I 

109TH CONGRESS 

2D SESSION H. R. 5439 

To amend title 17, United States Code, to provide for limitation of remedies 

in cases in which the copyright owner cannot be located, and for other 

purposes. 

IN THE HOUSE OF REPRESENTATIVES 

MAY 22, 2006 

Mr. SMITH of Texas introduced the following bill; which was referred to the 

Committee on the Judiciary 

A BILL 

To amend title 17, United States Code, to provide for limitation of remedies in cases in which the copyright owner 

cannot be located, and for other purposes. 

1 Be it enacted by the Senate and House of Representa2 tives of the United States of America in Congress assembled, 

3 SECTION 1. SHORT TITLE. 

4 This Act may be cited as the ‘‘Orphan Works Act 

5 of 2006’’. 


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1 SEC. 2. LIMITATION ON REMEDIES IN CASES INVOLVING 

2 ORPHAN WORKS. 

3 (a) LIMITATION ON REMEDIES.—Chapter 5 of title 

4 17, United States Code, is amended by adding at the end 

5 the following new section: 

6 ‘‘§ 514. Limitation on remedies in cases involving or7 phan works 

8 ‘‘(a) LIMITATION ON REMEDIES.— 

9 ‘‘(1) CONDITIONS.—Notwithstanding sections 

10 502 through 505, in an action brought under this 

11 title for infringement of copyright in a work, the 

12 remedies for infringement shall be limited under 

13 subsection (b) if the infringer sustains the burden of 

14 proving, and the court finds, that— 

15 ‘‘(A) before the infringing use of the work 

16 began, the infringer, a person acting on behalf 

17 of the infringer, or any person jointly and sev18 erally liable with the infringer for the infringe19 ment of the work— 

20 ‘‘(i) performed and documented a rea21 sonably diligent search in good faith to lo22 cate the owner of the infringed copyright; 

23 but 

24 ‘‘(ii) was unable to locate the owner; 

25 and 


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1 ‘‘(B) the infringing use of the work pro2 vided attribution, in a manner reasonable under 

3 the circumstances, to the author and owner of 

4 the copyright, if known with a reasonable de5 gree of certainty based on information obtained 

6 in performing the reasonably diligent search. 

7 ‘‘(2) DEFINITIONS; REQUIREMENTS FOR

8 SEARCHES.— 

9 ‘‘(A) OWNER OF INFRINGED COPYRIGHT.— 

10 For purposes of paragraph (1), the ‘owner’ of 

11 an infringed copyright in a work is the legal or 

12 beneficial owner of, or any party with authority 

13 to grant or license, an exclusive right under sec14 tion 106 applicable to the infringement. 

15 ‘‘(B) REQUIREMENTS FOR REASONABLY

16 DILIGENT SEARCH.—(i) For purposes of para17 graph (1), a search to locate the owner of an 

18 infringed copyright in a work— 

19 ‘‘(I) is ‘reasonably diligent’ only if it 

20 includes steps that are reasonable under 

21 the circumstances to locate that owner in 

22 order to obtain permission for the use of 

23 the work; and 

24 ‘‘(II) is not ‘reasonably diligent’ solely 

25 by reference to the lack of identifying inVerDate Aug 31 2005 00:32 May 24, 2006 Jkt 049200 PO 00000 Frm 00003 Fmt 6652 Sfmt 6201 E:\BILLS\H5439.IH H5439

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1 formation with respect to the copyright on 

2 the copy or phonorecord of the work. 

3 ‘‘(ii) The steps referred to in clause (i)(I) 

4 shall ordinarily include, at a minimum, review 

5 of the information maintained by the Register 

6 of Copyrights under subparagraph (C). 

7 ‘‘(iii) A reasonably diligent search includes 

8 the use of reasonably available expert assistance 

9 and reasonably available technology, which may 

10 include, if reasonable under the circumstances, 

11 resources for which a charge or subscription fee 

12 is imposed. 

