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IP/Entertainment Case Law Updates

Golan v. Holder

The district court, deciding an issue remanded by the Tenth Circuit, held that Section 514 of the Uruguay Round Agreements Act (URAA) (17 U.S.C. § 104A), which restores U.S. copyright protection for certain works by foreign authors that were in the public domain, is unconstitutional because it violates the plaintiffs’ First Amendment right to free speech.

Section 514 of the URAA implements Article 18 of the Berne Convention which requires member nations to provide copyright protection to works by foreign authors so long as the term of copyright protection in the country of origin has not expired. The U.S. joined the Berne Convention in 1988 and enacted the URAA in 1994. The effect of enacting the URAA was that certain works that had been in the public domain in the U.S. were removed from the public domain.

The plaintiffs in this case represent a broad range of writers, artists and businesses that rely on works in the public domain for their trade. Plaintiffs asserted that when the URAA was enacted, they found themselves in the position of having to either pay for their previously royalty-free use of affected works, or cease using the works altogether. They sued the U.S. government alleging that their First Amendment rights were violated by Congress when these works were removed from the public domain.

In 2005, the district court granted summary judgment to the government without conducting a First Amendment review of Section 514. The U.S. Court of Appeals for the Tenth Circuit reversed and remanded the issue back to the district court. The Tenth Circuit, citing Eldred v. Ashcroft, 537 U.S. 186 (2003), in which the U.S. Supreme Court upheld the Copyright Term Extension Act, held that when an act of Congress has “altered the traditional contours of copyright protection,” a court must review such an act for First Amendment violations. The Tenth Circuit also held that one of the traditional contours is the principle that once a work enters the public domain, no individual – even the creator – may copyright it.

The district court determined that Section 514 is a content-neutral regulation and therefore the First Amendment requires only that it must be narrowly tailored to serve a significant governmental interest. According to the district court, the burden is on the government to show it has a significant interest that is protected by limiting plaintiffs’ speech and that Section 514 does not burden substantially more speech than necessary to further the government’s interest.

The government proffered the following interests as being served by Section 514: (1) Section 514 brings the United States into substantial compliance with its international treaty obligations under the Berne Convention; (2) Section 514 helps protect the copyright interests of United States authors abroad; and (3) Section 514 corrects for historic inequities wrought on foreign authors who lost their United States copyrights through no fault of their own. The government also argued under Eldred that the plaintiffs in this case have a diminished interest in the works restored by Section 514 because the plaintiffs are not the original authors.

The district court disagreed with the government’s argument and referred to the Tenth Circuit’s opinion in which it distinguished this case from Eldred by saying in this case, “plaintiffs’ First Amendment interests in public domain works are greater than the interests of the Eldred plaintiffs. The Eldred plaintiffs did not – nor had they ever – possessed unfettered access to any of the works at issue there. . . . By contrast, the speech at issue here belonged to plaintiffs when it entered the public domain. Unlike the plaintiffs in Eldred, therefore, plaintiffs here did not have an amorphous and prospective ‘trivial interest’ in property that belonged to someone else, but instead had ‘vested First Amendment interests in the expressions’ contained in the works themselves.”

The district court held that the amount of plaintiffs’ speech affected by Section 514 is substantial. Section 514 allows plaintiffs to continue making copies of the affected works as long as the original author does not file notice of intent to enforce his or her copyright, and allows plaintiffs to continue making derivative works based on the restored works for one year. The court held that the amount of speech that remains unprotected under 514 is any speech that involves copying more than one year after notice has been filed, and any derivative works made after notice is filed and without payment of a royalty. “When compared to the limited amount of speech that remains protected under Section 514, other than speech already protected by the idea/expression dichotomy and the fair use doctrine, . . . the amount unprotected is clearly ‘a substantial amount.’”

The court next turned to the question of whether the unprotected speech is ‘not tied to the Government’s interest’ in complying with the Berne Convention. The Berne Convention does not tell member states how to accommodate reliance parties once works previously in the public domain are removed from the pubic domain. Furthermore, the Berne Convention does not require the full restoration of equivalent copyrights and other member countries, including Germany, Hungary, the U.K., Australia and New Zealand, provide accommodations that are different from the U.S. The court held that Congress could have complied with the Berne Convention without interfering with a substantial amount of protected speech, for example, by “excepting parties, such as plaintiffs, who have relied upon works in the public domain.” The court held that Section 514 is not tied to the government’s interest in complying with the Berne Convention and is therefore substantially broader than necessary to achieve the government’s interest.

The court concluded by saying “Congress has a legitimate interest in complying with the terms of the Berne Convention. The Berne Convention, however, affords each member nation discretion to restore the copyrights of foreign authors in a manner consistent with that member nation’s own body of copyright law. In the United States, that body of law includes the bedrock principle that works in the public domain remain in the public domain. Removing works from the public domain violated plaintiffs’ vested First Amendment interests.”

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