The Honorable __________________
U.S. House of Representatives
Washington, DC 20515

Via Facsimile

Re: H.R. 5439

Dear Rep. _________________:

I am a visual artist, and an attorney practicing intellectual property and arts law with the law firm of Owen, Wickersham & Erickson (www.owe.com) in San Francisco. Before I became a lawyer, I worked as a professional illustrator and graphic artist for thirteen years. The focus of my law practice is visual artists, including commercial illustrators, fine artists and photographers; as well as business clients who create and exploit intellectual property. I'm also a member of the Graphic Artists Guild, and I publish an online monthly column for the Guild's Northern California chapter called "Legalities".

I am very concerned on behalf of myself and my clients about the proposed Orphan Works Bill, H.R. 5439. I urge you to vote NO on this bill.

If enacted, H.R. 5439 would be devastating to creators of copyrighted works like myself and my clients. As professional artists, my clients make their living from licensing their creative works. They do not receive government funding or any other source of income. If this bill is enacted, visual artists, such as illustrators, surface and textile designers, and photographers, would be at risk of losing a substantial part of their income from lost license fees for their copyrighted works.

The orphan works problem

"Orphan works" as the term is understood in the trade means works that may still be protected by copyright, but which have been abandoned by their copyright owners, or for which no copyright owner remains in existence. Because of the long duration of copyright – the current term is life + 70 years for individual authors, or 95 years for works-made-for-hire; and for older works the renewal terms have been extended to provide similar longevity – copyright protection often outlives the value of a work to its owners.

In my practice I often help clients who want to use such orphan works. For example, one client retrieved photographs which had been put in the trash bin by his former employer when the company went out of business. Another client was given a portfolio of photographs about a major news event from the 1940's, and a calendar which published those photographs in the 1980's, by a colleague who has since died. In both cases, the photographs have significant historic value, and my clients wish to publish them.

Both sets of photographs could still be covered by copyright. Accordingly, we searched extensively for the potential copyright owners based on what we knew. For the first client, we looked for the individuals who had owned the company. We contacted other former employees, searched national databases, etc. For the second client, we looked for the heirs of the colleague, and the company that had printed the calendar. For both clients, we also searched all available databases for business names and successor entities. We searched the U.S. Copyright Office records, using the names of the individuals and the now defunct companies, and the wording on the calendar. It is not possible to search images except through words, e.g., the titles of the works, or author/claimant information. We tried guessing at potential titles of the photographs, to no avail. I even joined several online databases for the major news services to search their photo archives - again, this can be done only by using key word searching. None of these searches was fruitful.

Under current copyright law, I had to advise both clients that to publish the photographs would carry a risk of copyright infringement. Although we could not confirm whether the images remained under copyright protection (that would depend upon whether a copyright had been renewed, which we couldn't determine because we did not have the title of the works to find relevant copyright records), and we could not find the copyright owners, it remained possible that such owners existed, and they might bring infringement claims if they discovered my clients' new publication.

This is the orphan works problem that Congress is being asked to solve. Historic works of significant value to our culture could be lost because those who would restore and publish them face uncertainty regarding their potential liability.

H.R. 5439 would cause much more harm than it would solve

The basic approach of the H.R. 5439 is fundamentally flawed. Rather than starting with a definition of orphan works as a work that has been abandoned by its copyright owner, the bill defines orphan works as any work for which a user cannot find the owner. Then it allows the user to go ahead and copy that work for free. Later, if the copyright owner discovers the infringement, H.R. 5439 exempts the user from all but the most minimal remedies for the infringement. The copyright owner would no longer be entitled to collect statutory damages or attorneys' fees. In many cases she would not be able to stop the infringing use. Her remedies would be limited to "reasonable" compensation based only on the infringer's use, not the copyright owner's damages. The effect of this scheme would be to create compulsory licenses for any work, whether fifty years old or created yesterday, if authorship or copyright ownership information is not easily discovered. Moreover, unlike all other compulsory licenses of copyrighted works, this license would often be free. The incentive to infringe is obvious.

