By , February 08, 2012.

Golan I & II

A year after the Court decided Eldred, another district court, in what would turn out to be the first step in a protracted journey back to the Supreme Court, was asked to apply the “traditional contours” test. In Golan v. Ashcroft, 1Golan v. Ashcroft, 310 F.Supp.2d 1215 (D. Colo. 2004). plaintiffs (Lessig’s clients) included artisans and businesses that published and performed works that were in the public domain. They sought declaratory and injunctive relief, maintaining that § 514 of the Uruguay Round Agreements Act (URAA) 2Uruguay Round Agreements Act, Pub.L. 103-465. was unconstitutional. The statute restored copyright protection to foreign works whose authors had lost their copyrights due to failure to comply with certain formalities that had since been repealed. Plaintiffs argued that § 514 of the URAA altered copyright’s “traditional contours” and violated their First Amendment rights because they could no longer use certain works that had been pulled out of the public domain. The court held that plaintiffs had sufficiently distinguished the holding in Eldred so as to survive defendants’ motion to dismiss.

Plaintiffs’ victory was short-lived, though, and in a lengthy opinion the district court granted defendants’ motion for summary judgment. The court reasoned that “Congress has historically demonstrated little compunction about removing copyrightable materials from the public domain.” 3Golan v. Gonzales, 2005 WL 914754 (D. Colo. Apr. 20, 2005). The record reflected that there were in fact many historical instances where public domain works had been granted copyright. Because of the idea/expression dichotomy, the court noted, only expressions were being restored to their authors—the ideas themselves were still public property. Considering the long string of practice for granting copyright protection to works in the public domain, the court rejected plaintiffs’ contention that copyright’s “traditional contours” had in fact been altered by doing the same thing here. The court, citing “the settled rule that private censorship via copyright enforcement does not implicate First Amendment concerns,” 4Id., at *17. similarly rebuffed plaintiffs’ argument that having to contract for use of restored works posed too onerous a burden on their free speech rights. In the court’s opinion, while plaintiffs surely bore some free speech hardship because of § 514 of the URAA, such difficulties were an inherent feature of copyright law in general and therefore not actionable.

On appeal to the Tenth Circuit, 5Golan v. Gonzales, 501 F.3d 1179 (10th Cir. 2007). plaintiffs’ luck changed. The court of appeals, after observing that the Supreme Court had not defined the “traditional contours” in Eldred, nonetheless definitively stated that “one of these traditional contours is the principle that once a work enters the public domain, no individual—not even the creator—may copyright it.” 6Id., at 1184. Moreover, the court reasoned that plaintiffs had cognizable and vested First Amendment interests in public domain works. Central to the Tenth Circuit’s analysis was the understanding that copyright’s “traditional contours” must include more than just the built-in free speech accommodations, i.e., the idea/expression dichotomy and the fair use defense. The court concluded “that the traditional contours of copyright protection include the principle that works in the public domain remain there” and that § 514 of the URAA had transgressed that “critical boundary.” 7Id., at 1189. Furthermore, the circuit court disagreed with the district court’s contention that there was a tradition of removing works from the public domain, and it characterized whatever history of the practice that did exist as the exception and not the rule. The Tenth Circuit remanded the case to the district court with instructions to subject § 514 of the URAA to heightened First Amendment scrutiny, as commanded by the “traditional contours” test.

On cross-motions for summary judgment, the district court began its analysis with the observation that § 514 of the URAA was a content-neutral regulation of speech because it could “be justified without reference to the content of the speech restricted.” 8Golan v. Holder, 611 F.Supp.2d 1165, 1170 (D. Colo. 2009). Under the applicable standard of heightened scrutiny (here, intermediate scrutiny), the statute would be upheld only if it advanced an important governmental interest and did “not burden substantially more speech than necessary to further” that interest. 9Id., at 1172. After careful analysis, the district court granted plaintiffs’ motion for summary judgment, concluding that while the government’s interests were sufficiently important, Congress nevertheless had burdened substantially more speech than was necessary in advancing those interests. The court limited its holding to only those parties that had already been exploiting the works while they were in the public domain—the so-called reliance parties. In the court’s view, those were the only parties with vested First Amendment rights that had been contravened when copyrights were restored in the works.

