While copyright law questions can sometimes concern technical issues of statutory interpretation, a case pending before the Supreme Court goes to the fundamental issue of whether when works enter the public domain they can ever receive copyright protection. The case is Golan v. Holder. The case is scheduled for oral argument before the Supreme Court on October 5. Merits briefs for both sides have been submitted, and are available here at the website for the Center for Internet and Society, which is providing legal counsel to Petitioners in the case.
At issue is a law passed by Congress in 1994, Section 514 of the Uruguay Round Agreements Act, that “restored” copyright protection to foreign works that had previously been in the public domain. Congress passed the law in an effort to ensure that the U.S. due to a situation in which some countries voiced skepticism that the U.S. was in compliance with the Berne Convention and hoped that by restoring copyright protection to foreign works here in the U.S., American works that were in the public domain abroad might likewise have their copyrights restored. Both the MPAA and RIAA offered vocal support for the law at the time of its passage.
Petitioners in the case are described in their brief as “orchestra conductors, educators, performers, film archivists, and motion picture distributors who depend upon the public domain for their livelihood.” Examples of works that were at one point in the public domain and used by practitioners include “Prokofiev’s Classical Symphony and Peter and the Wolf; Shostakovich’s Symphony 14, Cello Concerto (Op. 107) and Piano Concerto (Op. 35); and Stravinsky’s Petrushka.”
Petitioners argue that the law exceeds Congress’s power under the Progress Clause of the U.S. Constitution, from which Congress derives authority to set the terms of patent and copyright protection. In addition, they argue that even if it were within Congress’s power to remove works from the public domain, doing so violates the First Amendment because it is inconsistent with the traditional contours of copyright protection and the government cannot justify the restriction on speech. The government asserts that Congress was within its authority to pass the law under the Progress Clause, presenting a different reading of the key precedent, Eldred v. Ashcroft, than that presented by petitioners. In addition, the government argues that the law is in keeping with the First Amendment based on Congress’s legitimate interest in complying with the Berne Convention.
The case was originally in front of a Colorado District Court and, later, the Tenth Circuit. In its first ruling on the subject, the Tenth Circuit found that the law departed from the traditional contours of copyright law, because there was no history of Congress granting copyright protection to vast swaths of works in the public domain. It therefore held that the law was subject to traditional First Amendment analysis, as opposed to normal copyright terms set by Congress. It remanded to the District Court for further consideration of the First Amendment issue. The District Court held that the law curtailed more speech than was necessary and violated the First Amendment. The case then went back to the Tenth Circuit. The Tenth Circuit disagreed with the District Court’s analysis and held that the First Amendment was no bar to the law, particularly given Congress’s desire to ensure greater protection for works by American authors abroad.
Whether the Progress Clause Provides Authority for Congress to Enact Section 514
In their Opening Brief, petitioners argue that for over 200 hundred years, Congress has revised the nation’s copyright laws without doing what is at issue in this case: extending copyright protection to works in the public domain. They present the facts of this case as an extraordinary departure from the traditional understanding that once a work enters the public domain, it cannot thereafter regain copyright protection. They argue that such a restoration of copyright is not authorized by the Progress Clause of the U.S. Constitution, art. I, § 8, cl. 8. The Progress Clause provides Congress with the following authority:
“To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.”
According to petitioners, the law at issue violates the “limited Times” language in the Progress Clause. If Congress is able to retroactively restore works that have passed an earlier limit and fallen into the public domain, then any limits set by Congress are unreliable and the public will not be able to trust that they will be able to make continued use of works in the public domain.
Both sides offer competing versions of why Eldred v. Ashcroft supports their position. In that case, the Supreme Court considered whether Congress could enlarge the term of copyright protection for works that had not yet fallen into the public domain. For most works, the new term was the life of the author plus 70 years whereas it had previously been the life of the author plus 50 years. The Court cited a history of Congress repeatedly enlarging the term of copyright protection, and ultimately held, by a 7-2 margin, that Congress was within its authority to extend the term of copyright protection.
Justice Ginsburg’s majority opinion also noted that the new term was on par with that in many European countries, which had taken to granting American authors protection of the life of the author plus fifty years instead of the term they granted their own residents. This is expressly permitted by the Berne Convention’s “rule of the shorter term.” (Under the rule of the shorter term, a signatory to the Berne Convention is obligated to provide a minimum term of protection that equals the shorter of the terms that both countries provide to copyrighted works.) Thus, in the context of enlarging the term of copyright for works that had not yet entered the public domain, the Supreme Court deemed it a legitimate Congress rationale that doing so would increase the term of copyright protection for American works in Europe.
The government claims that the law falls squarely within the scope of Congress’s power because it treats works that did not receive protection previously due to a failure of the author to comply with previous copyright law formalities (such as the notice requirement) as if they had received copyright protection from the date of publication and, accordingly, they are subject to the same term limit as other works published on the same dates. The government argues, then, that insofar as foreign works have received restored copyright protection, it has always come with a fixed term, and that this all that the Progress Clause mandates.
