During the past three decades, Congress has been busy tinkering with copyright law. For instance, it abolished the formalities once required for copyright protection. It greatly lengthened the term of copyright protection. It gave extra protections to digital works. It even restored copyright protection to some works that fell into the public domain.

Many of these changes are now under a legal cloud, thanks in part to the 10th Circuit’s Sept. 4 decision in Golan v. Gonzales.

In that case a three-judge panel found that the First Amendment sets limits on what changes Congress can make to copyright law. And the panel directed the trial court to determine if a 1994 amendment to the copyright law ran afoul of the First Amendment. The statute restores copyright protection to foreign works in the public domain.

“This is a unanimous circuit court ruling that casts a shadow on the Copyright Act,” says Robert Clarida, partner at Cowan, Liebowitz & Latman. “This has never happened before.”

Various aspects of modern copyright law may now be at risk.

“The courts had read [the Supreme Court's ruling in] Eldred v. Ashcroft as precluding any constitutional challenge to any copyright enactment, and Golan is saying that’s not what the Supreme Court said,” says Jessica Litman, who teaches copyright law at the University of Michigan. “If that’s right, there are other provisions of copyright law that could be challenged.”

Applying Eldred
The Golan plaintiffs challenged several statutory changes in copyright law, including Section 514 of the Uruguay Round Agreements Act, which Congress enacted in 1994 to comply with agreements made during the Uruguay round of GATT negotiations. Section 514 revised U.S. copyright law to comply with America’s obligations under the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs) and the Berne Convention.

Section 514 grants copyright protection to certain foreign works that have fallen into the public domain in the U.S. but are still protected under the copyright law of their country of origin. The Golan plaintiffs argued that removing works from the public domain violated their First Amendment rights because this restricted them from using works that were once freely available.

The Colorado district court dismissed this claim on a summary judgment motion in August 2005. The 10th Circuit reversed, citing the Supreme Court’s 2003 ruling in Eldred.

In Eldred the High Court upheld another change Congress had made to copyright law: increasing the term of protection from author’s-life-plus-50-years to author’s-life-plus-70-years. Plaintiffs argued this change violated their First Amendment rights by postponing for two decades the date they could freely use works currently under copyright. The Supreme Court, however, ruled that because the statutory change did not alter the “traditional contours of copyright protection,” the usual First Amendment scrutiny did not apply.

By contrast the 10th Circuit held in Golan that Section 514 did alter those traditional contours of copyright protection by violating “the bedrock principle of copyright law that works in the public domain remain there.”

The panel then remanded the case to the district court to determine whether the statute was “content-based” or “content-neutral.” If the statute imposes legal restrictions based on content, it must be judged under the toughest First Amendment test. If it is content-neutral, it must be judged under the intermediate First Amendment test–whether the law is “narrowly tailored to serve a significant governmental interest.”

Jurisdictional Confusion
Even the intermediate test could be tough for the statute to meet, according to some experts. “The 10th Circuit states in footnote five that other countries have complied with Berne in less restrictive ways,” Clarida says. “The court seems to be saying that by restoring every [applicable] work, Section 514 was overbroad.”

If the district court agrees, many works of late 19th and early 20th Century foreign authors would be thrown back into the public domain, including several hundred paintings by Picasso, the works of J.R.R. Tolkien and “Romeo and Juliet” by Serge Prokofiev.

“[P]robably millions of works would be thrown out of copyright,” Clarida says.

The result would be legal confusion because it is unclear if other jurisdictions would follow the 10th Circuit’s lead. The affected works “would all be in the public domain in the 10th Circuit [Colorado, Kansas, New Mexico, Oklahoma, Utah and Wyoming], but they would still be under copyright in the rest of country,” Clarida says. “So I don’t know that anyone would be hurrying to distribute them nationwide or online.”

Striking down Section 514 would have international effects, too. It would put the U.S. in violation of its obligations under TRIPs and Berne–at least until Congress enacts a new, narrower statute.

Such a violation, however, may be fairly insignificant compared with America’s existing violation of these treaties: The U.S. does not adequately protect public performance rights, the WTO ruled several years ago.

“We already don’t follow the rules, and everyone knows it,” says Rebecca Tushnet, a copyright expert at Georgetown Law School. She adds that if Section 514 is thrown out, “it will be another talking point … [but] it is hard to imagine this relatively arcane matter becoming an important point [internationally].”

DMCA at Risk
Although it may not have major international repercussions, the 10th Circuit’s ruling in Golan may precipitate challenges to other parts of America’s copyright law, such as the DMCA. Specifically the DMCA contains provisions that forbid anyone from distributing anything that circumvents technological protections for copyrighted works. This prohibition applies even when it prevents fair-use copying of copyrighted works.

Moreover, while copyright traditionally protects only the expression of an idea, the DMCA’s anti-circumvention provisions seem to go further by allowing copyright holders to lock up not just their expression but the underlying ideas in their works, according to Litman.

“The traditional contours of copyright protect the idea/expression distinction and fair use, and the DMCA doesn’t,” Litman says. By exceeding these historic limits of copyright, the anti-circumvention provisions may raise First Amendment concerns, pursuant to Golan.

The 1976 revision of the Copyright Act also might be called into question. Before 1976 an author had to opt into copyright protection by taking affirmative action. After the act came into effect, an author had to take affirmative action to remove a work from copyright protection. This is a “radical change in copyright protection,” according to Lawrence Lessig, a copyright expert at Stanford Law School who represents Golan plaintiffs and also represented the plaintiff in Eldred.

It is unclear how many aspects of current copyright law are now under a legal cloud. “The traditional contours of copyright, as the framers understood it, has almost nothing to do with copyright today,” Tushnet says. So if Golan were to be applied expansively, she says, “[E]verything is up for grabs.”