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Argument recap: The constitutionality of zombie copyrights

The following argument recap of Golan v. Holder  is written by Rebecca Tushnet,  a law professor at the Georgetown University Law Center.

I should first say that I don’t believe that oral argument makes much difference in the average case.  You can get good information from oral argument – most of the Justices give pretty good signals of how they’re thinking, because they do want to hear the best of what the advocates have to say.  Nor would I say that oral argument never matters.  But if you’re looking for instances of persuasion causally linked to outcomes, Supreme Court oral advocacy might not be the best place to start.

Still, it’s fun to talk about, so let’s get started!  Lyle Denniston previewed the arguments here.  The only thing I’d add is that my award for “best attempt to make lemonade out of lemons” goes to the Creative Commons amicus brief, which uses the awful New York decision in Capitol Records v. Naxos to argue that, at the Founding, no works were in the public domain in “the United States” (because everything, foreign and domestic, was subject to perpetual common-law copyright in NY at the Founding, at least according to New York’s highest court in 2005).  Thus, the brief concludes, the 1790 Act did not remove any works from “the public domain of the United States.”  Clever argument, possibly too clever by half.

For petitioners, Stanford’s Tony Falzone (disclaimer: I’ve worked with him on other projects) argued that copyright’s “limited times” means that Congress has to pick an endpoint for a copyright; when that endpoint (limit) is reached, it can’t resurrect rights even though it can change the endpoint for subsisting copyrights.

Justice Ginsburg began with the key counterargument, which is that Congress did set a limit on copyright protection for restored works: the time they would have had in the United States if they’d followed the proper formalities to secure a U.S. copyright.  Falzone’s general response is that restored works have already had a term, and that term was zero pursuant to the rules Congress set out about how to secure a non-zero term.  However, there is an important exception to the zero-term concept, which Falzone mentioned:  some of the restored works secured a first term through proper publication with notice, but their owners failed to renew at the end of the first term.  For those works, there was already a full twenty-eight years of protection in the U.S., which then ended.  Still, if we treat renewal as optional, the full term remains in some sense “limited” unless the Court accepts petitioners’ argument that the only remaining meaning of “limited” after Eldred is an end that, once reached, is final.

Falzone emphasized that Congress had consistently respected this no-takebacks idea (with exceptions for emergencies), to which Justice Ginsburg responded that the Constitution allowed Congress to grant authors rights for limited times, so that even if Congress didn’t do it initially for some authors it could later fix that.  Falzone countered that “limited” becomes meaningless under that interpretation, because no one will ever be certain that the limit for a particular work has been reached and that Congress won’t come along and restore protection.  Justice Ginsburg asked Falzone to concentrate on this case, which didn’t reach back to restore de Tocqueville’s copyrights but only restored rights that could still be in existence for U.S. works created at the same time.  Falzone, naturally, resisted because he maintained that there was no principle capable of distinguishing the two situations without his definition of “limited.”  As he pointed out, if “limited” doesn’t mean final, then if Congress really wants to reach back that far, it can extend existing terms so that the theoretical term of an old work would not yet have expired, justifying its restoration.

The Chief Justice pointed out that Falzone’s rule has a seemingly arbitrary consequence: Congress can extend a term that’s about to expire (October 5 was his example, but under the current Copyright Act all terms run to the end of the year, so it’s really December 31), but on the next day it loses its power to extend that term.  Falzone agreed that this was the necessary implication of a need to pick a date that would have a permanent effect.

Justice Sotomayor picked up on Justice Ginsburg’s essentially philosophical question: if these works never had a U.S. copyright term, can we say that restoration (whose name, by the way, implies an answer favorable to petitioners) revives an expired copyright?  Isn’t Congress really granting a copyright for the first time?   Falzone reiterated his position that Congress was not, and that Congress had for two hundred years behaved as if it had no power to reanimate copyright in public domain works.

