By Michael R. Klipper and Colby Block*
On October 5, 2011, the Supreme
Court heard arguments in Golan v. Holder,
in order to answer an intriguing legal question: Are there circumstances when Congress can take out of the public domain
works that have lost their copyright?
The statute challenged in Golan, Section 514 of the
Uruguay Round Agreements Act, was enacted in 1994 to bring the United
States into compliance with Article 18 of the Berne Convention for the
Protection of Literary and Artistic Works ("Berne"). Article 18(1) of Berne requires signatories
to grant copyright protection to works of other Berne members that have not yet
fallen into the public domain of those countries due to the expiration of the
term of copyright. To satisfy this
obligation, Section 514 restores copyright status to foreign works that are
still protected by copyright in their country of origin, but fell into the
public domain in the U.S. for (1) non-compliance with U.S. statutory
formalities; (2) lack of copyright relations between the United States and
country of origin of the foreign work; and (3) lack of subject matter
protection in the case of pre-1972 sound recordings. The restored work's term
of protection in the U.S. expires on the same date as if forfeiture of the
copyright never occurred.
In 2001, petitioners challenged
Section 514 as exceeding Congress's
authority under the Copyright Clause and the First Amendment. In two separate but related decisions, the
U.S. Court of Appeals for the Tenth Circuit rejected both of these arguments. In the first decision, the Tenth Circuit
found that Congress had the power to resurrect copyright protection, but that
its decision to do so was sufficiently unusual that it changed the "traditional
contours" of copyright protection, and hence should receive enhanced First Amendment
review. After the District Court found
the statute unconstitutional on First Amendment grounds, the Tenth Circuit
reversed. Plaintiffs sought certiorari
and on March 7, 2011, the Supreme Court agreed to hear the case and held oral
argument in Golan last week.
Based on the argument, it seems
likely that three issues will dominate the Court's decision making: whether
Section 514 (1) is consistent with the "Limited times" requirement of the
Copyright Clause; (2) promotes the progress of science and the useful arts; and
(3) is consistent with the free speech protections of the First Amendment.
The limited times issue dominated the
early part of the oral argument.
According to Anthony Falzone, counsel for petitioner, the Court in Eldred
v. Ashcroft, 537 U.S. 186 (2003) [enhanced version
available to lexis.com subscribers
version available from lexisONE Free Case Law], made clear that
Congress can pick a date on which copyright expires and can extend that date if
it acts prior to the expiration of the original date. Here,
Falzone asserted, Congress acted inconsistent with Eldred because the date on which the
copyright was initially set to expire was fixed by Congress long ago and
expired many years before Congress enacted Section 514. In an attempt to make this argument work,
petitioner made a novel and unusual contention: when Congress decided that a
work would receive no copyright protection for failure to satisfy a statutory
formality such as the notice requirement, it expressly set a copyright term of zero years for that work. Since those works already received a full term
of zero years, Petitioner contends that Congress is offering a second term of
protection, in violation of the "Limited times" mandate.
Justice Ginsburg quickly challenged
petitioner's zero term argument, asserting that works in question "never got
the first limit." "[T]here was no time when that work could have been
protected.... We are not talking about a case where you've had the
protection, enjoyed it and then it expired, and then Congress says: [We] like your
work so much, we are going to give you another term."
Mr. Falzone then argued that Section
514 does not promote the progress of science and the useful arts. He stated that a statute that "does nothing but
take old works out the public domain without any impact on prospective
incentives, cannot stimulate the creation of anything." Justice Sotomayor
seemed somewhat skeptical, and countered that Section 514 creates an incentive
for those foreign authors who previously were unwilling to market their works
in the U.S. for lack of copyright protection, but who would then be willing to
distribute the work in the U.S. once copyright protection was provided. Chief Justice Roberts appeared to agree with
Justice Sotomayor on this point, suggesting that even if the incentive is
"meager," the Court has traditionally not asked more from Congress-an apparent
recognition that the Court defers substantially to the views of Congress when
enacting Copyright laws.