H.R. 5439 is especially harmful to visual artists

The potential harm to copyright owners is especially serious for authors of visual works, such as artwork, sculptures, photographs, and films. This is because (1) visual works are particularly likely to be published or copied without identifying information such as the creator’s name, copyright owner information, or a title of the work, and (2) it is particularly hard to search for such information about a visual work. All searches for information are done via words. Think of traditional library card catalogs, or searching online using key words or entering a portion of text. Thus it is relatively easy to find the author or publisher of a literary work.

However, many types of copyrighted works, especially those that are not made up of words such as images or sculptures, cannot be searched using words. Under H.R. 5439, such works are disproportionately at risk for being deemed orphan works. Essentially, the effect is to reverse the protections of the Constitution and the Copyright Act for those types of works. Instead of protecting them from infringement, H.R. 5439 would create an incentive to infringe, and a safe harbor for infringers.

H.R. 5439 is based on seriously flawed assumptions about visual works

The salient provisions of H.R. 5439 were drafted by the Copyright Office. In his March 8, 2006 statement to the House Judiciary Committee in support of the Orphan Works Bill, Jule L. Sigall of the Copyright Office attempted to answer the concerns that visual artists have raised about the bill (see section VI(A) of the Statement). The Office's argument rests on many assumptions that are not accurate:

False assumption no. 1: If you search for and can't find the author or copyright owner of a work, that must mean it has been abandoned, or that the author no longer exists or doesn’t care to restrain use of the work. Thus the work is no longer valuable to the copyright owner.

In fact, under long-standing industry practice, most commercial images have been and continue to be published without any attribution to their creators. Even where a work was originally published with such information, it can be separated upon subsequent publications or use in different media. This is especially true for visual works, where the information must necessarily appear as a separate element of text, which is not incorporated into the work itself.

False assumption no. 2: Visual artists have control over whether copies of their works are made without identifying information, and thus, implicitly, it is their own fault if their information is not on the work.

As noted above, in many commercial circumstances it has been industry standard not to credit the artist or copyright owner when a work is published. Visual artists often do not have control over this practice, and certainly cannot retroactively change the way in which their images were already published. Moreover, infringing unauthorized publications will not include proper credit. Such unauthorized publications could easily be the source of an "orphan work."

Under U.S. Copyright law all authors, including visual artists, are entitled to copyright protection for their works regardless of whether they are published with copyright notices or other identifying information. These rights are guaranteed under the U.S. Copyright Act, 17 U.S.C. Sec. 401, and our membership in the Berne Convention. Copyright owners should not now be penalized for relying on these rights.

False assumption no. 3: There is some kind of "reasonable, diligent search" that could be made, and would find, information about a work of visual art when you don't already have the title, author, or owner information.

I know of no such system. Indeed, the Copyright Office admits that it is not possible to find a copyright registration for a visual work in the Office's own database based on just the visual image. You can only find such information if you already have some text-based information about the work, e.g., the author, title, or copyright claimant. The Copyright Office has told trade association representatives that it will never make its inventory of copies of images searchable online by any members of the public. This virtually guarantees that many copyright owners of visual works can never be found.

False assumption no. 4: "In nearly all cases where a diligent search has been performed, the likelihood of a copyright owner resurfacing should be very low."

This is certainly not true for the reasons stated above. For example, one of my clients recently discovered that her photographs, which originally appeared in a press release with her copyright notice, are now posted on a television station's website without attribution. The site gives a blanket permission to its visitors to publish and distribute the photos for noncommercial purposes, thus encouraging their continued dissemination without any author or copyright owner identification. It's quite possible that subsequent users would not be able to trace the photographs back to their source. However, my client instantly recognized her work and "resurfaced" as soon as she saw it.

False assumption no. 5: Any unauthorized infringing use of a copyrighted work would necessarily be a "productive and beneficial use" that deserves to be shielded from infringement liability.