This led to a discussion of whether the 1790 Act had removed anything from the public domain; Falzone argued that the text of the Act presupposed the existence of subsisting copyrights (though granted by individual states rather than by the federal government), and talked about Naxos.  Even if Congress didn’t think that it was working against a background of common-law protection for published works – and our best copyright historians filed an amicus brief concluding that the best evidence is that it might well have thought so – Congress had to start somewhere in 1790, making the situation then different.  Justice Sotomayor suggested that Congress had done the same thing with restoration (“starting somewhere” with respect to those works).

Justice Ginsburg liked the idea of analogizing to the statute of limitations, except that she thought that Congress was dealing here with works on which the limitations period had never started to run.  Falzone responded that the limitations period for works that didn’t comply with the then-applicable formalities was zero, and, on further questioning, said that Congress had only allowed exceptions for excusable neglect (e.g., wartime inability to comply), which he would say were still unconstitutional.

The Chief Justice and Falzone engaged in an interesting hypothetical about what would have happened if Congress had decided to extend protection to architectural works retrospectively rather than prospectively; Falzone said that he thought that such an extension would pass “limited times” but not promote progress.  I wasn’t clear on why Falzone thought that would count as “limited times” under his definition because such works were, as far as copyright was concerned, in the public domain before the Berne Amendments.  This led to a discussion of progress, in which Falzone argued that giving rights in existing works doesn’t do anything to promote progress.  Justice Sotomayor suggested that foreign authors might enter the U.S. market as a result of restoration, and Falzone rejoined that their works were already here.  (This came up again later, with Justice Sotomayor framing the issue as the foreign author’s incentive to market a work here, without consideration of people like petitioners who would, absent restoration, be alternate sources or users of the work.) The Chief Justice then argued that restoration might give U.S. authors confidence that their government would endeavor to have U.S. works protected in China; Falzone responded that this confidence would have been based on our 1988 accession to the Berne Convention, rather than on restoration.

The Chief Justice acknowledged that restoration might have been a meager additional incentive, but called it an incentive nonetheless.  Falzone argued that there was nothing in the legislative history suggesting that Congress had this in mind.

Justice Scalia then added that a multi-million-dollar award from a philanthropist to an existing successful composer would serve as an incentive, which Falzone took as an opportunity to introduce the First Amendment issues: Congress can’t pick any way of providing an incentive that it wants, and here removing speech from the public domain interfered with others’ rights to use that material.   This renewed Justice Kennedy’s interest in the question of whether the public domain confers positive ownership-type rights on members of the public.

U.S. Solicitor General Donald B. Verrilli, Jr., presented the government’s argument, starting with the question of whether Congress had (1) established a term of zero or (2) not established a term at all for restored works, obviously arguing for the latter.  The problem, in his formulation, was that we went for a long time without copyright relations with many other nations, and restoration allows authors from those nations to have the same terms they would have had if they’d been U.S. authors.   (Note:  This would be true as to U.S. authors who complied with then-extant U.S. formalities; this argument, however, also ignores various other things that restoration does, some of which  – such as excusing failure to renew and extending protection to sound recordings – Justice Breyer raised later.)

Justice Alito asked the key question: under the government’s interpretation, could Congress restart protection for any work by giving it a new term?  General Verrilli bit the bullet and said that there was no “ironclad limit” preventing such restorations, though the “text of the Copyright Clause” would limit congressional power.  (When asked by Justice Sotomayor what he meant by that, he suggested that for some sufficiently old works it would be impossible to identify an “author” in whom rights could be vested.  Those of us interested in Foucault’s author-function should note that General Verrilli specifically mentioned Shakespeare and Ben Jonson when talking about works whose “authors” were so distant as to be impossible to locate; if granting rights in their works would be too much like granting monopoly rights in publishers, as he argued, query what this implies about granting rights to heirs.)  More importantly, though, General Verrilli argued, this was not a case in which Congress had reached so far.