13 ‘‘(C) INFORMATION TO GUIDE

14 SEARCHES.—The Register of Copyrights shall 

15 receive, maintain, and make available to the 

16 public, including through the Internet, informa17 tion from authoritative sources, such as indus18 try guidelines, statements of best practices, and 

19 other relevant documents, that is designed to 

20 assist users in conducting and documenting a 

21 reasonably diligent search under this sub22 section. Such information may include— 

23 ‘‘(i) the records of the Copyright Of24 fice that are relevant to identifying and lo25 cating copyright owners; 


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1 ‘‘(ii) other sources of copyright owner2 ship information reasonably available to 

3 users; 

4 ‘‘(iii) methods to identify copyright 

5 ownership information associated with a 

6 work; 

7 ‘‘(iv) sources of reasonably available 

8 technology tools and reasonably available 

9 expert assistance; and 

10 ‘‘(v) best practices for documenting a 

11 reasonably diligent search. 

12 ‘‘(b) LIMITATIONS ON REMEDIES.—The limitations 

13 on remedies in a case to which subsection (a) applies are 

14 the following: 

15 ‘‘(1) MONETARY RELIEF.— 

16 ‘‘(A) GENERAL RULE.—Subject to sub17 paragraph (B), an award for monetary relief 

18 (including actual damages, statutory damages, 

19 costs, and attorney’s fees) may not be made, 

20 other than an order requiring the infringer to 

21 pay reasonable compensation for the use of the 

22 infringed work. 

23 ‘‘(B) EXCEPTIONS.—(i) An order requiring 

24 the infringer to pay reasonable compensation 


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1 for the use of the infringed work may not be 

2 made under subparagraph (A) if— 

3 ‘‘(I) the infringement is performed 

4 without any purpose of direct or indirect 

5 commercial advantage and primarily for a 

6 charitable, religious, scholarly, or edu7 cational purpose, and 

8 ‘‘(II) the infringer ceases the infringe9 ment expeditiously after receiving notice of 

10 the claim for infringement, 

11 unless the copyright owner proves, and the 

12 court finds, that the infringer has earned pro13 ceeds directly attributable to the infringement. 

14 ‘‘(ii) If the infringer fails to negotiate in 

15 good faith with the owner of the infringed work 

16 regarding the amount of reasonable compensa17 tion for the use of the infringed work, the court 

18 may award full costs, including a reasonable at19 torney’s fee, against the infringer under section 

20 505, subject to section 412. 

21 ‘‘(2) INJUNCTIVE RELIEF.— 

22 ‘‘(A) GENERAL RULE.—Subject to sub23 paragraph (B), the court may impose injunctive 

24 relief to prevent or restrain the infringing use, 

25 except that, if the infringer has met the reVerDate Aug 31 2005 00:32 May 24, 2006 Jkt 049200 PO 00000 Frm 00006 Fmt 6652 Sfmt 6201 E:\BILLS\H5439.IH H5439

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1 quirements of subsection (a), the relief shall, to 

2 the extent practicable, account for any harm 

3 that the relief would cause the infringer due to 

4 its reliance on having performed a reasonably 

5 diligent search under subsection (a). 

6 ‘‘(B) SPECIAL RULE FOR NEW WORKS.—In 

7 a case in which the infringer recasts, trans8 forms, adapts, or integrates the infringed work 

9 with the infringer’s original expression in a new 

10 work of authorship, the court may not, in 

11 granting injunctive relief, restrain the infring12 er’s continued preparation or use of that new 

13 work, if the infringer— 

14 ‘‘(i) pays reasonable compensation to 

15 the owner of the infringed copyright for 

16 the use of the infringed work; and 

17 ‘‘(ii) provides attribution to the owner 

18 of the infringed copyright in a manner that 

19 the court determines is reasonable under 

20 the circumstances. 

21 ‘‘(C) TREATMENT OF PARTIES NOT SUB22 JECT TO SUIT.—The limitations on remedies 

23 under this paragraph shall not be available to 

24 an infringer that asserts in an action under sec25 tion 501(b) that neither it nor its representative 


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1 acting in an official capacity is subject to suit 

2 in Federal court for an award of damages to 

3 the copyright owner under section 504, unless 

4 the court finds that such infringer has— 

5 ‘‘(i) complied with the requirements of 

6 subsection (a) of this section; 

7 ‘‘(ii) made a good faith offer of com8 pensation that was rejected by the copy9 right owner; and 

10 ‘‘(iii) affirmed in writing its willing11 ness to pay such compensation to the copy12 right owner upon the determination by the 

13 court that such compensation was reason14 able under paragraph (3) of this sub15 section. 

