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May 7, 2008, Alert No. 1,762.
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House IP Subcommittee Approves Orphan Works Bill

5/7. 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, 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.

House Commerce Committee Members Advocate Keeping ICANN and Root Server System in US

5/6. Sixteen members of the House Commerce Committee (HCC) sent a letter [PDF] to Secretary of Commerce Carlos Gutierrez regarding the Department of Commerce's (DOC) National Telecommunications and Information Administration's (NTIA) relation with the Internet Corporation for Assigned Names and Numbers (ICANN), and in particular, the agreements between the NTIA and the ICANN titled "Memorandum of Understanding" (MOU), or "Joint Project Agreement" (JPA).

The HCC members want both the ICANN headquarters and root server system to remain in the U.S.

The signers of the letter include Rep. John Dingell (D-MI), Rep. Joe Barton (R-TX), Rep. Ed Markey (D-MA), and Rep. Cliff Stearns (R-FL), the Chairman and ranking Republicans of the HCC and its Subcommittee on Telecommunications and the Internet.

They wrote that "Any change that threatens the important U.S. role in promoting U.S. commercial and free speech principles on the Internet can only hurt the consumers and businesses that count on this network every day."

They wrote that "While it remains the best option for reaching consensus in an increasingly divided world, we also believe ICANN can and should ensure transparency and promote greater accountability in its operations. We certainly hope that the Department will not abandon its role, now or in the near future, in facilitating the transition of the technical management and coordination of the domain name system to the private sector. The current model, which emphasizes private sector leadership, remains a sound approach to ensure the stability and security of the Internet."

They also asked Gutierrez to respond to a set of written interrogatories within two weeks. First, the asked whether, and if so how, the DOC intends to continue its oversight role of ICANN "to ensure the stability and security of the core Internet infrastructure?"

They also asked whether the DOC intends "to ensure that the key facilities of the root server system continue to be housed in the United States?"

Finally, they wrote this. "The Chairman of ICANN said in February 2008, at the Department's public meeting, ``Among the respondents there were concerns expressed that ICANN will leave the United States and seek broad immunities from legal process by third parties or contracting parties. Let me be loud and clear on this. That will not happen. The U.S. for historic and practical reasons will remain ICANN's headquarters.´´ How does the Department intend to ensure that ICANN fulfills this commitment?"

See, February 28, 2008, speech [13 pages in PDF] by Peter Thrush, at page 12.

See also, NTIA document of April 2, 2008, titled "Statement on the Mid-Term Review of the Joint Project Agreement (JPA) Between NTIA and ICANN".

The ICANN has also solicited and received numerous comments on these and related issues. The following is a summary of some of these comments.

Tom Lenard, head of the Technology Policy Institute, wrote in a February 4, 2008, comment [8 pages in PDF] to the ICANN that "there are only two factors that make ICANN accountable: U.S. commercial law and the JPA. Therefore, terminating the JPA and the remaining tie to the U.S. government would be a major step."

He elaborated that "ICANN has indicated that it intends to continue operating under U.S. law. In the absence of a JPA, however, it is not clear what would prevent ICANN from trying to change that status in the future and perhaps operate as an international organization. That would be a major change, depriving companies who are subject to ICANN decisions recourse under U.S. law."

He concluded that "there are many countries that do not share our commitment to promoting innovation, free markets and the free flow of information. It is not difficult to envision a governance structure that would be far less friendly to the development of the Internet than the one we now have."

Robert Atkinson, head of the Information Technology and Innovation Foundation (ITIF) wrote in a comment [5 pages in PDF] that "the U.S. government has had and continues to play an important role in maintaining the security, stability, and openness of the Internet. Currently, the JPA provides a backstop to ensure that ICANN satisfies its responsibilities in effectively managing the Internet’s domain name and addressing system. This provides the necessary assurance to the millions of companies that invest in and use the Internet for business that the Internet will continue be governed in a fair, open and transparent manner. Given that private companies have been responsible for the deployment of the existing Internet infrastructure, the U.S. government should continue to support an Internet governance structure that provides these companies a voice for their concerns and interests."

Atkinson wrote that "Without the JPA providing an effective backstop to ICANN’s original operating principles, there would be no mechanism in place to stop foreign governments from interfering with ICANN’s operations. For example, Internet users and businesses worry that countries such as Russia or China may manipulate ICANN to censor online content."