Later, when questioned on this
same issue, Solicitor General Verilli, arguing on behalf of the United States,
added that the statute promotes progress by "creat[ing] additional incentives for authors today and going forward, because they know that there is a much greater likelihood
that whatever intellectual property they create will be better protected in
foreign countries as a result of our joining the Berne Convention." Justice Breyer and, to some extent,
Justice Scalia, challenged the notion that Section 514 would lead to the
creation of any new works. Given that
the Court in Eldred expressed the
importance of deferring to Congress on the question of promotion, it would be a
marked departure if the Court ultimately were to hold that Section 514 fails
for lack of promotion of the arts and sciences.
The next major question dealt
with petitioner's contention that the legislation impermissibly infringes upon
the First Amendment. In requiring enhanced First Amendment scrutiny of Section
514, the Tenth Circuit relied on language from the Eldred opinion intimating that ordinarily the fair use doctrine and
the idea/expression dichotomy that denies copyright protection to ideas, are
sufficient to satisfy free speech concerns and that additional First Amendment
review would be required only if Congress changed the "traditional contours of
copyright protection"-a phrase that the Court did not define further.
crux of petitioner's First Amendment argument was that Section 514 violated the
free speech rights of those who had the ability to exploit public domain works
prior to restoration, but could no longer do so after those works were restored
to copyright status. The Tenth Circuit
read Eldred's "traditional contours"
language expansively, finding that because restoration departs from the
purported tradition of what goes in the public domain stays there, heightened
First Amendment scrutiny was warranted.
In a brief discussion of
traditional contours, Mr. Falzone argued that Section 514 was a huge departure
from 200 years of copyright tradition because it revoked "the
public's Federal right to copy and use works in the public domain." As a result, he argued that full First
Amendment scrutiny was triggered.
Moreover, because none of the interests proffered by the government in
support of the statute was adequate to justify its constitutionality under the
First Amendment, and the adverse impact on First Amendment rights was
"remarkable," he opined that there was no way that the statute passed First
General Verilli countered that
because fair use and the idea/expression dichotomy remained intact under
Section 514, the traditional contours of copyright protection were not altered;
thus, there was no need for the Court to engage in heightened First Amendment
analysis. Even if it were assumed that
further free speech analysis were warranted, General Verilli argued that the
statute passed muster under intermediate First Amendment scrutiny, which basically
requires the law be narrowly tailored to achieve an important government
interest. According to the Solicitor General, Section
514 was more than justified by the government's interest in ensuring that the
United States be seen as in full compliance with the requirements of Berne. Justice Breyer was unpersuaded by this
argument, noting that the U.S. could have passed legislation that was less
restrictive of First Amendment rights in order to meet its obligations under
The Court's decision in Golan is expected early next year. A copy of the oral argument transcript is
available at http://www.supremecourt.gov/oral_arguments/ argument_transcripts.aspx.
*Mr. Klipper is a founding
partner of Meyer, Klipper & Mohr, PLLC in Washington, D.C. Ms. Block is an associate in the firm. Their firm filed an amicus brief on behalf of
several clients in support of the constitutionality of Section 514. The views expressed in this article are their
Lexis.com subscribers can view the enhanced version of Golan v. Holder, 609 F.3d 1076 (10th Cir. Colo. 2010).
Non-subscribers can view the unenhanced, free version of Golan v. Holder, 609 F.3d 1076 (10th Cir. Colo. 2010).
Lexis.com subscriber can view the Supreme Court briefs filed in Golan v. Holder, No. 10-545.
For more information on this case, read:
3-9A Nimmer on Copyright
§ 9A.02: Article 18 of the Berne Convention
To understand the dynamics at work in copyright restoration, it is
vital to focus at the outset on the Berne Convention's Rule of Retroactivity. 1
The United States agreed to honor all Berne terms upon accession in 1989, but
expressed a "wait-and-see" attitude about the retroactivity question.
1.1 The issue returned when TRIPs made all provisions of the Berne ....
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