House CIIP Subcommittee Holds Hearing on Orphan Works

March 8, 2006. The House Judiciary Committee's Subcommittee on Courts, the Internet, and Intellectual Property (CIIP) held a hearing on the Copyright Office's (CO) report [133 pages in PDF] titled "Report on Orphan Works".

"Orphan works" is a term used to describe certain copyrighted works. The CO's report proposes legislation to substantially lessen the copyright protection afforded to orphan works. Some works are literally orphan in the sense that the creator has died and abandoned the work. A subsequent user cannot find any copyright owner from whom to license the work.

However, for some works, the term orphan is relative. From the perspective of the user, or infringer, a work is orphan if the owner of a copyrighted work cannot be identified and located. From the perspective of the creator of the work, who asserts copyright, and who seeks to derive income from licensing the work, the work is not and should not be labeled orphan and subjected to diminished legal protection.

The CIIP Subcommittee heard from one group, photographers, who label their works, and seek to license them, but who still would likely have some of their works declared orphan works under the CO's legislative proposal. The Subcommittee also heard from the CO and users of orphan works, who support the CO proposal.

See, prepared testimony [21 pages in PDF] of Jule Sigall (primary author of the report), prepared testimony [PDF] of Allan Adler (Association of American Publishers), prepared testimony of David Trust (Professional Photographers of America), and prepared testimony [10 pages in PDF] of Maria Pallante (Guggenheim Museum).

Sigall wrote in his prepared testimony that "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."

But, he added that some groups, including photographers, are opposed to the report. The problem is that CO registrations, and searchable data, is in text, while photographers are not in text. This makes is harder to locate the owners of photographers. Also, the Guggenheim Museum's representative testified that museums are deliberately aggravating the problem by declining to attribute the owners of copyrighted works.

The Copyright Office's proposed legislative language is, in full, as follows:

  (a) Notwithstanding sections 502 through 505, where the infringer:
    (1) prior to the commencement of the infringement, performed a good faith, reasonably diligent search to locate the owner of the infringed copyright and the infringer did not locate that owner, and
    (2) throughout the course of the infringement, provided attribution to the author and copyright owner of the work, if possible and as appropriate under the circumstances, the remedies for the infringement shall be limited as set forth in subsection (b).
      (A) no award for monetary damages (including actual damages, statutory damages, costs or attorney’s fees) shall be made other than an order requiring the infringer to pay reasonable compensation for the use of the infringed work; provided, however, that where the infringement is performed without any purpose of direct or indirect commercial advantage, such as through the sale of copies or phonorecords of the infringed work, and the infringer ceases the infringement expeditiously after receiving notice of the claim for infringement, no award of monetary relief shall be made.
      (A) in the case where the infringer has prepared or commenced preparation of a derivative work that recasts, transforms or adapts the infringed work with a significant amount of the infringer’s expression, any injunctive or equitable relief granted by the court shall not restrain the infringer's continued preparation and use of the derivative work, provided that the infringer makes payment of reasonable compensation to the copyright owner for such preparation and ongoing use and provides attribution to the author and copyright owner in a manner determined by the court as reasonable under the circumstances; and
      (B) in all other cases, the court may impose injunctive relief to prevent or restrain the infringement in its entirety, but the relief shall to the extent practicable account for any harm that the relief would cause the infringer due to the infringer’s reliance on this section in making the infringing use.
  (c) Nothing in this section shall affect rights, limitations or defenses to copyright infringement, including fair use, under this title.
  (d) This section shall not apply to any infringement occurring after the date that is ten years from date of enactment of this Act.

Jule Sigall summarized the CO report, and reaction that the CO has received to the report. Adler and Pallante both praised the CO report, and offered suggestions for further limiting the rights of authors.

Adler represents book publishers, which both own and use copyrighted works. He proposals were tailored and technical. Pallante's recommendations were broader.

David Trust was the sole representative on the panel of an author's group. He said that the CO's legislative proposal, if enacted into law, would have a "devastating effect" upon photographers. He said that the proposal provides a way to skirt the rights of creators, by leaving them without any effective legal remedy for unlicensed copying of their works.

Trust said that "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."

He said that 90% of the members of the Professional Photographers of America mark their works in various ways. However, users fail to attribute, remove labels, and remove digital marks and tags on digital photographs.

Rep. Smith followed up on this in his questions. The book publishers' Allen Adler said that the book publishers go to great lengths to track down owners of copyrights in photographs, and do credit the copyright owner.

The Guggenheim Museum's Pallante took the opposite approach when Rep. Smith asked her about crediting copyright owners. She said that no, museums do not want to give credit to copyright owners. She elaborated on this in more detail in her prepared testimony. She wrote that we "disagree that users should credit copyright owners".

This practice contributes to the inability of subsequent users to locate the owners of copyrighted works. The Guggenheim Museum argues both that users should be able to strip owner information from works, and that users should then be able to avoid normal infringement liability on the basis that the owners cannot be located.

Pallante also argued that the Guggenheim Museum and others should qualify for the limitation of award of monetary relief in the legislative proposal when it engages in commercial infringement. The proposal states that "no award of monetary damages ... shall be made other than ... reasonable compensation ... where the infringement is performed without any purpose of direct or indirect commercial advantage, such as through the sale of copies ..." She said that the museum wants to be able to sell books with infringing works, and sell admission tickets to exhibits with infringing works, and yet still qualify for the limitation on award of damages.

Trust argued in his prepared testimony that "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."

Rep. Smith asked Sigall how he proposed to address the concerns of the photographers. Sigall said that "We have heard of two suggestions that might help 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, 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 that the current status quo rules would still apply."

Sigall continued that "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."

He said that the second suggestion "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 what the orphan works designation would be."

Rep. Darrell Issa (R-CA) raised the subject of whether copyright law might incorporate something similar to the notion of trademark abandonment. Jule Sigall responded that the international copyright system, as embodied in the TRIPS Agreement, prohibits imposing formalities on copyrights.

Rep. Issa also asked whether orphan works legislation should include the principle that if one subsequent user has located a copyright owner, and licensed the work, that should overcome the claim of another user that he was unable to locate the owner after a diligent search. Trust agreed.

Rep. Smith stated that the CO has achieved 80 or 90 percent agreement on its report.

Rep. Smith stated at the conclusion of the hearing that he wanted interested parties to come to an agreement on proposed legislative language by the end of March.

Rep. Zoe Lofgren (D-CA) and Rep. Howard Berman (D-CA) also participated in the hearing.

Media photographers rarely attend hearings of the CIIP Subcommittee. However, a group came to this hearing, and took photographs. Most left after photographing Trust's testimony.

See also, story titled "Copyright Office Recommends Orphan Works Legislation" in TLJ Daily E-Mail Alert No. 1,302, February 2, 2006. Location: Room 2141, Rayburn Building.