Golan v. Holder and the URAA's Impact on the Public Domain
Peter and the Wolf, a symphony written by Sergei Prokofiev in 1936, recently received national attention through the Supreme Court decision of Golan v. Holder. Golan, decided on January 18th, 2012, upheld the constitutionality of Section 514 of the Uruguay Round Agreements Act (“URAA”)—a provision that brought the United States into better compliance with international copyright conventions. Section 514 removes certain foreign works, like Peter and the Wolf (a popular orchestral piece for young children), from the public domain. In other words, Section 514 “restores” copyright entitlements to the owners of these works for a specified amount of time.
The controversy of this Section arises for people like Lawrence Golan who previously enjoyed free access to these works without having to seek permission from copyright holders. Others, like the Electronic Frontier Foundation, see even larger issues between private and public interests at stake with the upholding of URAA. Accordingly, the petitioners challenged the constitutionality of the Section both under the Constitution’s Copyright and Patent Clause (Art. I, § 8, cl. 8 ) and under the First Amendment of the Constitution. Although the Court ultimately upheld the constitutionality of Section 514, the majority and dissent opinions bring some interesting tensions to the foreground.
The International Context
The Berne Convention, which originally went into effect in 1886, is an agreement that governs the copyright relations between its member nations. More specifically, the Berne Convention grants nationals of member nations copyright protection in other member nations for a minimum of the author’s lifespan plus fifty years, unless the copyright term has expired in the nation of origin or the nation in question.
Prior to 1989, the United States was not party to this regime. In fact, before 1891, foreign works were not granted any copyright protection whatsoever in the United States. When the United States finally became party to the Berne Convention, the Berne Convention Implementation Act of 1988 (BCIA) adopted minimal changes to the current copyright regime, including no retroactive protection for foreign works already in the public domain. This level of implementation of the Berne Convention was not in compliance with Article 18 and other member nations were not pleased with the level of commitment from the U.S. These nations demanded reciprocity if the United States expected their compliance, but, in the absence of any meaningful enforcement mechanism, nothing was changed.
However, 1994 brought the creation of the World Trade Organization (“WTO”) and the Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS”), both of which the United States joined. Not only did TRIPS require implementation of the first 21 articles of the Berne Convention, but it also threatened WTO enforcement, which brought the risk of tariffs and cross-sector retaliation to noncompliance. Accordingly, Congress enacted Section 514 of URAA to bring the United States into compliance with Article 18 and the rest of the relevant Berne Convention provisions.
Eldred v. Ashcroft
Before Golan, the major decision addressing Congress’ right to retroactively change the copyright status of copyrighted works was Eldred v. Ashcroft, 537 U.S. 186 (2003). Eldred addressed the constitutionality of the Copyright Term Extension Act of 1988 (“CTEA”), which extended the length of copyright entitlements by an amount of 20 years—for a total of 70 years—after a creator’s death. The petitioners in Eldred, individuals and businesses that relied on once copyrighted works that had subsequently entered the public domain, challenged the validity of CTEA on similar grounds as those in Golan: violation of the Copyright Clause and violation of the First Amendment.
Even though Golan and Eldred cover somewhat different territory (the URAA at play in Golan referred to works already in the public domain while the CTEA in Eldred affected works that were concurrently copyrighted for a fixed term), there are several similarities between the two cases. In both cases, the petitioners objected to retroactive application of the law (to unprotected foreign works in Golan and formally copyrighted works in Eldred). Also, both cases rejected petitioners’ arguments that Congress was limited in its power to expand the scope of copyright beyond the pre-existing boundaries of the public domain.
In fact, for those familiar with Eldred, Golan seems like somewhat of a replay (particularly with Justice Breyer writing a dissenting opinion for both cases). Some commentators have expressed dismay that the Golan decision does not seem to deviate in any meaningful way from Eldred. Even though the petitioners in Golan took pains to distinguish their fact pattern from Eldred, Golan can be viewed as reinforcing the outcome of the Eldred decision, affirming Congress’s discretion to reach into the public domain.
The Opinion (delivered by Justice Ginsburg)
Copyright Clause Claim
The Copyright Clause of the Constitution states that “Congress shall have Power . . . [t]o promote the Progress of Science . . . by securing for limited Times to Authors . . . the exclusive Right to their Writings.” In holding that the Copyright Clause allows Congress to apply copyright protection to works currently in the public domain, the Court pointed to three things: (1) the Court’s previous decision in Eldred on the meaning of ‘limited time’; (2) historical practice, and; (3) the meaning of promoting the “Progress of Science.”
On the first point, the Court recapitulated its argument in Eldred to say that the word limited should not be narrowly construed to mean that, once set, the time is permanently fixed or unalterable. The petitioners’ concern was that removing works from the public domain erodes a fixed, predictable period and allows the term to be reset or renewed at the whim of Congress. Furthermore, as in Eldred, the petitioners were concerned that altering the time could result in Congress granting copyright protection in perpetuity, at its whim. The Court, however (as it did in Eldred), interpreted “limited” to mean “circumscribed in some way” and did not feel the need to speak on hypothetical misbehavior. Distinguishing their case from Eldred, the petitioners claimed that work in the public domain has already enjoyed a limited time; however, the Court found the argument less convincing in Golan where the foreign works had enjoyed the limited time of “zero.”
