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Eric J. Schwartz is a partner with Mitchell Silberberg & Knupp LLP in Washington, D.C. Since 1998 he has been an adjunct professor of copyright law and international copyright law at Georgetown University Law Center (and is currently also an adjunct professor of copyright law at American University, Washington College of Law). Kim Nguyen and Matt Williams assisted with citations and gave helpful comments on the article in draft; however, the opinions expressed in the article are solely those of the author. Mr. Schwartz can be reached at firstname.lastname@example.org.
In January 18, 2012, the U.S. Supreme Court upheld the constitutionality of a 1994 amendment to the U.S. Copyright Act in Golan v. Holder.1 That amendment, section 514 of the Uruguay Round Agreements Act (URAA), “restored” protection to certain qualified foreign works and sound recordings that were in the public domain in the United States.2 Section 514 was thus upheld, 16 years after it had entered into force (January 1, 1996), following a decade of challenges in the courts—yielding numerous district court and appellate decisions.3 The 6–2 majority decision in Golan, affirming the Tenth Circuit’s 2010 decision, was written by Justice Ginsburg; the dissent was written by Justice Breyer (joined by Justice Alito).4
Golan is, in many ways, a companion case to Eldred v. Ashcroft,5 a 2003 decision that upheld the constitutionality of copyright term extension (the “plus 20-year” duration amendments of 1998).6 Like Golan, the Eldred (7–2) majority opinion was also written by Justice Ginsburg, with a dissent by Justice Breyer (Eldred also had a separate dissent by then-Justice Stevens). Both cases were challenges to the limits of Congress’s authority under the Copyright Clause in Article I of the U.S. Constitution. Both reviewed, and upheld, the Copyright Clause and First Amendment constitutionality of the copyright amendments in question (1998—Eldred; 1994—Golan), finding neither had altered the “traditional contours” of copyright, a term coined by Justice Ginsburg and first introduced in Eldred. Among other things, Golan further elaborated on what Justice Ginsburg meant by “traditional contours” in Eldred (correcting the “reading” of the Tenth Circuit).7 Taken together, the cases clarify the importance of “traditional contours” as a measuring stick for future challenges to congressional revision of copyright law.
There are several broad observations that can be made regarding the tandem cases, well beyond the particulars of restoring foreign works (Golan) or extending term for existing works (Eldred), summarized by three interrelated points. First is the great deference the court gives to Article I, on the authority of Congress to enact copyright laws (the Copyright Clause) whether the action of Congress is “wise or not”8 and without “second-guess[ing] the political choice Congress made”9 and, especially, as in Golan, when Congress (and the executive branch) concur on changes necessary for acceding to and implementing international treaties. Second is an affirmation of the treatment of (i.e., the relationship between) copyright and the First Amendment. Last is the application of a rational basis test to undertake such a review. In Golan, the court found section 514 constitutional under the Copyright Clause and First Amendment without the need for a “heightened review.”10
In the wake of these two cases, the scope of future Copyright Clause and/or First Amendment challenges to new copyright amendments is narrow. It is likely such challenges will succeed only if and when, in the future, Congress chooses to alter the “traditional contours,” which are now understood to include only the idea/expression dichotomy and the fair use defense (copyright law’s so-called “built-in First Amendment accommodations”),11 or if Congress acts absent any “rational” government interest or congressional purpose in enacting a revision.
In Eldred, Justice Ginsburg wrote, when examining copyright law, “a page of history is worth a volume of logic.”12 Following her own logic, the opinion in Golan (as in Eldred for term extension) traces the long history and rationale of Congress’s enactment of section 514, from the founding of the Berne Convention for the Protection of Literary and Artistic Works (Berne) in 1886, up to the United States’ “latercomer” entry into Berne in 1989, and the enactment of section 514 on December 8, 1994, completing the full implementation of Article 18 of Berne.13
Here is a brief recap of that history:
Until accession on March 1, 1989, the United States copyright regime was engaged in a 103-year dance with the Berne Convention, which could best be described as anything but intimate.
The U.S. government was an observer, but not a participant, at the first meetings that culminated in 1886, in the Berne Convention, a treaty that is known (today) as the “oldest and most respected international copyright treaty.”14 But, except for a few half-hearted efforts in the 1920s,15 the United States did not seriously consider joining Berne until the latter part of the 20th century, which included 21 years of study and a revision process that led to the major overhaul of U.S. copyright law: the enactment of the Copyright Act of 1976 (in force January 1, 1978). As the House Judiciary Committee noted, “[i]t can safely be stated that Congress drafted and passed the 1976 Act with a ‘weather eye’ on Berne.”16
Twelve years later, Congress completed the task of Berne accession by enacting further significant copyright revisions, in the Berne Convention Implementation Act of 1988 (BCIA), in force March 1, 1989. This last step mostly followed a script prepared by a distinguished panel of copyright experts, working under the auspices of the U.S. Department of State, on what changes in then-existing U.S. law were necessary for Berne implementation and accession.17 However, Congress took a “minimalist approach,” making only those absolutely necessary changes to U.S. law for Berne implementation in 1988, a scenario that proved significant in Golan.18 One of the issues left unfinished in 1988 was the protection for preexisting works of other Berne members, as required by Article 18 of Berne. That step was finished by the adoption of section 514 in the URAA in December 1994.19
The reason for the century-long dance by the United States toward Berne accession was the prohibition in Berne (from 1908 onward) against formalities applied against other (foreign) Berne authors or works in national copyright laws.20 In order to join Berne, the United States had to completely revise its copyright infrastructure, which from the first federal act in 1790, until March 1, 1989, was replete with formalities including (at different times): (1) notice (the properly placed “c” in a circle, the name of the copyright owner, and year of first publication); (2) a timely original registration; (3) a timely renewal registration; (4) a required manufacture of certain works in the United States; (5) mandatory deposit of copies with the Library of Congress; (6) registration as a prerequisite to lawsuit; (7) recordation of transfers and assignments as a prerequisite to lawsuit; and (8) for certain foreign works, ad interim registrations.
