WASHINGTON, D.C. - (Mealey's) Congress
did not exceed its authority in enacting Section 514 of the Uruguay Round
Agreements Act (URAA), which extended protection to foreign works that would
otherwise fall into the public domain, a divided U.S. Supreme Court ruled today
(Lawrence Golan, et al. v. Eric H. Holder Jr., et al., No. 10-545, U.S.
Sup.; See 10/25/11, Page 4).
Justice Ruth Bader Ginsburg
wrote for the majority that the high court's ruling in Eldred v. Ashcroft
(537 U.S. 186 ; See 1/20/03, Page 4) [enhanced version available to lexis.com subscribers / unenhanced version available from lexisONE Free Case Law]
is "largely dispositive of
petitioners' claim that the [copyright] Clause's confinement of a copyright's lifespan
to a 'limited time' prevents the removal of works from the public domain."
"We find scant
sense in this argument, for surely a 'limited time' of exclusivity must begin
before it may end," Justice Ginsburg wrote.
In 1989, the United States
joined the Berne Convention for the Protection of Literary and Artistic Works,
requiring each signing country to provide the same copyright protections to
authors in other member countries that it provides to its own authors.
However, the implementing legislation in the United States did not extend
copyrights to foreign works that were already in the public domain in the
United States. So in 1994, the United States signed various trade
agreements, including one requiring that its signatories comply with Article 18
of the Berne Convention and extend copyright protection to all works of foreign
origin whose term of protection had not expired.
To comply with these
international agreements, Congress enacted the URAA. Section 514 of the
URAA implements Article 18 of the Berne Convention, restoring copyrights in
foreign works that were formerly in the public domain in the United States.
Section 514 also provides protections for "reliance parties" that had
exploited foreign works before their restoration. In 2001, petitioner
Lawrence Golan and various other musicians and publishers sued the U.S.
attorney general (then John Ashcroft, now respondent Eric H. Holder Jr.) in the
U.S. District Court for the District of Colorado, challenging the constitutionality
of the Copyright Term Extension Act (CTEA) and Section 514 of the URAA and
seeking declaratory and injunctive relief. Judge Lewis T. Babcock granted
summary judgment to the government. On appeal, the 10th Circuit U.S.
Court of Appeals ruled that the plaintiffs' CTEA claim failed but that their
challenge to Section 514 of the URAA was valid. The appellate panel
remanded the case for Judge Babcock to assess "whether [Section] 514 is
content-based or content-neutral" and to apply the appropriate level of
Judge Babcock granted the plaintiffs' motion for summary judgment, ruling that
"to the extent Section 514 suppresses the right of reliance parties to use
works they exploited while the works were in the public domain," Section 514 is
unconstitutional. The 10th Circuit again reversed, finding that the
government met its burden of demonstrating "a substantial interest in
protecting American copyright holders' interests abroad" and that Section 514
"is narrowly tailored to advance that interest." Golan filed a petition
for certiorari, which was granted in March 2011, leading 24 amici
curiae to weigh in.
Oral arguments were held in
No Second Guess
Siding with the respondent,
the majority rejected Golan's claim that absent a reversal of the 10th Circuit,
the government could institute perpetual copyright terms. "As in Eldred, the hypothetical legislative
misbehavior petitioners posit is far afield from the case before us," Justice
Ginsberg wrote, adding that "in aligning the United States with other nations
bound by the Berne Convention, and thereby according equitable treatment to
once disfavored foreign authors, Congress can hardly be charged with a design
to move stealthily toward a regime of perpetual copyrights."