While this may be true for genuine orphan works, it cannot be assumed for contemporary works. In fact, the unauthorized use of most contemporary works, including visual works, could destroy the market for that work and threaten the livelihood of working artists. Like other copyright owners, artists' rights are their income. The exclusive rights under copyright gives artists the right to determine what compensation will be due for usage, and to control whether or not an artwork may be used. Many clients who buy or license the rights to visual works require exclusivity, that is, that other entities will not be given simultaneous rights to use the same image. If an image is taken and used by a client's competitor under the proposed orphan works scheme, potential legitimate clients would no longer consider licensing it. The market for that work would thus be permanently destroyed. An artist’s entire body of work, and thus her entire livelihood, could be put at risk this way.

False assumption no. 6: "Subsequent creators who add some degree of their own expression to existing works" are especially sacred and valued "users" who should be allowed to continue exploiting the derivative work.

The office is focused on derivative works such as motion pictures and books. However, some of the most flagrant examples of infringements also fit this description. For example, one of my clients is a prominent illustrator. His work is frequently infringed by other illustrators, who trace his figures, add their own background art, and then market their knock-off illustrations in direct competition with my client. Many copiers like this "add something of their own expression" when they copy another's work. It has been long established that such additional expression does not excuse the infringement. As Judge Learned Hand famously wrote, "no plagiarist can excuse the wrong by showing how much of his work he did not pirate." Sheldon v. Metro-Goldwyn Pictures Corp., 82 F.2d 49, 56 (2d Cir.), cert. denied, 289 U.S. 669 (1936).

False assumption no. 7: Stripping the rights to statutory damages and attorneys' fees where an orphan work has been infringed nevertheless "preserves meaningful remedies" for copyright owners.

In fact, statutory damages and attorneys' fees often provide the only incentive or bargaining power we have to stop infringement, especially in cases where actual damages would be limited to a reasonable licensing fee. In my practice I am frequently asked to send cease and desist letters to infringers of my clients' visual works. In every case, the infringer will assess the claim based on the likelihood that we can litigate the matter, and their monetary risk if found liable. The availability of statutory damages and attorneys' fees is key to both considerations. Infringers know that most visual artists cannot afford to enforce their rights without them. If statutory damages and attorneys' fees are not available, infringers will often ignore an infringement claim, especially where the artist's potential attorneys' fees will far outweigh what she can collect in actual damages.

False assumption no. 8: Problems caused to visual artists by this legislation will spur new "non-legal actions" and "marketplace reforms" which would enable artists to protect their works against being deemed orphan works.

Presumably, the Office is envisioning some sort of digital or technological tagging system; however no such system has been developed, and in any event it would do nothing to rescue works that have already been published without such tags. Even in the event such a system were to be developed sometime in the future, it would not do anything to protect works retroactively. It would remain true that the entire past portfolios of artists and photographers, which represent their livelihood, would be at risk.

False assumption no. 9: "A marketplace of licenses and permissions for use of photographs simply cannot exist where potential buyers cannot find the sellers of rights in visual images."

This statement reflects a serious misunderstanding of the graphic arts marketplace. It assumes that a user has no alternative to using a particular image. In fact, there is a thriving legitimate market for photography and illustration services. If a particular image is not available, there are many sources for procuring alternate images.

In the current marketplace for visual works such as illustrations and photographs, the legitimate client starts with an idea of the type of image he is looking for. He then searches for images through licensing services or contacts the artists/photographers based on their reputation. The client then commissions or selects an appropriate image from the artist's portfolio. Rights to reproduce the image are generally licensed to clients on a per-use basis. Licensing fees vary depending upon whether the license is for first rights or second rights, exclusivity or nonexclusive usage, and scope of usage.

Most clients for images understand this process. Only an illegitimate user starts and ends the process with a particular image. Those who copy an existing image without permission are generally motivated to do so in order to avoid legitimate license fees.

False assumption no. 10: The disproportionate and highly detrimental effect of the proposed legislation on visual artists cannot be accommodated without jeopardizing the Copyright Office's goal of addressing the "very real problem" of orphan works.

