Copyright Law | Expert Legal Commentary
May 30, 2012
Golan v. Holder: Divided Supreme Court Upholds Copyright Statute Taking Works Out of the Public Domain
Golan v. Holder
Jeff Zuber and Ryan Smith of Zuber Lawler & Del Duca
In a 6-2 opinion, the Supreme Court affirmed the validity of copyright protection for some works once in the public domain. Specifically, in Golan v. Holder, 132 S.Ct. 873 (2012), the majority sided with the United States in upholding the Uruguay Round Agreements Act § 514, which granted copyright protection for the first time to some foreign works which were previously in the public domain.
In 1886, the Berne Convention for the Protection of Literary and Artistic Works (Berne) took effect, providing international copyright protections in Berne’s 164 member countries. Article 18 of Berne requires countries to protect the works of other member states unless the work’s copyright expired in either the country where protection is claimed or the country of origin. When the United States joined Berne in 1989, Berne’s Article 18 demanded that the United States protect foreign works under copyright in the country of origin. However, that meant that the United States would have to give copyright protection to works already in the public domain in the United States, which Congress refused to do initially. Id. at 878-79.
The landscape changed in 1994 when the United States joined the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), which is enforced by the WTO. As part of TRIPS, the United States was forced to adopt Berne’s Article 18 (and others) or face tariffs or cross-sector retaliation. Thus, Congress’ fix was to enact the Uruguay Round Agreements Act § 514, which granted copyright to works that garnered protection their countries of origin, but had no right to copyright in the United States for any of three reasons: (1) lack of copyright relations between the country of origin and the United States at the time of publication; (2) lack of subject-matter protection for sound recordings fixed before 1972; and (3) failure to comply with U.S. statutory formalities. Id. at 881-82.
Under § 514, works that were once in the public domain in the United States now had copyrights “restored” under the statute. Protection lasts for “the remainder of the term of copyright that the work would have otherwise been granted…if the work never entered the public domain.” Id. at 882. There is no allowance for the compensatory time for the period of exclusivity that the work would have enjoyed before § 514’s enactment. Nor is there liability for the previous, public-domain use of any work now protected under § 514. Id.
In 2001, plaintiffs sued the United States, challenging the legality of § 514. Id. at 883. Plaintiffs/petitioners are a group of musicians, conductors, publishers, and others with an interest in the continued, free use of public domain works. Plaintiffs alleged that § 514 violated the Copyright Clause and the First Amendment. After several appeals, the issues for the Supreme Court were (1) whether Congress could legislate that works in the public domain revert to being protected by copyright; and (2) whether § 514 was narrowly tailored to fit important government interests under the First Amendment. Id. at 884.
Court Finds Support to Lengthen Copyright Terms
The Court first examined whether § 514 violated the Copyright Clause. Petitioners alleged that the statute violated the “limited times” restriction of the Copyright Clause, arguing that Congress could turn “a fixed and predictable period into one that can be reset or resurrected at any time, even after it expires.” Id. The Court found authority in Eldred v. Ashcroft, 537 U.S. 186 (2003). In that case, the Court held that Congress was within its constitutional bounds when it extended the term of existing copyrights by 20 years. In doing so, the Court in Eldred noted that the “limited times” restriction of the Copyright Clause did not mean the span of Copyright protection could never be changed, but more generally that the “term is confined within certain bounds.” Id. at 884-85. Thus, the Court found that similar to Eldred, § 514 is another instance of Congress adding to the limited duration of copyright protection. Id.
Petitioners tried to distinguish the instant case from Eldred by arguing that the limited time for the works receiving protection under § 514 was already set at zero, and thus the limited protection time had already passed. Id. at 885. Moreover, petitioners foreshadowed that the government could keep adding years to copyright protection before the current term ended, thus making perpetual terms achievable. However, the Court found this unpersuasive, noting that Congress was trying to conform to international law in enacting § 514 and not necessarily moving toward perpetual copyrights. Id.
The Court also cited to history in showing that Congress previously protected works once in the public domain. This included the Copyright Act of 1790, which protected items once in the public domain, as well as a number of private bills to restore the copyrights of works that had already entered the public domain. Id. at 885-86. The Court also cited a number of restored patents which survived litigation challenges, noting that the Copyright Clause also authorizes patents and thus such cases can inform copyright analysis. Id. at 886.
