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Argument preview: Copyright and the public domain

At 11 a.m. on Wednesday, the Court will hold one hour of oral argument on a case with a major global and cultural impact: a test of Congress’s power to put into effect a series of copyrights that had never existed in the U.S. — in order to protect authors and composers worldwide under international treaties.  The case is Golan, et al., v. Holder, et al. (docket no. 10-545).  Arguing for the users of works that had been in the public domain but are no longer will be Anthony T. Falzone, a Stanford University law professor.  Representing the United States will be the U.S. Solicitor General, Donald B. Verrilli, Jr., making his first argument before the Court in that position.


Because there is no such thing as an international copyright, an author or composer can get protection around the globe for creative works only if countries join in international agreements to protect each others’ copyright holders.  In the U.S., copyrights are available only to those who live in this country or in a country with whom the U.S. mutually protects copyrights.  Two treaties that seek to widen global protection are in the background as the Supreme Court explores the scope of Congress’s authority to define two words in the U.S. Constitution — “limited times.”  That is the period that the Constitution’s Copyright Clause says creators of original works may be given for exclusive exploitation of their works.  The Constitution does not define that phrase further, leaving it to Congress.  In order to put treaty agreements in which the U.S. has joined into full effect in the U.S., Congress in 1994 gave new life to the legal rights, in the U.S., of foreign authors and composers who never had a U.S. copyright but whose works remained protected in their home countries.

The Supreme Court, in a 2002 decision, Eldred v. Ashcroft, ruled that Congress has considerable flexibility in determining the scope of “limited times,” and, in fact, upheld extension of the period of copyright for 20 years beyond the grant period.  In that decision, however, the copyrights at issue remained within the protected period, so the extension did not have the effect of removing any work from the public domain.  In the new case before the Justices, however, they must decide whether Congress, in defining “limited times,” does have the power to grant copyright protection that directly removes works from the public domain.

The first treaty at issue in the case is the Berne Convention — formally, the Berne Convention for the Protection of Literary and Artistic Works.  (The Convention dates to 1886, but was significantly revised in 1971.)   When the U.S. signed on in 1988, the Convention was widely considered to be the most important pact in more than a century of multilateral protection of copyrights.  There are now 164 countries who are parties to it.  Under that treaty’s Article 18, each signing country is required to provide foreign copyright holders the same protections it gives to its own, and each is required to restore copyright to certain unprotected foreign works whose copyright terms have not yet expired in the country of origin.  Those, however, may not have protection in the U.S. because the creators were not eligible there, the works did not qualify in their subject matter, or formal requirements for such protection had not been satisfied.   In the U.S., those formal restrictions have since been repealed under domestic law, and are no longer required for any author.

Berne’s Article 18 is now implemented, in the U.S., by a law that seeks to carry out another global pact — the Uruguay Round Agreements, a series of pacts on international trade.  Section 514 of the implementing act restores copyright for holders of foreign rights whose works remain protected in the country where the work was originally created or published, but that had been denied protection up to that time in the U.S.  To qualify, the works must still be in the copyright period that they would have enjoyed if they had had copyright protection.

What that meant, in general, was the withdrawal of some works from the public domain in the U.S.   Among the better-known works previously available to all users were Sergei Prokofiev’s Classical Symphony, and that composer’s Peter and the Wolf, composer Dmitri Shostakovich’s Symphony 14, and composer Igor Stravinsky’s Petrushka.  Such works, of course, are part of the repertoire of almost every orchestral group.  Foreign-made films, such as a 1940 British classic, Night Train to Munich, and Alfred Hitchcock’s 1932 film, Number Seventeen, have also been taken out of the public domain in the U.S.  Although the exact number of works taken out of the public domain is unknown, some estimates have been that millions of works were affected; the Justice Department disputes that, however.

Section 514 does create some protection for those who had used or copied a foreign work while it was in the public domain in the U.S.  They are immune to a claim of infringement for any exploitation of the work that occurred before the rights were restored, if that use would have been infringing.  Moreover, holders of copyrights must notify such “reliance parties” that the holders are going to enforce their rights, and must do so within two years after restoration; absent that notice, there is no copyright liability.  Even after getting such a notice, a “reliance” party can exploit the work for one more year without liability.  Any works such a party has created, derivative of the now-protected work, can be exploited, but only for a fee paid to the holder.

Faced with the loss of a continuing opportunity to use, copy and otherwise exploit — for free — the newly protected works, a group of orchestra conductors, educators, performers, film archivists, and movie distributors sued the U.S. attorney general and copyright officials in 2001, claiming that Section 514 of the Uruguay law interfered with a First Amendment right to freely express themselves through these works, and violated the Constitution’s Copyright Clause by restoring to copyright works that had passed into the public domain.  Ultimately, the case went through two appeals in the Tenth Circuit Court, based in Denver; one of those rulings rejected the First Amendment challenge,the other the challenge based on the Copyright Clause.  The Circuit Court ruled that the Constitution does not impose a flat bar on removing any work from the public domain.