16 ‘‘(D) CONSTRUCTION.—Nothing in sub17 paragraph (C) shall be deemed to authorize or 

18 require, and no action taken pursuant to sub19 paragraph (C) shall be deemed to constitute, an 

20 award of damages by the court against the in21 fringer. 

22 ‘‘(E) RIGHTS AND PRIVILEGES NOT

23 WAIVED.—No action taken by an infringer pur24 suant to subparagraph (C) shall be deemed to 

25 waive any right or privilege that, as a matter of 


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1 law, protects such infringer from being subject 

2 to suit in Federal court for an award of dam3 ages to the copyright owner under section 504. 

4 ‘‘(3) REASONABLE COMPENSATION.—In estab5 lishing reasonable compensation under paragraph 

6 (1) or (2), the owner of the infringed copyright has 

7 the burden of establishing the amount on which a 

8 reasonable willing buyer and a reasonable willing 

9 seller in the positions of the owner and the infringer 

10 would have agreed with respect to the infringing use 

11 of the work immediately before the infringement 

12 began. 

13 ‘‘(c) PRESERVATION OF OTHER RIGHTS, LIMITA14 TIONS, AND DEFENSE.—This section does not affect any 

15 right, limitation, or defense to copyright infringement, in16 cluding fair use, under this title. If another provision of 

17 this title provides for a statutory license when the copy18 right owner cannot be located, that provision applies in 

19 lieu of this section. 

20 ‘‘(d) COPYRIGHT FOR DERIVATIVE WORKS.—Not21 withstanding section 103(a), the infringing use of a work 

22 in accordance with this section shall not limit or affect 

23 the copyright protection for a work that uses the infringed 

24 work.’’. 


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1 (b) CONFORMING AMENDMENT.—The table of sec2 tions for chapter 5 of title 17, United States Code, is 

3 amended by adding at the end the following new item: 

‘‘514. Limitation on remedies in cases involving orphan works’’. 

4 (c) EFFECTIVE DATE.—The amendments made by 

5 this section shall apply only to infringing uses that com6 mence on or after June 1, 2008. 

7 SEC. 3. REPORT TO CONGRESS ON AMENDMENTS. 

8 The Register of Copyrights shall, not later than De9 cember 12, 2014, report to the Committee on the Judici10 ary of the House of Representatives and the Committee 

11 on the Judiciary of the Senate on the implementation and 

12 effects of the amendments made by section 2, including 

13 any recommendations for legislative changes that the Reg14 ister considers appropriate. 

15 SEC. 4. INQUIRY ON REMEDIES FOR SMALL COPYRIGHT 

16 CLAIMS. 

17 (a) IN GENERAL.—The Register of Copyrights shall 

18 conduct an inquiry with respect to remedies for copyright 

19 infringement claims seeking limited amounts of monetary 

20 relief, including consideration of alternatives to disputes 

21 currently heard in the United States district courts. The 

22 inquiry shall cover infringement claims to which section 

23 514 of title 17, United States Code (as added by section 

24 2 of this Act), apply, and other infringement claims under 

25 title 17, United States Code. 


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1 (b) PROCEDURES.—The Register of Copyrights shall 

2 publish notice of the inquiry under subsection (a), pro3 viding a period during which interested persons may sub4 mit comments on the inquiry, and an opportunity for in5 terested persons to participate in public roundtables on 

6 the inquiry. The Register shall hold the public roundtables 

7 at such times as the Register considers appropriate. 

8 (c) REPORT TO CONGRESS.—The Register of Copy9 rights shall, not later than 1 year after the date of the 

10 enactment of this Act, prepare and submit to the Com11 mittee on the Judiciary of the House of Representatives 

12 and the Committee on the Judiciary of the Senate a report 

13 on the inquiry conducted under this section, including 

14 such recommendations that the Register considers appro15 priate. 

Æ 


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