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Hayden W. Gregory is legislative consultant for the ABA Section of Intellectual Property Law in Washington, D.C. He can be reached at email@example.com.
In Golan v. Holder, 132 S. Ct. 873 (2012), decided on January 18th, the Supreme Court was called upon to squarely rule on the lingering question whether, consistent with the Patent and Copyright Clause of the Constitution, Congress has the power to extend copyright protection to works that are in the public domain. The case also provided an opportunity for the court to weigh, and determine the weight to be assigned to, international copyright norms and the economic impact on U.S. copyright owners of U.S. government policies that adhere to or depart from those norms.
Golan v. Holder grew out of litigation concerning section 514 of the Uruguay Round Agreements Act (URAA), Pub. L. No. 103-465, 108 Stat. 4809, 4976 (1994), codified at 17 U.S.C. 104(A). The URAA was enacted to fulfill legal obligations that the United States incurred when in April 1994 it signed a number of trade agreements, including the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPs). The origin and raison d’être of section 514 was not the TRIPs Agreement itself, but rather the action of the United States six years earlier in joining the 1886 Berne Convention for the protection of Literary and Artistic Works, which resulted in the enactment of the Berne Convention Implementation Act of 1988 (BCIA), 102 Stat. 2853. One such obligation that the U.S. seemingly incurred in joining Berne was to extend copyright protection to works of foreign authors from other Berne countries that for various reasons had never been protected in the United States, but which had not fallen into the public domain in the country of origin. The reasons for the absence of U.S. protection included failure of the U.S. to protect works from the country of origin at the time of publication of the works; the works were sound recordings fixed before 1972, when the United States first extended copyright protection to such works; or the author had failed to comply with U. S. statutory formalities that were inconsistent with Berne and were in existence at the time the works were created.
Section 18 of the Berne Convention stipulates that member nations must, in joining the Convention, provide protection to “all works which, at the moment of coming into force, have not yet fallen into the public domain in the country of origin through the expiry of the term of protection.” Despite this express injunction, section 12 of the BCIA asserts that U.S. law, as modified by the BCIA, “does not provide copyright protection for any work that is in the public domain in the United States,” and section 2 of the Act contains a “Declaration” that U.S. law satisfies all Berne obligations.
The Berne Convention does not contain an effective and potent enforcement mechanism, and thus the United States had little to fear in making the dubious declaration of Berne compliance. However, circumstances were quite different at the time the URAA was being developed. The Uruguay Round Agreements established the World Trade Organization (WTO) and contained the TRIPs Agreement, both of which include robust enforcement mechanisms. Witnesses at congressional hearings during the development of the URAA expressed concern that trade enforcement proceedings made available under the newly established WTO might be brought to challenge our non-compliance Berne provisions regarding restoration of copyright, resulting not only in embarrassment to the U.S. but also possible trade sanctions. The United States then decided it was time to ante up on section 18 of the Berne Convention, and section 514 of the URAA is the result.
The 10-year journey to resolution of the constitutional issues presented by section 514 began in 2001, when orchestra conductors, musicians, publishers, and others who formerly enjoyed free access to works of foreign authors challenged the removal of these works from the public domain. After two trips through the district court and the Tenth Circuit, the case arrived at the Supreme Court with two questions for the court to resolve: (1) Does Congress have power under the IP Clause of the Constitution to take works out of the public domain? and (2) Does section 514 violate the First Amendment?1
In challenging the ruling below that removal of works from the public domain by section 514 did not contravene the IP Clause, petitioners maintained that section 514 violates the “for limited times” language in the Constitution. Given the Supreme Court’s decision in Eldred v. Ashcroft, 537 U.S. 186, which was decided during the course of this litigation and upheld the authority of Congress to retroactively add 20 years to copyright terms, petitioners could hardly continue to maintain that Congress cannot adjust a copyright term once it has been set. This is particularly true in light of the fact that, as noted by the Supreme Court in its decision, the restored copyright terms frequently last for fewer years than those of domestic counterparts.
Instead, petitioners argued that the “for limited times” line was crossed because in the case of the works in question, “for limited times” means no term at all. In failing to provide any protection for these foreign works when they were created, Congress effectively set a term of zero years, and thus the works immediately fell into the public domain, a fact not present in the case of copyrights addressed in Eldred, in that the Copyright Term Extension Act made no attempt to revive copyrights that had already expired and entered the public domain. Petitioners further asserted that if copyright term restoration as provided in section 514 is permitted, Congress could successively legislate an unlimited number of “limited” terms, and thus achieve perpetual protection. The Golan majority took little time or text in disposing of these arguments [like a pesky fly]. It rejected the “no term at all” construction with an observation that “surely a ‘limited time’ must begin before it can end.” The court brushed aside the “perpetual term by installments” argument as positing “hypothetical legislative misbehavior . . . far afield from the case before us,” and noting that the same approach had been unsuccessfully attempted in Eldred.
The fact remains, however, that providing a term of copyright protection to a work that is in the public domain presents a different question than extension of the term of an existing copyright. Eldred did not present that question, and therefore could not answer it. The majority in Golan cited numerous instances in which Congress has extended copyright protection to works previously in the public domain, including in the Copyright Act of 1790. That Act established a national system of copyright and protects a number of classes of works previously unprotected in the pre-existing state systems of copyright.
