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A major test of copyright power

Ignoring the federal government’s plea to stay away from the issue, the Supreme Court agreed on Monday to rule on a core issue of copyright law: when, if ever, does Congress have the constitutional power to revive copyright protection once it has expired for a creative work?  That issue arises in the one new case the Court granted on Monday: Golan, et al., v. Holder (Attorney General), et al. (10-545).  A decision in the case is expected in the new Term that starts next Oct. 3.  (Justice Elena Kagan took no part, so the case will be heard and decided by an eight-member Court.)

The case involves a two-pronged constitutional challenge to a 1994 law, passed by Congress to implement the global agreement on trade in the so-called “Uruguay Round.”   First, the case tests whether the Copyright Clause gives Congress any authority to take a work out of the public domain — that is, to restore its copyright shield once that has expired.  Second, it tests whether the 1994 law at issue violates the free speech rights of those who, before the law was passed, freely performed or distributed works that had entered the public domain — such as Prokofiev’s Peter and the Wolf.

It is unclear just how many once-copyrighted works have been restored to protection under the Uruguay Round’s implementation of the so-called Berne Convention, a 1971 treaty (joined by the U.S. in 1989 and now supported by 164 countries).  The Convention was designed to assure that the works that have a copyright in one country get similar protection in other countries (since there is no such thing as international copyright).  Although the 1994 implementing law seeks to ease the impact of restoration on those who previously had made use of works in the public domain, the law still goes far to protect the exclusive rights of the holders of the restored rights.

The constitutional issues about the Berne Convention’s Article 18 on restoration were pressed in federal court by a group of orchestra conductors, educators, performers, film archivists, and motion picture distributors.  They contended that they have depended for years on public domain works, but were cut off from those opportunities when Congress restored a seemingly large number of U.S. copyrights for foreign works that never previously had U.S. protection.

The Tenth Circuit, in two separate rulings, rejected both the Copyright Clause and the First Amendment challenges, concluding that Congress had validly enacted the Uruguay Round Agreement provisions.   Challenging both rulings in their new appeal, the individuals and groups who had relied on public domain availability of many works argued that the Circuit Court agreement violated a “bedrock principle” of copyright law: once protection has expired, it cannot be revived.

“If Congress is free to restore material from the public domain at will,” the petition for review argued, “then the public’s federal right to copy and to use public domain material this Court has recognized may evaporate at any time.”

Besides granting review in that case, the Court on Monday chose to bypass several significant new cases.   Among the more significant denials were two cases seeking, once more, to raise issues that the Court has repeatedly denied over the years.

One was an attempt — at least the seventh such attempt — to get the Court to consider challenges to the 1998 agreement in which 46 states settled their lawsuits against the major tobacco companies, in return for a $200 billion program of payments by the companies to the states in return for insulating the firms from those lawsuits and setting up a regime to regulate who may sell tobacco products in the states.  The new case denied review was S&M Brands, et al., v. Caldwell (10-622), raising both Sherman Act antitrust claims and an argument that the master settlement violates the Constitution’s Compact Clause because it has not had Congress’s approval.

The other case — also representing the seventh attempt to get Court review — involved a challenge under the Sherman Act to agreements in which the manufacturers of brand-name drugs pay a sizable fee to the maker of a generic version of such drugs, in order to avoid a challenge to the validity of the patent on the brand-name drug and to keep the generic substitute from entering the market when it otherwise could.  The new case denied Monday was Louisiana Wholesale Drug Co., Inc., v. Bayer, AG, et al. (10-762).  The new case, as well as a related one the Court refused to hear in June 2009, involved a so-called “exclusion payment” of $398.1 million by the Bayer pharmaceutical giant to Barr Laboratories, the maker of a generic version of Bayer’s patented antibiotic, Cipro — once the most-prescribed antibiotic in the world.  The patent has since expired.   When this case was in the Second Circuit, the Justice Department’s Antitrust Division — asked for its views — said that such large payments were presumed to be invalid under the Sherman Act.  (Justices Kagan and Sonia Sotomayor did not take part in the order denying the new case.)

Among cases the Justices considered at their private Conference last Friday on which they took no action Monday, the most significant were a major new class action case, involving constitutional challenges to a state class-action lawsuit in Louisiana against major tobacco companies (Philips Morris USA, Inc., et al., v. Jackson, et al., 10-735), and a Seventeenth Amendment case testing whether a state is obliged always to hold a new election any time a U.S. Senate seat becomes vacant, even if the vacancy occurs close to an election to select a new Senator (Quinn v. Judge, et al., 10-821).  The Quinn case, an appeal by the Illinois governor, involves the constitutional dispute that arose after President Obama was elected to the White House and gave up his Senate seat from that state.

Recommended Citation: Lyle Denniston, A major test of copyright power, SCOTUSblog (Mar. 7, 2011, 3:02 PM),