As the Senate Judiciary Committee noted during Berne implementation, “[f]or almost one hundred years, differences between U.S. law and Berne Convention standards kept our nation from joining the Convention.”21 The 1909 Copyright Act let stand, until the Copyright Act of 1976, a bifurcated system of federal copyright (published works) and common law (unpublished works) protection. The 1976 Act eliminated some formalities, namely renewal registration (for new works), and it abandoned copyright term based on publication and renewal registration, adopting in lieu, the Berne term—life plus 50-year post mortem auctoris (PMA); but it left notice requirements and several other less well-known formalities in place.22 Only with the 1988 revisions for Berne implementation were Berne-prohibited formalities finally and completely abandoned.23
Thus, the history of U.S. international copyright relations from 1891 to 1989 was also driven by finding alternatives to Berne, or, in the case of American works first or simultaneously published in Berne countries (not the United States), using the generous treaty points of attachment (place of publication) to secure “back-door” Berne protection. Beginning in 1891, the Chace Act first granted eligibility for published foreign works to be protected under U.S. law, if the foreign authors complied with formalities.24 However, such protection was secured only on the basis of bilateral agreements based on “reciprocity.”25 Multilateral agreements—the Buenos Aires Convention (1910) and the Universal Copyright Convention (1952) (UCC)—were both conceived by American negotiators and enabled U.S. formality-based law to continue, while also providing some (albeit “Berne-minus”) international protection.26 Beginning on March 1, 1989, Berne accession significantly improved the level of protection, under the principles of Berne (national treatment) and the Berne-minima obligations of covered subject matter and rights, as well as by a substantial increase in the number of countries in which U.S. authors and works were protected (currently 164 member states).
In 1988, as part of the “minimalist” approach, Congress “punted” as Justice Ginsburg called it on one clear Berne obligation—Article 18—which requires countries coming online to Berne to protect works of other Berne countries, so long as those works are not in the public domain in the country of origin due the expiry of a (full) Berne term. From their vantage point, it was actually more of a time out, than a punt, as key congressional members and staff, and administration officials, worried about the myriad issues under U.S. law to comply with this obligation.27 Congress and the administration took Article 18 treaty compliance very seriously, and especially the request from numerous trading partners to fully comply with Article 18, in order to ensure that these other countries such as Mexico, Canada, Turkey, Egypt, Austria, Thailand, and Russia (and many other Eastern and Central European nations after the fall of the Berlin Wall), would provide reciprocal treatment for U.S. works, in these and other expanding markets abroad.28 In the case of Mexico (and then Canada), the request for “retroactive protection” was built in to a bilateral, then trilateral, agreement and incorporated into U.S. copyright law in a § 104A that preceded but was narrower than section 514.29
But, in 1988, Congress was being conservative in its implementation of Berne obligations, especially the treatment of works in the public domain. The House Report (quoted in part in Golan) noted that Congress was taking full implementation “seriously; however, [it] remain[ed] persuaded that any solution to the question of retroactivity c[ould] be addressed after adherence to Berne when a more thorough examination of Constitutional, commercial and consumer considerations [wa]s possible. . . . The public domain [wa]s neither expanded nor reduced.”30
Not enacting Article 18-required changes to U.S. law fully during Berne implementation in 1988, and deferring it may or may not have been a proper political decision at that time to show U.S. trading partners our “full” compliance with Berne, but it was a relatively low-risk decision. Other Berne countries had little recourse at the time against the United States for such noncompliance, other than public statements, or attempting to reciprocally deny such treatment to U.S. works in their countries. As the court noted, a country’s compliance with Berne was (and, by itself, still is) governed by a weak country-to-country “enforcement mechanism”—the International Court of Justice—and the treaty “specifies no sanctions for noncompliance and allows parties, at any time, to declare themselves ‘not . . . bound’ by the Convention’s dispute resolution provision.”31 Further, as the court noted, “[t]he landscape changed in 1994”32 when the World Trade Organization (WTO) Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) was completed and entered into force on January 1, 1996. TRIPS incorporated Articles 1 through 21 of Berne via Article 9 (with the exception of Article 6bis—the droit moral—which had itself been another major Berne implementation “issue,” but one not treated in this article). Most importantly, and the reason for section 514, was the TRIPS dispute settlement mechanism, which meant that retaliation across all WTO trade sectors, and including tariff and other retaliatory measures, could be applied for noncompliant countries. So, in the anticipation of the “pain of WTO enforcement,”33 the U.S. Congress felt the need to accelerate and complete—as part of WTO TRIPS implementation—full Berne compliance. One of those missing pieces, after the BCIA of 1988, was the protection for preexisting works as required by Article 18, in 1994.34
Under section 514, qualified foreign works and sound recordings were “restored” to U.S. copyright protection, because they were in the public domain in the United States due to one of three reasons: (1) noncompliance with U.S. pre-1989 formalities, including publication with notice and timely original and/or renewal registrations; (2) ineligible works, that is, from a country of origin that did not enjoy protection in the United States at the time of publication; or (3) pre-February 15, 1972, sound recordings (since U.S. law denied federal protection for U.S. or foreign sound recordings before this date). Although no good statistical estimate exists for its impact, then-Register of Copyright Marybeth Peters, in a “year in review” report, estimated that while there was no precise figure on the number of works section 514 affected, they “probably number in the millions.”35
In most instances (that is, for the majority of works of WTO member countries), “restoration” became effective on January 1, 1996. A full summary of the “mechanics” of restoration, and the accommodations for certain users known as “reliance parties,” is provided in the sidebar on page 41. In sum, restoration applied automatically against all users except “reliance parties,” but there was no available cause of action for restored rights holders for any activity, by any party, before the date of restoration. For reliance parties, additional built-in periods and requirements allowed them to exploit works for set periods of time (in no case, for less than a year after the date of enactment of section 514).