The parties cross-appealed to the Tenth Circuit. 10Golan v. Holder, 609 F.3d 1076 (10th Cir. 2010). Plaintiffs argued that § 514 of the URAA should be struck down as unconstitutional on its face, meaning that it should be found to be unconstitutional not only for the reliance parties but for everyone else as well. The defendants of course disagreed, arguing that the statute was constitutional not only as-applied to the reliance parties but for everyone in general too. On this appeal, the “traditional contours” test was not in issue—the previous circuit panel had definitively applied the test and found that the statute failed it. Under the law of the case doctrine, this circuit panel was bound to follow the prior panel’s conclusion on that point. Recall that failure to satisfy the “traditional contours” test simply means that heightened First Amendment scrutiny will be applied to the statute, so the battle on this appeal was over whether § 514 of the URAA was violative of the First Amendment under this more-stringent standard of review.

The circuit court started its de novo review by agreeing with the district court that § 514 of the URAA was a content-neutral regulation of speech, thereby calling for intermediate scrutiny. In looking at the first prong, which requires the government to assert an important or substantial interest, the court had “no difficulty in concluding that the government’s interest in securing protections abroad for American copyright holders satisfies this standard.” 11Id., at 1084. The government had introduced sufficient evidence to show that by granting copyright protection to foreign works in the public domain in the United States, foreign countries would reciprocate by granting copyright protection to American works that were in the public domain abroad. Turning to the second prong, which requires that the regulation not burden substantially more speech than is necessary to further the interest asserted, the circuit court reached the opposite conclusion than the district court. In doing so, the court of appeals found that the burdens inflicted by § 514 of the URAA on the reliance parties were congruent to the benefits afforded to American copyright holders since their works overseas would receive equal protections. The Tenth Circuit sided with defendants and reversed the district court below, holding that § 514 of the URAA was not unconstitutional under heightened scrutiny.

So to summarize: (1) the district court held that § 514 of the URAA didn’t alter copyright’s “traditional contours,” (2) the court of appeals reversed and held that it did, (3) the district court held that § 514 of the URAA didn’t pass heightened scrutiny, and (4) the court of appeals reversed and held that it did. A bit confusing, I know.

The “Traditional Contours” Test Defined

Plaintiffs petitioned for and the Supreme Court granted certiorari. In Golan v. Holder, 12Golan v. Holder, 2012 WL 125436 (U.S. Jan. 18, 2012). the Court affirmed the Tenth Circuit below, starting with the observation that “some restriction on expression is the inherent and intended effect of every grant of copyright.” 13Id., at *13. Despite the intrinsic conflict between the Copyright Clause and the First Amendment, said the Court, in the Framers’ view the two served the same goal of contributing to the marketplace of ideas. The Court then explained that the reference to the “traditional contours” in Eldred referred to only the idea/expression dichotomy and the fair use defense, i.e., the free speech accommodations that are built-in to copyright law. And with that simple explanation, an almost decade-long confusion about what constitutes copyright’s “traditional contours” was laid to rest. The “traditional contours” test, then, may be stated as follows: If Congress did not alter the idea/expression dichotomy or the fair use defense when crafting a copyright statute, then a reviewing court faced with a First Amendment challenge to that statute does not apply heightened judicial scrutiny.

That the Tenth Circuit the first time around had completely misunderstood the “traditional contours” test was made explicit in a footnote: “On the initial appeal in this case, the Tenth Circuit gave an unconfined reading to our reference in Eldred to ‘traditional contours of copyright.’ That reading was incorrect, as we here clarify.” 14Id., at fn. 29. The Court continued its analysis by stating that here, as in Eldred, there was simply no call for the heightened review that petitioners were seeking. In the Court’s view (and understanding this point is critical to understanding Golan), burdening people’s communication of an author’s protected expression simply didn’t raise the same free speech concerns that are present when the government burdens people’s communication of facts or ideas. The Court reasoned, rather simply, that since the traditional safeguards of the idea/expression dichotomy and the fair use defense had been left in place in drafting § 514 of the URAA, petitioners’ free speech interests were adequately protected. No further mitigation was necessary since the constitutional minimum requirements had been met.

The Court then turned to the argument that petitioners in this case were distinguishable from those in Eldred because they had enjoyed vested First Amendment rights in certain public domain works. Rejecting the argument that “the Constitution renders the public domain largely untouchable by Congress,” the Court accused petitioners of attempting “to achieve under the banner of the First Amendment what they could not win under the Copyright Clause.” 15Id., at *15. The Court could find no historical or congressional practice, nor anything in the Court’s own jurisprudence, that showed that heightened scrutiny was warranted for the practice of restoring copyright protection for works that were in the public domain. The Court positively rejected petitioners’ argument that they, as members of the public using public domain works, had vested First Amendment rights in those works: “Anyone has free access to the public domain, but no one, after the copyright term has expired, acquires ownership rights in the once-protected works.” 16Id., at *16.

