NMPA Position Paper on Orphan Works Legislation

The position of the National Music Publishers’ Association (NMPA) on Orphan Works legislation

BACKGROUND

On April 24, 2008, Senator Patrick Leahy (D-VT) introduced the Shawn Bentley Orphan Works Act of 2008 (S. 2913) in the Senate, and Congressman Howard Berman (D-CA) introduced the Orphan Works Act of 2008 (H.R. 5889) in the House.  While there are some differences in the bills, both amend the Copyright Act by adopting the revolutionary concept of “orphan works.”

Essentially, a work is “orphaned” when a new user, identified as an “infringer” in the bills, cannot find the original copyright owner of the work after engaging in and documenting a good faith reasonably diligent search.  If the missing owner emerges after the new user exploits the original work, the missing owner will have the right to enter into a license with the new user or will have the right to seek a prospective injunction against continued use of the work by the new user, but the remedies afforded the missing owner will be limited if a court determines, as a matter of fact and law, that the work is actually “orphaned.”  The bills provide that the U.S. Copyright Office will maintain and make public current best practices for conducting and documenting a search.  

NMPA is not opposed to creating an orphan works system; the overall goal of orphan works is laudable.  Our culture will be enhanced when libraries, museums, archives, universities, and other non-commercial organizations, are able to use copyrighted works even if the owner is missing.  Without an orphan works bill, these works would not be seen by the general public.

Music, however, poses certain unique problems, especially when the works are exploited commercially.  Most users will find larger music publishers, but that may not be the case with mid-level and small publishers, as well as songwriters and self-published songwriters.  

To protect the interests of all publishers and songwriters, NMPA has lobbied, and has been successful, in demanding that the bills include language mandating that a new user must secure a Section 115 compulsory license, if the new use requires such a license, instead of relying on the orphan works provisions.  But uses outside of Section 115 (synch licenses, samples, etc) will be subject to the orphan works law, if passed.  

NMPA would have preferred that music was excluded from the bills, but Congress was clear that they did not want to exclude any particular sector of copyrighted works.   Furthermore, Congress has made it clear that the bills would not be limited to non-commercial use.  NMPA pressed strongly for inclusion of “legal fees” as a remedy for a missing owner.  Both bills provide that legal fees – as well as other remedies like statutory damages – may be available if the court determines the work is not orphaned.  But the bills do not provide for legal fees if the missing owner is suing only for “reasonable compensation” – as would be the case if the original work is incorporated into a transformative work.  The bills’ authors have decided to move forward without including this important remedy.  

The orphan works bills are moving through Congress very quickly.  NMPA has been and will continue to be directly involved in the drafting process, and we are pushing hard for a better bill. The following is a list of the important issues NMPA is addressing with the Congressional drafters.  

BEST PRACTICES

NMPA feels strongly that any orphan works regime must ensure that a new user conducts a sufficiently thorough search to find the owner. We believe that developing comprehensive industry-specific Best Practices will best guide the new user to find the owner.  Establishing a system which helps to find missing owners is a very important goal of the Congressional authors of the bills.  The best way to ensure that this goal is achieved is to develop Best Practices that force new users to engage in a significant search, and not a quick, superficial search.  NMPA intends to be an active participant in the group creating the industry-specific Best Practice guidelines.

But providing discretionary guidance may not be enough.  NMPA asked the House and the Senate to include mandatory minimum standards in the Best Practices section of the legislation and to delay the effective date until the Best Practices are approved and published by the Copyright Office.  The Senate agreed with us and included this protective language in the version of S. 2913 that passed the Senate Judiciary Committee on May 15, 2008.  We are still working to include this language in the House bill, which has only passed the House Judiciary Committee Subcommittee on Courts, the Internet and Intellectual Property.  

Additionally, NMPA has stressed to the House and the Senate that it is imperative that Best Practices be developed by industry representatives with expertise in the copyright field and their respective industries.  User groups have a role to play, but we have urged that the copyright owner must be given great deference.  Therefore we have suggested that the Copyright Office essentially represent the interest of the users in the committees establishing best practices.  

NOTICE OF USE

NMPA strongly pushed for a Notice of Use filing requirement.  We appreciate that the House version of the bill includes a provision mandating that the user file the details of the search, along with other key information, with the U.S. Copyright Office.  However, the filing does not become public unless an owner or user files suit and is then available through discovery.  This has been called a “dark archives” system.  We support the filing requirement because at a minimum a user should have to proactively file the details of the search with the Copyright Office before using a copyrighted work, but it is our position that the Notice of Use provision should be strengthened and that copyright owners should be able to search this archive to see if their work has been used.

REASONABLE COMPENSATION

Both bills provide that a missing owner should be paid “reasonable compensation” if the owner emerges and seeks damages from the new user.  The House and Senate agreed with the NMPA request to include legislative history that will direct the court to analyze “comparable” licenses when determining reasonable compensation.  Also note that if the court finds that a user did not conduct a reasonably diligent search, then the user is not able to claim orphan work status, and could be subject to an award of statutory damages or compensatory damages, and legal fees and costs.

CONCLUSION

The orphan works legislation is on a fast legislative track.  NMPA will continue to work hard on behalf of publishers and songwriters to ensure that the bills contain as much protection for publishers and songwriters as possible.