Thus, until restoration (January 1, 1996), the petitioners in Golan—orchestra conductors, musicians, and music publishers—had enjoyed the free use of foreign works in the United States because of the public domain status of these works. After enactment, the petitioners, faced with restored copyrights for these works, commenced suit against the constitutionality of section 514 on several grounds noted below. And, after almost a decade of litigation in the district and appellate courts, the Tenth Circuit upheld section 514 under the Copyright Clause and the First Amendment, and, in January 2012, the Supreme Court affirmed.
With great economy, Justice Ginsburg’s opinion details the decade-long history of the case beginning in 2001.
The petitioners initially based their constitutional challenges on four grounds. Namely, that Congress, in enacting section 514, had: (1) exceeded its authority under the Copyright Clause; (2) breached the “limited times” restriction; (3) violated due process; and/or (4) violated the First Amendment in the denial of protected speech by withdrawing works the petitioners were, until enactment of section 514, freely using because the works were in the public domain.
The due process claim was dismissed by the first trial court and not reasserted by the petitioners.36
The chronology of the lower court treatment of the other challenges was as follows:
In 2005, the district court granted the Attorney General’s motion for summary judgment. In rejecting the Copyright Clause challenge, the district court said Congress “has historically demonstrated little compunction about removing copyrightable materials from the public domain.”37 As cited in Golan (and likely to be oft repeated in future digital enforcement debates), the district court “declined to part from ‘the settled rule that private censorship via copyright enforcement does not implicate First Amendment concerns.’”38
In 2007, the Tenth Circuit affirmed in part. The court agreed the public domain “was not a ‘threshold that Congress’ was powerless to ‘traverse in both directions.’”39 However, the Tenth Circuit remanded “with an instruction to the District Court to address the First Amendment claim in light of the Tenth Circuit’s opinion.”40 The Tenth Circuit, believing it was following Eldred, required further First Amendment inspection because section 514 had “altered the traditional contours of copyright protection,” including “the ‘bedrock principle’ that once works enter the public domain, they do not leave.”41 It was this misinterpretation of “traditional contours” that Justice Ginsburg called “incorrect” in her ruling.42
In 2009, on remand, the district court noted that because section 514 “does not regulate speech on the basis of its content . . . [it] would be upheld if ‘narrowly tailored to serve a significant government interest.’”43 The district court granted summary judgment to the petitioners because “§ 514’s constriction of the public domain was not justified by any of the [three] asserted federal interests.”44 Those government interests were: (1) full compliance with Berne; (2) securing greater protection for U.S. authors abroad; and (3) remediation of the inequitable treatment of foreign authors under U.S. copyright law (lack of protection, noncompliance with formalities, etc.).
In 2010, the Tenth Circuit reversed. As Justice Ginsburg characterized it, “[d]eferring to Congress’ predictive judgments in matters relating to foreign affairs, the appellate court held that § 514 survived First Amendment scrutiny.”45 The Tenth Circuit, relying on only one (of the three) government interest—securing greater protection for U.S. authors abroad—found that section 514 was narrowly tailored to fit an important government interest, and thus met constitutional (First Amendment) scrutiny.
In 2011, the Supreme Court granted certiorari, interestingly, not just to review the petitioners’ challenge on First Amendment grounds, but also under the Copyright Clause.
Golan reviewed the Copyright Clause authority (including “limited times”), and First Amendment challenges, in that order.
