"Orphan Works" in Copyright Law
“Orphan Works” in Copyright Law
Updated October 10, 2008
Brian T. Yeh
American Law Division
“Orphan Works” in Copyright Law
This report surveys the findings and conclusions in the U.S. Copyright Office’s
Report on Orphan Works (“Report”), issued in January 2006, 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.
Adopting many of the suggestions of the Copyright Office, the Orphan Worksth
Act of 2006 was introduced in the 109 Congress, second session (H.R. 5439). This
bill was later incorporated into an omnibus copyright bill, appearing as Title II of The
Copyright Modernization Act of 2006 (H.R. 6052). However, the bill was not
addressed by the end of that Congress’s adjournment. The bill would have
implemented a limitation on monetary damage liability for specified infringement of
orphan works, but took a more detailed approach than the Report’s original proposals
in establishing requirements for such liability limitations, such as articulating
standards for a “reasonably diligent search.” The bill would also have directed 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.
Legislation addressing the orphan works issue was reintroduced in the 110th
Congress: the Orphan Works Act of 2008 (H.R. 5889) and the Shawn Bentley
Orphan Works Act of 2008 (S. 2913). The two bills have several provisions that
resemble the Orphan Works Act of 2006, although there are substantial differences
from that earlier legislation and even between themselves, including the House bill’s
requirement of a “Notice of Use” database, which does not appear in the Senate bill.
These additional or revised provisions were added in part to address concerns raised
by photographers, illustrators, and other visual artists, as well as textile and home
furnishing manufacturers. S. 2913 was passed by the Senate on September 26, 2008.
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, Second Session,
the Orphan Works Act of 2006...........................9
H.R. 5889, 110th Congress, Second Session,
the Orphan Works Act of 2008...........................9
S. 2913, 110th Congress, Second Session,
the Shawn Bentley Orphan Works Act of 2008..............14
Developments Since the Introduction of H.R. 5889 and S. 2913....15
“Orphan Works” in Copyright Law
In response to 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.2 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.3 Hearings were held in the 109th and 110th
Congresses on the orphan works problem.4
This report surveys the findings of the Report on Orphan Works (“Report”),
considers the Copyright Office’s proposed amendment to the Copyright Act to
address the issue, and analyzes introduced orphan works legislation.
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
1 This report was originally prepared by Robin Jeweler, Legislative Attorney.
2 Copyright Office, Orphan Works: Notice of Inquiry, 70 FED. REG. 3739 (Jan. 26, 2005).
3 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
4 “Report on Orphan Works by the Copyright Office”: Hearing before the House Subcomm.
on Courts, the Internet, and Intellectual Property, available at
[http://judiciary.house.gov/Oversight.aspx?ID=221]; Orphan Works: Proposals for a
Legislative Solution: Hearing before the Senate Comm. on the Judiciary, 109th Cong., 2d
Sess. (2006), available at [http://judiciary.senate.gov/hearing.cfm?id=1847]; Promoting the
Use of Orphan Works: Balancing the Interests of Copyright Owners and Users:Hearing
before the House Subcomm. on Courts, the Internet, and Intellectual Property, available at
[http://j udiciary.house.gov/ Oversight.aspx?ID=427].
5 U.S. CONST. ART. I, § 8, cl. 8. For more background information on copyright law, see
CRS Report RS22801, General Overview of U.S. Copyright Law, by Brian T. Yeh.
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
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 the8
copyright or the owner no longer has any objection to such use.
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
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.
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
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.
abandonment of “formalities” (discussed infra), all work to complicate calculations
of the likely subsistence of copyright, particularly with respect to works created prior
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.
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.
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
13 See U.S. Copyright Office, Circular 15: Renewal of Copyright at
[ ht t p: / / www.copyr i ght .gov/ ci r c s/ ci r c 15.ht ml ] .
