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Congress May Restore Copyright Protection to Public Domain Foreign Works Despite First Amendment Concerns

Thomas C. Carey

Thomas C. Carey | Partner, Business Chair View more articles

Thomas is a member of our Business Practice Group

Once a book, song or artwork falls into the public domain, it becomes forever available for use by members of the public, who need not worry about the author’s intellectual property rights. Such is the bargain between artists and the public that is enshrined in the U.S. constitution and in the laws of innumerable other countries.

Or so we all thought. This is a story about works that fell into the public domain but, due to a global treaty, suddenly regained copyright protection. Not everyone was pleased.

On June 21, 2010, the U.S. Court of Appeals for the Tenth Circuit upheld the constitutionality of Section 514 of the Uruguay Round Agreements Act (URAA). That provision restores copyrights for certain foreign works, including those that had entered the public domain because of failure to adhere to formalities that have since been repealed. The opinion in Golan v. Holder overturned a district court decision about which we reported earlier.

The URAA[1] had restored copyright protection for thousands of works, including Virginia Wolf’s “A Room of One’s Own”, J.R.R. Tolkien’s collected works, hundreds of Picasso paintings, and numerous compositions of Serge Prokofiev. They had lost (or never obtained) copyright protection in the United States because they failed to bear a copyright notice upon their publication, or the artists failed to register their works with the U.S. copyright office, or both.

The musician Lawrence Golan and other artists and businesses filed their complaintin 2001, challenging the constitutionality of both the Sonny Bono Copyright Term Extension Act and the URAA. Golan invoked the copyright clause of the Constitution, which calls for copyright protection “for limited times.” In deciding Eldred v. Ashcroft in 2003, the United States Supreme Court dismissed that argument as to the Sonny Bono Copyright Term Extension Act.

Ever optimistic, the plaintiffs in Golan drew hope from this final sentence of Eldred v. Aschroft: “When, as in this case, Congress has not altered the traditional contours of copyright protection, further First Amendment scrutiny is unnecessary.”

Golan argued that Section 514 of the URAA did alter the traditional contours of copyright protection because it sought to grant copyright protection to vast swaths of material that had already entered the public domain. Golan further contended that Congress lacked the power to do so, presenting an issue not discussed in Eldred v. Ashcroft.

The district court in Colorado initially accepted the government’s constitutionality argument. On appeal in 2007, however, the Tenth Circuit instructed the district court to dig deeper into Golan’s First Amendment concerns.

The district court thereupon ruled, in 2009, that Section 514 of the URAA impermissibly interfered with free speech “because the government could have complied with [the] Berne [Convention] while providing significantly stronger protection for the First Amendment interests of …the Plaintiffs….”

The government appealed. It advanced three arguments in favor of the URAA:

  1. The importance of compliance with international treaties and multilateral agreements,
  2. The need to obtain reciprocal legal protection for American copyright holders’ interests abroad, and
  3. The need to remedy past inequities toward foreign authors who lost or never obtained copyrights in the United States.

Regarding the second point, the government gave this example: Russian diplomats, when asked what protection U.S. copyright holders could expect in Russia as a result of the Berne Convention, were told to expect the same treatment as was accorded Russian copyright holders in the United States. If Prokofiev was not protected in the United States, then U.S.-sourced software might not be protected in Russia.

The government also pointed out that, if the URAA were held to be unconstitutional, the United States might be the first defendant in a WTO proceeding involving non-compliance with international norms, and that such an embarrassment could harm its standing as a world leader in the protection of intellectual property.

On June 21, 2010, the Tenth Circuit reversed the district court’s decision and upheld the URAA. The court first determined what standard to use in evaluating the First Amendment issue.

Because the legislation did not appear to disfavor expression having any particular content, it could be analyzed under the Supreme Court’s “intermediate scrutiny” standard. Although this is a notch more relaxed than “strict scrutiny,” it hardly guaranteed a result in favor of the government, since the district court had used the same standard in holding the URAA to be unconstitutional.

To pass muster under that standard, the law must be directed at an important or substantial governmental interest unrelated to the suppression of free expression. In addition, “[g]overnment may not regulate expression in such a manner that a substantial portion of the burden on speech does not serve to advance its goals.”

The court was persuaded that the government had a substantial interest in protecting American copyright holders’ interests abroad. It cited evidence that billions of dollars were being lost annually because several foreign countries were not providing copyright protection for American works.

These countries were willing to provide protection only on a reciprocal basis, so the government would have to restore foreign copyrights in order to protect American interests abroad. The court concluded that Section 514 would help the government protect American works “in a direct and effective way.”

The Tenth Circuit cited a 2000 Supreme Court opinion which said that “the nuances of the foreign policy of the United States are much more the province of the Executive Branch and Congress than of [the courts].” For that reason, the panel inGolan gave “special deference” to Congress and the executive in shaping the URAA.

The parties hotly debated whether the URAA was in fact narrowly tailored to limit its effect on free speech. The court said that it was irrelevant that Congress could have provided greater protection than it did for those who had published works that had been in the public domain but were removed from it under the URAA. That the UK, for example, had provided greater protection for such publishers was deemed irrelevant because the government was not obliged to find the upper limit of what the treaty requires.

Instead, the court said that Congress had to find symmetry between the rights gained under the treaty for U.S. authors and artists and those granted to their foreign counterparts. The court was persuaded that this had occurred.

Though Golan argued there was no reason to believe that the precise scope of protection accorded U.S. publishers would affect the behavior of foreign nations, the court said that Congress “heard testimony that the United States’ chosen method and scope of copyright restoration…set an example…, and other countries might mirror the United States’ approach.” That was good enough for the court.

In reversing the surprising district court opinion, Golan makes its mark by showing that even copyright legislation adopted to satisfy treaty obligations can be subjected to First Amendment scrutiny, but that such scrutiny does not always result in a defeat for the government. As a result, many foreign authors and composers have had their rights restored, and the U.S. has been spared an awkward appearance before the WTO.

[1] Congress enacted the URAA in 1994 to comply with the Berne Convention, an international treaty which the United States joined in 1989; and with the Uruguay Round of the General Agreement on Tariffs and Trade, which included the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPs). TRIPs, unlike the Berne Convention, calls for dispute resolution before the World Trade Organization.

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