The court found no “barrier” to Congress having the authority to enact section 514, under the Copyright Clause, by looking at the “text of the Copyright Clause, historical practice, [and] our precedents.”46
Starting with “limited times,” Justice Ginsburg quickly dispatched with this challenge, first raised in 2001, and effectively decided in 2003—in Eldred. As Justice Ginsburg noted, citing Eldred, “we declined to infer from the text of the Copyright Clause the command that a time prescription, once set, becomes forever ‘fixed’ or ‘inalterable.’”47 As she continued, the term Congress granted U.S. authors is not “unlimited” at life plus 70 years PMA, and neither is the same term granted foreign authors under the URAA.48 In fact, “the copyrights of restored foreign works typically last for fewer years than those of their domestic counterparts” because the restoration under section 514 commenced copyright protection, but only for the remainder of the term the work would have received originally.49 She found “scant sense” in the petitioners’ argument that the federal term these works did get was “zero” and “at the end of that period” they “entered the public domain,” calling this unpersuasive as a breach of “limited times” because “surely a ‘limited time’ of exclusivity must begin before it may end.”50 She concluded that “[a]s in Eldred, the hypothetical legislative misbehavior petitioners posit is far afield from the case before us.”51
Looking at “historical practice,” the court noted that “[o]n occasion . . . Congress has seen fit to protect works once freely available.” Justice Ginsburg then rolled off a litany of examples, beginning with the first federal copyright enactment, the Act of May 31, 1790, which “launched a uniform national system” and did so by providing protection in three states (Delaware, Maryland, and Pennsylvania) that previously had no protection; in seven states that afforded some protection, but not to maps; in eight states that denied protection to “previously published books”; and in all 10 states that “denied protection to works that failed to comply with formalities.”52 Ginsburg noted the “very great weight” given to the drafters of the first copyright act, “men who were contemporary with [the Constitution’s] formation.”53 The court then used other examples where Congress did not understand “the Copyright Clause to preclude protection for existing works,” citing: (1) private bills that restored copyright protection for works; then (2) “analogous patent statutes” that were upheld (including one such ruling by “first Chief Justice Marshall in the Circuit Court”); and, finally, (3) other copyright acts—the Act of 1893, which “allowed authors who had not timely deposited their work to receive ‘all the rights and privileges’ the Copyright Act affords, if they made the required deposit by March 1, 1893,” as well as two wartime bills—in 1919 and 1941—whereby “Congress authorized the President to issue proclamations granting protection to foreign works that had fallen into the public domain during World Wars I and II.”54 By way of comparison, Justice Ginsburg noted that while
“[i]nstalling a federal copyright system” or “ameliorating the interruptions of global war” were “extraordinary situations[,] the TRIPS accord, leading the United States to comply in full measure with Berne, was also a signal event.”55
Last, in her analysis of the Copyright Clause, Justice Ginsburg focused on the “Progress of Science” language (citing the petitioners favorably) applying it to “the creation and spread of knowledge and learning.”56 While acknowledging the clause’s “aim” is to create new works, she concluded,
“[t]he creation of at least one new work . . . is not the sole way Congress may promote knowledge and learning,” again making parallel arguments to (and citing) Eldred, since copyright term extension applied to existing works.57 “Evidence from the founding . . . suggests that inducing dissemination—as opposed to creation—was viewed as an appropriate means to promote science,”58 Justice Ginsburg noted, exploring the role of publication (not creation) in the pre-1976 laws, since federal copyright protection during the time period commenced at the time of publication with proper notice. Citing Harper & Row Publishers, Inc. v. Nation Enterprises (and Eldred), the court said: “Our decisions correspondingly recognize that ‘copyright supplies the economic incentive to create and disseminate ideas.’”59 She concluded as follows: “A well-functioning international copyright system would likely encourage the dissemination of existing and future works. Full compliance with Berne, Congress had reason to believe, would expand the foreign markets available to U.S. authors and invigorate protection against piracy of U.S. works abroad.”60
Turning to the First Amendment, Justice Ginsburg “recapitulate[s] . . . our pathmarking decision in Eldred”61 beginning as follows: “Concerning the First Amendment, we recognized [in Eldred] that some restriction on expression is the inherent and intended effect of every grant of copyright.” The court, quoting Harper, referred to copyright as an “engine of free expression” that “supplies the economic incentive to create and disseminate ideas.”62
Justice Ginsburg then reexamined the “traditional contours” arguments she introduced in Eldred, clearly limiting this test to only contain: (1) the idea/expression dichotomy; and (2) the fair use defense (reiterating these two features of copyright law as the “built-in First Amendment accommodations” citing Eldred and Harper), and, in the process, overruling the Tenth Circuit’s “unconfined reading” of “traditional contours” because it included removal of works from the public domain in its test of this principle, when that court remanded the case to the district court for further First Amendment review.63 Since section 514 “leaves undisturbed the ‘idea/expression’ distinction and the ‘fair use’ defense” and given the “‘speech-protective purposes and safeguards’ embraced by copyright law,” the court, as in Eldred, found “no call for the heightened review petitioners sought.”64
In addition to fair use (and the other existing statutory exceptions), the court noted that section 514 “cushioned the impact of restoration” with numerous provisions, denying any enforcement of acts before the date of enactment and building in sell-off periods and special provisions for “reliance parties”—those who had acquired copies of and exploited the foreign works before restoration.65 Justice Ginsburg also took issue with the petitioners’ claim that they had “vested rights” in the works in the public domain (that the works “belonged to them”), instead saying that “[r]ights typically vest at the outset of copyright protection, in an author or rightholder” and then the works “simply lapse into the public domain” where “[a]nyone has free access” to them and “no one . . . acquires ownership rights in the once-protected works.”66
The court justified the absence of “heightened scrutiny” (a point with which the dissent concurred), by looking at the history of congressional enactments after 1790, where new subject matter was added to federal copyright protection (foreign works in 1891; dramatic works in 1856; photographs in 1865; motion pictures in 1912; and sound recordings in 1972). “If Congress could grant protection to these works without hazarding heightened First Amendment scrutiny,” then it can do so for “works prematurely cast into the public domain” as section 514 accomplished. The court also noted that section 514 “does not impose a blanket prohibition on public access,” only that the petitioners after enactment of the new law had to “pay for their desired use of the author’s expression, or else limit their exploitation to ‘fair use,’” comparing the availability of protected American composers’ works (Copland and Bernstein) to newly restored foreign composers’ works (Prokofiev and Shostakovich).67 In essence, the court said paying for works in the marketplace is not a complete denial of access.
Finally, Justice Ginsburg concluded: “Congress determined that U.S. interests were best served by our full participation in the dominant system of international copyright protection,” which (1) ensured “exemplary compliance” with Berne; (2) secured “protection for U.S. authors abroad”; and (3) remedied “unequal treatment of foreign authors”—all of which the court said were decisions ultimately for Congress to make, and which are constitutional.