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
Copyright Infringement Litigation and Damages. Under the current law
for works created after 1978, an owner may register a work at any time during the15
subsistence of the copyright. A work must be registered prior to the rights’ holder
bringing suit for infringement;16 registration is also necessary in order for a owner to17
seek statutory damages for infringement.
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 actual19
value of lost profits, or damages set by statute, known as “statutory damages.”
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
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
15 17 U.S.C. § 408.
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.”
!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
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
22 Specifically, the “idea/expression” dichotomy, 17 U.S.C. § 102(b), prohibits copyright
protection for any idea, procedure, process, system, method of operation, concept, principle,
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.
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.
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
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 into26
existence in the first place.
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 works 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
26 Id. at 69.
27 Id. at 127.
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
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
28 17 U.S.C. § 107.
likelihood of the success of the defense, and costs that may be unintentionally
Standards. The proposal does not define terms such as “reasonably diligent
search,” although much discussion is provided. Best practices for media-specific
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
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
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://
H.R. 5439, 109th Congress, Second Session, the Orphan Works Act
of 2006. The Orphan Works Act of 2006 incorporated many of the
recommendations of the Copyright Office and was introduced and reported by the
House Subcommittee on Courts, the Internet, and Intellectual Property in May 2006.
This bill was later imbedded in an omnibus copyright bill, appearing as Title II of
The Copyright Modernization Act of 2006 (H.R. 6052). The bill provided
significantly greater detail than the Copyright Office’s proposed language, including
setting forth specific standards to establish what is a “reasonably diligent search.”
However, no orphan works legislation was passed by the end of the 109th Congress’
H.R. 5889, 110th Congress, Second Session, the Orphan Works Act
of 2008. Introduced on April 24, 2008 by Representative Howard Berman, the
Orphan Works Act of 2008 resembles the prior Congress’ orphan works legislation
although it has substantial differences. 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 satisfy several conditions:31
Prior to Using the Orphan Work:
!Perform and document a “qualifying search” in good faith to locate
the owner of the infringed copyright;
!File with the Register of Copyrights a “Notice of Use”;
!Provide reasonable attribution to the owner of the infringed
copyright “if such owner was known with a reasonable degree of
certainty, based on information obtained in performing the
qualifying search”; and
!Include with the use of the infringing work a symbol or other notice
of use, in a manner prescribed by the Register of Copyrights.
If Sued for Infringement:
!Proves by a preponderance of the evidence that, before the
infringement began, he or she performed and documented a
“qualifying search” in good faith but was unable to locate the owner
of the infringed copyright;
!Asserts in the initial pleading to the civil action the right to claim the
limitation on the remedies for infringement;
!Consents to the jurisdiction of the United States district court, or that
the court deems the infringer to be within its jurisdiction; and
!In compliance with initial discovery disclosure requirements under
the Federal Rules of Civil Procedure, states with particularity the
basis for the right to claim the limitation on remedies, including a
detailed description and documentation of the “qualifying search”
undertaken to find the owner of the infringed copyright.
31 Sec. 2(a) of H.R. 5889, adding a new § 514(b)(1)(A).
Lack of identifying copyright information on the work, by itself, cannot support
an assertion or finding of a “qualifying search.”32 H.R. 5889 provides that a search
is qualifying if the infringer undertakes a “diligent effort” to locate the owner of the
infringed copyright.33 For a court to determine whether a search is diligent, the
following considerations are required:
!Whether the infringer took reasonable and appropriate actions in
performing the search, including whether the infringer took actions
based on facts uncovered by the search itself;
!Whether the infringer used “best practices” that are maintained by
the Register of Copyrights; and
!Whether the infringer performed the search prior to using the work
and at a time that was “reasonably proximate” to the start of the
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.34
And, it publishes general background information on conducting copyright
H.R. 5889 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 maintain and provide to the public
(including through the Internet) current statements of best practices for conducting
and documenting searches for the owner of the infringed copyright.36 Such
statements of best practices shall be updated from time to time to consider the wide
array of materials and standards that may be relevant to a qualifying search, including
!The Copyright Office’s own records that relate to copyright
!Other sources of identifying copyright ownership that may be
reasonably available to users, including private databases;
!Industry practices and guidelines of associations and organizations;