Jim Dempsey, of the Center for Democracy and Technology (CDT), wrote in a comment [11 pages in PDF] dated January 25, 2008, that "there are countries that want to control the DNS. ICANN benefits today from a paradox: The current role of the U.S. government through the JPA and the separate contract with ICANN regarding the Internet’s root zone file protects the DNS against interference by other governments, some of which are much more likely to try to use any power over the DNS to interfere with innovation, competition and freedom of expression than the U.S. government has done under the present system. The fact is, despite a few very unwise lapses, the U.S. government has not harmed the core functions of the Internet and has not used its power over ICANN to interfere with the free flow of information, whereas other governments have made it clear that they would interfere if they could."

He added that "The continued role of the U.S. government is not optimal. It violates the express intent of the U.S. government when it created ICANN and is not justifiable on a long-term basis. However, at this point, ICANN has not identified procedures or mechanisms that would ensure in the long run its procedural transparency or protect it against undue commercial or governmental interference."

Fabrizio Vayra of Time Warner wrote in a comment [PDF] of February 15, 2008, that the ICANN's "decision-making processes remain convoluted and difficult for private sector companies to participate in effectively", and "much more needs to be done before ICANN can accurately lay claim to the label of being ``private-sector-led.´´"

Mike Kirk, head of the American Intellectual Property Law Association (AIPLA) wrote in a February 13, 2008, comment [4 pages in PDF] that "rampant trademark and copyright infringement taking place on the internet in the form of trademark cybersquatting, sale of counterfeit merchandise, unauthorized music and video downloads, etc. Criminal activity, including phishing (identity theft) and child pornography, continues and is growing. The ability to quickly identify and contact the operators of websites involved in these activities is critical to effective IP and law enforcement efforts." (Parentheses in original.)

He argued that "continued U.S. government involvement is critical to insuring the stability, integrity, and security of the internet; the enforcement of registrar contracts to ensure that abusers of the domain name system and other infringers are disciplined; and the continuation and enhancement of meaningful and effective private sector input into the management of the domain name system. We oppose any attempt to dilute private sector input by moving ICANN outside U.S. court jurisdiction and/or transitioning to a United Nations-like oversight and management regime."

Richard Nessary of eBay wrote in a February 15, 2008, comment [4 pages in PDF] that "As we police our trademarks online, and seek to prevent online frauds that threaten our community, eBay consistently encounters activity by ICANN-accredited registrars, and by domain name registries, that suggests non-compliance with contracts that these entities have signed with ICANN. These problems include, but are by no means limited to, compliance with contractual provisions relating to Whois."

He also wrote that "the current Whois system can and must be improved, especially with regard to the accuracy of Whois data, and with regard to the hiding of this data through proxy and private registration services".

Robin Gross of IP Justice wrote in a February 15, 2008, comment [3 pages in PDF] that the "ICANN needs to commit to the protection of civil liberties, in particular, respect and adherence to internationally recognized principles of freedom of expression and privacy rights. Given its unique function, ICANN must be required to provide at least the same level of protection to citizen’s fundamental rights that are enshrined in the Universal Declaration of Human Rights and numerous national laws. Therefore, a mechanism to ensure accountability for violations of citizens’ basic human rights to communicate freely and privately on the Internet must be put into ICANN’s governance structure before it can be cut-lose."

She argued for less intellectual property protection. She wrote that "ICANN has consistently bowed to the wishes of the intellectual property industry lobby and enacted policies that expand intellectual property rights in Cyberspace and curtail free expression and innovation. Another example can be found in ICANN’s ``whois´´ database policy, which publishes personal information about Internet users for worldwide publication, in violation of many international and national privacy laws."

The government of Syria submitted a comment [PDF] stating that the JPA should be ended. The government of Sudan submitted a comment stating that the JPA should be ended.

Washington Tech Calendar
New items are highlighted in red.
Thursday, May 8

The House will meet at 10:00 AM for legislative business. The House may resume consideration of HR 4279 [LOC | WW], the "Prioritizing Resources and Organization for Intellectual Property Act of 2007" or "PRO IP Act" under suspension of the rules. See, Rep. Hoyer's schedule for week of May 5, and schedule for May 8.

9:00 AM - 12:00 NOON. The House Intelligence Committee (HIC) will hold a closed meeting to mark up the FY 2009 Intelligence Authorization bill. See, notice. Location: Room H-405, Capitol Building.

9:30 AM. The U.S. Court of Appeals (DCCir) will hear oral argument in CTIA v. FCC, App. Ct. No. 07-1475. Judges Sentelle, Randolph and Rogers will preside. Location: 333 Constitution Ave., NW.

