Order Code RL33392
CRS Report for Congress
Received through the CRS Web
“Orphan Works” in Copyright Law
Updated September 5, 2006
Robin Jeweler
Legislative Attorney
American Law Division
Congressional Research Service ˜ The Library of Congress
“Orphan Works” in Copyright Law
Summary
This report surveys the findings and conclusions in the U.S. Copyright Office’s
Report on Orphan Works and legislation introduced to address the problem. Orphan
works are copyrighted works whose owners are difficult or impossible to identify
and/or locate. The goal of the Report was to elicit public comment and evaluate the
extent of real or perceived problems that content users encounter in their efforts to
use these works.
Orphan works are perceived to be inaccessible because of the risk of
infringement liability that a user might incur if and when a copyright owner
subsequently appears. Consequently, many works that are, in fact, abandoned by
owners are withheld from public view and circulation because of uncertainty about
the owner and the risk of liability.
The Report defines the problems it identified, and concludes that the problem
is indeed real and should be addressed legislatively. It analyzes stakeholders’ views
on the issue and constraints on solutions imposed by the structure of U.S. copyright
law and international copyright obligations. The Report sets forth a proposal to
amend the Copyright Act by adding a provision that would limit liability for
infringing use of orphan works when, prior to use, a user performs a reasonably
diligent search for the copyright owner and provides attribution to the author and
copyright owner, if possible. In some instances, when copyright infringement is
made without commercial advantage and the user ceases infringement promptly after
receiving notice thereof, no monetary relief would be available.
H.R. 5439, 109th Congress, 2d Sess. (2006), the Orphan Works Act of 2006,
would, if enacted, implement a limitation on liability for specified infringement of
orphan works. The bill adopts many of the suggestions of the Copyright Office,
although it takes a more detailed approach in establishing requirements for a
limitation on liability, such as articulating standards for a “reasonably diligent
search.” The bill would direct the Copyright Office to study and report on the
implementation of the new orphan works amendment, and to study and make
recommendations for a “small claims” procedure to address copyright infringement.
Contents
Background . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1
Defining the Problems Associated with Orphan Works . . . . . . . . . . . . 1
Obstacles to Obtaining Permission . . . . . . . . . . . . . . . . . . . . . . . . . . . . 2
Copyright Infringement Litigation and Damages . . . . . . . . . . . . . . . . . 4
The Report on Orphan Works . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4
The Copyright Office’s Recommendation . . . . . . . . . . . . . . . . . . . . . . . 6
H.R. 5439, 109th Congress, 2d Sess., the Orphan Works Act of 2006 . 8
“Orphan Works” in Copyright Law
Background. In response to recent requests by several Members of Congress,
the U.S. Copyright Office agreed to examine issues surrounding “orphan works.”
Orphan works are copyrighted works whose owners are difficult or impossible to
identify and/or locate. In January 2005, the Copyright Office issued a Notice of
Inquiry requesting public comment from interested parties on the subject.1 The
Office accepted written comments and hosted public roundtable discussions on the
topic. In January 2006, it issued its Report on Orphan Works, which includes
proposed legislative language to address the problem identified.2 On March 8, 2006,
the House Subcommittee on Courts, the Internet, and Intellectual Property held a
hearing on orphan works.3 The Senate Judiciary Committee held a hearing on April
6, 2006.4
This report surveys the findings of the Report on Orphan Works and considers
the Copyright Office’s proposed amendment to the Copyright Act to address the
issue.
Defining the Problems Associated with Orphan Works. The
constitutionally authorized grant of a limited monopoly to copyright holders is
intended “To promote the Progress of Science and useful Arts” by producing
incentives for creative works and their dissemination to the public.5 Ultimately, it is
the public interest that supports allowing copyright holders to financially exploit the
value of their creative efforts by controlling access to protected work. Someone who
wants to exercise one or more of the copyright holder’s exclusive rights in a
copyrighted work must obtain permission to do so.6 The terms for usage and
recompense, if any, are negotiated and agreed to by the rights’ holder and the
prospective user.7
1 Copyright Office, Orphan Works: Notice of Inquiry, 70 FED. REG. 3739 (Jan. 26, 2005).
2 The full report is available on the U.S. Copyright Office’s website at [http://www.
copyright.gov/orphan/orphan-report-full.pdf]. Additional material, including the Notice of
Inquiry and proceedings from the roundtable meetings, are also available there.