The real problem of orphan works is about works that have been abandoned by their copyright owners. Generally, these are works-made-for-hire where the business owner no longer exists, or unpublished works that were never exploited (such as old photographs). For such works, there is a public interest in preserving and exploiting them, because otherwise they would be lost. One set of "users" who are supporting this legislation are museums, libraries, etc., who want to do that in noncommercial way. They have legitimate goals.

However, there is no danger to society of losing contemporary works that remain viable in the commercial marketplace and from which working artists make their living. To allow unauthorized use of such works does not prevent them from being lost; rather, it eviscerates the copyright owner's constitutional right to benefit from their exploitation.

H.R. 5439 conflicts with authors' rights under U.S. and international laws

As noted above, under U.S. law author's own copyright in their works regardless of whether a copyright notice or other identifying information appears on the work. This has been true since 1990, when the Berne Convention Implementation Act of 1988 ("BCIA") became effective. The BCIA eliminated notice prerequisites to copyright protection. P.L. 100-568, 1988 HR 4262, Sec. 7. It was passed specifically to conform to requirements of the Berne Convention, which prevent member countries from imposing formalities. See S. Rep. 100-352 (1988). For at least fifteen years, standard industry practice has frequently resulted in publication of visual works without such information. Both authors and publishers have allowed such practices in reliance upon the protections of U.S. Copyright Act as amended by the BCIA. H.R. 5439, by allowing the lack of such information to strip a copyright owner of her rights to control use of the work, would in effect constitute an unconstitutional taking of her intellectual property rights.

Moreover, the very nature of a true orphan work (that the copyright owner cannot be identified or located) means that there is no way to determine whether some works identified as "orphans" under H.R. 5439 were created by American citizens. It is possible that the copyright owner may be a foreign national. H.R. 5439 would thus violate both the Berne and TRIPS agreements. It may instigate a backlash of retaliatory copyright infringement, with users in other countries declaring American works "orphans" in order to exploit them for commercial use abroad.

There are much better alternatives

There are many more rational and effective ways to deal with the orphan works problem. Here are some alternate possibilities to the framework comprising H.R. 5439:

1. Threshold requirements

Abandonment:

The threshold requirement for defining an orphan work should not be limited merely to the fact that a reasonable, diligent search did not locate the copyright owner. The focus should be on whether the work has been abandoned, not whether the user can find the owner. Before an infringer is given a safe harbor, the law should require that he has an objectively reasonable good faith belief that the work has been abandoned, based on objective criteria that indicate a work has most likely been abandoned by its copyright owner.

Sample criteria for identifying an orphan work:

- the work is of the type most likely to be abandoned, e.g., old or unpublished, family photos, non-commercial, or personal

- the work was found under circumstances suggesting it was abandoned, e.g., as part of an estate, or in an old out-of-print book (as opposed to online or a magazine tear sheet, indicating a current commercial market for the work)

- other evidence discovered during the reasonable, diligent search suggests abandonment, e.g., it was a work-made-for-hire, the company or publisher is out of business with no known successors, the original author was identified but her successors cannot be found

Some of these are suggested by the Copyright Office as factors for determining whether a sufficient search was performed. However, they are not codified into H.R. 5439. Moreover, these factors are more properly considered as additional independent criteria that, if not met, should independently protect a work from being deemed an orphan even if the copyright owner cannot be found.

Also, the final factor listed by the Copyright Office, "the nature and extent of the use, such as whether the use is commercial or noncommercial, and how prominently the work figures into the activity of the user" should NOT be part of this analysis. That factor is about how the work will be used by the infringer, not whether the copyright owner has abandoned it.

Attribution:

H.R. 5439 requires a user to identify the author and copyright owner, if known. Presumably, in many cases that information will not be known. Where a legitimate user is making use of another person’s creative work, she should acknowledge that fact. So if there is no author/owner information, the requirement should be expanded. The user should publish:

- anonymous credit/acknowledgment of the work

- the last known publication of the work

- the user's source of the work

- an invitation to the copyright owner to come forward, and sufficient user contact information

- such information should be imprinted or imbedded in the work so that it is carried with any copying (this is especially important re users who want to post the works online)

This could be an important deterrent for illegitimate infringers.

