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IP/Entertainment Case Law Updates

Golan v. Holder

U.S. Supreme Court affirms decision of Tenth Circuit holding that federal law restoring copyright protection to foreign works previously in the public domain does not violate Copyright Clause or First Amendment free speech protections.

Petitioners, who formerly had enjoyed free access to foreign works in the public domain, brought suit asserting that Congress, in enacting §514 of the 1994 Uruguay Rounds Agreements Act granting copyright protection to those works, exceeded its authority under the Copyright Clause of the U.S. Constitution and violated their First Amendment rights. The district court granted the government’s motion for summary judgment and the Tenth Circuit affirmed in part, holding that Congress had not violated the Copyright Clause, but remanded the case for further proceedings on First Amendment implications in light of the Supreme Court’s 2003 decision in Eldred v. Ashcroft. On remand, the district court granted summary judgment to petitioners on their First Amendment claim, and on appeal the second time, the Tenth Circuit reversed, ruling that §514 was narrowly tailored to fit the important government aim of protecting U.S. copyright holders’ interests abroad. The U.S. Supreme Court affirmed the Tenth Circuit’s ruling, holding that Congress had not exceeded its authority under the Copyright Clause and that §514 did not violate the petitioners’ First Amendment rights.

Congress enacted the Uruguay Round Agreements Act to bring the U.S. into compliance with The Berne Convention for the Protection of Literary and Artistic Works, a long-standing international treaty to which the U.S. became a signatory in 1989 and which requires, among other things, that member countries protect the copyrighted works originated in other member states unless the works’ copyright term has expired in either the country where protection is claimed or the country of origin. Despite being a member country, the U.S. had not extended copyright protection to any foreign copyright-protected work not previously protected in the U.S. prior to 1994, when an additional treaty among the member countries required compliance with The Berne Convention. In enacting §514, Congress applied the term of copyright protection available to U.S. works to preexisting foreign works from member countries. Specifically, §514 grants copyright protection to works protected in their country of origin, but not protected in the U.S., for any of three reasons: (1) the U.S. did not protect works from the country of origin at the time of the works publication; (2) the U.S. did not protect sound recordings fixed before 1972; or (3) the author of the foreign work had failed to comply with statutory requirements for copyright protection – for example, failure to comply with notice or registration requirements. Works that had fallen into the public domain because of the expiration of a full copyright term, either their own country or the U.S., do not receive further copyright protection, and those works that are restored acquire copyright protection for the balance of the term they would have enjoyed, but not compensatory protection for the time lost.

Writing for the 6-2 majority, Justice Ruth Bader Ginsburg agreed with the government's arguments, concluding that the law did not exceed the authority of Congress under the Constitution's Copyright Clause. She also ruled the law did not violate First Amendment protections. “In accord with the judgment of the Tenth Circuit, we conclude that §514 does not transgress constitutional limitations on Congress’ authority. Neither the Copyright and Patent Clause nor the First Amendment, we hold, makes the public domain, in any and all cases, a territory that works may never exit.”

The Supreme Court rejected the petitioners’ argument that, in passing §514,Congress had exceeded its authority, holding that the Copyright Clause did not exclude application of copyright protection to works in the public domain. Petitioners argued that the Copyright Clause’s language allowing Congress to grant authors exclusive rights to their works “for limited Times” prevented Congress from granting copyright protections once works had entered the public domain. The Court disagreed, finding that the language of Copyright Clause created no such restriction and noting that its 2003 decision in Eldred v. Ashcroft, in which the Court upheld the constitutionality of the Copyright Term Extension Act (CTEA) extending by 20 years the terms of existing copyrights, was largely dispositive of the argument. The Court reasoned that the terms afforded works restored by §514 were no less “limited” than those the CTEA lengthened, and noted that, in fact, the terms of restored foreign works were typically shorter than those of U.S. works. Petitioners argued that the limited time of protection for works already in the public domain had already passed, since works previously excluded from U.S. copyright protection had a time limit of “zero.” The Court disagreed, finding this argument made little sense and reasoning that a “limited time” of exclusivity must begin before it can end.

The Court noted that historical practice corroborated its reading of the Copyright Clause to permit the protection of previously unprotected works, citing the enactment of the Copyright Act of 1790, and other acts of Congress restoring the copyrights and patents of works and inventions that previously had lost protection.

Petitioners also argued that §514 failed to meet the objective of the Copyright clause to “promote the Progress of Science” because restored protection only to already existing works. The Court disagreed, reasoning that the creation of new works is not the only way that Congress could meet the purpose of the Copyright Clause. The Court rejected a nearly identical argument in Eldred, concluding that the Copyright Clause does not require that each provision of copyright law induce the creation of new works, but rather allows Congress to create the regime of intellectual property protection that overall, in that Congress’s judgment, serves the purposes of the Clause. Nothing in the text or history of the Copyright Clause requires the conclusion that the “Progress of Science” should only be confined to creation, and historical evidence, past congressional practice, and previous Supreme Court decisions support the conclusion that dissemination of existing works is as appropriate a means to meet the purpose of the clause. The Court concluded that: “Considered against this backdrop, §514 falls comfortably within Congress’ authority under the Copyright Clause.”

Petitioners also argued that the First Amendment prohibited the restoration of copyright protection under §514. The Court disagreed, again finding its reasoning in Eldred compelling. In Eldred, the Court held that the CTEA’s extension of copyright protection did not offend the First Amendment’s freedom of expression guarantee. Acknowledging that while some restriction on expression was the inherent and intended effect of copyright protection, the Court reasoned copyright protection was not only for the purpose of limiting the manner in which works are used, but also as an engine of free expression. Copyright law already contained “speech-protective purposes and safeguards” – that protection extends only to the author’s expression of an idea, but not the idea itself, and is subject to the fair use defense. As it found with the CTEA in Eldred, the Court concluded it need not subject §514 to heightened scrutiny because the provision maintained the protections of the idea/expression distinction and the fair use defenses. The Court also noted that in enacting §514 Congress had specifically adopted measures to ease the transition, especially on those who had relied on those works being in the public domain before the act took effect.

The petitioners attempted to distinguish their case from Eldred, arguing that their First Amendment interests were of a “higher order” because they had enjoyed “vested rights” in those works in the public domain and Congress impermissibly took away those rights. The Court disagreed, finding that their claim rested on an argument that it had already rejected – that the Constitution renders the public domain largely untouchable by Congress. “Petitioners here attempt under the banner of the First Amendment what they could not win under the Copyright Clause: On their view of the Copyright Clause, the public domain is inviolable; as they read the First Amendment, the public domain is policed through heightened judicial scrutiny of Congress’ means and ends.” According to the Court, however, nothing in the historical record, subsequent congressional practice, or its own jurisprudence warranted exceptional First Amendment protection for copyrighted works once in the public domain. Nor was this a case where Congress was attempting to regulate based on content.

The Court also noted §514 that did not impose a blanket prohibition on public access, but rather required would-be users of certain foreign works to pay for their desired use, or limit their exploitation to “fair use.” By fully complying with the Berne Convention, Congress ensured that these works, like domestic and most other foreign works, would be governed by the same harmonize copyright regime. In fact, the court noted, §514 placed foreign works in the position they would have occupied if the current copyright regime had been in effect when those works were created and first published.

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