According to petitioners, the removal of works from the public domain is simply different in kind from the enlargement of the copyright term of works currently under copyright protection because it entails upending the expectation of the public that the public domain will forever remain free to all. Their Brief states that:
This Court in Eldred held that an extended copyright term was still “limited” because it had a definite outer boundary. 537 U.S. at 199. Section 514 is radically different. It destroys the boundary Eldred identified and renders it meaningless.
Thus, petitioners assert that the unpredictability that would result if Congress is able to grant copyright protection to works that have entered the public domain means that the original public understanding that applied when the works entered the public domain would not be followed, contrary to the bargain between authors and the public that they argue is at the root of the Progress Clause.
One aspect of the case that the government must overcome is an apparent concession that it made at oral argument in Eldred. In that case, Justice Souter asked at oral argument whether Congress would be able to extend the copyright term of ” a copyright that expired yesterday.” The Solicitor General answered that there is a “bright line” that would make such an extension problematic, particularly since other parties may rely on the work’s availability at that point. The governor acknowledges the exchange, but insists that the main point the Solicitor General was trying to convey “was that Congress, in enacting the copyright extensions at issue in Eldred, could rationally distinguish between a work whose copyright had very recently expired and a work whose copyright was on the verge of expiring, even if the works had been created only days apart.”
Both petitioners and the government present different versions of history regarding the historical practice of Congress granting copyright protection to works in the public domain. An important point of dispute is whether Congress granted protection to works in the public domain when it passed the Copyright Act of 1790. It goes without saying that if Congress did, this dramatically reduces the impact of petitioners’ argument that what Congress has done here is a radical departure from historical precedent. In addition, the Supreme Court gives weight to early legislative enactments in judging the original understanding of the Constitutional text.
On this point, the government argument is as follows:
The first federal copyright statute, enacted by the First Congress in 1790, granted copyright protection to “any map, chart, book or books already printed within these United States.” Act of May 31, 1790 (1790 Act), ch. 15, § 1, 1 Stat. 124; see Eldred, 537 U.S. at 194. At that time, many of the “map[s],” “chart[s],” and “books” “already printed” had no copyright protection. The unmistakable effect of the 1790 Act thus was to grant copyright protection to works that had previously been in the “public domain.”
The government’s Brief then goes on to explain that copyright law, previous to the Copyright of 1790, was determined by state law, and that three states did not have copyright statutes in effect. In addition, of the ten other states, seven did not provide protection to maps and charts.
The petitioners spend a considerable portion of their Reply Brief countering the government’s historical arguments. On the issue of whether the First Congress granted copyright protection to works in the public domain at that time, they say that the answer is “no.” Their Reply Brief states that
The 1790 Act authorized protection for maps, charts, and books that were “already printed” but only for authors who “have not transferred to any other person the copyright” in such works, or others who “have purchased or legally acquired the copyright of any such” work. Copyright Act of 1790, ch. 15, § 1, 1 Stat. 124 (emphasis added). In both cases the 1790 Act explicitly presupposes existing copyrights. It does not suggest any intent to protect works that were previously unprotected, or remove anything from the public domain.
In addition to arguing about the Copyright Act of 1790, Petitioners and the government offer competing versions of subsequent Congressional copyright law enactments. The Petitioners emphasize repeatedly that Congress has amended the nation’s copyright law nineteen times, and at each point left works in the public domain without copyright protection. The government points to some private bills that Congress passed restoring copyright protection to copyrights and patents, and claims that this provides adequate historical precedent for the law under review. However, Petitioners respond that the constitutionality of these private bills is debatable and that, in any event, fails to establish that Congress has the authority to pass the sweeping legislation at issue here. They also attempt to differentiate the circumstances that gave rise to the private bills from Section 514: “Section 514 does not relieve authors who missed deadlines despite their best efforts in securing protection, for otherwise eligible works. It applies to millions of works the Copyright Act made categorically and expressly ineligible for protection, and removes them from the public domain decades after Congress placed them there.”
If the Supreme Court is inclined to reverse the Tenth Circuit on the basis that Congress’s authority, derived from the Progress Clause, does not extend to restoration of foreign works, it will be easy enough to do so while distinguishing the Eldred holding. It will be interesting to see how much, if any, the Court’s reading of history plays in the decision. Eldred itself though was careful to note that its holding only applied to works that were currently under copyright protection. If the Court finds that Congress had adequate authority under the Progress Clause, then it will need to reach the First Amendment issue that was the focus of the Tenth Circuit.
