February 22, 2011 · · Comments Off

A lawsuit filed a decade ago has made its way to the Supreme Court.

Plaintiffs for Golan v. Holder filed a petition for writ of cert to the Court back in October. Briefing for the cert stage was completed earlier this month, and the Center for Internet and Society has links to the petition, response, and amici briefs.

Despite its lengthy trip to the Supreme Court, including several trips back and forth between the District Court of Colorado and the 10th Circuit, Golan has flown somewhat under the radar.

I recently took the time to read through the opinions generated during Golan’s trek. There’s a lot of different things at play here: the Copyright Clause, the First Amendment, international treaties, the public domain. For my nonlegal readers, I also think this litigation is a good way to see the appellate process in action and how courts approach a constitutional analysis.

What follows is sort of a Cliffs Note version of the litigation.

The Beginning

To understand the how and why of the issues involved in Golan, a bit of background is necessary. The Berne Convention for the Protection of Literary and Artistic Works first came into force in 1887 between Belgium, France, Germany, Italy, Spain, Switzerland, Tunisia, and the UK. The international agreement set minimum levels of copyright protection that member parties must provide for, and, more importantly, requires that member parties treat copyrighted works of authors from other Berne members the same as copyrighted works of their own domestic authors.

In part to ensure that countries don’t benefit from waiting to sign up, Berne provides for retroactive application to existing works. Article 18(1) requires protection for other Berne member works in the new country which “have not fallen into the public domain in the country of origin through the expiry of the term of protection.”

The US did not join Berne until 1988. At the time, a number of foreign works that were still protected in their own country had fallen into the public domain in the US — some because they had failed to follow copyright formalities that had previously been required under US law (Berne prohibits parties from subjecting other member works to formalities),1 some because the work’s subject matter had not been protected under US law (as was the case with sound recordings fixed before 1972). Congress, however, chose to ignore Article 18(1) when it implemented Berne, leaving these works in the public domain in violation of the treaty.

And they would have gotten away with it, too, if it wasn’t for that meddling TRIPS.

The Uruguay Round Agreements Act

The Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) was created during the Uruguay Round of GATT in 1994. The international agreement, administered by the newly created World Trade Organization, both incorporated Berne standards and set up an international dispute resolution panel to enforce compliance. The EU made it known that one of the first panels would be brought against the US for failing to comply with Article 18(1) when it joined Berne.2

So § 514 of the Uruguay Round Agreement Act (URAA), the implementing legislation, was drafted to bring US law in line with its treaty obligations. The provisions restored copyright in any work that had fallen into the public domain in the US “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.” The Act is limited to a work which is “not in the public domain in its source country through expiration of term of protection,” but “is in the public domain in the United States due to (i) noncompliance with formalities imposed at any time by United States copyright law, including failure of renewal, lack of proper notice, or failure to comply with any manufacturing requirements; (ii) lack of subject matter protection in the case of sound recordings fixed before February 15, 1972; or (iii) lack of national eligibility.”3 The Act also includes provisions for “reliance parties” — those who had made use of the works because they had fallen into the public domain and would be affected by the restoration of copyright protection on those works. These provisions, among other things, require the filing of a notice of intent to enforce copyright by the owner of a restored work and limit the liability of reliance parties who infringe on restored works.

Noted copyright scholar William Patry, who was copyright counsel to the House IP subcommittee at the time, provides insights into the drafting process of § 514 at The Constitutionality of GATT Restoration (with some more background at The Constitutionality of the Bootleg Statute). He notes:

I did not believe that the legislation provided a direct incentive for the creation of new works, nor that, divorced from the Berne obligation, restoration represented good policy. But honesty in treaty adherence is good policy, and retroactive protection for U.S. works overseas is of benefit to both U.S. copyright owners and to the system as a whole. I thought those two objectives sufficient, from a policy and constitutional standpoint. And I say this as someone who believes, more fervently than even Larry Lessig, that the “Promotion of the Progress of Science” language in Article I, section 8, clause 8 is a real substantive limitation on Congress’s power. But I also believe that one must look to the system as a whole to see whether there has been a benefit provided by legislation, and in the case of GATT restoration, I answer that question affirmatively.

