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On March 7, the U.S. Supreme Court granted a petition for a writ of certiorari in a case appealing a decision by the U.S. Court of Appeals for the 10th Circuit upholding the constitutionality of a federal statute that restored copyright protection to foreign works (Golan v. Holder, U.S., No. 10-545, review granted 3/7/11).
The appellate court held that a 1994 law restoring copyrights that had lapsed into the public domain or that had never been protected under U.S. copyright law was narrowly tailored to serve substantial governmental interests and thus did not violate the free speech rights of parties that had exploited the works while they were in the public domain. Golan v. Holder, 609 F.3d 1076, 95 USPQ2d 1466 (10th Cir. 2010) (80 PTCJ 259, 6/25/10).
The dispute can be traced back to 1989, when the United States became signatory to the Berne Convention for the Protection of Literary and Artistic Works of 1886. Article 18 of the Berne Convention stated that all signatory states would recognize the copyrights granted in other signatory states, and this applied retroactively to pre-existing foreign works, even if they had been treated as public domain works prior to accession to the treaty.
Congress subsequently enacted the Berne Convention Implementation Act of 1988, Pub. L. No. 100-568, 102 Stat. 2853, 2860. However, this statute did not implement the retroactivity principle. It recognized only those foreign copyrights covering works that were not already in the public domain under U.S. law, and it applied the treaty only to those foreign works created after March 1, 1989.
However, the United States had made commitments in negotiating the Uruguay Round General Agreement on Tariffs and Trade, which led to accession to the Agreement on Trade-Related Aspects of Intellectual Property. The TRIPs agreement required compliance with Article 18 of the Berne Convention.
Eventually, Congress enacted the Uruguay Round Agreements Act of 1994, Pub. L. No. 103-456, 108 Stat. 4809, 17 U.S.C. §§104A, 109. Section 514 of the URAA restored rights in any foreign work that was in the public domain as a result of (1) the failure of the copyright owner to comply with formalities mandated by pre-Berne Convention U.S. law, (2) the lack of subject matter protection, or (3) the lack of national eligibility. It did not restore rights in works that had originally been protected but whose protection had expired under U.S. law.
Section 514 also offered some concessions to “reliance parties,” or entities that had made use of certain foreign works with the understanding that they were not protected under U.S. copyright law. An owner of a foreign work was required to file notice of restoration or give actual notice to a reliance party, and the reliance party would be given a certain amount of time to sell its inventory of copies of the work in question before infringement liability would kick in. Use of derivative works could continue if the reliance party paid compensation in an amount set by agreement of the parties or by a federal court.
In 2001, a group of businesses and artists--including orchestra conductors, teachers, performers, publishers, archivists, and movie distributors--that had relied upon the public domain availability of pre-1989 foreign works initiated a lawsuit against the federal government, arguing that the restoration of rights interfered with their First Amendment rights and also violated the Copyright Clause of the Constitution.
In a 2005 decision, Judge Lewis T. Babcock of the U.S. District Court for the District of Colorado rejected this argument and granted summary judgment in the government's favor. Golan v. Gonzales, 74 USPQ2d 1808 (D. Colo. 2005) (70 PTCJ 5, 5/6/05). On appeal, the 10th Circuit said that free speech rights were sufficiently implicated for the claim to survive summary judgment (74 PTCJ 553, 9/14/07).
On remand, the district court ruled that Section 514 violated the First Amendment rights of those U.S. individuals and entities that had been using the public domain works in question (77 PTCJ 663, 4/17/09). According to the district court, the new copyright protections given to foreign authors were substantially more than necessary to comply with the Berne Convention. The district court thus granted summary judgment to the plaintiffs.
The government appealed the ruling that Section 514 violated the plaintiffs' free speech rights. The plaintiffs also appealed, seeking additional relief, including an injunction barring enforcement of the statute and cancellation of the relevant copyright registrations.
The 10th Circuit reversed, finding that Section 514 was a content-neutral regulation of speech. Applying the intermediate scrutiny standard, the appeals court found important or substantial governmental interests. The court rejected the argument that Section 514 represents only a “reallocation of speech interests,” and it also found that the statute had been narrowly tailored to serve legitimate governmental interests.
The petitioners urged the Supreme Court to review the appeals court's ruling, asserting that the statute flew in the face of the entire history of U.S. copyright law by reinstating the copyright status of works already in the public domain, and thus creating uncertainty on the part of the users of creative works.
The “bedrock principle” of copyright law is that once in the public domain, a work stays in the public domain, the petition said. Furthermore, according to the petition, this principle was based on the Constitution's progress clause (also known as the copyright clause) itself, which restricts intellectual property protection to “limited times.”
