By Rob Lower and Michael Stein
In Golan v. Holder (Decided 18 January 2012) the Supreme Court upheld the constitutionality of amendments to US copyright law made in 1994. The practical effect of the holding is that the authors of foreign works may receive copyright protection for works in the public domain.
In 1994, Congress amended 17 U.S.C. §104A to bring the US into compliance with the Berne Convention for the Protection of Literary and Artistic Works, an international treaty joined by the US in 1989. Under Berne, member countries must provide all other member countries with the same level of copyright protection available to their own citizens.
While there is little opposition to providing foreign authors with US copyright protection, the decision to provide such protection for works in the public domain has been the subject of much criticism.
Affected Foreign Works
There are three circumstances under which US authors could have received copyright protection in the US, while foreign authors could not. The Court stated this could have occurred if the “United States did not protect works from the country of origin at the time of publication; the United States did not protect sound recordings fixed before 1972; or the author had failed to comply with U.S. statutory formalities . . . “
This lawsuit was brought by a group of orchestra conductors, musicians, publishers, and others (Petitioners) who may now be forced to pay royalties before performing foreign works such as Prokofiev’s Peter and the Wolf.
Petitioners argued that removal of works from the public domain would unduly interfere with Petitioners’ First Amendment free speech rights, and that removal of the works from the public domain would exceed the authority given to Congress in the Copyright Clause of the Constitution. The Court dismissed both of these arguments, citing the Court’s own precedent and past grants of retroactive copyright protection by Congress.
Supreme Court Precedent — Eldred v. Ashcroft
The Court leaned heavily on its own 2003 Ashcroft decision in dismissing Petitioners’ arguments. In Ashcroft, the Court upheld the constitutionality of a 20 year extension of copyright protection for works that had never reached the public domain. While Ashcroft clearly supports extending the time remaining before works enter the public domain, the Court had to reach beyond Ashcroft to find support the extension of copyright protection to work already in the public domain.
Petitioner’s First Amendment Free Speech Rights
Petitioners maintained that the First Amendment’s freedom of expression guarantee would be offended by retroactive grants of copyright protection. Specifically, Petitioners argued that Ashcroft did not support interference with Petitioners’ “vested rights” in works in the public domain.
The Court acknowledged that “some restriction on expression is the inherent and intended effect of every grant of copyright,” before concluding that “built-in First Amendment accommodations” such as the “idea/expression dichotomy” and “fair use” defense adequately protected Petitioners’ free speech rights. Golan, p23–24.
The Copyright Clause
Petitioners also argued that Congress had exceeded both the authority delegated to them in the Copyright Clause, and the scope of the copyright term extension approved in Ashcroft.
The Court cited the Copyright Act of 1790 as a past grant of “protection to many works previously in the public domain.” Prior to the 1790 Act, copyright regulation was a matter of state law, and because three states provided no copyright protection in 1790, the 1790 Act allowed authors in those states to remove their works from the public domain.
The Copyright Clause empowers Congress “[t]o promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.” Art. I, §8, cl. 8.
Petitioners argued that because the works being removed from the public domain have, by definition, already been created, an unanticipated windfall for foreign authors cannot promote the progress of science. Petitioners also argued that removal of works from the public domain would likely result, effectively slowing the progress of science.
Although the creation of existing works cannot be inspired by a post-creation windfall, Petitioners’ focus on this narrow class of works seems too constricted to address the panoply of ways the progress of science can be promoted.
For example, providing a foreign author copyright protection for his or her past writings could incentivize investment in the dissemination of works presently unavailable in the US. By the same token, retroactive copyright protection could incentivize dissemination of previously created works in new languages and formats (e.g., Kindle). This conclusion is fortified by the United States’ stature as the world’s largest economy, likely able to incentivize the creation of new works along with further dissemination of past works in more consumable formats.
Finally, the progress of science can also be advanced by providing US authors with reciprocal intellectual property rights in Berne countries that have previously disregarded US intellectual property rights, citing the United States’ noncompliance with Berne as a reason.
Providing foreign authors with the level of copyright protection that has been available to domestic authors seems to be a rational means of “promot[ing] the Progress of Science“ here in the US.
 “Thailand and Russia balked at protecting U. S. works, copyrighted here but in those countries’ public domains, until the United States reciprocated with respect to their authors’ works.” Golan, p6.