!Technology tools and expert assistance; and
!Electronic databases, including those available to the public through
the Internet, that permit searches of copyrighted works and for the
copyright owners of those works.37
32 Sec. 2(a) of H.R. 5889, adding a new § 514(b)(2)(A)(iii).
33 Sec. 2(a) of H.R. 5889, adding a new § 514(b)(2)(A).
34 See [http://www.copyright.gov/forms/search_estimate.html].
35 See, e.g., Circular 22, How to Investigate the Copyright Status of a Work at
[ ht t p: / / www.copyr i ght .gov/ ci r c s/ ci r c 22.ht ml ] .
36 Sec. 2(a) of H.R. 5889, adding a new § 514(b)(2)(B).
37 Sec. 2(a) of H.R. 5889, adding a new § 514(a)(1).
In addition, H.R. 5889 requires the Copyright Office to establish and maintain
an archive that will retain the “Notice of Use” filings that must be submitted by the
infringer prior to using the copyrighted work. A “Notice of Use” filing must include
the following information:38
!The type of work being used (literary works; musical works;
dramatic works; pantomimes and choreographic works; pictorial,
graphic, and sculptural works; motion pictures and other audiovisual
works; sound recordings; or architectural works);
!A description of the work;
!A summary of the search conducted to locate the owner of the
!The owner, author, recognized title, and other available identifying
element of the work, to the extent the infringer knows such
information with a reasonable degree of certainty;
!A certification that the infringer performed a qualifying search in
good faith to locate the owner of the infringed copyright; and
!The name of the infringer and how the work will be used.
The bill expressly provides, “Notices of Use filings retained under the control
of the Copyright Office shall be furnished only under the conditions specified by
regulations of the Copyright Office.”
H.R. 5889 also directs the Register of Copyrights to undertake a “certification
process” for the creation of electronic databases that facilitate the search for pictorial,
graphic, and sculptural works.39 Such certification is to be conducted in accordance
with processes and standards that the Register must establish, although the bill
provides that such approved electronic databases must contain the following:
!The name of all authors of the work, and contact information for any
author if the information is readily available;
!The name of the copyright owner if different from the author, and
contact information of the copyright owner;
!The title of the copyrighted work, if such work has a title;
!With respect to a copyrighted work that includes a visual image, a
visual image of the work, or, if such a visual image is not available,
a description sufficient to identify the work;
!One or more mechanisms that allow for the search and identification
of a work by both text and image; and
!Security measures that reasonably protect against unauthorized
access to, or copying of, the information and content of the
Limitations on Remedies. The heart of H.R. 5889 is the limitation on
monetary relief that may be awarded by a court (including actual damages, statutory
damages, costs, and attorney’s fees) when the use of an orphan work is found to be
38 Sec. 2(a) of H.R. 5889, adding a new § 514(b)(3).
39 Sec. 3(a) of H.R. 5889.
infringing. Users who have satisfied statutory criteria will be required to pay
“reasonable compensation” for the use of the infringed work.40 H.R. 5889 defines
“reasonable compensation” to mean “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.”41 The bill also permits a court to consider, in determining
the amount of reasonable compensation, the value (if any) that has been added to a
work due to the fact that the work is registered with the Copyright Office.42
Safe Harbor. H.R. 5889 exempts certain infringers of orphan works from the
requirement to pay reasonable compensation for the use of infringed works. This
statutory “safe harbor” is available if the infringer is a nonprofit educational
institution, library, or archives, or a public broadcasting entity, and the infringer
proves by a preponderance of the evidence that:
!The infringement was performed without any purpose of direct or
indirect commercial advantage and for a charitable, religious, or
educational purpose; and
!The infringer promptly ceased the infringing use after receiving
notice of the claim for infringement and after conducting an
expeditious good faith investigation of the claim.43
Exceptions to the Eligibility for Limitation on Monetary Remedies. H.R.