In opposition, acting Solicitor General Neal Kumar Katyal said that the 10th Circuit's ruling is not in conflict with any Supreme Court precedent, nor does it conflict with any other circuit rulings. Furthermore, the government argued that the URAA does not violate the “limited times” restriction in the Constitution, because terms of protection are still limited, pursuant to Eldred v. Ashcroft, 535 U.S. 185, 65 USPQ2d 1225 (2003) (65 PTCJ 224, 1/17/03)
The government also cited Eldred to counter the petitioners' argument that the progress clause limits Congress's power by imposing a “public purpose” requirement and that Section 514 serves only the interests of private copyright holders. The opposition brief said:
Eldred … rejected the heightened standard of review proposed by [Justice Stephen G. Breyer's] dissent and instead reaffirmed that courts should ask only whether Congress rationally exercised its legislative authority. … The Court made clear “that it is generally for Congress, not the courts, to decide how best to pursue the Copyright Clause's objectives.”
According to the opposition brief, labeling the government's interest in complying with the Berne Convention in order to ensure that American authors would be protected by its terms abroad as an impermissible non-public purpose was the same kind of “second-guessing” that was rejected by Eldred.
Regarding the free speech argument, the government said that Section 514's limitation on speech is minor, and that the statute should not have been subject to intermediate scrutiny in the first place. Again citing Eldred, the government said that First Amendment scrutiny is not appropriate because there has been no alteration of the “traditional contours of copyright protection.” The brief stated:
Read in context, Eldred's reference to the “traditional contours of copyright protection” describes the two First Amendment accommodations built into copyright law: the “idea/expression dichotomy” (i.e., the principle that federal copyright law “distinguishes between ideas and expression and makes only the latter eligible for copyright protection”) and the doctrine of “fair use.”
Because neither of these issues is implicated by Section 514, the government said, there is no reason to scrutinize the statute with respect to free speech rights.
In reply, the petitioners rejected the government's argument regarding the “limited times” clause, distinguishing between a “restoration” of copyright protection and the “extension” of copyright protection, which was at issue in Eldred. The reply brief also emphasized the district court's conclusion that Section 514, as enacted, was not necessary in order for the United States to comply with the Berne Convention.
The petitioners also rejected “The Government's insistence that it has an important interest in giving away vested public speech rights for the purpose of enriching authors here or abroad.”
The Internet Archive, represented by the Electronic Frontier Foundation, filed an amicus brief supporting the petition for certiorari, asserting that Section 514 represents “a significant threat to the ability of libraries and archives to promote access to knowledge.” The amicus brief expounded on the importance of the public domain, the importance of libraries, and the relationship between the two. According to the Internet Archive, Section 514 creates disincentives for libraries to collect and give access to content, as well as disincentives for third-party users to access library content.
Another amicus brief supporting the petitioners was filed by the Conductors Guild. It argued that Section 514 “has a direct and dramatic effect on the ability of musicians and orchestras to perform” important compositions, such as those by Sergei Prokofiev, Igor Stravinsky, and Dmitri Shostakovich. The brief stated:
Rental fees for copyright-protected music are an enormous financial burden on small orchestras. Despite the fact that sheet music rentals are changed on a per-performance basis, the fees are normally between three and four times the purchase price for sheet music for a work in the public domain. …
The “restoration” of copyright protection to previously available works both demands a new financial investment from orchestral groups and undermines their previous investments. These new higher rental fees inevitably will result in orchestral groups choosing not to perform canonical works that have been performed frequently for decades. Moreover, an orchestra's earlier investment in its own sheet music is undermined by this restoration. If the work in question is newly protected, an orchestra is not entitled to perform it simply because it previously purchased a copy of the score. Instead, performance of such a work requires payment of a performance fee or purchase of a blanket license.
1. Does the Progress Clause of the United States Constitution prohibit Congress from taking works out of the Public Domain?
2. Does Section 514 [of the Uruguay Round Agreements Act of 1994, Pub. L. No. 103-465, 108 Stat. 4809, 17 U.S.C. §§104A, 109,] violate the First Amendment of the United States Constitution?
Justice Elena Kagan took no part in consideration of this case.
Text of petition for writ of certiorari at http://pub.bna.com/ptcj/10545Oct20Petition.pdf
Text of government's opposition brief at http://pub.bna.com/ptcj/10545OppositionBrief.pdf
Text of petitioners' brief in reply to opposition at http://pub.bna.com/ptcj/10545ReplyBrief.pdf
Text of Internet Archive's amicus brief in support of certiorari at http://pub.bna.com/ptcj/10545IntArchiveAmicus.pdf
Text of Conductors Guild's amicus brief in support of certiorari at http://pub.bna.com/ptcj/10545ConductorsAmicus.pdf
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