GOLAN V. HOLDER – SUPREME COURT AFFIRMS CONGRESS HAS AUTHORITY TO GRANT COPYRIGHT PROTECTIONS TO WORKS THAT FELL INTO THE PUBLIC DOMAIN

As previously reported here, the Supreme Court considered whether Congress had the right under Section 514 of the Copyright Act to provide copyright protections for works that were previously in the public domain because: (1) the U.S. did not offer protection to works form the country of origin when first published; (2) sound recordings were not protected before 1972; or (3) a formality under U.S. copyright law was not met (such as failure to include copyright notice prior to 1989).

The Petitioners included those who used the works that were previously in the public domain due to one of the three reasons listed directly above. Petitioners argued that Congress did not have the right to remove works from the public domain under the Copyright Clause or under the First Amendment.

The Court decided that Congress did have the right to enact Section 514 removing works from the public domain. The Court rejected Petitioner’s argument that the “limited times” portion of the Copyright Clause of the Constitution relying heavily on its precedent in Eldred (upholding the extension of the term of copyright). The majority also relied on instances where Congress previously granted protection to works that were not protected or in the public domain such as the Copyright Act of 1790, several acts in the mid to late 1800’s and patent statutes.

The majority was also deferential to Congress in weighing the political choice of joining and complying with an international treaty and removing works from the public domain. The Court found that Congress was well within its authority under the Copyright Clause to enact Section 514 and making the decision to adhere to the Berne Convention for the purposes of reciprocation of rights with other member countries. The Court did not find that the action of retroactively removing works from the public domain did not overstep Congressional authority to promote the Progress of Science and the Useful Arts. Another factor for the Court was that Section 514 provided remedial measures to avoid immediate impact of copyright infringement actions for those in a similar position to Petitioners who relied on the works being in the public domain.

As to Petitioner’s First Amendment Claim, the Court noted that both the Copyright Clause and the First Amendment were enacted close in time and that copyright did and was intended to restrict expression under the First Amendment. The Court also noted that there are safeguards built into the Copyright Act that accommodated the First Amendment such as fair use and the idea/expression dichotomy. Because such safeguards are already provided in copyright law, the Court found that there was no need for heightened review based on the First Amendment.

Contrary to the Petitioner’s position, the Court dispelled the notion that the public had vested ownership rights once the work falls in the public domain. (“Once the term of protection ends, the works do not revest in any rightholder. Instead the works simply lapse into the public domain.”)

In addition, Section 514 does not prohibit defenses such as fair use nor their application to these works which have been removed from the public domain.

[As an interesting aside, the Court’s opinion also references the Google Book settlement case and states that addressing issues such as orphan works are more appropriate for Congress to resolve than the Courts.]

The majority also sidesteps some of the dissent’s questions about orphan works by simply claiming that a resolution about orphan works is not necessary to resolve whether retroactively removing works from the public domain to comply with the Berne Convention is within the Constitutional authority granted to Congress.

Supreme Court Updates

Golan v. Holder
A few weeks ago, arguments were held before the Supreme Court in the Golan v. Holder case. The case challenges whether Congress has the ability to grant copyright protection to works that were previously in the public domain (See my previous post on case).

A copy of the transcript is available on the Supreme Court's website.

The Court seemed very engaged in the questioning for this matter which contained numerous hypotheticals, questions of First Amendment scrutiny and whether the government had already granted copyright protection to works that previously did not have any with analogies to 1790’s law and a moment of levity from Justice Breyer.

Vernor v. Autodesk
Back from its summer vacation, the Court denied certification to another copyright case Vernor v. Autodesk.

The case was summarized in previous blog entries:
Battles in Seattle Part 2 of 3: Vernor v. Autodesk
Battles in Seattle Vernor v. Autodesk Decision

This means that the Ninth Circuit decision will stand, thereby making software licenses not subject to the first sale doctrine under Section 109 of the Copyright Act.

Supreme Court Grants Cert in Another Copyright Case

The Supreme Court has become more active in taking copyright cases recently. The Court granted certiorari in Golan v. Holder which involves a question of whether the Uruguay Round Agreements Act (“URAA”) is constitutional.