9:30 AM - 1:15 PM. The DC Bar Association will host a program titled "Essential Checklist for Electronic Discovery". The speakers will be John Facciola (Magistrate Judge, U.S. District Court for the District of Columbia), Conrad Jacoby (efficientEDD), and Courtney Barton (LexisNexis Applied Discovery). This event qualifies for continuing legal education (CLE) credits. Prices vary from $80 to $115. See, notice. Location: DC Bar Conference Center, B-1 Level, 1250 H St., NW.

10:00 AM. The Senate Judiciary Committee (SJC) may hold an executive business meeting. The agenda includes consideration of S 2913 [LOC | WW], the "Shawn Bentley Orphan Works Act Of 2008", and S 1738 [LOC | WW], the "Combating Child Exploitation Act". S 2913 degrades the remedies available to copyright owners in civil actions for infringement of copyright. S 1738 would, among other things, provide for more Department of Justice (DOJ) regional computer forensic laboratories, and provide that "crimes against children" are predicate offenses for the issuance of wiretap orders to state law enforcement agencies. The agenda also includes consideration of the nomination of Steven Agee to be a Judge of the U.S. Court of Appeals (4thCir). See, notice. The SJC rarely follows its published agendas. Location: Room 226, Dirksen Building.

10:00 AM. The House Science Committee (HSC) will hold a hearing titled "Fulfilling the Potential of Women in Academic Science and Engineering Act of 2008". See, notice. Location: Room 2318, Rayburn Building.

12:00 NOON - 1:00 PM. The U.S. Chamber of Commerce and the National Bureau of Asian Research will host a lunch. The speaker will be Christopher Padilla, Under Secretary of Commerce for International Trade. He will discuss the People's Republic of China's innovation and standards setting policies. The US Chamber states that "Credentialed members of the media are invited to attend. Please RSVP to Media Relations at the Chamber of Commerce at 202-463-5682" or press at uschamber dot com. Location: US Chamber, 1615 H St., NW.

12:00 NOON - 2:00 PM. The Federal Communications Bar Association's (FCBA) Diversity Committee and Young Lawyers' Committee will host an event titled "Mentoring Luncheon". For more information, contact Contact Andrea Barbarin at abarbarin at loctw dot com or 202-479-4844. The price to attend is $20.00. See, notice and online registration page. Location: Arnold & Porter, 10th floor, 555 12th St., NW.

2:00 PM. The U.S. Court of Appeals (FedCir) will hear oral argument en banc in In Re Bilski, App. Ct. No. 07-1130, an appeal from the an appeal from the U.S. Patent and Trademark Office's (USPTO) Board of Patent Appeals and Interferences (BPAI), regarding patentable subject matter. See, story titled "Federal Circuit Receives Amicus Briefs Re Business Method Patents and Patentable Subject Matter" 1,743, April 8, 2008. Location: Courtroom 201, 717 Madison Place, NW.

Deadline to submit comments to the Department of Education (DOE) in response to its notice of proposed rulemaking regarding the Family Educational Rights and Privacy Act of 1974 (FERPA). See, notice in the Federal Register, March 24, 2008, Vol. 73, No. 57, at Pages 15573-15602.

Friday, May 9

Rep. Hoyer's schedule for week of May 5 states that "no votes are expected in the House".

9:30 AM. The U.S. Court of Appeals (DCCir) will hear oral argument in In Re Sealed Case, App. Ct. No. 07-3132, and Steven Hatfill v. Baltimore Sun Company, App. Ct. No. 08-5049. Location: Courtroom 22 Annex, 333 Constitution Ave., NW.

10:00 AM. The U.S. Court of Appeals (FedCir) will hear oral argument in Praxair v. ATMI, App. Ct. No. 2007-1483, an appeal from the U.S. District Court (DDel) in patent infringement case involving the availability of injunctive relief in patent infringement cases following the Supreme Court's 2006, opinion [12 pages in PDF] in eBay v. MercExhange, which held that the traditional four factor framework that guides a court's decision whether to grant an injunction applies in patent cases. See also, story titled "Supreme Court Rules on Availability of Injunctive Relief in Patent Cases" in TLJ Daily E-Mail Alert No. 1,371, May 16, 2006. Location: Courtroom 402, 717 Madison Place, NW.

10:00 AM. The U.S. Court of Appeals (FedCir) will hear oral argument in Scanner Technologies v. ICOS Vision Systems, App. Ct. No. 2007-1399, an appeal from the U.S. District Court (SDNY) in a patent infringement case involving technology and processes to inspect electronic components. Location: Courtroom 201, 717 Madison Place, NW.