Ginsburg said that "historical practice corroborates" the majority's
interpretation of the copyright clause as permissive of "full U.S. compliance
with Berne." Congress has previously "seen fit to protect works once
freely available" according to Justice Ginsburg, who noted that the Copyright
Act of 1790 granted protection to works previously in the public domain, while
several other private bills - including the Helmuth and Corson Acts - restored
copyright protection. While the statutes were never challenged in court,
"analogous patent statutes . . . were upheld in litigation," Justice Ginsburg
"Given the authority we hold
Congress has, we will not second-guess the political choice Congress made between
leaving the public domain untouched and embracing Berne unstintingly," Justice
Progress Of Science
Turning to Golan's argument
that Section 514 provides no incentive to create new works, in contravention of
the Copyright Act's stated goal of promoting the progress of science and useful
arts, the majority was similarly not persuaded. In Eldred, the
Supreme Court "rejected an argument nearly identical to the one petitioners
rehearse," Justice Ginsburg observed, ultimately holding that the copyright
clause does not demand that each copyright provision - when "examined
discretely" - must "operate to induce new works." Even without the ruling
in Eldred, however, the majority deemed Golan's argument unavailing because
"nothing in the text of the Copyright Clause confines
the 'Progress of Science' exclusively to 'incentives for creation.'"
"Evidence from the founding,
moreover, suggests that inducing dissemination - as opposed to creation - was
viewed as an appropriate means to promote science. . . .
Until 1976, in fact, Congress made 'federal copyright contingent on
publication, [thereby] providing incentives not primarily for creation,' but
for dissemination," Justice Ginsburg wrote, citing the statement of Professor
Shira Perlmutter at URAA Joint Hearing 189.
well-functioning international copyright system would likely encourage the
dissemination of existing and future works. Full compliance with Berne,
Congress had reason to believe, would expand the foreign markets available to
U.S. authors and invigorate protection against piracy of U.S. works abroad,
thereby benefitting copyright intensive industries stateside and inducing
greater investment in the creative process," Justice Ginsburg wrote.
With regard to
Section 514 and the First Amendment, the majority found that the latter does
not inhibit the restoration authorized by the former. As in Eldred,
the Supreme Court found that there is no need for heightened review because
"Congress adopted measures to ease the transition from a national scheme to an
international copyright regime" by deferring the date from which enforcement
runs, and cushioning the impact of restoration on reliance parties.
"Petitioners attempt to
distinguish their challenge from the one turned away in Eldred.
First Amendment interests of a higher order are at stake here,
petitioners say, because they - unlike their counterparts in Eldred -
enjoyed 'vested rights' in works that had already entered the public domain.
The limited rights they retain under copyright law's 'built-in
safeguards' are, in their view, no substitute for the unlimited use they
enjoyed before §514's enactment. Nor, petitioners urge, does §514's
'unprecedented' foray into the public domain possess the historical pedigree
that supported the term extension at issue in Eldred. However spun,
these contentions depend on an argument we considered and rejected above,
namely, that the Constitution renders the public domain largely untouchable by
Congress," Justice Ginsburg wrote.
In a dissent,
Justice Stephen Breyer, joined by Justice Samuel A. Alito Jr., aligned with
Golan's position that Section 514 "does not encourage anyone to produce a
single new work" and that, by definition, the statute "bestows monetary
rewards" only on the owners of "old works."
"At the same
time, the statute inhibits the dissemination of those works, foreign works
published abroad after 1923, of which there are many millions, including films,
works of art, innumerable photographs, and, of course, books - books that (in
the absence of the statute) would assume their rightful places in
computer-accessible databases, spreading knowledge throughout the world,"
Justice Breyer wrote.
'Any Plausible Reading'
"possibility of eliciting new production" an "essential precondition for
American copyright protection," Justice Breyer found that Section 514 achieves
the exact opposite. The statute "brings about higher prices and costs,"
Justice Breyer warned, "and in doing so seriously restricts dissemination,
particularly to those who need it for scholarly, educational or cultural
purposes-- all without providing any new incentive for the production of new
As such, "Congress
. . . has exceeded what are, under any plausible reading of the Copyright
Clause, its permissible limits," Justice Breyer added.
Kagan took no part in the decision.
The petitioners are
represented by Anthony T. Falzone of the Stanford Law School Center for
Internet & Society in Stanford, Calif. Solicitor General Donald B.
Verilli Jr. of the U.S. Department of Justice in Washington represents the
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