Golan Challenges URAA

In the wake of URAA and the subsequent Copyright Term Extension Act of 1997 (CTEA), which which extended the term of copyright an additional 20 years on currently protected works, a number of reliance parties joined together to challenge the constitutionality of the acts. In 2001, a lawsuit was filed by Lawrence Golan, an orchestral director and conductor; SA Publishing, a distributor of orchestral recordings and sheet music; Festival Films, Timeless Films, both distributors of public domain films and television shows; and several other similar parties. (For simplicity purposes, I’ll be referring to all plaintiffs as “Golan” and § 514 of the URAA as just “URAA” for the rest of this article.)

All the parties involved had been performing, copying, or distributing works that had been in the public domain before URAA restored copyright protection in them. Now, they were faced with either paying royalties on the works, ceasing the use of them, or risking litigation.

Golan initially sought a declaration in the District Court of Colorado that the CTEA and URAA were unconstitutional under the Copyright Clause and that the URAA was a restriction of free speech under the First Amendment. The case was put on hold when the Supreme Court granted cert in Eldred v. Ashcroft to consider the constitutionality of the CTEA. After the Supreme Court decided that the CTEA was within Congress’s constitutional authority, the District Court went back to Golan.

On March 15, 2004, it ruled on the government’s motion to dismiss for failure to state a claim.4 It held that Golan’s CTEA claim — that extending the copyright term runs afoul of the “limited times” prescription in the Copyright Clause — was foreclosed by Eldred.5 The remaining URAA claims, however, were “legally cognizable”; while they may ultimately be unsuccessful, dismissal wasn’t warranted at this stage. Golan alleged that Congress couldn’t remove works once they entered the public domain since doing so wouldn’t “promote the progress” of the arts as the Copyright Clause was argued to require; that the URAA restricted speech, and because it “altered the traditional contours” of copyright law, it was subject to First Amendment scrutiny; and that the URAA was retroactive legislation that upset settled expectations in an arbitrary and irrational way, violating Golan’s substantive due process rights.

Golan I

Following the court’s denial of the motion to dismiss, both parties moved for summary judgment. A new opinion was issued on April 19, 2005, that ruled on these motions.6 At this juncture, the court had to answer three questions. First, does the Constitution give Congress the authority to enact the URAA, or does, as the plaintiffs argued, the Copyright Clause create an absolute bar against removing works from the public domain. Second, assuming Congress did have such authority, does the URAA advance a legitimate governmental interest in a rational way. Finally, assuming it does, does the URAA infringe on other constitutionally-protected rights, notably the right to free speech.

Congress does have the power to restore copyright to works in the public domain, said the court. It drew upon distinctions between copyright and patent law, historical practice, and, perhaps most relevant, wartime copyright acts from 1919 and 1941 that restored copyright in foreign works which had similarly fallen in the public domain. The court also launched into an interesting and rather extensive historical analysis of the common law rights of authors that is worth reading in and of itself.

The second question, does URAA have a rational basis, was an easy one to answer. Courts very rarely find legislation unconstitutional under this level of scrutiny, and this time was no different — the District Court concluded that Congress was “attempting to promote protection of American authors by ensuring compliance with the Berne Convention”, a goal rationally related to URAA.

The last question facing the court was whether the plaintiff’s “First Amendment speech rights are infringed by the burdens of complying with the copyright protections that [URAA] has restored to works that they once freely disseminated.” Judge Babcock dismissed this argument in one sentence, stating “I see no need to expand upon the settled rule that private censorship via copyright enforcement does not implicate First Amendment concerns.”7

The court thus granted the government’s motion for summary judgment and denied Golan’s motion. Golan appealed to the 10th Circuit.

Golan II

Two years later, the 10th Circuit released its decision on the appeal.8 Summary judgment decisions are reviewed by appellate courts de novo — literally, starting over — so the same questions are considered and analyzed anew.

The 10th Circuit begins with a succinct description of the constitutional limitations — including First Amendment limitations — on Congress’s authority to make copyright law in a post-Eldred world. With those principles established, it turned to the issues of the case.

