The justices, in a 6-2 decision by Justice Ruth Bader Ginsburg, rejected arguments made by a group of musicians, conductors, publishers and others, who enjoyed free access to certain foreign works before Congress acted in 1994. The group had argued that once those works entered the public domain, they remained there forever.
“Neither the Copyright and Patent Clause nor the First Amendment, we hold, makes the public domain, in any and all cases, a territory that works may never exit,” wrote Ginsburg.
The high court case stems from congressional action to implement the Berne Convention for the Protection of Literary and Artistic Works, the principal agreement governing international copyright relations. The United States joined the convention in 1989 but did not comply fully with its terms. For example, although the convention instructed member countries to protect foreign works under copyright in the country of origin, the United States gave no protection to any work in the public domain in the United States.
Over time, other countries complained about the United States’ approach and some balked at protecting U.S. works that held copyrights but were in their countries’ public domains unless the United States reciprocated. In 1994, Congress perfected implementation of the Berne Convention by giving works that held copyright protection in their country of origin, the same term of protection available to U.S. works. Congress acted through Section 514 of the Uruguay Round Agreements Act.
In her opinion in Golan v. Holder, Ginsburg relied heavily on the Court’s 2003 decision in Eldred v. Ashcroft to counter the challengers’ claims that removing works from the public domain violated language in the copyright clause confining copyrights to a “limited time.” In Eldred, the Court upheld Congress’ authority to extend the terms of existing copyrights by 20 years.
“Ruling that Congress acted within constitutional bounds, we declined to infer from the text of the Copyright clause ‘the command that a time prescription, once set, becomes forever fixed or inalterable,’ ” she wrote. Ginsburg also noted that Congress acted a number of times in the past to restore copyright protection to works in the public domain.
“Given the authority we hold Congress has, we will not second-guess the political choice Congress made between leaving the public domain untouched and embracing Berne unstintingly,” added Ginsburg.
The Court also rejected arguments that the challengers had “vested rights” in works that had entered the public domain and so heightened First Amendment scrutiny was required. And it noted that Congress, in the statute, included provisions to cushion temporarily the impact for those who had relied on the public domain status of foreign works.
“Prokofiev’s Peter and the Wolf could once be performed free of charge; after section 514 the right to perform it must be obtained in the marketplace,” wrote Ginsburg. “This is the same marketplace, of course, that exists for the music of Prokofiev’s U.S. contemporaries: works of Copland and Bernstein, for example, that enjoy copyright protection, but nevertheless appear regularly in the programs of U.S. concertgoers.”
Justice Stephen Breyer, joined by Justice Samuel Alito Jr., dissented, saying the statute — contrary to the purpose of the copyright clause — fails to encourage production of new works and “bestows monetary rewards only on owners of old works — works that have already been created and already are in the American public domain. The law also, he added, inhibits dissemination of foreign works published abroad after 1923, “of which there are many millions.” He argued that the U.S. government could have negotiated exceptions to the 1994 agreement, but did not. “This is a dilemma of the government’s own making,” he wrote.
Anthony Falzone of Stanford Law School’s Center for Internet and Society, who represented the challengers in the case, said, “The real problem is this decision suggests Congress is not required to pay close attention to the interest of the public when it passes copyright laws. It was our position that if Congress is going to give away public speech rights, the First Amendment should demand some clear public benefit. There was none here.”
But Eric Schwartz of Mitchell Silberberg & Knupp, who, as an attorney in the U.S. Copyright Office, was involved in the Berne negotiations and helped to draft the 1994 law, said the law covers only a small class of foreign works.
“I think the U.S. government did a very good job in its brief of faithfully telling the history of the deliberations that went into this law, and the government interests that explain why this law was necessary and good policy for compliance with our international treaties,” said Schwartz who worked on four amicus briefs in the case. “Ginsburg in her opinion faithfully sets out that history and rationale and why the law is constitutional.”
Solicitor General Donald Verrilli Jr. argued on behalf of the government in his first appearance before the Court as solicitor general of the United States.
Marcia Coyle can be contacted at email@example.com.