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It isn’t often that a federal court of appeals throws a grave constitutional shadow over a substantive provision of the Copyright Act. In fact, until the U.S. Court of Appeals for the Tenth Circuit’s recent decision in Golan v. Gonzales, 1 it had never happened before. 2 On Sept. 4, however, that court reversed a decision from the U.S. District Court for the District of Colorado and remanded for a determination of whether �104A of the Copyright Act unduly abridged the plaintiffs’ First Amendment rights. Plaintiffs were a disparate group consisting inter alia of “orchestra conductors, educators, performers, and publishers” of works of classical music which had fallen into the public domain and subsequently were restored to copyright by �104A. Separate First Amendment scrutiny of the statute was therefore required, held the court, notwithstanding the U.S. Supreme Court’s recent holding in Eldred v. Ashcroft 3 that the fair use and idea-expression doctrines of copyright law generally obviate the need for such constitutional analysis. Interpreting an arguably ambiguous passage from the Eldred decision, the Tenth Circuit in Golan found that the provisions of �104A “alter the traditional contours of copyright protection” by restoring copyright protection to some works previously in the public domain. Accordingly, the First Amendment impact of the statute had to be reviewed independently, and the provisions, if content neutral, could only survive if they were found to be “narrowly tailored to serve a significant governmental interest.” SECTION 104A On Dec. 8, 1994, President Bill Clinton signed the Uruguay Round Agreements Act, P.L. 103-465, (the act, URAA) which was the implementing legislation for the international trade agreement known as GATT (General Agreement on Tariffs and Trade). There were several copyright provisions in the act, but by far the most significant was one added as 17 U.S.C. �104A, which automatically restored copyright in thousands, if not millions, of foreign works which had previously been in the public domain in the United States. The statute defines a “restored work” as an original work of authorship that is not in the public domain in its source country due to expiration of term, but is in the public domain in the United States due to: (a) noncompliance with U.S. formalities, including failure to renew, lack of proper notice, or noncompliance with manufacturing requirements; or (b) lack of subject matter protection in the case of sound recordings fixed before Feb. 15, 1972; or (c) lack of national eligibility when first published; and which has at least one author or rights holder who was, at the time of creation, a national or domiciliary of a country which is a member of the Berne Convention (Berne) or the World Trade Organization (WTO). If the work is published, it must have been first published in a Berne or WTO country and not published in the United States during the 30 days following publication in such country. The classical works that formed the basis of the Golan case all fit this description, having been published in foreign countries at the relevant times, having fallen into the public domain in the United States for lack of notice or renewal, and having remained in copyright in their home countries. Thus, these works were restored by operation of law, and the Golan plaintiffs asserted that they were deprived of the right to continue making unfettered use of the works in the United States. NO INHERENT LIMITATION The plaintiffs raised two constitutional challenges. First, they asserted that the statute violates “inherent limitations on Congressional power” by bringing works out of the public domain. The district court rejected this argument and the Tenth Circuit agreed. The statute merely restores copyright in the lapsed foreign works to the full term they would have enjoyed under U.S. law, and therefore creates no danger of “possible perpetual copyright,” which would violate the “limited times” provision of the Constitutional copyright clause. In this respect the court agreed with an earlier decision of the U.S. Court of Appeals for the District of Columbia Circuit, Luck’s Music Library v. Gonzales, 4 which had rejected the argument that �104A was beyond Congress’ power under the Copyright Clause. 5 Beyond its rejection of the “limited times” argument, the Tenth Circuit found that there is no other inherent restriction on the ability of Congress to resurrect works that have fallen into the public domain. Plaintiffs cited Graham v. John Deere Co., 6 a Supreme Court patent case, for its broad language that “Congress may not authorize the issuance of patents whose effects are to remove existent knowledge from the public domain, or to restrict free access to materials that are already available.” The court found Graham inapposite, however, noting that the identical Graham-based argument had been raised and rejected by the D.C. Circuit in Luck’s Music Library v. Gonzales. 