The URAA allows for copyright protection for foreign works that were previously in the public domain. The district court in Colorado first found for the government but on remand the Tenth Circuit asked the district court to determine whether the URAA is content – based or content – neutral and found that the URAA violated the First Amendment. There were cross-appeals before the Tenth Circuit. Plaintiffs are artists who used foreign works that at the time were in the public domain and but the copyright in the original works were restored under URAA. Plaintiffs sought injunctive relief claiming the statute was invalid, force the government not to enforce actions for restored copyrights and the Register of Copyrights to cancel restored registrations. The government as Defendant appealed summary judgment for Plaintiffs and sought reversal on Defendant’s motion for summary judgment. The Tenth Circuit reversed finding the URAA does not violate the First Amendment.

What is the URAA?

As part of compliance with TRIPs (Agreement on Trade Related Aspects of Intellectual Property Rights) in 1994, the U.S. was required to provide copyright protection to foreign works where their term for protection had not expired. This was originally part of the Berne Convention (a multinational treaty which the United States joined in 1989); however the U.S. failed to enact a law to extend protection for foreign works.

The URAA restored copyright protection for foreign works which had fallen into the public domain because:

1. the work failed to comply with formalities (i.e. the failure to place a copyright notice on a work prior to 1989 (and the enactment of the Berne Convention) could subject the work to falling into the public domain)


2. lack of subject matter protection


3. lack of national eligibility

Nothing protected foreign works whose term of protection had expired. The URAA also provided for dispute resolution through the World Intellectual Property Organization. The URAA also provided mechanisms for providing notice of restoration and a grace period for those who used the works (and may have been potential infringers) to dispose of works without liability.

The parties stipulated that the URAA is content neutral and thus subject to intermediate and not strict scrutiny. Under intermediate scrutiny, the statute will not be unconstitutional if there is not substantial burden on speech to further the important government interests.

The appellate court sided with the government finding compliance with treaties, protecting U.S. copyright holders interest in foreign countries (as reciprocity may be granted with other treaty members) and restoring foreign authors rights in the United States to be important governmental interests.

Among the reasons cited by the court were its deference on foreign affairs issues to Congress and the President and economic arguments about the losses the U.S. authors would suffer because their works would fall into the public domain due to failure of the U.S. to agree to copyright relations with different countries (and recognize the rights of the foreign authors). Without the reciprocal protections offered under the URAA, American authors would not be provided with “restored” copyrights in other countries. Congress considered the effect on those who would be infringing “restored” copyrights.

The Court also found that the law was not overbroad and extending beyond the government interests. The court claims that the URAA does not interfere with the built in protections of the First Amendments in copyright law, such as fair use and the idea / expression dichotomy. (Although in this instance, there is an argument that the URAA does stifle free speech and its scope by removing works that were already in the public domain.)

The Tenth Circuit also rejected Plaintiffs’ arguments that the URAA is facially unconstitutional. Plaintiffs argued there should be a bright line about what is in the public domain. However, relying in part on Eldred v. Ashcroft, 537 U.S. 186 (2003) (the Supreme Court decision upholding the Sonny Bono Copyright Extension Act – allowing for copyright protection to be extended to the life of the author plus 70 years), the court found that Congress had the power to extend copyright to works in the public domain.

The court failed to address an important distinction between Eldred and the URAA. In Eldred, Congress was not removing any works from the public but merely extended protection for works that were currently protected. In Golan, Congress was removing works that were already in the public domain. Retroactivity that may pull works out of the public domain could be more problematic than the issue in Eldred.

Will the Supreme Court extend Congressional power to take works out of the public domain? This is a classic copyright case with constitutional implications that the Supreme Court could not pass up.

Supreme Court Splits on First Sale

Last week the Supreme Court issued a split 4-4 ruling in the Costco v. Omega lawsuit. The opinion can be found here.

The split affirms the decision of the Ninth Circuit that the first sale doctrine does not apply to copyrighted works manufactured and sold abroad. The case has been reported in many news outlets, including the New York Times and Wall Street Journal.