10:00 AM. The U.S. Court of Appeals (FedCir) will hear oral argument in Fargo Electronics v. Iris, App. Ct. No. 2007-1523, an appeal from the U.S. District Court (DMinn) in a patent infringement case involving identification card printing technology. Location: Courtroom 203, 717 Madison Place, NW.

12:00 NOON - 1:30 PM. The DC Bar Association will host panel presentation titled "Patent Litigation in China and Japan". The speakers will be Kevin McCabe (Sterne Kessler Goldstein & Fox), Xiaoguang Cui (Beijing Sanyou Intellectual Property Agency, Ltd.), and Yasuhiro Ichiba (Judge, Tokyo District Court, Criminal Division). The price to attend ranges from $10 to $30. For more information, contact 202-626-3488. See, notice. Location: DC Bar Conference Center, B-1 Level, 1250 H St., NW.

TIME? The U.S. Patent and Trademark Office's (USPTO) Patent Public Advisory Committee (TPAC) will meet. Location?

Sunday, May 11

Mothers Day.

Monday, May 12

12:00 NOON - 1:00 PM. The Heritage Foundation will host a panel discussion titled "Winning the Global Talent War: H-1B Visa Reform". The speakers will be James Sherk (Heritage), William Beach (Heritage), Kelly Hunt (U.S. Chamber of Commerce), and George Fisherman (Chief Counsel, House Judiciary Committee's Subcommittee on Immigration, Citizenship, Refugees, Border Security, and International Law ). See, notice. Location: Heritage, 214 Massachusetts Ave., NE.

TIME?. The Department of State's (DOS) International Telecommunication Advisory Committee (ITAC) will meet. The agenda may include advice for the U.S. government on the ITU World Telecommunication Standardization Assembly 2008 (WTSA 08), meetings of the Telecommunication Sector Advisory Group (TSAG), and group meetings on the International Telecommunication Regulations, cybersecurity, and other subjects. See, notice in the Federal Register, February 28, 2008, Vol. 73, No. 40, at Page 10854. Location?

Deadline to submit comments to the U.S. Patent and Trademark Office (USPTO) regarding information collection practices, and paperwork reduction, pursuant to the Paperwork Reduction Act of 1995. See, 44 U.S.C. § 3506(c)(2)(A) and notice in the Federal Register, March 12, 2008, Vol. 73, No. 49, at Pages 13211-13214.

Deadline to submit comments to the National Institute of Standards and Technology's (NIST) Computer Security Division (CSD) regarding SP 800-116 [55 pages in PDF], titled "DRAFT A Recommendation for the Use of PIV Credentials in Physical Access Control Systems (PACS)".

Tuesday, May 13

12:15 - 1:30 PM. The Federal Communications Bar Association's (FCBA) Mass Media Practice Committee will host a brown bag lunch titled "DTV Consumer Education Requirements: FCC Form 388 and Beyond". The speakers will be Eloise Gore (FCC) and Ann Bobeck (National Association of Broadcasters). Location: NAB, 1771 N St., NW.

Wednesday, May 14

9:30 AM. The Federal Communications Commission (FCC) may hold an event titled "Open Meeting". The agenda may include a Second Further Notice of Proposed Rulemaking related to the failed D Block component of Auction No. 73 (700 MHz auction), and a Fourth Memorandum Opinion and Order on narrowbanding. See, notice. Location: FCC, Commission Meeting Room, 445 12th St., SW.

RESCHEDULED FROM APRIL 21. 10:00 AM. The Securities and Exchange Commission (SEC) will meet. The agenda states that the SEC "will consider whether to propose amendments to provide for corporate financial statement information to be filed with the Commission in interactive data format, and a near- and long-term schedule therefor." See, notice of postponement. Location: SEC,  Room L-002, 100 F St., NE.

CANCELLED. 12:30 - 2:00 PM. The Progress & Freedom Foundation (PFF) will host an event titled "The Future of Broadcast Regulation: Markets or Mandates?".

Thursday, May 15

10:00 AM - 5:00 PM. Day one of a two day meeting of the National Science Foundation's (NSF) Advisory Committee for Cyberinfrastructure. See, notice in the Federal Register, April 11, 2008, Vol. 73, No. 71, at Page 19904. Location: NSF, 4201 Wilson Blvd., Room 1235, Arlington, VA.

12:00 NOON - 1:30 PM. The Alliance for Public Technology (APT) and The Children's Partnership (TCP) will host a brown bag lunch titled "Information Technology Making a Difference in Children's Lives". The speakers will be Joy Howell, Laurie Lipper, and Ken Kelly. Location: APT, 10th floor, 919 18th St., NW.

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