7 Quoting Luck’s Music, the Golan court noted that there are meaningful public policy distinctions between patents and copyrights. The court further supported its conclusion by citing the Supreme Court’s remarks in Eldred distinguishing patents and copyrights, and the text of Graham itself, which explains in a footnote that it deals only with the patent portion of the Constitutional IP clause because copyrights were “not relevant” to the disposition of the case. Accordingly, the Tenth Circuit “decline[d] to read Graham as standing for the proposition that, in the context of copyright, the public domain is a threshold that Congress cannot traverse in both directions.” 8 FIRST AMENDMENT CONCERNS While agreeing with the District Court that there is nothing in the Constitution to preclude Congress from restoring copyright in public domain works, the Tenth Circuit reversed and remanded with respect to the application of the First Amendment. The district court had found no First Amendment interest on the part of the plaintiffs, but the Tenth Circuit disagreed:
The public in general and these plaintiffs in particular have a First Amendment interest in using works in the public domain. For example, at the moment that Dmitri Shostakovich’s Symphony No. 5 entered the public domain, Plaintiff John Blackburn had the right to create a derivative work for a high school band to perform at an event commemorating 9/11. The principle of copyright law that shields works in the public domain from copyright ensured Mr. Blackburn’s right to create the piece, and the First Amendment protected his right to perform it. [The URAA] has interfered with Mr. Blackburn’s right by making the cost of performance or creation of new derivative works based on Shostakovich’s Symphony No. 5 prohibitive. 9
More significantly, perhaps, the Tenth Circuit revisited the issue of whether separate First Amendment scrutiny is required to adequately protect the First Amendment interests of the public in works protected by copyright. In Eldred, Justice Ruth Bader Ginsburg’s majority opinion explicitly stated that the fair use doctrine and the idea-expression distinction were “copyright’s built-in free speech safeguards” which were “generally adequate” to address free speech concerns. Accordingly, the Supreme Court in Eldred did not require a separate First Amendment analysis to uphold the Constitutionality of the term-extension statute there at issue. The opinion noted, however, that such a separate analysis might be needed if a statute were found to have “altered the traditional contours of copyright protection.” 10 In the context of Eldred it would appear that “altering the traditional contours” of copyright refers to legislation which eliminates or impairs the ability of fair use and the idea-expression distinction to safeguard free speech concerns. The Tenth Circuit read Eldred more broadly, however, and concluded that restoring copyright in public domain works is a per se alteration of the “traditional contours” of copyright notwithstanding the full application of fair use and idea-expression to the newly restored works. “The principle that works in the public domain remain there is a traditional contour of copyright protection,” held the court, flatly rejecting the argument that “traditional contours” refers merely to “copyright’s built-in free speech accommodations.” The court’s reasoning in support of this broad reading started with Webster’s dictionary and ended with the historical observation that all previous copyright statutes had followed the same “copyright sequence” of creation, copyright, and public domain. Under the URAA, however, “the copyright sequence no longer necessarily ends with the public domain, indeed it may begin there. Thus, by copyrighting works in the public domain, the URAA has altered the ordinary copyright sequence.” And since the court had already defined “copyright sequence” as a “traditional contour” it followed syllogistically that the statute fell outside the Eldred court’s holding that no separate First Amendment scrutiny is needed. The court acknowledged that Congress has previously brought works out of the public domain, such as by statutes passed in 1919 and 1941 that gave foreign authors additional time to comply with formalities. These wartime statutes, however, did not establish a “tradition of removing works from the public domain.” Indeed, the court continued, “our examination of the history of American copyright law reveals that removal was the exception rather than the rule. Thus, [the URAA] deviates from the time-honored tradition of allowing works in the public domain to stay there.” 