Petition for Certiorari

The challengers took the case on to the Supreme Court in October last year, raising two questions — one based on each claim under the Constitution.  One aspect of the U.S. copyright system, the petition argued, has remained constant for more than two centuries: once a term of copyright protection has ended, or copyright protection for a work was lost for any reason, it could not be restored and the work entered the public domain.  “The public domain marked a clear boundary,” the challengers said. “Works in the public domain are the property of everyone.”

Copyright protection, when it is in effect, encourages creativity, the challengers noted, but when it ends, further creativity is generated by those who perform, adapt, share or distribute the works.  If, however, “Congress is free to restore material from the public domain at will, then the public’s federal right to copy and to use public domain material . . . may evaporate at any time,” their petition said.

Joining in urging the Court to take on the constitutional controversy were the Internet Archive and the Conductors Guild, urging the Justices to protect the “cultural commons” that is the public domain.

The Justice Department, however, urged the Supreme Court not to hear the case.  It argued that there was no split in the federal appeals courts on the issue, that only one other appeals court had examined the issue and it had agreed with the Tenth Circuit, and that, in any event, the Tenth Circuit’s ruling was correct.  Moreover, the Department contended that the restrictions in Section 514 affect a “relatively small . . . quantity of speech,” and that the section has a number of exceptions that limit the restored restrictions on those who seek to exploit the works.   Relying on language in the Supreme Court’s 2002 Eldred decision, the Department argued that the First Amendment should not have been a factor at all in judging the validity of Section 514.  Any First Amendment expression interests are adequately protected, it asserted, by the fact that copyrights are available only on specific forms of expression and not on ideas and, in any event, “fair use” of a protected work is allowed.

Finally, the government reply contended that Congress did not in fact extend the “limited times” of copyright on foreign works, since they will be confined to the periods dating from when they would have first qualified for copyright, so that they will last only to the same term and expire on the same day as they otherwise would have if they had been created or published in the U.S.

The Court, not taking the government’s advice, granted review on March 7.   Justice Elena Kagan, the former U.S. Solicitor General, is not taking part in the case.

Merits Briefs

The challengers’ brief on the merits urged the Court explicitly to strike down Section 514 of the Uruguay implementation law, as a violation of both the First Amendment free speech rights of those who had used the works in the public domain, and of the Copyright Clause’s confinement of copyright protection to “limited times.”  It argued that “Section 514 marks a startling and dramatic departure from the traditions of U.S. copyright law.”  The public domain, it noted, has existed since 1790, and Congress has amended the basic copyright law 19 times, each time leaving the public domain “completely intact.”  Indeed, the brief went on, some of those amendments had “no other purpose than to ensure that the covered works did not enter the public domain.”

Congress, in fact, really has had no choice but to respect the public domain, the challengers contended, because the language of the Copyright Clause explicitly gives monopoly rights to authors and composers only for limited times, and that must be a fixed boundary.  When the limit of a period selected by Congress comes to an end, the brief noted, that must be the boundary beyond which protection may not extend.  In short, it said, the copyright term must be “fixed and predictable.”   If it is not, the brief asserted, then there is no constitutional barrier to Congress moving to restore even an expired copyright.

It is clear from the entire brief that the challengers want to keep the Court focused entirely on the integrity of the public domain.   All other arguments are second to that one.  That emphasis also served to buttress the claim that the First Amendment rights of those who use public domain works are seriously compromised by Section 514’s supposed assault on the public domain.  Even so, the brief also offered a policy rationale, arguing that what Congress had done served no legitimate governmental interest, but succeeded only in “giving away public speech rights in the hope of creating private economic windfalls” for copyright owners.  In fact, the challengers said, the 1994 law was not necessary to bring the U.S. in compliance with the Berne Convention, because that treaty does not require a signing country to remove any works from its public domain.

The Justice Department’s brief on the merits targeted the challengers’ core premise: that withdrawing works from the public domain was entirely unprecedented in U.S. copyright history.  Aside from a somewhat too clever suggestion that the original law in 1790 put some works that had been publicly exploited under copyright protection (what might it otherwise have done, one wonders), the government did argue that since then Congress has “on a number of occasions” restored copyright protection on works that had been in the public domain.   While the more common practice, it conceded, was to expand the copyright period to works not yet in the public domain, the brief said Congress had made frequent departures from that general rule.