First up, say hello to the CTEA again. Despite the dismissal of the CTEA claim three years prior due to the Supreme Court’s holding in Eldred, Golan attempted to try it again from a different tack. Eldred, the argument went, only said that Congress had the authority to extend existing copyright terms. But it didn’t decide whether the new length — “life-plus-70-years” — was constitutional in and of itself. Technically correct, but unavailing. “The rationale underlying Eldred compels us to conclude that the CTEA-imposed timespan passes constitutional muster,” said the court.

Like the District Court, the 10th Circuit found that URAA is within Congress’s authority under the Copyright Clause. Unlike the District Court, the 10th Circuit devoted considerable time to examining the First Amendment issues raised by URAA. Eldred had suggested that a law could only be subject to First Amendment scrutiny if it “altered the traditional contours of copyright.” The court picked apart what this means and concluded that URAA does alter the traditional contours of copyright.

Ok, so now what? While ordinarily one doesn’t have a first amendment right to infringe someone else’s expression, once a work moves into the public domain, and anyone is free to copy that expression, that copying is protected by the first amendment. Taking the work back out of the public domain interferes with those vested first amendment rights. The first amendment safeguards that are generally adequate to address free speech in copyright law — the idea-expression distinction and fair use — aren’t available here. Reliance parties want to use the entire expression of a restored work.

Identifying a free speech impingement is only the beginning of a court’s job. The 10th Circuit remanded to the District Court to complete the First Amendment analysis, concluding with instructions that should be familiar to anyone who has taken a bar exam:

In conducting its First Amendment analysis on remand, the district court should assess whether § 514 is content-based or content-neutral. Content-based restrictions on speech are those which “suppress, disadvantage, or impose differential burdens upon speech because of its content.” These restrictions “are subject to the most exacting scrutiny.” If § 514 is a content-based restriction, then the district court will need to consider whether the government’s interest in promulgating the legislation is truly “compelling” and whether the government might achieve the same ends through alternative means that have less of an effect on protected expression. By contrast, “[a] regulation that serves purposes unrelated to the content of expression is deemed neutral, even if it has an incidental effect on some speakers or messages but not others.” A content-neutral restriction must be “narrowly tailored to serve a significant governmental interest.”

Golan III

Golan went back down to the District Court, which released its opinion on April 3, 2009, on the motions filed for summary judgment in response to the Circuit Court’s holding.9 Both parties and Judge Babcock agreed URAA was a content-neutral regulation. But Judge Babcock held that URAA was not “narrowly tailored.” Congress could have given permanent protection to reliance parties rather than the temporary protection it did give them. Since the Berne Convention allows discretion in how member parties provide restoration, Congress could have done this while still complying with its legitimate international obligations. The court denied the government’s motion for summary judgment and granted the plaintiff’s motion.

Golan IV

Any questions about what the District Court’s decision that URAA was unconstitutional meant for the act disappeared when the 10th Circuit reversed the decision on appeal.10 The court began by noting that this case involves foreign affairs policy choices by Congress and the Executive Branch, choices courts should accord special deference to.

With that in mind, the court placed great weight on the fact that Congress chose to limit the protection for reliance parties here in order to further the interests of US authors abroad. It noted that “Congress heard testimony from a number of witnesses that the United States’ position on the scope of copyright restoration — which necessarily includes the enforcement against reliance parties — was critical to the United States’ ability to obtain similar protections for American copyright holders.”

As for whether URAA was narrowly tailored to achieve this significant government interest, the court answered affirmatively. Narrow tailoring does not mean that a law must be the least restrictive method of advancing a government interest. The 10th Circuit was not even convinced that the District Court’s conclusion that URAA could have been drawn more narrowly — by expanding the rights of reliance partners — was less burdensome on speech interests; “the United States needed to impose the same burden on American reliance parties that it sought to impose on foreign reliance parties … [so] the benefit that the government sought to provide to American authors is congruent with the burden that Section 514 imposes on reliance parties.”