Justice Breyer (joined by Justice Alito) said that the “Copyright Clause does not authorize Congress to enact” section 514 because the statute “does not encourage anyone to produce a single new work,” which is the “economic philosophy” behind Article I, Section 8, Clause 8.68 The dissent focused on “new production,” which Justice Breyer said “is, and always has been, an essential precondition for American copyright protection,” and since section 514 “inhibits the dissemination” of those “millions” of effected works, runs counter to the Copyright Clause.69
Justice Breyer repeated the Copyright Clause’s mandate to create “new” works very often in his dissent, calling the monopoly granted to authors to create new works for the public benefit the “cultural quid pro quo” of copyright law. He traced the history of Britain’s 18th century copyright law (including the Statute of Anne) and the groundwork it set for early American colonial, state, and then federal copyright law based on this author versus public bargain (the “utilitarian understanding of the Copyright Clause”),70 which section 514 breached.
“The upshot is that text, history, and precedent demonstrate that the Copyright Clause places great value on the power of copyright to elicit new production.”71 Justice Breyer found fault with section 514 because it restricts the dissemination and use of already produced works in two ways: (1) restored copyright holders could, after enactment of restoration, charge fees for the use of works that consumers once could use for free; and (2) it “creates administrative costs, such as the costs of determining whether a work is the subject of a ‘restored copyright’” requiring a search for the restored rights holder and “negotiating a fee.”72 Justice Breyer then discussed the U.S. and European problems and efforts to resolve the digitization and dissemination of “orphan works,” citing European Union studies on the millions of existing European orphan works, and their unavailability. According to Justice Breyer, this is a problem compounded by section 514 that placed “millions” of orphan works, including books, photographs, films, and other materials, out of the public access; Justice Breyer then posed several rhetorical questions about how, under section 514, the ownership or dissemination of such works might ever be determined and overcome.73
Justice Breyer responded to the majority opinion’s history of providing protection to previously public domain works, characterizing them as “special circumstances” (wartime extensions) or “special exceptions” (private copyright bills), and an otherwise “unbroken string of legislation preventing the withdrawal of works from the public domain,” citing, for example, the Copyright Act of 1976.74 Justice Breyer disagreed with the majority opinion that the Copyright Clause reaches “dissemination” because copyright, in his view, is a “monopoly” that “restricts dissemination” when compared to a “competitive market,” and he discounted the “industry experts” whom the majority references and relies on to reach the conclusion that “copyright protection of already existing works can help” with dissemination.75 In fact, this is the point of the biggest departure between the majority and dissent: that the Copyright Clause reaches “dissemination,” not just “creation,” of new works to “promote the progress” of science.
Lastly, Justice Breyer suggested that Congress had alternatives to section 514, looking at Article 18 of Berne which, according to Breyer, allows countries to either: (1) take reservations to Article 18;76 (2) negotiate—as Article 18(3) permits—“special conventions” between countries to create alternative means of protecting preexisting works;77 or (3) establish “compulsory licensing” mechanisms for the use of preexisting works.78 He concluded that “neither Congress nor the Executive took advantage of less-restrictive methods of compliance” with Berne, and thus section 514 is not a “constitutionally sufficient justification” for Berne compliance.79 He concluded by saying the restriction on the “flow of information” caused by section 514, as well as the other features of the statute, means that “the Copyright Clause, interpreted in the light of the First Amendment, does not authorize Congress to enact this statute.”80
Ultimately the Golan decision is important, primarily, for the reasons already noted in the introduction, pertaining to the constitutional questions posed and treated by this case—relating to the Copyright Clause and the First Amendment (including the “traditional contours” analysis).
The decision is also important for several other domestic and international copyright law reasons. First, the most obvious: full treaty compliance with Article 18 means that the United States is able to seek and achieve (as it has already done in many countries) full reciprocal benefits for American authors and works abroad for “preexisting works.” Second, it strengthens the hand of U.S. negotiators across all other Berne, TRIPS, and other treaty and agreement obligations for copyright (and other intellectual property), for compliance by other countries with other treaty or agreement compliance issues. Third, and closer to home, it means that future acts of Congress to amend copyright law, for domestic (rational) policy reasons or international treaty compliance, even if challenged, will not face “heightened scrutiny” absent tinkering with “traditional contours,” and thus should avoid years of uncertainty implementing new laws and new policies (like the 16 years of treatment of section 514). Last is the importance of “dissemination” as a part of the quid pro quo of the copyright monopoly and bargain. Ultimately, this will benefit both rights holders and users if future acts of Congress must, under the Copyright Clause, show that they ultimately result in either the creation of new works or—and increasingly important in the digital age—the dissemination of new or existing works as a result of any “new” Congressional enactment.
1. 132 S. Ct. 873 (2012).
2. Section 514 of the URAA was codified in 17 U.S.C. § 104A; the two sections are used interchangeably in this article, unless otherwise specified. As the Supreme Court noted, “restoration” is a misnomer because some works, and especially most foreign sound recordings, were ineligible for U.S. copyright protection before the effective date of § 104A (January 1, 1996, in most instances), likely because they were created, published, or authored by nationals of ineligible—at the time—countries to secure U.S. copyright protection under 17 U.S.C. § 104(b). In those instances, these works and recordings were not restored per se, but rather were granted federal protection for the first time on the effective date of § 104A; that protection lasts for the remainder of a full term of protection. See 17 U.S.C. § 104A(a)(1)(B) (“Any work in which copyright is restored under this section shall subsist for the remainder of the term of copyright that the work would have otherwise been granted in the United States if the work never entered the public domain in the United States.”); Golan, 132 S. Ct. at 882 n.13 (“Restoration is a misnomer insofar as it implies that all works protected under § 104A previously enjoyed protection. Each work in the public domain because of lack of national eligibility or subject-matter protection, and many that failed to comply with formalities, never enjoyed U.S. copyright protection.”).