3 See House IP Panel Chairman Pledges to Move Orphan Works Legislation in ‘Coming
Weeks,’ 71 BNA PATENT, TRADEMARK & COPYRIGHT J 521 (March 17, 2006).
4 Orphan Works: Proposals for a Legislative Solution: Hearing before the Senate Comm.
on the Judiciary, 109th Cong., 2d Sess. (2006) at [http://judiciary.senate.gov/hearing.
cfm?id=1847].
5 U.S. Constitution, Art. 1, § 8, cl. 8.
6 17 U.S.C. § 106.
7 In some cases, the Copyright Act prescribes terms for usage through compulsory licensing,
but alternatives to traditional negotiated terms of usage are not discussed herein.
CRS-2
When an owner cannot be identified or located, a protected work is an “orphan”
work. Many believe that orphan work status renders a work inaccessible. The
inaccessibility arises from the risk of liability that a user might incur for copyright
infringement if and when a copyright owner subsequently appears:
First, the economic incentive to create may be undermined by the imposition of
additional costs on subsequent creators wishing to use material from existing
works. Subsequent creators may be dissuaded from creating new works
incorporating existing works for which the owner cannot be found because they
cannot afford the risk of potential liability or even of litigation. Second, the
public interest may be harmed when works cannot be made available to the
public due to uncertainty over its copyright ownership and status, even when
there is no longer any living person or legal entity claiming ownership of the
copyright or the owner no longer has any objection to such use.8
This risk of infringement may be particularly burdensome when a creator
incorporates protected work into a new adaptation or transformative work. How then
is public policy best served by facilitating the public’s access to and use of such a
work? And how best to define what constitutes an orphan work for infringement
purposes, to facilitate access to orphan works, and to promote their use without
vitiating the copyright or unfairly appropriating the work into the public domain?
Obstacles to Obtaining Permission. Copyright law is the engine driving
a vast private market of rights’ holders and users. The structure of the law in many
ways shapes the intellectual property (IP) marketplace for negotiations between
owners and users, but it does not control all aspects of it. Notifying the public of
ownership is the responsibility of the rights’ holder. Determining whether a work is
protected and identifying the actual owner of the copyright (who may or may not be
the creator) is the responsibility of the prospective user. But the identification
process can be extremely complicated, difficult, and in many cases, prohibitively
costly. There are many components to the determination of whether something is
likely to be covered by copyright.9 The prospective user must first make a
preliminary determination as to whether a work is indeed copyrighted or has passed
into the public domain.10 Changes to the term of copyright effected by repeal of the
1909 law and adoption of the 1976 Act, subsequent extensions to the term, and the
abandonment of “formalities” (discussed infra), all work to complicate calculations
of the likely subsistence of copyright, particularly with respect to works created prior
to 1978.11
8 Notice of Inquiry, 70 FED. REG. at 3741.
9 See U.S. Copyright Office, Circular 22: How to Investigate the Copyright Status of a Work
at [http://www.copyright.gov/circs/circ22.html].
10 A chart entitled Copyright Term and the Public Domain in the United States,1 January
2006 at [http://www.copyright.cornell.edu/training/Hirtle_Public_Domain.htm] provides an
illustration of factors, such as publication, copyright notice, and renewal, that might apply
in determining whether a work has entered the public domain.
11 See U.S. Copyright Office, Circular 15A: Duration of Copyright at [http://www.copyright.
gov/circs/circ15a.html]; Circular 15t: Extension of Copyright Terms. at [http://www.
copyright.gov/circs/circ15t.html].