5889 denies the limitation on remedies for infringers who, after receiving a notice of
the claim for infringement44 and having a chance to conduct an “expeditious” good
faith investigation of the claim, either: (1) fails to negotiate in good faith “reasonable
compensation” with the copyright owner; or (2) fails to render payment of reasonable
compensation in a reasonably timely manner.45 In addition, the bill notes that failure
to comply with any of the eligibility requirements for the limitation on remedies will
subject the infringer to all available remedies for civil copyright infringement.46
40 Sec. 2(a) of H.R. 5889, adding a new § 514(c)(1)(A).
41 Sec. 2(a) of H.R. 5889, adding a new § 514(a)(4).
42 Sec. 2(a) of H.R. 5889, adding a new § 514(c)(1)(C).
43 However, H.R. 5889 allows the owner of the infringed copyright to try to recover any
proceeds directly attributable to the infringement if the copyright owner can prove, and the
court finds, that the infringer has earned such proceeds. Sec. 2(a) of H.R. 5889, adding a
new § 514(c)(1)(B).
44 Such notice must be written, and include at a minimum the following information: the
name, address, and telephone number of the owner of the infringed copyright; the title of the
infringed work or a detailed description of it; and information from which a reasonable
person could determine the validity of the copyright owner’s claim of ownership and alleged
infringement. Sec. 2(a) of H.R. 5889, adding a new § 514(a)(2).
45 Sec. 2(a) of H.R. 5889, adding a new § 514(b)(1)(B).
46 Sec. 2(a) of H.R. 5889, adding a new § 514(b)(4).
Injunctive Relief. The bill provides that a court may award injunctive relief to
prevent or restrain any infringement. H.R. 5889 provides an exception to this general
rule, however: a court may not enjoin the infringing use of an orphan work when it
is incorporated (or starting to be integrated) into a new work of authorship, so long
as the infringer pays reasonable compensation and provides attribution to the owner
of the infringed work in a manner that is reasonable under the circumstances, if
requested by such owner.47
However, an infringing party that asserts that it is not subject to suit in federal
court or liable for an award of damages for infringement under the Copyright Act
may not avail itself of the limitations on injunctive relief for infringing orphan works,
unless it has, among other things, made an enforceable promise to pay reasonable
compensation to the copyright owner. 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.48
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
Exclusion for Useful Articles. H.R. 5889 provides that the limitations on
monetary and injunctive relief are unavailable to “an infringer for infringements
resulting from fixation of a work in or on a useful article that is offered for sale or
other distribution to the public.”50 The Copyright Act defines “useful article” to
mean “an article having an intrinsic utilitarian function that is not merely to portray
the appearance of the article or to convey information.”51 Examples of useful articles
include shower curtains, textile designs, wall coverings, home furnishings, coffee
mugs, and clothing with images on them. Therefore, infringers of such useful articles
are not allowed to assert the right to claim the limitation on the remedies for
Effective Date. The Orphan Works Act of 2008 shall apply to infringements
that commence on or after January 1, 2009, except for infringing uses of pictorial,
graphic, and sculptural works.52 For the latter class of works, the limitations on
liability shall apply to infringing uses that commence on or after the earlier of:
47 Sec. 2(a) of H.R. 5889, adding a new § 514(c)(2).
48 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. For more information on this topic, see CRS Report RL34593, Infringement of
Intellectual Property Rights and State Sovereign Immunity, by Todd Garvey and Brian T.
49 See, e.g., Chavez v. Arte Publico Press, 204 F.3d 601 (5th Cir. 2000).
50 Sec. 2(a) of H.R. 5889, adding a new § 514(d).
51 17 U.S.C. § 101 (definition of “useful article”).
52 Sec. 4(a) of H.R. 5889.
January 1, 2013, or the date on which the Copyright Office certifies at least two
separate and independent, Internet-accessible electronic databases that allow for
searches of copyrighted pictorial, graphic, and sculptural works.