3. The challenge by these petitioners yielded two Colorado district court opinions and two Tenth Circuit decisions. See also Luck’s Music Library, Inc. v. Gonzales, 407 F.3d 1262 (D.C. Cir. 2005) (upholding the constitutionality of section 514 under the Copyright Clause).
4. Justice Kagan took no part in the consideration or decision of the Golan case. See Golan v. Holder, 609 F.3d 1076 (10th Cir. 2010), cert. granted, 131 S. Ct. 1600 (2011).
5. 537 U.S. 186 (2003).
6. Sonny Bono Copyright Term Extension Act, Pub. L. No. 105-298, 112 Stat. 2827 (1998).
7. Golan, 132 S. Ct. at 890 n.29 (finding the Tenth Circuit, in its initial appellate decision, Golan v. Gonzales, 501 F.3d 1179, 1187 (10th Cir. 2007), “gave an unconfined reading to our reference in Eldred to ‘traditional contours of copyright’” that was “incorrect”).
8. Id. at 894.
9. Id. at 887.
10. Id. at 890 (“[W]e concluded in Eldred that there was no call for the heightened review . . . . We reach the same conclusion here.”).
11. See Id. at 876 (“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.’”); Eldred v. Ashcroft, 537 U.S. 186, 219 (2003) (“[C]opyright law contains built-in First Amendment accommodations. First, it distinguishes between ideas and expression and makes only the latter eligible for copyright protection. . . . Second, the ‘fair use’ defense allows the public to use not only facts and ideas contained in a copyrighted work, but also expression itself in certain circumstances.” (citation omitted)); Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539, 560 (1985) (“First Amendment protections already embodied in the Copyright Act [include the] distinction between copyrightable expression and uncopyrightable facts and ideas, and the latitude for scholarship and comment traditionally afforded by fair use . . . .”).
12. Eldred, 537 U.S. at 188 (citing N.Y. Trust Co. v. Eisner, 256 U.S. 345, 349 (1921)).
13. Golan, 132 S. Ct. at 874–75.
14. Robert W. Kastenmeier, Berne Convention Implementation Act of 1988, H.R. Rep. No. 100-609, at 11 (1988) [hereinafter BCIA House Report].
15. See Barbara A. Ringer, The Role of the United States in International Copyright—Past, Present, and Future, 56 Geo. L.J. 1050, 1058 (1968) (“In fact, efforts to achieve adherence to the Berne Convention began less than 15 years after the enactment of the 1909 statute; following the First World War, the increasing use of American works in other countries brought with it a demand that the United States adhere to the Berne Convention.”). Beginning in 1922, a series of bills for this purpose was introduced in Congress. Abe A. Goldman, The History of U.S.A. Copyright Law Revision from 1901 to 1954: Study No. 1, at 4 (1955) (prepared for the Subcomm. on Patents, Trademarks, and Copyrights of the S. Comm. on the Judiciary, 86th Cong., 1st Sess., pursuant to S. Res. 53).
16. BCIA House Report, supra note 14, at 21.
17. This ad hoc committee, organized by the Department of State, included 12 distinguished copyright academics and practitioners (and four ex officio government officials), who recommended the necessary changes after the 1976 Act to finalize Berne implementation. The Berne ad hoc committee reviewed all the details of then-current U.S. law, and recommended the changes necessary for Berne compliance. See Final Report of the Ad Hoc Working Group on U.S. Adherence to the Berne Convention, 10 Colum.-VLA J.L. & Arts 513, 548–57 (1986).
18. BCIA House Report, supra note 14, at 20 (“It must be stressed that the ‘minimalist’ approach taken to legislation enabling the United States to join the Berne Union does not mean minimizing the requirements of the treaty, nor casting a blind eye towards the long term implications of this step for the development of international copyright law.”).
19. Note there were other changes that came after the BCIA in 1988, including adding “architectural works” as required by Berne Article 4 in the Architectural Works Copyright Protection Act, Pub. L. No. 101-650, 104 Stat. 5089, 5133 (1990), and making renewals “automatic” for preexisting works in their first term—which applied to works created between 1964 and 1977—whether domestic or foreign. Copyright Amendments Act of 1992, Pub. L. No. 102-307, 106 Stat. 264.
20. Berne Article 5(2) bars Berne member copyright laws from applying formalities that deny the “enjoyment and exercise of [rights]” to other Berne nationals and works.
21. S. Comm. on the Judiciary, Berne Convention Implementation Act of 1988, S. Rep. No. 100-352, at 5 (1988), reprinted in 1988 U.S.C.C.A.N. 3706.
22. The Berne life plus 50 PMA minimum term was first introduced into Berne in 1908, and made mandatory in 1948. The other formalities included the manufacturing clause (§ 601), mandatory deposit with the Library tied to copyright protection (§ 407), the “jukebox compulsory license” (§ 116), § 411(a) registration as a prerequisite to lawsuit, and § 205 recordation as a prerequisite to lawsuit. On § 411(a)—registration as a prerequisite to lawsuit—the House (not a formality) and the Senate (a formality) disagreed during Berne implementation, and ultimately enacted a compromise § 411(a) retaining the registration requirement, but excluding Berne and other treaty (i.e., non-U.S.) works.
