In Berne Convention, Copyright, Copyright Act, Orphan Rights, Orphan Works, TRIPS

by David Carney, Publisher and Author of Tech Law Journal

David Carney is author and publisher of the respected Tech Law Journal. These excerpts are from his analysis of the Orphan Works Act. We quote from it with permission. The emphasis (in bold) is ours.

The [Orphan Works] bill is supported by representatives of libraries, museums, and universities. It is also supported by the trade groups that represent the major copyright industries, including the music, movie, book, and software industries. All would be net beneficiaries of the bill. While the bill would weaken the protection afforded to creators, it would primarily harm individuals and very small businesses. Representatives of those who create works in photography, illustration, and the visual arts have adamantly opposed the Copyright Office’s proposal.

The Copyright Act now contains no requirement that a creator register a work for the copyright to exist. The Berne Convention, to which the U.S. is a party, prohibits the imposition of such formalities.This bill does not expressly require registration, or other formalities. However, the [bill’s] language, especially the reference to registration, is in the nature of a reinstitution of formalities.

Limitations on Remedies. The bill would substantially limit the copyright holder’s ability to recover financially, or obtain injunctive relief, for infringement. The bill provides that “an award for monetary relief (including actual damages, statutory damages, costs, and attorney’s fees) may not be made, other than an order requiring the infringer to pay reasonable compensation for the use of the infringed work.” (Parentheses in original.) The bill does not define the term “reasonable compensation”.

[T]he bill provides for the recovery of no monetary relief where the infringement was “without any purpose of direct or indirect commercial advantage and primarily for a charitable, religious, scholarly, or educational purpose”. The bill also provides that the “owner of the infringed copyright has the burden of establishing the amount on which a reasonable willing 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.” Satisfying this burden would likely require copyright owners to retain expert witnesses to perform analyses, write reports, and testify in depositions and trial. The cost of this would not be recoverable, but in many cases would likely exceed “reasonable compensation”.

The bill also limits the owner’s right to exclude. It provides that “the court may impose injunctive relief to prevent or restrain the infringing use, except that, if the infringer has met the requirements of subsection (a), the relief shall, to the extent practicable, account for any harm that the relief would cause the infringer due to its reliance on having performed a reasonably diligent search under subsection (a).”Subsection (a) of Section 514 is the language stating when an infringer qualifies for the limitations on remedies.

The bill also imposes an almost complete ban on injunctive relief where the infringer “recasts, transforms, adapts, or integrates the infringed work with the infringer’s original expression in a new work of authorship”. The bill provides that in these situations, “the court may not, in granting injunctive relief, restrain the infringer’s continued preparation or use of that new work, if the infringer . . . pays reasonable compensation . . . ” The bill would limit remedies in actions for infringement.

[T]here are asymmetries in the limitations on remedies. The bill would preclude the recovery of attorneys fees by the plaintiff in an action for infringement where the court accords Section 514 status to the defendant. However, nothing in the bill limits the attorneys fees recoverable by the defendant in such an action who successfully asserts counterclaims. Also, while the bill limits the plaintiff in such an action to “reasonable compensation”, there is no parallel limitation of the recovery of damages by the defendant for counterclaims.

Retroactive Application…The bill would extend to any works, not just those created after June 1, 2008…Since 1978 many creators have relied upon the Copyright Act of 1978, and employed business practices based upon the protections of the 1978 Act. Now, Rep. Smith proposes legislation that would have the effect of depriving certain creators of the ability to enforce their copyrights because they did not take steps that the Copyright Act of 1978 did not require them to take.

Title of the Bill is Not Descriptive . . . [N]either the Copyright Act, regulations, nor this bill define the term “orphans”. Under this bill, a single copyrighted work could be accorded orphan status in one legal proceeding, but not accorded orphan status in another. Moreover, while the use of the word “orphan” in this bill is a metaphor that suggests the death of parents, or metaphorically, of authors, the bill would result in Section 514 status being extended by courts to works that were infringed immediately upon creation, where the author is alive, in business, and licensing the work. In particular, there is no minimum age for a work to be accorded Section 514 status.

David Carney, from the Tech Law Journal
For the full text of the analysis please see

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