CRS-3
A Universal Registry of Copyright Owners. Although registration with the
U.S. Copyright Office is most authoritative, there is no universal copyright registry.
Various registries or databases exist to allow identification of copyright holders in
various industries or mediums, but they are essentially voluntary, so checking with
a database may not be dispositive regarding copyright status and/or ownership.12
Furthermore, because IP is indeed property, through sale, assignment, or bequest,
over time, ownership rights may be transferred. Older works of minimal commercial
value may essentially be neglected or abandoned. Finding a copyright owner for
them can be challenging.
Formalities. Under the 1909 Copyright law, there were many specific actions,
i.e., “formalities,” that needed to be taken by the creator/owner in order to create a
valid copyright. Failure to do so could void the copyright. Among the essential
formalities were posting of a notice of copyright on a work and registration with the
U.S. Copyright Office. At the expiration of the first 28-year term of copyright, a
renewal had to be filed to extend protection for another 28-year term.13 Observing
formalities as a prerequisite to creating a valid copyright was abandoned under the
1976 Copyright Act. Under current law, a copyright is created automatically when
the creative expression is fixed in tangible form. Copyright formalities were rejected
in the 1976 law for several reasons. The legislative history notes the concern that
rigid formalities put an undue burden on creators, who could lose copyright
protection in its entirety for failure to comply with a formality requirement.14 A
primary goal, however, was to harmonize U.S. copyright law with international
treaties and practice, where formalities are not a requirement for copyright protection.
Nevertheless, changes to U.S. law significantly complicated the process of
identifying copyright holders. One consequence of the formalities requirements
associated with copyright creation was notice and registration. A search of copyright
registration records was more — though not definitively — likely to help a
prospective user determine both copyright status and owner information.
Copyright Infringement Litigation and Damages. Under the current law
for works created after 1978, an owner may register a work at any time during the
subsistence of the copyright.15 A work must be registered prior to the rights’ holder
12 See, for example, online indices for a music performing rights organization (PRO) such
as ASCAP at [http://www.ascap.com] or the Harry Fox Agency at [http://www.
songfile.com], or photo clearing houses such as Photographers Index at [http://www.
photographersindex.com/].
13 See U.S. Copyright Office, Circular 15: Renewal of Copyright at [http://www.copyright.
gov/circs/circ15.html].
14 See H.Rept. 94-1476, 94th Cong., 2d Sess. 147 (1976) and S. Rept 94-473, 94th Cong., 2d
Sess. 130 (1976). ( “[The bill] takes a middle-ground approach in an effort to encourage use
of a copyright notice without causing unfair and unjustifiable forfeitures on technical
grounds.”).
15 17 U.S.C. § 408.
CRS-4
bringing suit for infringement;16 registration is also necessary in order for a owner to
seek statutory damages for infringement.17
In the event that a court finds copyright infringement, it may issue an injunction
to prevent or stop it,18 and award monetary damages. Damages may be the actual
value of lost profits, or damages set by statute, known as “statutory damages.”19
Statutory damages prescribe amounts that may be significantly higher than actual
damages for lost profits — from $750 to $150,000. The amount of statutory damages
may be increased in cases where a court finds that infringement was willful or,
correspondingly, reduced when it finds the infringement was “innocent,” i.e., the
infringer was “not aware and had no reason to believe that his or her acts constituted
an infringement,” or the infringer had reasonable grounds to believe that the use was
a fair use under § 107. A court may also award court costs and attorneys’ fees.20 In
other words, registration, with its effect of creating a searchable record and thereby
providing public notice of ownership, is not legally required to create a copyright,
but to enforce it. The existence of statutory damages and the award of attorneys’ fees
facilitates enforcement of infringement liability by rights’ holders when actual
damages may not support the costs of litigation.
The Report on Orphan Works. By conducting stakeholder discussions and
reviewing extensive submissions of comments, the U.S. Copyright Office’s study
considers the landscape surrounding orphan works.