Whether Copyright Restoration of Foreign Works is Consistent with the First Amendment
In Eldred, the Supreme Court also discussed why enlarging the term of copyright protection for works not yet in the public domain does not run afoul of the First Amendment. More specifically, the Court noted that Copyright law’s dichotomy between ideas (not protected) and expression (protected), and the fair use doctrine ensure that the grant of copyright monopolies is compatible with the underlying purpose of the First Amendment. The Court concluded by declaring that “when, as in this case, Congress has not altered the traditional contours of copyright protection, further First Amendment scrutiny is unnecessary.”
Petitioners argue that the Tenth Circuit was correct that Congress here altered the traditional contours of copyright protection, making this case, unlike Eldred, deserving of First Amendment scrutiny. They write that “[u]nlike the term extension statute that was before the Court in Eldred, Section 514 takes away vested and established public speech rights.” They further argue that the idea/expression dichotomy and fair use doctrine fail to ameliorate the injury caused by the government passing a law that prevents them from reproducing the entirety of expressions that used to be in the public domain.
Petitioners argue that Section 514 is subject to intermediate scrutiny, since it is content-neutral and burdens their speech rights. They argue that it is substantially overbroad. The Tenth Circuit justified the burden on free speech by arguing that the Section 514 was narrowly tailored to promote Congress’s goal of ensuring that American authors abroad received reciprocal treatment by similarly having copyright protection to their works restored. Petitioners argue that this is not even a legitimate governmental goal under the Progress Clause. They frame the issue as Congress taking away the speech rights of the public in order to create a windfall for foreign authors here in the hopes that American authors will receive a similar windfall abroad. Petitioners argue that ” [t]he government cannot claim a legitimate – much less important – interest in sacrificing public speech rights simply to create economic benefits for any private party.”
The Government, in its Brief, first disputes that Section 514 is subject to heightened scrutiny. This is because, based on some of the same historical disputes described earlier, the government denies that Section 514 alters the traditional contours of copyright law. The Government argues that the “practical effect” of the law at issue in Eldred and Section 514 is the same because in both cases the term of copyright is finite. If the Court were to adopt this view espoused by the government, then it would apply a rational basis standard of review and Section 514 would surely be upheld. The government cites three reasons that it believes that Section 514 should be upheld. It argues, as the Tenth Circuit did, that Congress hoped the statute would yield greater protection for American works abroad. But it also argues that Section 514 places the U.S. squarely in compliance with the Berne Convention, and corrects historical inequities because foreign works were denied protection based on their authors’ failure to comply with copyright formalities.
The government argues that it is undisputed that Berne requires the restoration of foreign works. Petitioners argue that the legislation could have been crafted to allow them to continue to exploit works in the public domain. The government argues, however, that granting absolute immunity to reliance parties that had previously made use of the works before their copyright was restored would not place the U.S. in true compliance with the Berne Convention. Although the government disputes the extent to which some foreign countries have granted protection to reliance parties, petitioners insist in their Rely Brief that “[a]t least nine Berne signatories provide varying forms of permanent protection to reliance parties.”
Petitioners, in their Reply brief, make the argument that Section 514 went well beyond the requirements of Article 18 of the Berne Convention, which is the basis for the government’s argument that Berne requires the restoration of foreign works. Petitioners write that “the government does not contend Berne required the United States to remove anything from the public domain, or enact Section 514.” Petitioners then argue that even assuming arguendo that the U.S. was not in compliance with Berne, the government could have complied with Berne without enacting a law that took works previously in the public domain and granted a copyright to foreign authors of the works. As mentioned above, one argument that petitioners make is that Congress could have granted greater protection to reliance parties who had acquired the restored works prior to the enactment of Section 514. They complain that Section 514, in addition to giving only a one-year window in which restoration parties can make use of the works, abandons copyright law’s traditional first sale doctrine. Petitioners conclude their argument on this point by stating that “[w]hatever government interests treaty participation might create, it does not create an interest in burdening more speech than a treaty requires.”
The government and petitioners actively dispute the extent to which the government has a legitimate interest in promoting the restoration of works by American authors abroad. As mentioned earlier, this was the justification that the Tenth Circuit relied upon in upholding the law against a First Amendment challenge. While petitioners argue that the law is designed to give a windfall to authors whose works are now in the public domain, the government that this argument is foreclosed by the Court’s reasoning in Eldred. The government argues that the law is simply properly (albeit belatedly) rewarding authors for their creative achievements. Petitioners retort that the government’s rationale that the law will further the production of creative works glosses over the fact that the alleged incentives to creation are “secured by sacrificing the public’s First Amendment rights.” Petitioners’ basic point is that it is simply not appropriate for the government to balance a supposed benefit to private parties against the injury to the public by contracting the number of works in the public domain.
I do not expect the third justification offered by the government–the need to correct historical inequities–to play a very important role in the case. The basic problem with this argument, as petitioners note, is that American authors were subject to the same formalities, such as the notice requirement. It is not altogether clear how the Court will rule on the two other justifications offered by the govermnent, however. This case is the first of its kind to reach the Supreme Court.