23. Some formalities were separately terminated, such as the “manufacturing clause,” which expired in July 1986. Others were deemed not to be Berne-prohibited and remain, such as § 412, which requires a timely registration for eligibility for statutory damages and attorney’s fees.
24. Unpublished works were then, and are still today, protected regardless of the nationality or domicile of the author. 17 U.S.C. § 104(a) (“[W]orks . . . while unpublished, are subject to protection under this title without regard to the nationality or domicile of the author.”).
25. “Rather than reciprocity (‘I’ll protect your works, but only to the extent you protect my works’), the Berne Convention adopted the principle of national treatment (‘I’ll protect your works to the same extent I protect my own works, if you promise to do the same’).” Ringer, supra note 15, at 1058.
26. The UCC was often referred to as the “bridge to Berne” even as it allowed the United States to retain its formality-based copyright law features. For example, Article III, Section 1 of the UCC allows for notice (in lieu of all other formalities—known as the rule of “substituted formalities”) in any contracting state to secure protection for published works, and Article IV, Section 2 shortens the otherwise life plus 25-year treaty minimum term, to 25 years, in countries that base term on “first publication”—that is, the United States.
27. The author was a Copyright Office attorney working with other office officials, and House, Senate, and administration officials during Berne implementation, and along with then-Acting Register of Copyright Barbara Ringer, and a handful of others in the administration and on Capitol Hill, a drafter of section 514, during URAA enactment.
28. In the case of Russia (and several other countries that copied the same provision), a 1992 U.S. and Russian trade agreement, signed by Presidents Clinton and Yeltsin, granting Russia Most Favored Nation (MFN) trade status, required that “when both Parties are members of the Berne Union, the protection of works in existence prior to that date shall be determined in accordance with Article 18 of the 1971 Paris Act of the Berne Convention.” In essence, by this language, the Russian government bilaterally committed to the U.S. government: “If you fully restore our works as part of your Berne accession, we will do the same when we join Berne”—and for Russia, joining Berne was another obligation of that trade agreement. Eric Schwartz, Recent Developments in Eastern Europe, 38 J. Copyright Soc’y USA 214 (1991) (reprinting a nearly identical Soviet-U.S. agreement that “became” (after a formal affirmation and resigning), the 1992 Russia agreement after the fall of the Soviet Union). Russia did ultimately join Berne (March 13, 1995) and did, as a result of this bilateral commitment, provide full restoration for U.S. works (previously unprotected in Russia before 1973) and recordings (unprotected before 1995), as well as for other foreign Berne-country works and recordings, under amendments to its copyright law in 2004. (The author was the U.S. government copyright negotiator of the U.S.-Russia Trade Agreement of 1992, and before that, of the nearly identical May 1990 U.S.-U.S.S.R. agreement.)
29. Under the § 104A adopted exactly one year before, and ultimately replaced by, section 514, certain Mexican and Canadian films that had fallen into the public domain in the United States between 1978 and 1988, for failure to meet notice requirements, were restored to U.S. protection. This provision was enacted at the insistence of the government of Mexico. (The author was the U.S. government copyright negotiator of this issue and that provision, in the U.S.-Mexico-Canada Free Trade Agreement, later broadened to the North American Free Trade Agreement or NAFTA.)
30. BCIA House Report, supra note 14, at 52.
31. Golan v. Holder, 132 S. Ct. 873, 880–81 (2012).
32. Id. at 881.
34. Another major issue addressed by URAA (TRIPS) implementation was the protection against the unauthorized fixation or trafficking in live (musical) performances, as required by TRIPS Article 14. See 17 U.S.C. § 1101.
35. Golan, 132 S. Ct. at 904 (Breyer, J., dissenting) (quoting The Year in Review: Accomplishments and Objectives of the U.S. Copyright Office, 7 Fordham Intell. Prop. Media & Ent. L.J. 25, 31 (1996)).
36. Golan v. Gonzales, No. 01-B-1854, 2005 U.S. Dist. LEXIS 6800, at *49–51 (D. Colo. Apr. 20, 2005) (granting the government’s motion for summary judgment as to the due process claim because “plaintiffs’ argument is premised upon a confusion of two distinct concepts. Though URAA Section 514 grants many retroactive benefits to authors, it does not impose retroactive burdens upon the plaintiffs. . . . Nor does Section 514 impair rights that the plaintiffs possessed when they acted” (citations omitted)).
37. Golan, 132 S. Ct. at 883 (quoting Golan, 2005 U.S. Dist. LEXIS 6800, at *14).
38. Id. (quoting Golan, 2005 U.S. Dist. LEXIS 6800, at *17).
39. Id. (quoting Golan v. Gonzales, 501 F.3d 1179, 1187 (10th Cir. 2007)).
40. Id. at 884.
41. Id. at 883–84 (quoting Golan, 501 F.3d at 1187; Eldred v. Ashcroft, 537 U.S. 186, 221 (2003)).
42. Id. at 890 n.29 (finding “[t]hat reading was incorrect, as we here clarify”).
43. Id. at 884 (quoting Golan v. Holder, 611 F. Supp. 2d 1165, 1170–71 (D. Colo. 2009), rev’d, 609 F.3d 1076 (10th Cir. 2010)).