General Verrilli then argued that the limit here was established by protection in the author’s country of origin.  (This is again a bit of a gloss, though not a hugely important one: works were restored if at the time of restoration they were still protected in the country of origin, but the United States measures terms of older works very differently than Berne countries generally do, so there’s still significant potential divergence between the U.S. and the foreign term in any given instance.)  Restoration, he argued, was the price of admission to the international system.
Perhaps unsurprisingly, Justice Scalia didn’t see the appeal of that argument.  Either Congress had the power to do this under the Copyright Clause, or it didn’t.  General Verrilli agreed: there’s no limit in the Copyright Clause preventing restoration.  And, for First Amendment purposes, Berne compliance was a substantial interest justifying the resulting restriction on speech.  Restoration improved authors’ incentives because they now know, going forward, that their rights are more likely to be respected in other countries.  Justice Breyer asked how restoration in particular provided this assurance.  General Verrilli responded that Berne is “not a menu in which we get to choose options”; we had to take it all.

Justice Breyer pointed out that there were at least arguments in the briefs that compliance could have been accomplished in other ways, and that some of the restored works were likely to have substantial cultural value, such that libraries would make them widely available if they remained in the public domain.  General Verrilli maintained that there was no textual limit requiring something other than what Congress did, and that joining Berne did enough to promote progress to satisfy the Constitution, just as the Court found in Eldred.  Indeed, he went so far as to argue that there was an implicit guarantee to U.S. authors that they would get the benefit of any expansion of foreign protection through future treaties, and that restoration was, again, the price of admission to such treaties.

The Chief Justice then changed the subject to petitioners’ First Amendment argument, which he suggested was at least intuitively appealing.  One day he could perform Shostakovich; the next he couldn’t.  General Verrilli responded that Congress has often expanded the categories of protected works and rights – for example, by adding a public performance right – without First Amendment challenge.  The Chief Justice suggested that removing rights in a particular work might be different, like shutting down a public park that had been public for two hundred years.  In response, General Verrilli warned that there was no endpoint to First Amendment evaluations: if First Amendment scrutiny applied to restoration, it would have to be applied to all copyright law.

The Chief Justice expressed concern for Jimi Hendrix’s potentially lost freedom to deliver his unique rendition of The Star-Spangled Banner, and General Verrilli noted that the restoration law provided a transition period for reliance parties, which amounted to “significant protections and accommodations for derivative works.”  Anyway, Eldred already settled that the idea/expression and fair use provide all the First Amendment protection necessary, and maybe Jimi Hendrix could claim fair use in such a case.  (Self-promotion: I have argued that copying, as in performance of musical works, can serve powerful First Amendment interests.)

Justice Kennedy suggested that General Verrilli’s argument made more sense as a claim that copyright survived intermediate scrutiny than as a claim that copyright is exempt from the First Amendment.  General Verrilli agreed that restoration passed intermediate scrutiny, but disagreed with the application of such scrutiny in the first place.  Justice Kennedy asked for authority for the proposition that the First Amendment doesn’t apply to copyright, and I quote the transcribed response because it is perfect: “We don’t say it doesn’t apply, but Eldred.”  Justice Kennedy was dissatisfied: perhaps the test is different for copyright, but there has to be a First Amendment test.  General Verrilli maintained that, absent alteration of the traditional contours of copyright –  defined as the idea/expression distinction and fair use – the test established by Eldred was whether there was a rational basis for the law.

The Chief Justice then expressed some skepticism even about the rational basis for restoration, if Congress has to have a rational basis for concluding that a copyright law will promote progress (as opposed to having a rational basis for concluding that the law would promote some other interest).  But restoration, General Verrilli emphasized, was part of the overall accession to Berne, and integrating the U.S. into the international system was clearly justified to promote progress.