2. Remedies

Under the current proposal, infringers would be entitled to use purported "orphan works" free of charge unless and until the copyright owner challenges such use. In the real world, infringers would be motivated to ignore such challenges if their liability is limited to "reasonable compensation." The "reasonable compensation" limitation is thus an incentive to infringe. Thus H.R. 5439 would create a new marketplace of essentially free images that would harm the legitimate market for licensed usage. The traditional balance of copyright law - to preserve the rights of creators while encouraging productive use of their work - would be lost.

Escrow:

An escrow system would require users of an allegedly orphan work to make a payment to an escrow account, rather than allowing users to exploit the works for free. Escrow thus eliminates the monetary advantage to potential users for choosing to infringe an existing work rather than use the legitimate marketplace to find alternative images. The Copyright Office insists that such a system would be inefficient, but that position is erroneously based on the Office's assumption that "in nearly all cases where a diligent search has been performed, the likelihood of a copyright owner resurfacing should be very low" (see discussion above). In any event, the unclaimed license fees can be used to fund the escrow and license fee setting procedures. Such an escrow system works well in Canada.

Alternate Dispute Resolution:

An alternative procedure for raising infringement claims and at least obtaining immediate injunctive relief, akin to the takedown procedures under the Digital Millennium Copyright Act, would enable artists to more effectively police inappropriate misuse of their works. The burden would be on the infringer to show that the work qualifies as an orphan work and that his use qualifies as a protected derivative work that should be allowed to continue.

Limitations on Remedies:

The safe harbor provisions in H.R. 5439 are far too broad (see Sec. 514(b) "Limitations on Remedies"). At a minimum, eligibility for the safe harbor provisions should be limited to situations where the use is:

- by individuals acting in a personal, non-commercial capacity, or by non-profit educational institutions, museums or libraries, and

- for a scholarly or educational purpose, and

- performed without any purpose or foreseeable effect of commercial advantage, and

- where the infringer did not know, and had no reason to believe, that the copyright owner would normally have charged a fee for the use actually made by the infringer.

H.R. 5439 forces copyright owners to negotiate a remedy with a hostile user who did not get permission. See Sec. 514(b)(1)(A). Any limitation of the copyright owner's damages to "reasonable compensation" should recognize that a use has been made without permission, and the unauthorized use could cause serious harm to the market value of that work. Reasonable compensation should take into account the actual and threatened harm to the copyright owner, not just the value of the infringement to the infringer.

There should be no exemption from the reasonable compensation requirement for infringements “performed without any purpose of direct or indirect commercial advantage and primarily for a charitable, religious, scholarly, or educational purpose” (see Sec. 514(b)(1)(B)(I)). U.S. copyright law already has a well-developed doctrine of fair use. If a use qualifies as fair use under 17 U.S.C. Sec. 107, it is already shielded from infringement. If not, there should not be a new test to allow use without compensation. In the legitimate marketplace, many charities and other non-profit users routinely pay minimal licensing fees for use of copyrighted work, just as they pay for other goods and services. It is the copyright owner’s right to determine whether such uses are appropriate, and whether a fee will be charged.

Derivative works:

The definition of favored derivative uses (Sec. 514(b)(2)(B) "Special Rule for New Works"), should be tailored more narrowly to encompass only uses that are not harmful to current legitimate markets for copyrighted works, such as noncommercial uses, archival reproductions, uses by non-profits. Highly profitable industries, e.g., motion pictures, should pay for orphan works to the same degree they buy rights to similar works in the legitimate marketplace.

At a minimum, the original wording in the Copyright Office's proposal should be restored by requiring that the new work includes "the infringer's significant amount of original expression in a new work of authorship."

Examples:

Here are two examples to illustrate how the different approaches would apply in the marketplace.

1. Old photographs (should qualify as orphan works)

As discussed above, one of my clients recovered several old photographs from the trash after his employer went out of business. Ten years later, he wanted to create digitally enhanced images from the photos and publish them as posters and in a book. The photos have great historic value as documentation of a particular place and time. He believed most of them were taken by staff, thus would be works made for hire. There was no successor to the business. We tried but could not find the individual owners of the business nor the staff photographers.