44. Id. at 875 (citing Golan, 611 F. Supp. 2d at 1172–77).
45. Id. at 884 (citing Golan v. Holder, 609 F.3d 1076, 1076 (10th Cir. 2010), cert. granted, 131 S. Ct. 1600 (2011)).
47. Id. (internal quotation marks omitted) (citing Eldred v. Ashcroft, 537 U.S. 186, 199 (2003)).
48. Id. at 884–85.
49. Id. at 885.
52. Id. at 885–86.
53. Id. at 886 (alteration in original) (quoting Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53, 57 (1884)).
54. Id. at 886–87.
55. Id. at 887.
56. Id. at 888.
58. Id. (citing Thomas B. Nachbar, Constructing Copyright’s Mythology, 6 Green Bag 2D 37, 44 (2002)).
59. Id. at 889 (citing Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539, 558 (1985)).
60. Id. (citations omitted).
62. Id. at 876, 889–90 (quoting Harper, 471 U.S. at 546, 558).
63. Id. at 890 & n.29 (explaining decision in Golan v. Holder, 609 F.3d 1076, 1076 (10th Cir. 2010), cert. granted, 131 S. Ct. 1600 (2011)).
64. Id. at 876–77, 890–91.
65. Id. at 891.
66. Id. at 892. Justice Ginsburg noted the U.S. government and Congress’s concerns for Fifth Amendment “takings” issues, during Article 18 compliance and URAA consideration and passage, in a footnote. The opinion cites the Department of Justice memorandum on this point. Id. at 892 n.33 (citing General Agreement on Tariffs and Trade (GATT): Intellectual Property Provisions, Joint Hearing Before the Subcomm. on Intellectual Prop. & Judicial Admin. of the H. Comm. on the Judiciary and the Subcomm. on Patents, Copyrights, and Trademarks of the S. Comm. on the Judiciary, 103d Cong., 2d Sess., at 148–49 (1994) (prepared statement of Christopher Schroeder, Department of Justice)).
67. Id. at 892–93.
68. Id. at 900 (Breyer, J., dissenting).
69. Id. (Breyer, J., dissenting).
70. Id. at 901–02 (Breyer, J., dissenting).
71. Id. at 903 (Breyer, J., dissenting).
72. Id. at 905 (Breyer, J., dissenting).
73. Id. at 904–06 (Breyer, J., dissenting). Justice Ginsburg, in her majority opinion, noted the problem with orphan works and favorably cited the 2011 U.S. Copyright Office study on “mass digitization.” Id. at 894. However, she called these issues and problems that Congress, not the courts, needs to address, and difficulties that are “hardly peculiar to works restored under § 514.” Id. at 893–94.
74. Id. at 909 (Breyer, J., dissenting). Interestingly, Justice Breyer does not address a major consequence and reasoning of the Copyright Act of 1976: namely, to create a “unified federal system” taking all previously (or newly) created unpublished works, which had the effect of bringing millions of unpublished works into federal copyright and which incentivized the dissemination of these already created, but not “published,” works. See, for example, § 303(a), which added 25 years of federal protection for works in existence, but only if they were published (i.e., disseminated) on or before December 31, 2002, to a term of protection that lasted until at least 2027. As the House Report noted, this section “attempts to encourage publication.” Robert W. Kastenmeier, Copyright Law Revision, H.R. Rep. No. 94-1476 (1976). That term was later extended “plus 20” by the Copyright Term Extension Act in 1998, to at least December 31, 2047.
75. Golan, 132 S. Ct. at 909–10 (Breyer, J., dissenting).
76. The majority opinion disagrees. Id. at 878 (“[A] work must be protected abroad unless its copyright term has expired in either the country where protection is claimed or the country of origin.” (emphasis added) (citing Article 18(1)–(2))). That Article 18 is a mandatory obligation to protect preexisting foreign works is something most international copyright experts would agree upon. See, e.g., Dr. Mihaly Ficsor, World Intellectual Prop. Org., Guide to the Copyright and Related Rights Treaties Administered by WIPO and Glossary of Copyright and Related Rights Terms 56–60, para. BC-18.4 (“This provision clearly indicates that a country adhering to the Convention is not free to apply, or not to apply, certain provisions of the Convention.”) & para. BC-28.9 (referring specifically to Article 18(3) and citing the language of paragraph (3) “the application of this principle” of restoration—“the said provisions must be applied; there is no basis in the text of the provision for any suggestion that it would authorize a country to deny or limit the application of ‘this principle,’ that is, of paragraphs (1) and (2) of this Article ”). Last, as Dr. Ficsor notes, Article 18(3) “only allows certain temporary provisions, transitional measures,” but “does not allow any denial or limitation of the application of paragraphs (1) and (2).” The argument made by many in Congress and the administration in 1988 was that the United States would accede to Berne at that time, but take a permissible Article 18(3) transition on protecting preexisting foreign works. Dr. Ficsor was for many years the Assistant Director General of the World Intellectual Property Organization (WIPO), in charge of the Copyright Sector. The WIPO is the secretariat of the Berne Convention treaty, among many other international copyright and intellectual property rights agreements.
77. Justice Breyer does not give any examples of such conventions. This author does not believe there has ever been such a bilateral (or multilateral) agreement between Berne members. Even if it did exist it would mean that foreign works from each country (that agreed to the convention—basically, a bilateral agreement) would be protected differently than either nonconvention members or differently under separate such conventions, creating a maze of protection for foreign preexisting works.
78. It is likely that this “solution” is barred by Berne, since compulsory licenses are the very rare exception to Berne’s obligations to authors. Two examples of permissible compulsory licenses under Berne are: (1) cable retransmissions (Berne Article 11bis(2); U.S. copyright law § 111); and (2) the mechanical compulsory license (Berne Article 13(1); U.S. copyright law § 115).
79. Golan, 132 S. Ct. at 912 (Breyer, J., dissenting).