At the outset, it sets forth what were not considered to be orphan work
problems, namely, situations where a prospective user contacted the owner but did
not receive permission to use the work.21 The analysis also narrows the situations
in which it views orphan works as presenting an insurmountable problem to
prospective users. It delineates several provisions of the copyright law that might
permit use of an orphan work (or any copyrighted work) absent an owner’s
permission:
! The “idea/expression” dichotomy, rooted in the First Amendment
and codified at 17 U.S.C. 102(b), prohibits copyright protection for
ideas, procedures, concepts, etc. that may otherwise be embodied in
a copyright-protected work.22 This jurisdictional limitation on
16 17 U.S.C. § 411.
17 17 U.S.C. § 412.
18 17 U.S.C. § 502.
19 17 U.S.C. § 504.
20 17 U.S.C. § 505.
21 Report on Orphan Works (hereinafter Report) at 2. “These include 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.”
22 Specifically, the “idea/expression” dichotomy, 17 U.S.C. § 102(b), prohibits copyright
(continued...)
CRS-5
copyright protection may be especially useful to prospective users of
works of non-fiction, and “utilitarian” works like computer
programs, textbooks, manuals, etc.23
! Fair use, codified at 17 U.S.C. § 107, permits limited use of
copyright-protected work for purposes such as criticism, comment,
news reporting, teaching, scholarship, or research.
! Other express exemptions in the Copyright Act at §§ 108, 110, and
117 allow specified uses of copyrighted works associated with
preservation, education, and religious activities.
The Report identifies many obstacles to identifying and locating copyright
owners and assigns general categories of uses that appear to be most impacted by
orphan works, namely, uses by “subsequent creators” who may create a derivative
commercial work incorporating the orphan work; “large scale access uses” by
institutions such as libraries that make available a wide body of work to the public;
“enthusiast” uses by individuals who have an interest in a particular work, subject,
or artist; and “private” uses, the most common illustration being someone who
wishes to reproduce a family photograph or make a potentially infringing use of
obsolete or orphaned computer software.24
The Report explains that the 1976 Copyright Act arguably exacerbated the
orphan works problem by abandoning formalities such as renewal registration, and
why the international copyright regime to which the United States is a signatory both
precludes a re-adoption of formalities and limits the scope of permissible
exemptions to the copyright holders’ rights.25
The study reviews solutions proposed by those involved in the orphan works
dialogue. It groups and considers them in four categories, described in the Report as
follows:
• 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.
22 (...continued)
protection for any idea, procedure, process, system, method of operation, concept, principle,
or discovery.
23 Report at 53, citing at note 123, Eldred v. Ashcroft, 537 U.S. 186, 219-21 (2003).
24 Id. at 36-40.
25 “In considering legislative solutions to the orphan works problem it is important to keep
in mind the requirements of the international instruments to which the United States has
agreed: exercise and enjoyment of a copyright right cannot be conditioned on a formality,
any exceptions or limitations on copyright must conform to the three-step test [under
international treaty obligations], and the effect on the owner’s remedies must comply with
the various remedy rules.” Id. at 68.
CRS-6
• 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.
• 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.
• 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.26
It also considers several of the solutions proposed. For example, one approach
might be that utilized by the Canadian Copyright Board, which reviews applications
for use of orphan works and approves them prior to use. This method receives
support by some for the certainty that it provides and opposition by others who view
it as administratively cumbersome, expensive, and largely ineffective in promoting
actual use of orphan works.
The Copyright Office’s Recommendation. The Report concludes that the
orphan work problem, though difficult to describe and quantify, is indeed real.
Though some instances of non-infringing use of such works may be effected under
other sections of the law, there are still many situations in which prospective users
lack guidance on whether and how they may use orphan works, and authority to do
so. The Report recommends statutory language to remedy the orphan works
problem,27 with a detailed supporting rationale.
