|House IP Subcommittee Approves Orphan
5/7. The House Judiciary Committee's
(HJC) Subcommittee on Courts, the Internet and Intellectual Property (SCIIP) amended
and approved HR 5889
the "Orphan Works Act of 2008".
The Subcommittee approved by unanimous voice vote a
[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,
Rep. Adam Schiff (D-CA) offered, but
later withdrew, two amendments. (See,
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".
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
"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.
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
|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
[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
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.
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
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
"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
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 |
"Shawn Bentley Orphan Works Act Of 2008", and S 1738
"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
|Friday, May 9
schedule for week of May 5 states that "no votes are expected in the
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
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
|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,
Location: Heritage, 214 Massachusetts Ave., NE.
TIME?. The Department of State's (DOS)
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
notice in the Federal Register, February 28, 2008, Vol. 73, No. 40, at Page 10854.
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
Deadline to submit comments to the National
Institute of Standards and Technology's (NIST) Computer
Security Division (CSD) regarding
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
No. 73 (700 MHz auction), and a Fourth Memorandum Opinion and Order on narrowbanding.
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,
postponement. Location: SEC, Room L-002, 100 F St., NE.
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.
|About Tech Law Journal
Tech Law Journal publishes a free access web site and
subscription e-mail alert. The basic rate for a subscription
to the TLJ Daily E-Mail Alert is $250 per year. However, there
are discounts for subscribers with multiple recipients. Free one
month trial subscriptions are available. Also, free
subscriptions are available for journalists,
federal elected officials, and employees of the Congress, courts, and
executive branch. The TLJ web site is
free access. However, copies of the TLJ Daily E-Mail Alert are not
published in the web site until one month after writing. See, subscription
P.O. Box 4851, Washington DC, 20008.
dba Tech Law Journal. All rights reserved.