Golan v. Holder, 132 S.Ct. 873, 181 L.Ed. 2d 835, 80 U.S.L.W. 4096, 101 U.S.P.Q.2d (BNA) 1297, 2012 U.S. Lexis 907 (January 18, 2012).

I. Overview

The Court confronted the interplay between the United States Copyright Act and the International Berne Convention for the Protection of Literary and Artistic Works (“Berne”), as well as the scope of the Copyright Clause of the Constitution and the First Amendment.

The Court’s dilemma resulted from (a) the fact that the United States only joined Berne in 1989, 103 years after the Convention was agreed-to; (b) Berne requires that its members treat authors from other member countries as well as they treat their own; (c) the United States had a different system of transnational copyright protection from 1790 forward; (d) Congress was required to harmonize this country’s protection of foreign authors with protection of domestic authors after joining Berne; and (e) the means Congress chose was to remove many works already in the public domain and provide them with copyright protection.

Affirming the Tenth Circuit, Golan v. Holder, 609 F.3d 1076 (10th Cir. 2010), the Court (Ginsburg, J.) by vote of 6-2 (Breyer and Alito, JJ., dissenting, with Kagan, J., recusing herself) held that Congress did not exceed its authority in enacting § 514 of the “Uruguay Round Agreements Act” (“URAA”), which grants copyright protection to pre-existing works of any Berne member countries protected in their country of origin, but which had lacked protection in the United States for any of three reasons:

a) The United States did not protect the works from the country of origin at the time of publication;
b) The United States did not protect sound recordings fixed prior to 1972; or
c) The author had failed to comply with then-existing United States statutory
technicalities, which today are not required for copyright protection.

In so doing, the United States effectively has fully implemented Berne, ensuring that these foreign works, previously in the public domain, will be placed in the same legal position they would have occupied had the present copyright regime been in effect when they were created and first published.

The Court rejected the argument that the Copyright Clause was limited to protection of “new” works. It reaffirmed that works that entered the public domain were entitled to copyright protection, and that the petitioners—orchestra conductors, musicians, publishers, and others who had enjoyed free access to the works in question until § 514 was enacted—had neither “vested rights,” nor any First Amendment protection, that superseded the scope of the Copyright Clause.

The Court placed principal reliance in its Opinion in Eldred v. Ashcroft, 537 U.S. 186, 123 S. Ct. 769, 154 L. Ed. 2d 683 (2003), broadly interpreting the Founders’ intentions in adopting the Copyright Clause.

II. Discussion

Berne is the principal accord governing international copyright relations. Its 164 member states agree to provide a minimum level of copyright protection and to treat authors from other member countries as well as they treat their own. Of central importance in this case, Article 18 of Berne requires countries to protect the works of other member states unless the works’ copyright term has expired in either the country where protection is claimed or the country of origin. In the United States, however, until 1891, no foreign works were entitled to Copyright Act protection, and thereafter the only foreign authors eligible for Copyright Act protection were those whose countries granted reciprocal rights to American authors and whose works were printed in the United States.

Despite Article 18, when the United States joined Berne in 1989, it did not protect any foreign works already in the U.S. public domain, many of them works which had never been protected here. In 1994, however, the “Agreement on Trade-Related Aspects of Intellectual Property Rights” mandated implementation of Berne’s first 21 articles, on pain of enforcement by the World Trade Organization.

In response, Congress applied the term of protection available to U.S. works to preexisting works from Berne member countries. Section 514 of the URAA grants copyright protection to works protected in their country of origin, but lacking protection in the United States for any of the three reasons referenced above. As a consequence of the barriers to U.S. copyright protection prior to § 514’s enactment, foreign works now “restored” to protection by the measure had previously been in the public domain in this country. To cushion the impact of their placement in copyright-protected status, § 514 provides ameliorating accommodations for parties who had exploited the affected works before the URAA was enacted.

The Petitioners argued that Congress, in passing § 514, exceeded its authority under the Copyright Clause and transgressed First Amendment limitations. The District Court granted the Attorney General’s motion for summary judgment. Affirming in part, the Tenth Circuit agreed that Congress had not violated the Copyright Clause, but concluded that § 514 required further First Amendment inspection in light of Eldred v. Ashcroft, supra. On remand, the District Court granted summary judgment to petitioners on the First Amendment claim, holding that § 514’s constriction of the public domain was not justified by any of the asserted federal interests. The Tenth Circuit reversed, ruling that § 514 was narrowly tailored to fit the important government aim of protecting U.S. copyright holders’ interests abroad.

The Copyright Clause, Article 1, § 8, Clause 8, provides that “The Congress shall have the Power [t]o . . . promote the Progress of Science . . . by securing for limited Times to Authors . . . the exclusive Right to their . . . Writings and Discoveries.” Justice Ginsburg held the text of the Copyright Clause does not exclude application of copyright protection to works in the public domain, concluding Eldred was largely dispositive of the Petitioners’ claim that the Clause’s confinement of a copyright’s lifespan to a “limited Tim[e]” prevents the removal of works from the public domain. In Eldred, the Court upheld the Copyright Term Extension Act (CTEA), which extended, by 20 years, the terms of existing copyrights. The text of the Copyright Clause, the Court observed, contains no “command that a time prescription, once set, becomes forever ‘fixed’ or ‘inalterable,'” and the Court declined to infer any such command. Eldred, 537 U.S. at 199, cited in Golan, 132 S.Ct. at 884.