The proposal takes the approach of limiting remedies for the copyright owner
if a user satisfies new statutory requirements for use of an orphan work. The
proposed language would add a new § 514 under chapter 5 of the Copyright Act,
dealing with copyright infringement and remedies. One who uses an orphan work
would be required to have performed “a good faith, reasonably diligent search” to
identify the copyright holder and provide “attribution to the author and copyright
owner of the work, if possible and appropriate.” If the user of a orphan work who
has satisfied the search and attribution requirements is subsequently sued by the
rights’ holder for infringement, the owner would be limited to “reasonable
compensation for the use of the infringed work.” When the infringement is made
without commercial advantage and the user ceases infringement promptly after
receiving notice thereof, no monetary relief would be available.
Injunctive relief, i.e., prohibiting continuing use of the infringing work, would
not be available when the orphan work is incorporated into a derivative work that
uses the protected work in a transformative manner, provided that the infringer pays
reasonable compensation to the copyright owner and provides attribution to the
protected work as reasonable. In all other cases, the court may impose injunctive
relief to prevent the continuing infringement, but would be directed to consider the
26 Id. at 69.
27 Id. at 127.
CRS-7
harm that relief would cause the infringer who has complied with orphan works
requirements in making the infringing use.
The proposed language specifies that nothing in its provisions would affect
other rights, limitations or defenses to copyright infringement, including fair use.
The provision would sunset ten years after enactment.
The goal of the proposal is to promote the good-faith use of true orphan works
by limiting damages available in the event that an owner appears and the user is
subsequently charged with infringement. The proposed solution attempts to balance
several competing interests:
Notice. Some content users complain about the lack of easy-to-use
comprehensive sources of information identifying copyright owners. Easier access
to ownership information would minimize mistakes by users in calculating whether
a work is actually an orphan work. But a solution that imposes notice or
identification requirements on rights’ holders as a condition of protecting their
copyright would violate both the Copyright Act and international treaty obligations
if its effect was to reinstate formality requirements. While it is obviously in the
interest of copyright holders to make the public aware of ownership, the proposal
would not impose additional regulatory burdens on owners, or the government, by
establishing new reporting mechanisms.
Certainty versus Flexibility. Many who promote access to orphan works seek
a system that best assures potential users that they will be exempt from copyright
infringement liability prior to usage. But any proposed orphan work exemption will
potentially affect a vast array of industries and media, such as movies, music, books,
and photographs. There are different physical characteristics, traditions, standards,
and business practices which affect the ease of researching ownership and obtaining
permissions for any given medium. Likewise, different users have different goals,
such as nonprofit versus commercial usage.
The approach suggested is in many ways comparable to copyright’s well-known
“fair use” exemption in its breadth and flexibility.28 Like fair use, the orphan work
exemption would be a defense to copyright infringement. The proposal takes a case-
by-case approach that would give a court discretion to consider behavior by both the
user and claimant. Did the user perform a “reasonably diligent search” with proper
attribution? Did the claimant decline to accept “reasonable compensation” for the
identified infringement, which, under the proposal, becomes, in effect, a statutory
cap on relief available? Arguably, it would share many of the strengths and
weaknesses of fair use. Among the former is flexibility to accommodate a broad
range of media and situations. Among the latter may be difficulty assessing the
likelihood of the success of the defense, and costs that may be unintentionally
incurred.
Standards. The proposal does not define terms such as “reasonably diligent
search,” although much discussion is provided. Best practices for media-specific
28 17 U.S.C. § 107.
CRS-8
searches are likely to evolve over time through collaborative efforts and judicial
interpretation. Likewise the notion of reasonable compensation is a fluid one,
another factor that is viewed as advantageous or non-advantageous by different
parties. Critics among users point to difficulties when the amount of liability
exposure is uncertain. Critics among owners worry that courts interpreting the term
may depress the value of “reasonable compensation,” by valuing it at what the user
proposes to pay absent negotiations. They fear that it may amount to a statutory
royalty rate.
