Supreme Court Hears Argument in Copyright Restoration Case

Supreme Court Hears Argument in Copyright Restoration Case

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 subscribers / unenhanced 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.

The 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 Amendment scrutiny. 

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 Berne.

The Court's decision in Golan is expected early next year.  A copy of the oral argument transcript is available at 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 own. 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). subscriber can view the Supreme Court briefs filed in Golan v. Holder, No. 10-545.


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