Reports to Congress. H.R. 5889 directs the Register of Copyrights to report
to Congress no later than December 12, 2014, on the implementation and effects of
the limitation of liability for orphan works, including any recommendations for
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.54 This requirement appears to address the concerns of participants
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, and not later than two years
after the date of the enactment of the Orphan Works Act of 2008, the Office shall
submit a report on this study to Congress, including such recommendations that the
Register considers appropriate.
Finally, H.R. 5889 requires the Comptroller General of the United States to
undertake a study examining the functioning of the deposit requirement in the
copyright registration system.55
S. 2913, 110th Congress, Second Session, the Shawn Bentley
Orphan Works Act of 2008. Introduced by Senator Leahy on April 24, 2008, the
Shawn Bentley Orphan Works Act of 2008 mirrors many of the provisions of H.R.
does not require an infringer who seeks to qualify for an orphan works limitation on
remedies to file a Notice of Use with the Copyright Office (therefore, the bill also
does away with the need for the Copyright Office to maintain an archive retaining
such notices). S. 2913 also does not contain an exception for infringers of useful
articles (meaning that such infringers would be able to qualify for the limitations on
remedies), nor does it require a court to give consideration to the fact that a work is
registered in determining reasonable compensation. S. 2913 does, however,
explicitly extend the safe harbor exemption for paying reasonable compensation to
museums in addition to those entities that the House bill had exempted (nonprofit56
educational institutions, libraries, archives, and public broadcasting entities). S.
2913 also differs from H.R. 5889 in terms of the effective date of the limitations on
remedies for infringers of pictorial, graphic, and sculptural works, offering a date of
the earlier of: January 1, 2011, or the date on which the Copyright Office certifies at
least two electronic databases that meet the same criteria as the House bill.
53 Sec. 5 of H.R. 5889.
54 Sec. 6 of H.R. 5889.
55 Sec. 7 of H.R. 5889.
56 Sec. 2(a) of S. 2913, as introduced, adding a new § 514(c)(1)(B).
Developments Since the Introduction of H.R. 5889 and S. 2913. On
May 6, 2008, the House Subcommittee on Courts, the Internet, and Intellectual
Property approved by voice vote a manager’s amendment in the nature of a substitute
that included several substantive changes to H.R. 5889.57 The amendment explicitly
adds museums to the list of entities that could qualify for the safe harbor of not
having to pay reasonable compensation for infringing uses of orphan works,
eliminating one difference with the Senate version of the orphan works legislation.
Also, the manager’s amendment instructs a court, before granting injunctive relief,
to take into account any harm that the relief would cause the infringer due to the
infringer’s reliance on having performed a qualifying search for the copyright owner.
Finally, the amendment clarifies that the limitation on remedies for use of orphan
works does not apply for an infringer who “fails to render payment, in a reasonably
timely manner, of any reasonable compensation agreed upon by the owner of the
infringed copyright and the infringer” (emphasis added to show the change made by
the amendment). According to Representative Howard Berman who offered the
amendment, this additional language helps to ensure that the copyright owner cannot
unilaterally “demand any amount of money, call it reasonable, and subject a user to
On May 15, 2008, the Senate Judiciary Committee approved by voice vote an
amendment to S. 2913 in the nature of a substitute that was offered by its sponsors,
Senators Leahy and Hatch.59 The amendment adds the “useful articles” exception
that is provided in the House bill, thereby disallowing infringers who use useful
articles from trying to claim the limitation on remedies. In addition, like the
manager’s amendment to the House bill, the amendment to S. 2913 instructs a court,
before granting injunctive relief, to take into account any harm that the relief would
cause the infringer due to the infringer’s reliance on having performed a qualifying
search for the copyright owner. The amendment also changes one of the potential
effective dates with respect to the limitation on remedies for infringement of
pictorial, graphic, and sculptural works, to January 1, 2013, matching that of the
House version. The amendment also includes a clarification similar to that in the
House amendment, disallowing the limitation on remedies for an infringer who “fails
to render payment of reasonable compensation in a reasonably timely manner after
reaching an agreement with the owner of the infringed copyright” (emphasis added
to show the change made to the original text of the bill). The substitute bill deletes
a provision in the bill as introduced that would have denied museums, nonprofit
educational institutions, libraries, archives, and public broadcasting entities the
benefit of the safe harbor exemption from paying reasonable compensation if the
owner of the infringed copyright proved (and the court found) that the infringer had
earned proceeds directly attributable to the infringement. This provision still appears,
however, in the House bill. Finally, the amendment changes the criteria that the
Register of Copyright is to follow in certifying databases of pictorial, graphic, and
57 Carey Lening, Amended Orphan Works Reform Bill Advances Through IP Subcommittee,
PATENT, TRADEMARK, & COPYRIGHT J., May 9, 2008, at 47.