And with that, the Supreme Court shut down once and for all Lessig’s thirteen-year-long argument that copyright laws must give special solicitude to the First Amendment above and beyond the idea/expression dichotomy and the fair use defense.

Closing Thoughts

Golan presents a great example of where simply labeling the Supreme Court’s holding as an affirmance of the court below misses the point. True, the Court affirmed the Tenth Circuit’s holding that § 514 of the URAA did not violate plaintiffs’ First Amendment rights. But the Court arrived at that destination by taking a completely different route. The better view is that, as far as the First Amendment issues are concerned, the Supreme Court in Golan completely denunciated all of the Tenth Circuit’s reasoning despite affirming its ultimate holding. The fact that the court of appeals got the right answer is entirely undercut by the fact that they were answering the wrong question.

I do want to point out as well that I think people are apt to take the holding in Golan too far. Consider the copyright statutes that we looked at—the CTEA, the CRA, and § 514 of the URAA. The CTEA extended the copyright term by twenty years for certain works. The CRA removed the renewal requirement, thus extending the copyright term for certain works. And § 514 of the URAA extended the copyright term to certain works in the public domain. See the pattern? I think the “traditional contours” test is applicable only when Congress has defined the scope of a substantive copyright right, that is, when it has “secur[ed] for limited Times to Authors . . . the exclusive Right to their . . . Writings” as the Copyright Clause expressly provides Congress may do. This is why I think Lessig goes too far when he laments that the Court has “shut the door, finally and firmly, on any opportunity to meaningfully challenge a copyright statute constitutionally.” Unless it’s a copyright law that defines the scope of the substantive right—like, say, the copyright term—I think the Court has left the door wide open for meaningful constitutional challenges. For example, I would argue that the Stop Online Piracy Act (SOPA) falls outside the “traditional contours” test since it concerns enforcement of substantive copyright rights and not the scope of the rights themselves. That means SOPA wouldn’t get a free ride when challenged on First Amendment grounds.

The holding in Golan certainly reinforces the concept that “copyright has traditionally been viewed as an exception to the First Amendment.” 17Jennifer E. Rothman, Liberating Copyright: Thinking Beyond Free Speech, 95 Cornell L. Rev. 463, 479 (2010). But it’s clearly not a complete exception. As I mentioned at the outset, Lessig’s notion that copyright must give way to free speech has been proved true with a vengeance—that’s exactly what the “traditional contours” test tells us. Copyright is an exception to the First Amendment, but only because it already incorporates two very important free speech safeguards. Alter either safeguard, and a copyright law’s free speech exception would have to be reexamined. Many people, no doubt, are dubious that these built-in safeguards adequately protect our free speech interests. Indeed, much has been written in the past few decades questioning precisely that. What the Court lays to rest in Golan, I think, is the dispute over whether these doubts are properly framed as constitutional issues or simply policy choices. One can reasonably believe that greater consideration for free speech is needed when it comes to copyright laws (in fact, I share that view), but what the Court has now made clear is that the First Amendment doesn’t demand it.

The last point I’ll make is that the Supreme Court is telling us in Golan that those focusing on the inherent conflict between copyright and free speech in framing their constitutional arguments are missing the forest for the trees. While the “immediate effect of our copyright law is to secure a fair return for an author’s creative labor,” the fundamental purpose of copyright is “to stimulate artistic creativity for the general public good.” 18Twentieth Century Music Corp. v. Aiken, 422 U.S. 151, 156 (1975). Thus the view espoused by the Court is that copyright and free speech are not at odds with each other in a zero-sum game where a benefit to one implies a detriment to the other. The philosophy behind the Copyright Clause “is the conviction that encouragement of individual effort by personal gain is the best way to advance public welfare through the talents of authors . . . .” 19Mazer v. Stein, 347 U.S. 201, 219 (1954). In the Court’s view, in the Framers’ view, and in my view as well, the First Amendment and the Copyright Clause are complementary provisions promoting the same goal—the public good.

Follow me on Twitter: @devlinhartline


1 Golan v. Ashcroft, 310 F.Supp.2d 1215 (D. Colo. 2004).
2 Uruguay Round Agreements Act, Pub.L. 103-465.
3 Golan v. Gonzales, 2005 WL 914754 (D. Colo. Apr. 20, 2005).
4 Id., at *17.
5 Golan v. Gonzales, 501 F.3d 1179 (10th Cir. 2007).
6 Id., at 1184.
7 Id., at 1189.
8 Golan v. Holder, 611 F.Supp.2d 1165, 1170 (D. Colo. 2009).
9 Id., at 1172.
10 Golan v. Holder, 609 F.3d 1076 (10th Cir. 2010).
11 Id., at 1084.
12 Golan v. Holder, 2012 WL 125436 (U.S. Jan. 18, 2012).
13 Id., at *13.
14 Id., at fn. 29.
15 Id., at *15.
16 Id., at *16.
17 Jennifer E. Rothman, Liberating Copyright: Thinking Beyond Free Speech, 95 Cornell L. Rev. 463, 479 (2010).
18 Twentieth Century Music Corp. v. Aiken, 422 U.S. 151, 156 (1975).
19 Mazer v. Stein, 347 U.S. 201, 219 (1954).

