Golan v. Gonzales, USCA Tenth Circuit

A group of plaintiffs challenged the constitutionality of two laws that amended the Copyright Act – the Copyright Term Extension Act (CTEA), which extended the term of copyright from life of the author plus 50 years to life of the author plus 70 years, and the Uruguay Round Agreements Act (URAA), which restored copyrights for some materials that were in the public domain.

A district court dismissed the plaintiffs’ CTEA claim because it was precluded by the Supreme Court’s decision in Eldred v. Ashcroft, 537 U.S. 186 (2003). The district court also granted summary judgment to the government on the URAA claim, finding that Congress had not exceeded the “limited Times” provision in the Constitution by enacting the URAA. The Tenth Circuit affirmed these decisions, but it also found that the plaintiffs had raised a legitimate First Amendment challenge to the URAA and remanded so that the district court could determine what level of First Amendment scrutiny to apply.

The URAA implements Article 18 of the Berne Convention for the Protection of Literary and Artistic Works. The Berne Convention requires member countries to afford the same copyright protection to foreign authors as they provide their own authors. In this case, congressional compliance with the Berne Convention meant providing copyright protection to some foreign works that were already in the public domain.

The plaintiffs argued that the URAA shrank the public domain and thereby violated the limitations on congressional power inherent in the Copyright Clause in the Constitution. (Under the Copyright Clause, Congress may “promote the Progress of Science and useful Arts, by securing for limited Times to Authors . . . the exclusive Rights to their Writings.” U.S. Const. art. I, § 8, cl. 8.) The Tenth Circuit rejected this argument. “The clear import of Eldred is that Congress has expansive powers when it legislates under the Copyright Clause, and this court may not interfere so long as Congress has rationally exercised its authority. Here, we do not believe that the decision to comply with the Berne Convention, which secures copyright protections for American works abroad, is so irrational or so unrelated to the aims of the Copyright Clause that it exceeds the reach of congressional power.”

The court went on to say that the URAA may still be subject to First Amendment review, citing Eldred again which stated an act of Congress would only be subject to First Amendment review if it “altered the traditional contours of copyright protection.” The court examined the principles of placing copyrighted works in the public domain after a certain amount of time, and of not granting copyright protection to works already in the public domain, and concluded that the URAA altered the traditional contours of copyright protection by deviating from these principles. “[B]y extending a limited monopoly to expressions historically beyond the pale of such privileges, the URAA transformed the ordinary process of copyright protection and contravened a bedrock principle of copyright law that works in the public domain remain in the public domain.”

The court went on to explain that works in the public domain belong to the public, that each member of the public has a non-exclusive right to use material in the public domain, and that the First Amendment protects the plaintiffs’ right to unrestrained artistic use of these works. The court reasoned that the URAA interfered with the plaintiffs’ right to use works in the public domain by restoring copyright protection to these works and thus making plaintiffs pay costs to obtain the rights to use these works formerly in the public domain. The court also said the fair use defense did not adequately protect the plaintiffs’ First Amendment rights because the fair use defense would not allow all of the kinds of uses the plaintiffs had made of works in the public domain. “The fact that the fair use doctrine permits some access to those works may not be an adequate substitute for the unlimited access enjoyed before the URAA was enacted.” The Tenth Circuit instructed the district court to determine if the URAA is content-based or content-neutral in order to decide what level of scrutiny to apply to the URAA.