58 Andrew Noyes, ‘Orphan Works’ Measure Moves to Full Committee,
CONGRESSDAILYAM, May 8, 2008.
59 Andrew Noyes, Senate Panel Approves ‘Orphan Works’ Copyright Bill,
CONGRESSDAILYPM, May 15, 2008.
sculptural works, in a way that provides less statutory guidance to the Register for
determining how to certify the databases and also eliminates the requirement that the
database must be Internet-accessible:
if such databases are determined to be effective and not prohibitively expensive
and include the capability to be searched using 1 or more mechanisms that allow
for the search and identification of a work by both text and image and have
sufficient information regarding the works to enable a potential user of a work
to identify or locate the copyright owner or authorized agent.
On September 26, 2008, the Senate passed S. 2913 with an amendment60 by
unanimous consent.61 The amendment made the following modifications to S. 2913:
!Deletes the word and definition of “materials” from the definitions
section,62 although the struck language essentially reappears in a
revised section later offered by the amendment that specifies
“diligent effort” requirements that an infringer conducting a
“qualifying search” must satisfy.
!Deletes a provision that would have conditioned eligibility for the
limitations on remedies on the infringer consenting to the
jurisdiction of United States district court.63 Also modifies one of
the qualifications for a limitation on injunctive relief for a derivative
work, by requiring that the infringer pay reasonable compensation
to the copyright owner — rather than, as S. 2913 originally provided,
having the infringer make “an enforceable promise to pay reasonable
!Revises the “requirements for qualifying searches” section in a
manner that directs the infringer to “undertake a diligent effort that
60 S.Amdt. 5669, proposed by Senator Whitehouse for Senator Kyl.
61 Orphan Works Legislation Passes Senate By Unanimous Consent, Moves to House,
PATENT, TRADEMARK, & COPYRIGHT J., Oct. 3, 2008, at 754.
62 S. 2913, as engrossed, § 2(a) (adding new 17 U.S.C. § 514(a)).
63 S. 2913, as engrossed, § 2(a) (adding new 17 U.S.C. § 514(b)(1)(A). This change would
appear to address the concerns of public universities, which feared that the jurisdictional
provision would constitute a waiver of state sovereign immunity. See Association of
Research Libraries, Orphan Works Legislation, June 2008, available at
[http://www.arl.org/bm~doc/owlegislation.pdf] (“Public universities ... expressed concern
that participation in the orphan works system would require them to waive sovereign
immunity. In virtually all cases, the decision to waive sovereign immunity is made not by
the public university but by its state government, and state governments have indicated that
they will not permit their public universities to waive sovereign immunity as a condition of
64 S. 2913, as engrossed, § 2(a) (adding new 17 U.S.C. § 514(c)(2)(C)(ii)). See Association
of Research Libraries, Orphan Works Legislation, June 2008, available at
[http://www.arl.org/bm~doc/owlegislation.pdf] (“The problem with this language is that
‘enforceable’ implies ‘in court,’ again implicating sovereign immunity.”).
