US Supreme Court says public domain works can return to copyright

Yesterday the US Supreme Court, in its 6-2 decision in Golan et al v Holder, Attorney General, et al, held that §514 of the Uruguay Round Agreements Act (URAA) - which had been signed into law by President Clinton in 1994 and was aimed at restoring copyright protection in foreign works which had fallen into the public domain - does not exceed Congress's authority under the US Constitution's Copyright Clause. 

No longer a free concert 

Petitioners in the case (which was discussed in this Blog here and here and by the IPKat here) were orchestra conductors, musicians, publishers, and others who formerly enjoyed free access to works which §514 removed from the public domain. The chief plaintiff was Lawrence Golan, an orchestra conductor from the University of Denver, who argued that Congress exceeded its authority when it passed a law which took certain works by foreign artists out of the public domain and put them under copyright. Golan, who conducts a number of small orchestras, had been able to perform works such as Prokofiev's Peter and the Wolf for free before §514 became the law. 

Golan argued that §514 violated a basic principle of copyright, this being that works cannot be taken out of the public domain once they are there. He also claimed that the proviso was tantamount to a restriction of his free speech, and was thus contrary to the First Amendment.

This is the background to the case before it reached the Supreme Court. At first, the District Court had granted the Attorney General’s motion for summary judgment. Affirming, in part, the Tenth Circuit had agreed that Congress had not offended the Copyright Clause, but concluded that §514 required further First Amendment inspection in light of Eldred v Ashcroft. On remand, the District Court had granted summary judgment to the 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 had then reversed, ruling that §514 was narrowly tailored to fit the important government aim of protecting US copyright holders’ interests abroad. 

Justice Ruth Bader Ginsburg

The opinion of the US Supreme Court was delivered by Justice Ginsburg (Justice Kagan did not take part in the ruling, while Justices Breyer and Alito dissented).

Justice Ginsburg first explained the background to the URAA.

The US had joined the Berne Convention in 1989. 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. A different system of transnational copyright protection had long prevailed in the US. Throughout most of the 20th century - says the Supreme Court - the only foreign authors eligible for Copyright Act protection were those whose countries granted reciprocal rights to US authors and whose works were printed in the US. Despite Article 18, when the US joined Berne in 1989, it did not protect any foreign works lodged in the US public domain, many of them being works never protected there. 

In 1994, however, the TRIPS Agreement mandated implementation of Berne’s first 21 articles, on pain of enforcement by the WTO. 

In response, Congress applied the term of protection available to US works to preexisting works from Berne member countries.  

§514 URAA grants copyright protection to works protected in their country of origin, but lacking protection in the United States for any of three reasons: 

a- the US did not protect works from the country of origin at the time of publication; 

b- the US did not protect sound recordings fixed before 1972; or 

c- the author had not complied with certain US statutory formalities.

This said, the US Supreme Court held that the text of the Copyright Clause does not exclude application of copyright protection to works in the public domain. In Eldred, in fact, 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, observed the Court, contains no command that a time prescription, once set, becomes forever fixed or inalterable.

Furthermore, historical practice corroborates the Court’s reading of the Copyright Clause to permit the protection of previously unprotected works. 

In addition, contrary to what argued by the petitioners, §514 does not fail to “promote the Progress of Science” as contemplated by the initial words of the Copyright Clause. This is because the creation of new works is not the sole way Congress may promote “Science,” ie, knowledge and learning. Rather the Clause “empowers Congress to determine the intellectual property regimes that, overall, in that body’s judgment, will serve the ends of the Clause.” (Eldred, at 222.) 

I want my royalties!

Nothing in the text or history of the Copyright Clause, moreover, confines the Progress of Science exclusively to incentives for creation. Also inducing the dissemination of existing works is said to be an appropriate means to promote science.  

Considered against this backdrop, §514 falls comfortably within Congress’ Copyright Clause authority, affirms the Supreme Court. 

Coming the claim concerning the First Amendment, Justice Ginsburg observed that this does not inhibit the restoration authorised by §514. The path-making Eldred decision is instructive in this respect, wrote the Justice.
There, the Court held that the CTEA’s enlargement of a copyright’s duration did not offend the First Amendment’s freedom of expression guarantee. Recognising that some restriction on expression is the inherent and intended effect of every grant of copyright, the Court observed that 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.” The traditional contours of copyright protection, ie, the idea/expression dichotomy and the fair use defence, moreover, serve as built-in First Amendment accommodations. 

§514 leaves undisturbed the idea/expression distinction and the fair use defence.  

The petitioners had also claimed that First Amendment interests of a higher order are at stake because they enjoyed vested rights in works that had already entered the public domain.

However nothing, said the Court, warrants exceptional First Amendment solicitude for copyright works which were once in the public domain.  

Congress has several times adjusted copyright law to protect new categories of works as well as works previously in the public domain.  §514, moreover, does not impose a blanket prohibition on public access. The question was whether would-be users of certain foreign works must pay for their desired use of the author’s expression, or else limit their exploitation to “fair use” of those works.  By fully implementing Berne, Congress ensured that these works, like domestic and most other foreign works, would be governed by the same legal regime. So, §514 simply placed foreign works in the position they would have occupied if the current copyright regime had been in effect when those works were created and first published.