The Court held Petitioners’ interpretation was similarly erroneous. 132 S.Ct. at 885. It stated that terms afforded works restored by § 514 are no less “limited” than those the CTEA had lengthened. Nor had the “limited Tim[e]” already passed for the works at issue here—many of them works formerly denied any U.S. copyright protection—for a period of exclusivity must begin before it may end. Id. The Court rejected the Petitioners’ argument that the Government’s position would allow Congress to legislate perpetual copyright terms by instituting successive “limited” terms as prior terms expire. As in Eldred, such hypothetical misbehavior was held purely speculative. Ruling pragmatically, then, the Court held that, in deciding to make United States law equivalent to that of other nations as required by Berne, Congress was hardly seeking by indirection to move to a perpetual copyright regime. Id.

The Court stated that its reading of the Copyright Clause to permit the protection of previously unprotected works was historically supported: The Copyright Act of 1790, protected works that had been freely reproducible under State copyright laws, and thus had been in the public domain. And subsequent actions demonstrated that Congress has not understood the Copyright Clause to preclude protection for existing works; indeed several private bills restored the copyrights and patents of works and inventions previously in the public domain. Congress has also passed generally applicable legislation granting copyrights and patents to works and inventions that had lost protection. Id. at 885-86.

Petitioners also argued that § 514 failed to “promote the Progress of Science” as contemplated by the initial words of the Copyright Clause, arguing that because § 514 affects only works already created, it could not meet the Clause’s objective. The Court held that creation of new works, however, is not the sole way Congress may promote “Science,” i.e., knowledge and learning. Id. at 888-89. In Eldred, it had rejected a nearly identical argument, concluding that the Clause did not demand that each copyright provision, examined discretely, operate to induce new works. Rather, it stated, the Clause “empowers Congress to determine the intellectual property regimes that, overall, in that body’s judgment, will serve the ends of the Clause.” Golan, 132 S.Ct. at 888, citing Eldred, 537 U.S. at 222. The Court pointed out in Golan that nothing in the text or history of the Copyright Clause confined the “Progress of Science” exclusively to “incentives for creation.” Historical evidence, Congressional practice, and the Court’s decisions, in fact, suggested that inducing the dissemination of existing works was an appropriate means to promote science. Id. at 889.

Thus, in this context, the Court found § 514 within Congress’ Copyright Clause authority, emphasizing that Congress had reason to believe that a well-functioning international copyright system would encourage the dissemination of existing and future works. Testimony before Congress had revealed that full compliance with Berne would expand the foreign markets available to United States authors and would encourage protection against the piracy of domestic works abroad, thereby benefitting copyright-intensive industries and inducing greater investment in the creative process. In sum, the Court felt it had no right to reject Congress’ rational judgment that full adherence to Berne would serve the objectives of the Copyright Clause. Id.

Justice Ginsburg held further that the First Amendment did not prevent the restoration of copyright achieved by § 514. Id. She relied again on Eldred, where the Court held the CTEA’s enlargement of a copyright’s duration did not offend the First Amendment’s freedom of expression guarantee. Some restriction on expression is the inherent and is the intended effect of every grant of copyright, and Eldred recognized the Framers regarded copyright protection not simply as a limit on the manner in which expressive works may be used, but also as an “engine of free expression.” 537 U.S. at 219, cited in Golan, 132 S.Ct. at 890. The “traditional contours” of copyright protection, i.e., the “idea/expression dichotomy” and the “fair use” defense, moreover, serve as “built-in First Amendment accommodations,” said the Court. 132 S.Ct. at 890-91. In view of the speech-protective purposes and safeguards in the copyright law, the Court had held there had been no justification for a heightened review, noting further the continuing copyright defense of fair use, the idea/expression distinction in copyright, and the Congress’ gradual program enacted to permit the transition. It concluded that in Golan, there was no reason for First Amendment “heightened review” of the law. Id. at 891.

Finally, the Court rejected the argument that the First Amendment interests were heightened because Petitioners—unlike their Eldred counterparts, enjoyed “vested rights” in works that had already entered the public domain. Justice Ginsburg stated the Constitution renders the public domain largely untouchable by Congress; nothing in the historical record, subsequent congressional practice, or the Court’s holdings warranted exceptional First Amendment protection for copyrighted works that were once in the public domain.

The Court noted that Congress has several times adjusted copyright law to protect new categories of works as well as works previously in the public domain, and that section 514 does not impose a blanket prohibition on public access. By fully implementing Berne, Congress ensured that those desiring to use certain foreign works would be governed by the normal legal regime, because section 514 placed foreign works in the position they would have occupied if the United States had been a member of
Berne when those works were created and first published. Id. at 891-93.

Justice Breyer’s dissent argued that the creation of “new” works was the hallmark of the Copyright Clause and the dissent adopted its own pragmatic view, i.e., that the removal of an enormous number of works from the public domain would unfairly promote monopoly, Id. at 901, and would cause enormous administrative burdens on universities, film collectors, musicians, database compilers, and scholars seeking particularly to use the millions of “orphan works,” i.e., “older and more obscure works with minimal commercial value that have copyright owners who are difficult or impossible to track down.” Id. at 905. And the dissent pointed out that Congress had reversed the payment expectations of those who thought the works belonged to them, which it would never have done with regard to other types of property. Id. at 906.

Finally, the dissent argued Congress could have achieved its goal largely by compulsory licensing. Id. at 911. Alas, Justice Breyer’s efforts attracted but one vote.