is reasonable under the circumstances to locate the owner of the
infringed copyright prior to, and at a time reasonably proximate to,
the infringement.”65 Defines “diligent effort” to require, at a
minimum, the following conduct: searching Copyright Office
records and “reasonably available sources of copyright authorship
and ownership information”; using technology tools, printed
publications, and expert assistance; and searching databases
including those available to the public through the Internet. Further
defines “diligent effort” to encompass “any actions that are
reasonable and appropriate under the facts relevant to the search,
including ... facts uncovered during the search.”66
!Adds a requirement that any qualifying search be “ordinarily” based
on the Copyright Office’s statements of “Recommended Practices”
for conducting a search for information on copyright registrations
and owners, as well as any additional “best practices” of authors,
copyright owners, and users that utilize the expertise of persons with
specialized knowledge of the type of work for which the search is
!Amends the provision on “lack of identifying information” within
the “requirements for searches” section, to provide that it is
insufficient proof of the infringer performing a qualifying search to
locate and identify the owner of the infringed copyright under either
of two circumstances: (1) when a particular copy lacks identifying
information pertaining to the owner of the copyrighted work, or (2)
when an owner of the infringed copyright fails to respond to any
inquiry or other communication about the work.68
!Rewrites the provision governing the “use of resources for charge”
to indicate that a qualifying search “may require” use of subscription
or other fee-based resources, “to the extent reasonable under the
ci rcum st ances.”69
!Modifies several of the Copyright Office’s obligations under the
orphan works system. First, requires the Register of Copyrights to
65 S. 2913, as engrossed, § 2(a) (adding new 17 U.S.C. § 514(b)(2)(A)(i-v)).
66 S. 2913, as engrossed, § 2(a) (adding new 17 U.S.C. § 514(b)(2)(A)(ii)).
67 S. 2913, as engrossed, § 2(a) (adding new 17 U.S.C. § 514(b)(2)(A)(iii)).
68 S. 2913, as engrossed, § 2(a) (adding new 17 U.S.C. § 514(b)(2)(A)(iv)). As introduced,
S. 2913 had only mentioned the first of these two scenarios.
69 S. 2913, as engrossed, § 2(a) (adding new 17 U.S.C. § 514(b)(2)(A)(v)). As introduced,
S. 2913 stated that a qualifying search “may include” use of such “resources for charge ...
to the extent that the use of such resources is reasonable for, and relevant to, the scope of
the intended use.” Thus, the amendment provides a less restrictive scope of usage of these
periodically update the “statements of recommended practices,”70
and, in so doing, the Register “shall consider any comments
submitted to the Copyright Office by the Small Business
Administration Office of Advocacy.”71 Also requires the Register,
to the extent practicable, to consider the impact on small business
copyright owners when she modifies and updates the recommended
practices. Finally, provides that before the Copyright Office certifies
databases that facilitate a user’s search for pictorial, graphic, and
sculptural works, the Register “shall determine, to the extent
practicable, their impact on copyright owners that are small
businesses and consult with the Small Business Administration
Office of Advocacy regarding those impacts.”72
!Slightly revises the “useful articles” exception that had been added
by the Judiciary Committee’s amendment, by inserting the word
“commercial” before “distribution to the public,” such that the
exception now reads, “The limitations on remedies under this
section shall not be available to an infringer for infringements
resulting from fixation of a pictorial, graphic, or sculptural work in
or on a useful article that is offered for sale or other commercial
distribution to the public.”73
70 S. 2913, as engrossed, § 2(a) (adding new 17 U.S.C. § 514(b)(2)(B)(i)). S. 2913, as
introduced, referred to this as “best practices” and had required the Register to update the
statements only “at the Register’s discretion.”
71 S. 2913, as engrossed, § 2(a) (adding new 17 U.S.C. § 514(b)(2)(B)(ii)).
72 S. 2913, as engrossed, § 3. Note that S. 2913, as introduced, lacked any of these small
73 S. 2913, as engrossed, § 2(a) (adding new 17 U.S.C. § 514(f)).