URAA represented a choice crafted by Congress to balance competing interests of US copyright holders and reliance parties, a policy choice best made by Congress and not the courts. The 10th Circuit concluded, “Plaintiffs may have preferred a different method of restoring copyrights in foreign works, but that is not what the Constitution requires; as long as the government has not burdened substantially more speech than necessary to further an important interest, the First Amendment does not permit us to second guess Congress’s legislative choice.”

Final Thoughts

While the story of Golan and the various opinions generated by the litigation over the last decade are interesting from an academic standpoint, the practical effects of the Supreme Court taking the case are elusive.

The Supreme Court rarely grants cert. I’m no expert in predicting Court decisions, but I don’t see many of the hallmarks of a case the Court would grant cert here. There’s no circuit split on the constitutionality of URAA. Two other Courts of Appeal heard constitutional challenges to the Act; both, like the 10th Circuit, upheld the Act.11 The 10th Circuit decision was unanimous, and it did not expand or add to the Supreme Court’s holding in Eldred. Given the deference accorded to Congress in the copyright realm by the Eldred court, and the amount of deference identified by the 10th Circuit that should be accorded to Congress’s crafting of URAA, it’s difficult to see the Supreme Court changing paths and second-guessing Congress’s policy choices here.

A Supreme Court decision either way would have little effect outside the parties to this case. URAA was passed to deal with the US joining the first major international copyright treaty. This type of situation will not come up again in the future.

So why push this case all the way to the Supreme Court in the first place?

Perhaps it’s a way to get the Court to say some nice things about the public domain. But despite the plaintiff’s framing of this case about the importance of the public domain in general, it’s not really about the public domain. While it’s not entirely settled that works which have entered the public domain because they’ve reached the end of the copyright term cannot be removed from the public domain, I think there’s very strong support for that idea in the law. But more importantly, I don’t think there’s any reason to think Congress would entertain the idea. It hasn’t for the past 200 years, and URAA, like the 1919 and 1941 restoration acts, only removed works that had l0st protection due to technical reasons because of exigent, specific, and unique circumstances.

Perhaps it is an attempt to gain a first amendment foothold in copyright law.12 I talked about this increasing trend of “free speech opportunism” from academia and public interest groups in Copyright and Censorship. I think this argument is merely a “facade” (as the Eldred Court put it) to dress up what is ultimately a policy disagreement with Congress.

Footnotes

  1. Article 5(2). []
  2. William Patry, The Constitutionality of GATT Restoration, Patry Copyright Blog, May 25, 2005. []
  3. URAA § 514(h)(6); codified at 17 USC § 104A(h)(6). []
  4. Golan v. Ashcroft, 310 F.Supp.2d 1215. []
  5. Said the Court in Eldred, “the Copyright Clause empowers Congress to determine the intellectual property regimes that, overall, in that body’s judgment, will serve the ends of the Clause.” []
  6. Golan v. Gonzalez, No. 01-B-1854, 2005 WL 914754 (“Golan I”). []
  7. J. Babcock cited Nihon Keizai Shimbun, Inc. v. Comline Bus. Data, Inc., 166 F.3d 65, 74 (2d Cir. 1999)Los Angeles News Service v. Tullo, 973 F.2d 791, 795 (9th Cir. 1992)SunTrust Bank v. Houghton Mifflin Co., 268 F.3d 1257, 1263-1264 (11th Cir. 2001), reh’g denied, 275 F.3d 58 (11th Cir. 2001)Eldred v. Reno, 239 F.3d at 375. []
  8. Golan v. Gonzalez, 501 F.3d 1179 (“Golan II”). []
  9. Golan v. Holder, 611 F.Supp.2d 1165 (“Golan III”). []
  10. Golan v. Holder, 609 F.3d 1076 (“Golan IV”). []
  11. Kahle v. Gonzales, 487 F.3d 697 (9th Cir 2007); Luck’s Music Library v. Gonzales, 407 F.3d 1262 (DC Cir 2005). []
  12. See, for example, Golan v. Holder gets a second wind: “Lessig is understandably excited about this case. It relies on the little glimmer of hope that Justice Ginsburg planted in Eldred v. Ashcroft, that the First Amendment really does have something to say about what Congress can do when it tinkers with the Copyright Act, but not in most cases.” []

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