The Court then proceeded to give examples of previous actions by Congress where works were pulled out of the public domain, notably pointing to the Copyright Act of 1790 and claiming that the First Congress “did not view the public domain as inviolate.” However, one commentator has criticized this section of the opinion on the grounds that this historical evidence is unclear. The Court also cited several private patent and copyright laws that removed works from the public domain to show a historical basis for this action. But, the previous commentator notes that Congress’s repetitive actions do not necessarily imply constitutionality (especially when the contrary impulse can be found).
Finally, the Court responded to the main thrust of the petitioners claim that since Section 514 does not apply to new works, it does not “promote the progress of Science” by incentivizing creation. The Court again referenced a similar argument and rebuttal in Eldred where it was determined that the Clause empowers Congress to create a regime that will serve those ends. Thus, each individual provision does not have to incentivize the creation of new work in order to promote the progress of Science. Furthermore, the Court held that promoting the “Progress of Science” involves dissemination as well as creation, and that compliance with international regulations could conceivably increase dissemination.
Free Speech Claim
Again pointing to Eldred, the Court held that there was no need for heightened review of Section 514 under the First Amendment because of the already existing “speech-protective purposes and safeguards,” provided by Copyright Law (namely the idea/expression dichotomy and the fair use defense). While copyright inevitably restricts expression, the Court held that the absence of restrictions on the ideas behind those expressions was a “built-in First Amendment accommodation.” Moreover, the fair use defense actually lifts the restrictions on copyrighted forms of expression in certain circumstances.
Finally, the court held that, rather than restricting the use of copyrighted works entirely, Section 514 merely adds additional costs to such uses, which are determined by the market. Although the Court does concede that these costs may be prohibitive in some cases (i.e. with orphan works), the Court found this issue not to be exclusive to the collection of foreign works affected by Golan and best suited for resolution by the legislature.
The Dissent (Delivered by Justice Breyer)
Justice Breyer—joined by Justice Alito—focused his dissent on the Copyright Clause and what he sees to be its utilitarian objective. The utilitarian approach is a normative theory used to justify Intellectual Property rights by calling for a system that balances the incentive to create new works with the limited access to information goods that the regime creates. Breyer provided an in-depth history that supports a utilitarian understanding of the Clause, which suggests that it should be an essential component of analyzing Congresses authority to enact a provision. Some commentators have even gone so far as to say that it is the most important component.
Breyer’s other arguments flowed from this basic premise. For instance, he also argued that taking works such as “Peter and the Wolf” out of the public domain would actually hinder their dissemination through the imposition of fees and certain administrative costs involved with finding out whether a work has been “restored” and who its current copyright holder is. Breyer conceded that these costs exist for the use of all works protected by copyright (to a lesser extent), but found these costs to be permissible when incentivizing the creation of new works.
In contrast, Breyer argued that Section 514 does not provide a monetary incentive to produce new works but just makes the industry richer based on existing works. Furthermore, Breyer contended that while a richer industry could theoretically result in the distribution of pre-existing work that would otherwise have not been released, no firm focused on creating future revenue would make such a decision. Even from an international reciprocity standpoint, Breyer interpreted the legislation as a means to create a private, rather than public, benefit, which was not in the spirit of the Clause.
While commentary lamenting the narrowing of the public domain abounds, the Golan decision can also be viewed as another step in a broader trend towards American IP law compliance with international conventions and away from the cultural imperialism of yesteryear (the switch from a “first to invent” to a “first to file” system in US Patent Law is another indication of such a trend). But, some commentators still view the decision as an unconstitutional increase of Congress’s legislative powers for the purpose of compliance with treaty. They maintain that compliance with a treaty is not a constitutional justification for an expansion of Congressional power and that it gives foreign governments power over our legislative process. Along those lines, certain commentators raise the issue of whose interests are being represented with this retroactive inclusion of copyright protection—echoing Justice Breyer’s concern about the private vs. public benefit.
Furthermore, others are worried about how far-reaching the implications of this decision will be, predicting that there will be domestic pressure to restore copyright protection to works that lapsed from failure to comply with notice and renewal requirements. Conversely, perhaps this decision provides an opportunity to critically re-examine various aspects of our current copyright regime. For instance, some hope that this decision will prompt a closer look at how courts can utilize the fair use defense to find a fair balance. Others have suggested that this decision might prompt consideration of something like an “orphan works” defense. Parties could assert this defense to bar statutory damages of infringement if they were unable to locate the copyright holder of a given work after a diligent search. A defense of this sort could mitigate some of Justice Breyer’s complaints about the effects of URAA.
Also, as the majority opinion suggested, perhaps the legislature will now have to pause to address the high fees, administrative costs, and rates of piracy that the current regime might incur—though, judging by the Congressional impetus behind Eldred and Golan, this might be an overly optimistic outlook.