The federal brief also discounted the challengers’ claim of a federal right to use works in the public domain, arguing that the scope of that right is entirely encompassed within the copyright laws passed by Congress.  In passing those laws over the decades, the Justice Department asserted, Congress has regularly sought to comply with international obligations, to increase overseas protection for U.S. authors and composers, and to remedy past inequalities in copyright protection between U.S. and foreign authors and composers.  All of those objectives are sufficient government interests to satisfy “rational basis” review, which the government argued is the only appropriate level of court review.  (The challengers insist on a higher standard of review for Section 514.)  Even if the law were subjected to more rigorous scrutiny, the Department said, it could pass muster.

As in its response to the petition, the Justice Department’s merits brief argued that any First Amendment interests at stake for the challengers are satisfied by the limits of copyright protection — that is, the protection is confined only to expression, not ideas, and the protection does not exclude “fair use.”  It summed up: “So long as Congress legislates in a manner consistent with those traditional features of copyright law, the First Amendment inquiry is essentially at an end.”

The challengers, in a reply brief, countered the government’s claim that there have been significant departures from the practice of leaving works in the public domain unprotected.  “The handful of counter-examples the government identifies,” the reply argued, “provide limited and specific relief when global conflict, or other external events made it impossible for authors of otherwise eligible works to comply with statutory requirements, or when eligible authors attempted to comply but failed.”   Suggesting that even those departures might have been  unconstitutional, the brief said that, even if they were not invalid, “they provide no precedent for Section 514 and do not support the plenary power to ‘restore’ any copyright the government asserts here.”

The public domain drew a sturdy defense in 17 amici briefs, from sources ranging quite widely across the ideological spectrum — from the Eagle Forum to the American Civil Liberties Union — and with a significant representation from online services, such as Google and a variety of open Internet advocacy groups and academic centers.  Some of the briefs join in the challenge to the government argument that withdrawals from the public domain have occurred in the past.  For example, the Information Society Project at Yale Law School argued: “Only wars and other exceptional disasters resulting in serious disruptions of communications systems that would unfairly prevent authors from claiming copyrights have warranted deviation from” the routine practice of preserving the “finality of the public domain.”

Supporting the government position, and offering a sturdy defense of the intellectual property of those who create novel works, are an array of publishers and their trade associations, Hollywood, holders of copyrights and specialists in intellectual property law, as well as the American Bar Association.  The amici briefs on that side total eight.


The Court may never have had a more significant copyright law case than this one.   It goes directly to the core of the meaning of the Copyright Clause, as a constitutional matter, and it engages the broad cultural issue of the future of the public domain in creative works.   The government has made a broad claim for the authority of Congress to take works out of the public domain, even while insisting that the withdrawal made by the 1994 law was comparatively small in number and very limited in scope.  The challengers have made an equally broad claim to the inviolability of the public domain, and the bulwark of the free speech rights in the First Amendment.  In a society that seems increasingly to insist that knowledge and creativity are part of a cultural commons, widely accessible, the rights of copyright holders do seem less robust than they have been in the past, and, indeed, may well be at serious risk.

In order to begin to resolve these huge competing values, the Court may have to begin by sorting out, for itself, the record of history: does it, in fact, support the claim that withdrawals from the public domain have been so infrequent and so unusual as to be essentially unworthy as a decisive factor, or does it, in fact, support the argument that Congress has operated regularly upon the assumption that it could withdraw works from the public domain as policy considerations seem to dictate.  While the Court has already made very clear that “limited times” is a less limiting phrase than might be assumed, it has not said definitively that the phrase is so elastic as to leave the public domain exposed to purely legislative preference.  In fact, just what roles the courts are to play in superintending the copyright law seems very much in issue in this case.

On close examination, the case does not seem to lend itself to a narrow decision by the Justices, especially since there seems to be so little common ground between the two sides on the nature of Congress’s power under the Copyright Clause.  The case may turn upon whether a majority of the Court is persuaded that Justice Ruth Bader Ginsburg’s opinion for a 7-2 Court in the Eldred case seven years ago essentially endorsed a sweeping authority in Congress to alter the “limited times” of copyright protection.  (Among the current Justices, only Stephen G. Breyer dissented in Eldred.)  Although the Court apparently is going to be deciding this case with only eight members (presuming that Kagan will remain out of participation), the dispute does not appear to be at risk of a 4-4 split along ideological lines.

(Disclosure:  The challengers (the petitioners) in the case are represented by, among others, the law firm of Goldstein & Russell; some of the attorneys in that firm work for this blog in various capacities.  However, the author of this post operates independently of that firm’s law practice.)

Recommended Citation: Lyle Denniston, Argument preview: Copyright and the public domain, SCOTUSblog (Oct. 4, 2011, 12:59 PM),