11 The Tenth Circuit went on to discuss why it believes fair use and the idea-expression distinction are inadequate to address the First Amendment concerns raised by the URAA. Chief among its reasons is that these doctrines were “not designed to combat the threat” posed by the URAA, e.g., that the statute makes works more expensive and “leaves scholars with less access than they had before.” But these “threats” identified by the court are not unique to URAA and would seemingly be posed with equal force by the term-extension statute that was upheld, without separate First Amendment scrutiny, in Eldred. Finally, the Tenth Circuit observed that there were no additional free-speech safeguards provided in the URAA to supplement fair use and the idea-expression doctrine, further distinguishing the statute from the term extension provision blessed by the Supreme Court in Eldred. 12 Although the URAA does allow certain users to continue exploiting restored works, the court concluded without reasoning or citation to authority that this did not provide “breathing space” comparable to that created by the additional speech-protective features of the Eldred statute. The court remanded the matter for further proceedings, directing the district court to conduct a separate analysis of the effect the URAA has on the plaintiffs’ First Amendment rights. If the statute is found to be a content-neutral regulation of speech, as is almost certainly the case, it can only be sustained if it is “narrowly tailored to serve a significant governmental interest.” In its closing footnote, the Tenth Circuit weighs in on this question as well, citing the laws of various other countries that “suggest that the United States could comply with Berne through less restrictive means.” CONCLUSION The Tenth Circuit has stepped forcefully into uncharted territory with the Golan decision. Its expansive reading of the Eldred “traditional contours” language could lead to a split with the D.C. Circuit which, in Luck’s Music, upheld the constitutionality of �104A under the Copyright Clause without even discussing First Amendment considerations. It is difficult to discern whether that was due to (i) the Luck’s Music plaintiffs’ failure to make a separate First Amendment argument, or (ii) the D.C. Circuit’s reliance, sub silentio, on Eldred’s holding that copyright law’s idea/expression and fair use doctrines obviate First Amendment concerns. In any event, the Tenth Circuit has now reopened the debate over a fundamental Constitutional issue that many felt had been resolved. Golan also opens the door to future plaintiffs to seek out judicial recognition of as-yet unidentified “traditional contours” of copyright protection that might be “altered” by amendments to the Copyright Act. The result, if left undisturbed, could be to make future copyright legislation more difficult and uncertain, subject to judicial second-guessing, and could thus ultimately take decisions about copyright policy out of the hands of Congress. Professor Lawrence Lessig, who argued the appeal for plaintiffs in Golan, noted in a recent op-ed article 13 that Congress, not the courts, should determine copyright policy: “The complex balance of interests within any copyright statute are best struck by Congress.” Discussing the pending litigation between Viacom and YouTube, he wrote, “[W]hile I remain a skeptic about deferring to Congress on constitutional matters, this case is a powerful lesson about the costs of judicial policy making in an area as complex as copyright.” Golan will certainly do nothing to discourage the “judicial policy making” that Professor Lessig so rightly condemns. Robert W. Clarida is a partner at Cowan, Liebowitz & Latman and is the coauthor of “Recent Developments in Copyright,” a review of decisions delivered at the annual meeting of the Copyright Society of the U.S.A. Robert Jay Bernstein practices law in The Law Office of Robert J. Bernstein and is a past president of the Copyright Society of the U.S.A. (c) 2007 Cowan, Liebowitz & Latman and Robert Jay Bernstein. ENDNOTES: 1. No. 05-1259 (10th Cir. Sept. 4, 2007)(hereafter “opinion”) 2. We leave aside the U.S. Court of Appeals for the Fifth Circuit’s decision in Chavez v. Arte Publico Press, 204 F.3d 601 (5th Cir. 2000) which concerned applying the purely constitutional issue of Eleventh Amendment sovereign immunity in the copyright context, not a provision affecting the fundamental eligibility of certain works for copyright protection. 3. 537 U.S. 186 (2003). 4. 407 F.3d 1262 (D.C. Cir. 2005). 5. U.S. Const. Art. I, �8, cl. 8. 6. 383 U.S. 1 (1966). 7. 407 F.3d 1262 (D.C. Cir. 2005). 8. Opinion at 15. 9. Opinion at 30-31. 10. Eldred, 537 U.S. at 221. 11. Opinion at 28. 12. The statute in Eldred provided, inter alia, that libraries and archives would have greater freedom to reproduce and distribute copies of certain works during the 20-year extension period, under �108(h). 13. “Make Way for Copyright Chaos,” New York Times, March 18, 2007

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