About the author: Devlin Hartline

Devlin is a husband, father, and law geek (JD & LLM). He is currently an SJD candidate at Tulane Law in New Orleans, Louisiana, where he is writing his dissertation on copyright law. He is also a Mark Twain Copyright Fellow at the Center for the Protection of Intellectual Property at George Mason Law in Arlington, Virginia.


  1. Thanks for the follow up article, Devlin.

    In your opinion, what do you see as the ‘Lessig like’ outcry from certain internet goers – that Copyright and Free Speech are incompatible? Just uneducated in the matter? Certainly Lessig himself doesn’t help the general publics’ understanding…

    IMO, besides the uninformed about what Copyright actually entails (i don’t know how many times i’ve had to correct people– wrongly claiming that it protects ‘ideas’), i believe alot of people are confused at what exactly “Free Speech” in-and-of-itself means. People see the word “Free” and don’t think beyond that…

    • Devlin Hartline

      I think Lessig was making brilliant arguments. It’s easy for me to say how he “wrong” he was when I have the benefit of hindsight and several court opinions saying just that–including two majority Supreme Court opinions. No one knew where the line was drawn when Lessig thought to ask the question. The problem with asking a question to the Supreme Court, though, is that if you lose, the opposite view gets enshrined into law. And that’s just what happened. That said, it does seem kind of obvious that the Constitution says Congress can create copyrights for limited times so long as they promote the progress, and the First Amendment won’t be offended. There’s not a lot of wiggle room there. Is it for limited times? The Court thought that was a no-brainer since it was for a finite period. Does it promote progress? That one seems like it has more teeth, but the Court punted and said it was Congress’s job to decide what promotes progress. That leaves the First Amendment argument. Considering the Framers thought that copyright and free speech could co-exist without offending each other, it’s kind of silly to think that one trumps the other. The amazing thing for me is that the Court is in fact saying that the First Amendment does trump copyright. Lessig was right all along on that score. He was wrong to think that the built-in safeguards were insufficient, but he was right that some safeguards were needed at all.

      What it comes down to, though, is simply a matter of policy preference and issue-framing. It’s one thing to say that the CTEA was an unconstitutional burden on First Amendment rights. It wasn’t. It’s another thing to say the CTEA was a bad idea. Maybe it was, but that’s not a constitutional issue for courts to decide. So to answer your question (and I hope I am), I think that the copy-haters actually have some good points. They often couch things in constitutional terms, but really they’re just making policy arguments in disguise. I think we should be a little more careful in how we frame things. If someone wants to argue that, say, SOPA is a bad idea since it doesn’t adequately protect free speech, I’m down with that and I think that’s a good conversation to have. If they’re going to say that SOPA violates Due Process and the First Amendment, and it spits on the Constitution, then I’m less apt to believe anything they have to say. Maybe they’re right, but I’m certainly skeptical when the rhetoric gets cranked up to 11 like that. But that’s just me… Anyway, the point is there’s two kinds of free speech: that which the Constitution demands, and that which we want to provide for ourselves above and beyond the constitutional minimum. People tend to go straight to the former, when really, the conversation is about the latter.

      • I agree that Constitutional arguments are not the best way to fight copyright. It may become possible in the future, remember this is a court that about 150 years ago thought black people where not human beings worthy of any rights. Today they have a black man as a justice. So their opinions can change over time.

        The most effective way anti-copyright activists have been fighting copyright is through technology itself. One of the great insights Lessig has provided was that what is written in law doesn’t matter. The only thing that matters when it comes to computers and technology is code. Code is law. And software engineers, not Congresspeople or Lawyers have been writing the real law all along. That’s why even with all the copyright laws in the world, which are arguably very strong, nothing really can be done about piracy. Because the technologists who actually write the code aren’t on the side of copyright crusaders.

        Anti-copyright has been making some large political gains in the past few years. Which will further cement file-sharing as a legitimate act to the legal system. But ultimately it doesn’t matter. The main thing that matters is having technological systems working for your cause.

