The bill provides that "an award for monetary relief (including actual damages, statutory damages, costs, and attorney's fees) may not be made other than an order requiring the infringer to pay reasonable compensation" to the copyright owner. (Parentheses in original.)

It would further limit monetary remedies where the infringer is a "nonprofit educational institution, library, or archives, or a public broadcasting entity".

The bills defines "reasonable compensation" as "the amount on which a willing buyer and willing seller in the positions of the infringer and the owner of the infringed copyright would have agreed with respect to the infringing use of the work immediately before the infringement began".

The bill also limits the availability of injunctive relief.

Copyrights in photographs, drawings, designs, and other non-textual works are not organized in searchable databases of the Copyright Office or any other entity. Hence, their owners are not subject to location. These creators would be substantially harmed by enactment of this bill into law. Although, HR 5889 is less harsh on creators than the bills considered in the 109th Congress.

The bill does nothing to limit the statutory remedies under the anti-circumvention provisions of the Digital Millennium Copyright Act (DMCA).

The term "orphan works" is not descriptive of the content of the bill. This term implies that the creators of the works have died, and hence are not caring for, or economically exploiting their works. However, the bill would deprive creators of remedies under copyright law for works created today, and that the owners are attempting to sell or license.

Rep. Ric Keller (R-FL) commented at the mark up that it is hard to vote against a bill that is named after orphans, particularly when they are working, like Little Orphan Annie.

Rep. Schiff responded that, actually, Annie is not an orphan. She is owned by a movie studio.

See also, U.S. Trademark Registration No. 0250088.

Rep. Schiff's comment highlights a consequence of this bill. The ability of movie studios, as well as record companies, book publishers, computer game makers, and software companies, to enforce their copyrights would be little affected by this bill. First, infringers would not prevail on the argument that they could not locate the owner the 1982 movie titled "Little Orphan Annie", or most other movies, CDs, or programs. Second, digital works are increasingly protected by technological measures that effectively control access to works. The DMCA provides remedies, which are not affected by HR 5889, for circumvention of these measures.