Damages. Because the proffered exemption is a defense to copyright
infringement, the costs of litigation were considered in the discussion. Indeed, the
Report spells out at great length the concerns expressed by both content owners and
users on the burdens imposed by having to litigate a claim of or a defense to
infringement. Users argue that the prospect of statutory damages has a chilling effect
on their use of valuable historic material, for example, documentary film footage. But
many owners assert that a limitation on the remedies for infringement would make
enforcement impracticable. They simply cannot enforce their copyright if the
enforcement costs more than recoverable damages.
Visual Arts. Photography and visual arts pose special challenges for copyright
ownership identification generally, and, consequently, in connection with orphan
works. By their very nature, they are difficult to source. Critics are concerned that
the orphan work proposal would affect illustrations and photographs
disproportionately because images are commonly published, by tradition or business
practice, without identifying information. If a visual representation contains
identifying information, it may be, and often is, easily removed. Verbal registries
cannot adequately describe visual representations, e.g., “nine abstract dogs in an
abstract garden.”29 Visual registries may contain prohibitively voluminous entries
and be too difficult to search. They fear enactment of the orphan works proposal
might interfere with commercial markets for visual work; that it could have the effect
of “legalizing” infringement where ever the rights’ holder cannot be identified or
located; that it will put too great a burden on rights’ holders to exercise diligence in
monitoring infringing use; and that limiting recoverable damages will make
enforcement actions economically unfeasible. The de facto result, they contend,
would deprive visual artists of meaningful copyright protection.30
H.R. 5439, 109th Congress, 2d Sess., the Orphan Works Act of 2006.
A bill incorporating many of the recommendations of the Copyright Office was
introduced and reported by the House Subcomm. on Courts, the Internet, and
Intellectual Property in May 2006.
29 Roy de Forest, County Dog Gentleman, 1972, San Francisco Museum of Modern Art.
30 See statement of David P. Trust, CEO of Professional Photographers of America before
the House Judiciary Committee (March 8, 2006), at [http://judiciary.house.gov/oversight.
aspx?ID=221]; statement of Victor Perlman, General Counsel of the American Society of
Media Photographers, and statement of Brad Holland, Founding Board Member, Illustrators’
Partnership of America, before the Senate Judiciary Committee (April 6, 2006), at [http://
judiciary.senate.gov/hearing.cfm?id=1847].
CRS-9
The bill would add a new § 514 to the Copyright Act entitled “Limitation on
remedies in cases involving orphan works.” It would essentially implement the
Copyright Office’s proposal to limit liability for an infringing use of an orphan work.
As a prerequisite to qualifying for the limitation, the infringer must sustain the
burden of proving that he or she performed and documented a reasonably diligent
search in good faith but was unable to locate the owner. The infringing use must
provide reasonable attribution to the author and owner “if known with a reasonable
degree of certainty based on information obtained in performing the reasonably
diligent search.”31
The bill provides significantly greater detail than the Copyright Office’s
proposed language. H.R. 5439 sets forth standards to establish what is a “reasonably
diligent search.” Lack of identifying copyright information on the work, by itself,
cannot support an assertion or finding of a diligent search. A search must include
steps that are “reasonable under the circumstances” to locate an owner, which would
include, at a minimum:
! review of information maintained by the Copyright Office; and
! use of expert assistance and available technology, which may
include resources for which a charge or subscription fee is imposed,
if reasonable under the circumstances.
Copyright Office Assistance. The Copyright Office currently provides some
assistance in searching its records. It will conduct a search of its records for a fee.32
And, it publishes general background information on conducting copyright
searches.33
The bill significantly expands the scope of guidance that the Copyright Office
must make available to the public to educate and assist in researching copyright
ownership. Specifically, it is directed to provide information from “authoritative
sources,” such as industry guidelines and statements of best practices to assist users
who conduct searches. Information may include the Copyright Office’s own records,
but should also address other sources of available copyright ownership information;
methods to identify copyright ownership; sources of available technology and expert
assistance; and, suggestions for best practices to document a search. The extent to
which a user’s reliance upon Copyright Office-provided guidance and information
may satisfy the legal requirement that the user conduct a “reasonably diligent search”
in possible infringement litigation is not addressed.