The court also addresses language in Graham v. John Deere Co. of Kansas City, 383 U. S. 1 (1966), a landmark Supreme Court decision on the scope of patentability that contains language that on its face seems to suggest that removal of works from the public domain is not permitted. There the court stated “Congress may not authorize the issuance of patents whose effects are to remove existent knowledge from the public domain, or to restrict free access to materials already available.” The Golan court was probably correct in concluding that the statement in Graham, though expressed in terms of removal of knowledge from the public domain, was stated in the course of the analysis of issues relating to patentability and obviousness, and may not be relevant to issues relating to extending copyright protection by removing previously unprotected works from the public domain. Nonetheless, one can also argue that though the context is different, the same principle is in play, and providing copyright protection to works in the public domain is as equally offensive as granting a patent to an invention that is obvious.
Like the petitioners in Eldred, the Golan petitioners challenged the congressional action as failing to meet the constitutional mandate to “promote the progress of science and useful arts,” arguing that a statute directed in its entirety to works that have already been created cannot “spur the creation of new works.” The court again rejected this argument that “promote the progress” demands “that each copyright provision, examined discretely, operate to induce new works.” Its historical analysis led it to the application of a much broader standard that would find the ends of the IP Clause satisfied when the enactment advances the spread of knowledge and learning. In the view of the court, providing incentives for the creation of new works is certainly one way to satisfy that requirement, but other incentives can do so as well, including the provision of incentives for increased distribution of creative works.
Eldred seemed to serve notice that Congress has wide discretion in determining how and for how long to extend terms of copyright protection, without fear of judicially imposed restraints and limitations. Golan seems to send a message that those who read Eldred that way got it right. Golan can also be read to suggest that the two decisions can be conflated, resulting in authority of Congress to pluck from the public domain and provide lengthy term extensions for works for which full copyright term has been enjoyed and then expired, not just for works such as those addressed in the section 514 restoration provisions that for unique circumstances have never enjoyed copyright protection.
But maybe such an expansive reading of Golan is not justified. Two factors were present in the section 514 circumstances that will not be found in other “pluck from the public domain” circumstances, and there is a synergism in these two factors.
One is the sense of unfairness with which U.S. copyright law has treated foreign authors, ranging from total denial of protection until the end of the 19th century, through continued shabby treatment during much of the 20th century with protection limited to works printed in the U.S. and whose authors were from countries that granted reciprocal rights to U.S. authors, to the sort of continued discriminatory treatment that section 514 was designed to remedy. A second factor is the growing importance of international norms for copyright protection, adherence to which is increasingly recognized to be in the economic interests of U.S. copyright owners. The Berne Convention is the flagship in the fleet of international instrumentalities and institutions that apply those norms. The United States was ill-advised to join the Convention in a state of noncompliance, and the Supreme Court made clear in Golan that the impact that its disposition of section 514 would have on the economic and political interests of the country weighed substantially on its decision. In rejecting the petitioners’ claims that the restoration provisions of section 514 called for “perpetual copyright term by installments,” the court opined: “In aligning the United States with other nations bound by the Berne Convention, and thereby according equitable treatment to once disfavored foreign authors, Congress can hardly be charged with a design to move stealthily toward a regime of perpetual copyrights.”
Still a third factor that influenced the outcome of Golan was the existence of the transitional provisions in section 514 that reduce the liability of a “reliance party,” a person who before restoration used the work in a manner that would have constituted infringement if the work had been subject to copyright protection. No liability is imposed for conduct occurring before restoration. Reliance parties are provided a grace period and notice requirements before enforcement can begin against ongoing infringing activities, and damage awards are limited, including by compulsory damages provisions in the case of a derivative works based on a restored work. In its Golan decision, the Supreme Court characterized these measures as designed “to ease the transition from a national scheme to an international copyright regime” and as having “cushioned the impact” on reliance parties. The availability of this relief for reliance parties certainly weighed in favor of the decision to affirm section 514, and the presence or absence of similar provisions in any congressional attempt to rescue expired copyrights from the public domain could play a role in the judicial reception of such an effort.
In the closing paragraph of her opinion of the court, Justice Ginsberg synthesized the major considerations that led to the decision:
Congress determined that U.S. interests were best served by our full participation in the dominant system of international copyright protection. Those interests include ensuring exemplary compliance with our international obligations, securing greater protection for U.S. authors abroad, and remedying unequal treatment of foreign authors. The judgment § 514 expresses lies well within the ken of the political branches.
The court’s analysis of these factors not only goes a long way toward understanding its decision to allow the subject restored works to be removed from the public domain by a statutory grant of copyright protection, but it also may suggest why the decision should not be read as giving a judicial green light to unbridled congressional action to rescue works from the public domain, including works that arrived there via expiration of a full copyright term.
1. This article does not attempt an analysis of the First Amendment issues involved in the case, except to note that the Supreme Court resolved any ambiguity that may have been created in its decision in Eldred, where it stated that if legislation has “altered the traditional contours of copyright protection,” heightened First Amendment scrutiny may be necessary. Golan made clear that this language should not be read to encompass any application of the “idea/expression dichotomy” and the “fair use” defense, which serve as “built-in First Amendment accommodations.”