Justice Breyer pointed out that nobody gets kicked out of Berne for failure to restore expired foreign copyrights, and that the underlying trade situation where countries can pursue remedies through the WTO system is already rather messy:  among other things, the United States is in violation of other copyright-related provisions of TRIPs, but it doesn’t care despite having lost decisively in front of a WTO panel.  The Justice suggested that the hypothetical benefits of restoration might therefore not be enough to overcome the actual free speech harms detailed in the briefs filed by petitioners and their amici.

General Verrilli responded that, without restoration, foreign countries might conclude that the United States was not an effective partner in enforcing the copyright laws. (Editorial note: It does not seem to me that the tenor of the international system is that the recalcitrant US. needs chivvying by more copyright-friendly regimes; nor is it plausible to think that China cares about restoration.)  With respect to uncertainties faced by various amici in making available works that either were or potentially were in the public domain, that’s just the consequence of having national terms; again he referred to restoration as merely fixing the problems of foreign authors who published at a time when their countries didn’t have copyright relations with the U.S.  Justice Breyer suggested that, even if some uncertainty is inevitable, there was no good reason to subject millions of works to additional uncertainty.  Justice Ginsburg intervened to note the protections for reliance parties, but General Verrilli responded that many of the amici wouldn’t qualify as reliance parties.

Justice Sotomayor asked a question that puzzled me; I think it was about whether, after the 1790 Act, libraries had to go out and remove newly infringing works from their shelves.  General Verrilli responded that there is no active infringement by having a library book on the shelf (which would have been true in 1790 but is not reliably so now); he then referred to Section108’s protections for libraries (which also didn’t exist in 1790 and also weren’t designed to cover this situation).  But more generally, he argued, the history established no rule against restoring copyright in public domain works.  Justice Alito expressed some sympathy for the idea that starting a federal regime from scratch was different because of the need for uniformity going forward.  General Verrilli rejected that, arguing that Congress could have enacted a purely prospective scheme.  Anyway, restoration is the same kind of transitional scheme, but this time the transition is into the international system.  He also mentioned the history of restoring expired patents in various private bills; though the full Supreme Court never ruled on this practice, many actors close to the Founding participated in it without objection.

In rebuttal, Falzone returned to his baseline-zero argument.  “Limited” requires an end, “and if Congress is forever free to change its mind, then we can never know if the end has come.”  Separately, restoration doesn’t promote progress in any recognizable way, because adhering to Berne in 1988 sufficed to get its benefits even absent restoration, and Congress made an explicit finding to that effect at the time.  Justice Ginsburg intervened to say that Congress had changed its mind about complying with Berne, but Falzone disagreed: there was no congressional finding, and even reading the testimony to Congress doesn’t justify restoration.  Justice Ginsburg asked whether the United States was at risk of being sanctioned by the WTO, and Falzone said that there was “vague testimony” about the “unsupported possibility” that this might happen, which wouldn’t be enough to overcome any kind of scrutiny.

Restoration, Falzone said, upsets the natural progression of public speech rights, which start with the idea/expression distinction and fair use during the term and expand to full use of a work when the limit chosen by Congress arrives.  Falzone emphasized the free speech interests in performance – seeing King Lear at the Royal Shakespeare Company exposes the audience to the speech of the Royal Shakespeare Company, and, even without performance, multiple Supreme Court precedents recognize that choosing works to publish or screen is an exercise of free speech in its own right.
In conclusion, Falzone argued that the government shouldn’t be able to evade First Amendment limits via treaty.  The First Amendment must not be “defined only by the perceptions, the complaints and frankly the imagination of foreign countries.”

Falzone took most of the heat at the argument; petitioners have an uphill battle, but not necessarily an unwinnable one.

[Disclosure:  The law firm of Goldstein & Russell, whose attorneys work for (or contribute to) this blog in various capacities, served as co-counsel to the petitioners in this case.  However, the author of this post is not associated with the firm and was not otherwise involved in this case.]

Recommended Citation: Rebecca Tushnet, Argument recap: The constitutionality of zombie copyrights, SCOTUSblog (Oct. 11, 2011, 12:00 PM),