Eldred Conquers Golan’s Heights
Supreme Court Upholds Copyright Restoration

Last week, the Supreme Court issued its eagerly awaited ruling in Golan v. Holder, holding that Congress acted within its authority in passing legislation that restored copyright in certain foreign works that were previously in the public domain in the United States.  The Court found that its earlier opinion in Eldred v. Ashcroft largely disposed of the petitioners’ claims.  Though reactions to the case seemed muted in contrast to the raging debate over SOPA – which initially overshadowed news of the opinion – it is an important opinion with significant ramifications for those who use content in the public domain.

How Did We Get Here?

The opinion, authored by Justice Ginsburg, nicely describes the history of the legislation at issue.  In 1989, the United States signed on to the Berne Convention for the Protection of Literary and Artistic Works, a multilateral copyright treaty which first took effect in 1886.  The Berne Convention requires its members to afford “national treatment” to authors from other member countries – in other words, a country must provide foreign authors with the same degree of copyright protection that it provides to its own nationals.  The legislation passed in the United States to implement Berne, however, gave no protection to any foreign work that had already entered the public domain the United States.  The U.S. considered that protecting future foreign works was sufficient to satisfy Berne.  Though other Berne members disagreed with this interpretation and disapproved of it, the Berne Convention does not include an effective enforcement mechanism, leaving disgruntled parties with little recourse.

That changed in 1994, when the Uruguay Round of multilateral trade negotiations resulted in the establishment of the World Trade Organization (“WTO”), an international organization dealing with the global rules of trade between nations, and the Agreement on Trade-Related Aspects of Intellectual Property Rights(“TRIPS”).  The United States became a WTO member and signed the TRIPS agreement.  TRIPS requires its signatories to implement the first 21 articles of the Berne Convention, including the provision requiring national treatment.  Breach of the agreement is subject to enforcement by the WTO, which could subject the breaching party to tariffs or other punitive measures.  The threat of a challenge from other Berne members to the United States’ implementation of the Berne Convention took on new urgency.

Accordingly, Congress took action to ensure that United States was indisputably in compliance with the national treatment requirements of Berne.  It passed Section 514 of the Uruguay Round Agreements Act, which extended copyright to works that remained protected by copyright in their countries of origin, but has passed into the public domain in the United States for any one of three reasons: (1) lack of copyright relations between the country of origin and the U.S. at the time of publication; (2) lack of protection for sound recordings fixed before 1972; and (3) failure to comply with U.S. statutory formalities (such as failure to affix notice of copyright to the work, or failure to register or renew copyright in the work – requirements which no longer exist under U.S. law).  To avoid Takings Clause problems, Congress included some protections for ”reliance parties” – those who had been using foreign public domain works.  A reliance party may continue to make use of a restored work until the owner of the restored copyright gives notice of intent to enforce, either by filing notice with the U.S. Copyright Office within two years of restoration, or by actually notifying the reliance party.  After that, a reliance party may continue to exploit existing copies for one year.  Any reliance party who created a derivative work of a restored work may indefinitely exploit the derivative work upon payment of “reasonable compensation” to the owner of the restored work.  If the parties cannot agree upon “reasonable compensation,” a federal district court judge may set the fee.

As a result of this legislation, a large body of foreign works previously in the public domain became subject to copyright protection in the U.S.  This disrupted the activities of individuals and organizations who were making use of these public domain works.  Some of these individuals and organizations sued to have the legislation declared unconstitutional.  The petitioners included orchestra conductors, musicians, publishers, and others who were making uses of works that were formerly within the public domain.

The Opinion

The petitioners argued that Section 514 of the URAA violates two Constitutional provisions: the Copyright Clause and the First Amendment.

Article I, Section 8, Clause 8 of the Constitution authorizes Congress “[t]o 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 . . .”  The petitioners argued that clawing back works from the public domain violated the “limited times” restriction.  The Supreme Court dismissed this argument on the basis of its earlier decision in Eldred v Ashcroft, which upheld the extension of the term of copyright in the U.S. to the life of the author plus 70 years.  In Eldred, the Court “declined to infer from the text of the Copyright Clause ‘the command that a time prescription, once set, becomes forever ‘fixed’ or ‘inalterable.””  Applying this reasoning, the Court found that the “terms afforded works restored by §514 are no less ‘limited’. . .”   The Court was unpersuaded by the petitioners’ argument that the “limited term” of foreign works which were previously unprotected by U.S. law was “expressly set to zero.”  The Court found “scant sense in this argument, for surely a ‘limited time’ of exclusivity must begin before it may end.”

In support of conclusion, the Court noted that Congress has removed works from the public domain before.  Most notably, the Copyright Act of 1790 – the first federal copyright act passed in the newly minted United States – granted protection to many works that were previously in the public domain.  Because the drafters of the 1790 Act were “men who were contemporary with [the Constitution's] formation, many of whom were members of the convention which framed it,” the Court found their action “entitled to very great weight.” 

The Court also rejected the petitioners’ argument that the Copyright Clause’s emphasis on “progress of science and the useful arts” requires that any legislation be designed to incentivize the creation of new works – an argument embraced by the dissent.  “Nothing in the text of the Copyright Clause confines the ‘Progress of Science’ exclusively to ‘incentives for creation.’”  Rather, Congress may also “promote[] the diffusion of knowledge” by encouraging the dissemination of works as well.  This seems to put a new gloss on the Copyright Clause, which many - including dissenting Justices Breyer and Alito – have understood to encourage authors to create new works. 

The petitioners also argued that Section 514 violated the First Amendment by inhibiting the free speech rights of individuals and organizations who were already making legal uses of foreign works in the public domain.  The Supreme Court again turned to Eldred to dispatch this argument.  In Eldred, the Court identified “traditional contours of copyright” that “are recognized in our jurisprudence as ‘built-in First Amendment accommodations.’”  One is the idea/expression dichotomy, which provides that copyright does not protect ideas, only the original expression of ideas.  The other, the fair use doctrine, allows the public make certain uses of copyrighted works that would otherwise constitute infringement.  Because Section 514 does not curtail either the idea/expression dichotomy or the fair use doctrine, the Court found that there was no need to subject the statute to the kind of heightened scrutiny otherwise required when legislation places limits on First Amendment rights.  Congress included safeguards within Section 514 to ease the burden on reliance parties who were making uses of foreign works previously within the public domain.  Nor does Section 514 bar public access to the works at issue.  Rather, it requires those who seek to exploit the works to pay for that exploitation or to limit it to “fair uses.”

Where We Go From Here

Reactions to the opinion have varied, predictably, from those who decry it as the destruction of the public domain to those who see no injustice in bringing U.S. copyright law in line with our international treaty obligations.  (A particularly spirited debate can be found at the Chronicle of Higher Education, http://bit.ly/x8rEPG.)  The nagging question remains in many commentators’ minds, in view of of Eldred and Golan, whether Congress can do wrong  in legislating copyrights.  Congress was authorized to extend the term of copyright by 20 years in Eldred, and Congress was likewise authorized to claw back works from the public domain in Golan.  There were reasons for both pieces of legislation, though reasonable minds can disagree about the validity of those reasons.  Could Congress suddenly extend the term of copyright to life of the author plus 150 years?  These questions are not new, and the Golan opinion leaves us to continue chewing them over for the foreseeable future.

It will be interesting to see how the accommodations for reliance parties work as a practical matter.  Will the owners of newly restored copyrights and their associated reliance parties find a way to negotiate mutually acceptable arrangements for ongoing uses?  Or will this provide more fertile ground for litigation?  I would love to hear opinions from those involved.

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