  2. The Constitution is irrelevant and has been for years. Stuff that would be considered unconstitutional 70 years ago are magically constitutional today. The only thing that is relevant is the Supreme Court’s opinion. If we get some anti-copyright people on the Supreme Court you bet they’d strike copyright law down as unconstitutional in a heartbeat.

    • ^ And comments like that are precisely what i’m talking about…

      Copyrights and other intellectual property are, in fact, a very large driver of the US economy. Even if your extremist view were to permeate the SC, there’s no way in hell they’d strike down Copyright. (besides the fact that Copyright is built into the Constitution)

      If you’re referring to length of copyrights duration, sure, i’d be willing to shave some years off … but only if/when they start enforcing better.

      • Trying to compromise with copyright is fundamentally a failed strategy. Workable copyright enforcement is fundamentally incompatible with the idea of a free and open Internet. It doesn’t copyright duration 1 month or 100 years.

        We must drop it entirely and come up with a better system that is compatible with the concept of an information age.

        • It doesn’t matter if copyright’s duration is 1 month or 100 years.*

        • Copyright law embraces industries far removed from “entertainment”, which time and time again has revealed to me the importance it plays for individuals and groups in such industries.

          Sorry, but your focus is much too narrow.

          • I love it when the zealots talk like M there- it really reveals the sociopathic nature behind freetardism.

          • @ M. Slonecker

            The copyright enforcement is simply not compatible with an open and free Internet. And without copyright enforcement, copyright is a hollow law.

          • M • Posted February 9, 2012 at 8:20 pm

            It may be hard for some to comprehend, but in the “internet age” there are many “original works of authorship” that have absolutely nothing to do with the internet, and my comment was directed to these.

          • The Internet has made information hoarding harder in general, but it is worse for people who try to make money from the artificial scarcity inherit in copyright.

            Successful companies built themselves on copyrightable works. Google (“the great anti-copyright puppet-master behind the scenes”) is a company who produces almost nothing tangible. They are entirely a “content” company, where the content is represented as software.

            Yet their business does not rely on trying to produce an artificial scarcity of something the way the music and movie industries have positioned themselves. It’s a key difference.

          • Yet their business does not rely on trying to produce an artificial scarcity of something the way the music and movie industries have positioned themselves.

            Sure they do. Just one example is the Google Books service. The Open Book Alliance notes:

            Everyone knows Google has scanned tens of millions of books, including over 3 million books in the public domain, and that it got most of these books from many different libraries, public and private.

            What most don’t know is that Google forces those libraries to use technology to restrict Internet access to those digital copies, even the public domain books that are no longer copyrighted.

            Under Google’s contracts, those libraries must deploy “technological measures” to prevent other libraries, digital archives, researchers, competing search engines, and others from downloading and analyzing the content of those public domain books.

            To hold Google out as some sort of “free information” hero is unavailing. They are as willing to protect their intellectual property as any other multibillion dollar global corporation — including their trademarks, patents, trade secrets, and even federally-collected employment data.

  3. @ Kent

    I love people like you too. You are obviously parodying over-the-top pro-copyright agitators to help the anti-copyright agenda. Thanks for all your work. 🙂

  4. M wrote: “The copyright enforcement is simply not compatible with an open and free Internet…”

    Well then, if that is truely the case… maybe the problem is the “open and free internet” concept…

    Did fundamental laws dissapear with the introduction of the telegraph? no
    Did fundamental laws dissapear with the introduction of telephones? no

    As the internet is essentially another telegraph type technology (transmit data), it is no different in this regard.

    Those coddling “the internet” — like you’re going to hurt it’s feelings or something– is quite facinating from a psychology point of view…

    • I’m glad you are honest.

      On one side, we an open and free Internet and knowledge and culture post-scarcity. On the other side we have the business interests of some well-established industries. Neither can get along with the other.

      I see we both already picked our sides.

      • To be clear… i’m not advocating an extreme view either way.
        A ‘hybrid’ approach is what i envision.

        You’re “Free at all costs” is really a smokescreen from some very big tech companies that currently control what you see, how you see it, and then sell any an all personal info they collect on your most intimate lives.

        If your idea of an “open” internet means you can steal anything you can get your grubby little hands on, then yes.. we’re on different sides of the proverbial fence.

        • When you can figure out that the world isn’t run by Google be free to let us know. That tinfoil hat around your head seems a little tight.

  5. Copyright law embraces industries far removed from “entertainment”, which time and time again has revealed to me the importance it plays for individuals and groups in such industries.

    More and more people are ignoring copyright enforcement to find new avenues of doing business. I doubt that copyright law is helping to create those revenue streams. It seems more likely that if people do utilize copyright in any way, it quickly becomes a crutch for the business to grow.