Petitioners also argued that the Copyright Clause’s text of to “promote the Progress of Science” should be interpreted to charge Congress to “spur the creation of new works.” Id. at 887-88. Thus, as § 514 only protects existing works, petitioners found that the statute steps outside the bounds of the Clause. However, the Court rejected a similar argument in Eldred, declaring that one of the permissible ends of the Clause’s charge to Congress includes the dissemination (as opposed to creation) of works. Id. at 888. The Court then found that § 514 could promote the diffusion of knowledge by bringing the United States in line with TRIPS, which would then allow United States works to enjoy copyright protection in other TRIPS signatory states and thus help spread United States works abroad. Id. at 889.
Court Finds No First Amendment Violation
Petitioners further alleged that § 514 violated the First Amendment because the protections would offend the guarantee of freedom of expression. Id. at 890. The Court disagreed in siding with the United States and again analogized to Eldred. In that case, the “speech-protective purposes and safeguards embraced by copyright law” gave no reason for heightened review. Id. The Court found a similar context in the instant case, saying that § 514 “leaves undisturbed the ‘idea/expression’ distinction and the ‘fair use’ defense.” Id. at 891.
Petitioners attempted to distinguish Eldred from the instant case by arguing that the First Amendment interests in this case are of a higher order because the petitioners enjoy “vested rights” in works already in the public domain. Id. However, the Court rejected this rationale, declaring that “nothing in the historical record, congressional practice, or our own jurisprudence warrants exceptional First Amendment solicitude for copyrighted works that were once in the public domain.” Id. The Court continued by listing a number of Congressional Acts which extended copyright protection to new categories and ended by asking, “(i)f Congress could grant protection to these works without hazarding heightened First Amendment scrutiny, then what free speech principle disarms it from protection works prematurely cast into the public domain for reasons antithetical to the Berne Convention?” Id. Thus, the Court continued to rely on Eldred in siding with the United States.
The Court seemingly did not find that § 514 would unduly restrict access to works the statute protects, as the statute does not impose a “blanket prohibition on public access.” Id. at 892. Rather, potential users must simply pay for the desired use or employ “fair use” doctrine. Id. at 893. In the end, the Court seemed to think that § 514 “gives [authors] nothing more than the benefit of their labors during whatever time remains before the normal copyright term expires.” Id.
The Court acknowledged that § 514 might create problems identifying “orphan works,” or works with authors who are difficult to identify or locate. Id. However, the Court noted that the problem of orphan works was not unique to § 514, and punted to Congress to provide a solution for such cases when potential licensees cannot find the copyright holder. Id. at 894.
Dissent: Copyright Clause Demands New Works; Not Protection of Existing Works
Justices Breyer and Alito dissented, arguing that § 514 landed outside the bounds of the Copyright Clause. Id. at 899. Specifically, the dissent read the Clause to demand the production of new works, and thus found that § 514’s goal of protecting only existing works to offend the Clause. Id. at 900.
The dissent also highlighted a number of practical issues with adopting § 514, including higher costs for licensees, costs of determining whether copyright exists, costs of finding the copyright holder, and the problem of orphan works without a statutory framework to deal with them. Id. at 904-5. The dissent suggested that the Court adopt a standard that “would require works that have already fallen into the public domain to stay there.” Id. at 906. Further, the dissent found that the numerous issues highlighted should have led to a First Amendment analysis to determine whether the reasons given to justify § 514 “constitute reasonable copyright-related justifications for the serious harms, including soeech-related harms, which the Act seems likely to impose.” Id. at 908.
Lastly, the dissent notes that Berne allows some flexibility in administering copyright protection, and thus the United States should have tried to negotiate an exception to retroactive copyright protections in order to avoid the issues presented to the Court. Id. at 911.
The Supreme Court in Golan clearly affirmed § 514’s restoration of copyright protections to works in previously in the public domain, raising several issues for prospective licensees and granting new rights to authors. You should contact experienced copyright counsel to see how Golan may affect your ability to license works.
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