These photos would qualify as legitimate orphan works under both H.R. 5439 and the revisions proposed above. My client had done a comprehensive search but could not find the possible copyright owners. AND there were additional circumstances that indicated the works were probably abandoned, especially that he found them in the trash, and he determined the business had no successors.

2. Contemporary artwork (should not qualify as orphan works)

This example is based on the 9th Circuit case, Mirage Editions, Inc. v. Albuquerque A.R.T. Co., 856 F.2d 1341 (9th Cir. 1988). A merchant buys a book of illustrations, removes individual pages, and makes new products by mounting the pages on tiles. In the process the copyright and publisher's information are separated from the images. Under most state laws, the making of these tiles would be allowed under the first sale doctrine. In California under Mirage it would be an infringement without the illustrator's consent. In either event, the tiles have entered the stream of commerce without identifying information.

The tiles change hands a few times over the next few years. One comes into the possession of a bank president who wants to copy part of the illustration as the signature image for his bank's new corporate identity, including its website. He tries to do a search, but has no real clues to do so (there being no author, copyright or title of the work on the tile), and he gives up. At this point, under H.R. 5439 the illustration would be deemed an orphan work. The bank's new website might be deemed a derivative work and thus protected against injunctive relief.

Meanwhile, the illustrator is herself in the midst of negotiating an exclusive license for the same image, to be used to promote the financial services of her client. The license is premised on her warranty that the book which had previously published the illustration is out of print, and she has not granted anyone else any rights to use the image.

Under H.R. 5439, the illustrator's deal is threatened because, through no fault of her own, her illustration entered the stream of commerce with no identifying information. The bank president could not find her, but she has not abandoned her rights in this illustration. Yet the bank's commercial use would trump the illustrator's rights.

In contrast, under the additional criteria suggested above, the illustrator's rights in her work would remain protected. The bank president's unsuccessful search for the artist would not be determinative. The other criteria would weigh against abandonment: the work was not old, it was not unpublished, and it was found in a commercial product (thus indicating there is an ongoing commercial market for the work).

Conclusion

Orphan works are by definition works presumably protected by copyright. The risk that a new use of such a work may deprive the copyright owner of her livelihood should always outweigh any purported benefit to society flowing from unauthorized use. It is not appropriate to measure abandonment merely by a user’s inability to find the copyright owner. Additional safeguards are needed, especially in the case of works (such as artwork and photographs) which have routinely been published without owner information, and which by their very nature cannot be searched with available text-based tools.

I urge you to vote NO on H.R. 5439. I cannot emphasize enough how devastating to my clients the bill would be if it were enacted in its current form. This is not a true "orphan works" bill. It is a bill to essentially reverse the protections of Copyright Law, at least with respect to visual works, and potentially re many other works as well. It would essentially retroactively revoke copyright protection for visual works by protecting unauthorized users of such works regardless of whether the works are old or abandoned, while simultaneously gutting all effective remedies to redress such infringement.

Thank you for your time and consideration of the above.

Respectfully yours,

Linda Joy Kattwinkel

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You are invited to submit questions for consideration in upcoming Legalities columns. Please send your questions to Legalities@owe.com.
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Legalities is a service mark of Linda Joy Kattwinkel. © 2006 Linda Joy Kattwinkel. The author hereby grants to the public the limited, nonexclusive right and license to adapt and submit to members of Congress paraphrased versions of the arguments in this letter (I believe submitting arguments in your own words is more effective than submitting a duplicate verbatim letter), for the purpose of defeating or modifying H.R. 5439. Linda Joy Kattwinkel is an attorney, painter and former graphic artist/illustrator.  She practices intellectual property law, arts law and mediation for artists in San Francisco. She can be reached at 415-882-3200 or ljk@owe.com.

Linda Joy Kattwinkel will be participating in the 8th Annual Visual Arts & the Law Conference in Santa Fe, New Mexico on August 10th and 11th.

See the archive of previous columns for more answers to your questions.