Limitations on Remedies. The heart of the bill is the limitation on monetary
damages when the use of an orphan work is found to be infringing. Users who have
satisfied statutory criteria will be required to pay “reasonable compensation” for the
31 Sec. 2 of H.R. 5439 adding a new § 514(a)(1)(B).
32 See [http://www.copyright.gov/forms/search_estimate.html].
33 See, e.g., Circular 22, How to Investigate the Copyright Status of a Work at
[http://www.copyright.gov/circs/circ22.html].
CRS-10
use of the infringed work, provided that they negotiate “in good faith” with the owner
to determine compensation. The burden of proof to establish “reasonable
compensation” falls upon the owner of the infringed copyright. The term means “the
amount on which a reasonable buyer and a reasonable willing seller in the positions
of the owner and the infringer would have agreed with respect to the infringing use
of the work immediately before the infringement began.”34
A user who infringes without any purpose of commercial advantage for a
charitable, religious, scholarly, or educational purpose may be exempt from the
requirement to pay compensation if he or she ceases the infringing use after receiving
notice of the claim for infringement. Before a court awards injunctive relief, it is
directed to take into account any harm that the relief would cause the infringer who
has performed a diligent search. A court may not enjoin the infringing use of an
orphan work when it is incorporated into a new work of authorship, so long as the
infringer pays reasonable compensation and provides attribution to the owner of the
infringed work.
Parties Not Subject to Suit. A party or entity that asserts that it is not subject to
suit in federal court or liable for money damages for infringement under the
Copyright Act may not avail itself of the limitations on remedies for infringing
orphan works unless several conditions are met. A court must find that the party
complied with diligent search requirements, made a good faith offer of compensation
which was rejected by the copyright holder, and will assure the court of its
willingness to pay reasonable compensation.
This provision appears to be directed at any state which may assert immunity
against liability for copyright infringement in accordance with the U.S. Supreme
Court’s Eleventh Amendment jurisprudence.35 The U.S. Supreme Court, in a series
of decisions, has interpreted the Eleventh Amendment of the U.S. Constitution as
limiting Congress’s authority to abrogate state sovereign immunity. Consequently,
a state may not be sued in federal court for copyright infringement.36
Reports to Congress. The bill directs the Register of Copyrights to report to
Congress on the implementation and effects of the limitation of liability for orphan
works, including any recommendations for change.
The Register is also directed to conduct an inquiry with respect to remedies for
“small” copyright infringement claims, that is, those seeking limited amounts of
money damages. This requirement appears to address the concerns of participants
34 Sec. 2 of H.R. 5439 adding a new § 514(b)(3).
35 Seminole Tribe of Fla. v. Florida, 517 U.S. 44 (1996); Florida Prepaid Postsecondary
Educ. Expense Bd. v. College Savings Bank, 527 U.S. 627 (1999) and College Savings Bank
v. Florida Prepaid Postsecondary Educ. Expense Bd.527 U.S. 666 (1999). A detailed
discussion of state immunity from copyright infringement litigation is beyond the scope of
this report.
36 See, e.g., Chavez v. Arte Publico Press, 204 F.3d 601 (5th Cir. 2000); see also Pennington
Seed Inc. v. Produce Exchange No. 299, 2006 U.S. App. LEXIS 20363, (Fed. Cir. Aug. 9,
2006)(holding that the University of Arkansas is immune from a patent infringement suit).
CRS-11
in the orphan works roundtables who expressed frustration at the expense of litigating
a claim for copyright infringement. The Copyright Office is to invite public
comment and conduct roundtables. At the conclusion, the Office will submit a report
including such recommendations that the Register considers appropriate.
crsphpgw