Royalty Fee? Wasn’t Peter and the Wolf Free?

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 . . . “

 Who Sued?

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.[1] 


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.

[1] “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.

Sixth Circuit Limits Extent of Copyrightability of Uncopyrightable Forms To Selection and Organization

In Ross, Brovins & Oehmke, P.C. d/b/a LawMode v. Lexis Nexis Group, 2006 Fed App. 0358P (6th Cir. 2006), the Sixth Circuit Court of Appeals affirmed the lower court’s dismissal of copyright claims LawMode made against its former business partner, Lexis Nexis Group. However, the Sixth Circuit reversed the lower court’s dismissal of LawMode’s breach of contract claims and remanded for further proceedings.

LawMode created a package of 576 individualMichiganlegal form templates, which were marketed and sold under contract by Lexis Nexis for five years. After terminating the contract, Lexis Nexis offered its own package of 406 individualMichiganlegal form templates. LawMode filed a seven-count complaint, all but two of which it voluntarily dismissed.  Remaining for the consideration of the court was a copyright claim and a breach of contract claim.

The lower court dismissed the copyright claim, holding that, while LawMode’s selection of forms was copyrightable, the selection was not infringed, and that organization of the forms, look of the screen, and interrelationships of the form variables were not copyrightable.

The Sixth Circuit affirmed, holding that neither of the two copyrightable elements of LawMode’s product – the selection and categorization – were copied by Lexis Nexis. LawMode’s selection of 576 from a universe of over 700 forms is copyrightable even if the underlying forms are not themselves copyrightable. However, the court held that because Lexis Nexis only included 61% (350 of 576) of the same forms as LawMode’s product, this was not substantial verbatim copying and thus not copying under the strict standard set by the Supreme Court in Fiest Publications v. Rural Telephone Service Company. 499 U.S. 340 (indicating that facts can be used in a competing work so long as the competing work does not have the same selection).

Similarly, the court held that the form categories used in the two products were not similar enough to constitute infringement on Lexis Nexis’s part.  Where they are similar, the court noted, was in headings and classifications that had previously existed on the state ofMichiganwebsite organizing its versions of the forms. Lexis Nexis did not copy any of the non-obvious and non-public use categories that LawMode had created.

Next, the court held that the appearance of dialog boxes used to input information on the forms were not sufficiently original to be copyrightable. The court noted that the reason both product’s dialog boxes look similar was because both relied on the same default setting in the commercial form-creating software use by both companies. Choosing the default setting was too trivial to be original, according to the court.

Likewise, the court held that the interrelation between the variables in the forms was not protectable by copyright.  The court held that these relationships were non-creative because the relationships were compelled by the express terms of the underlying state-created forms. For example, permitting the form user to choose either the district or circuit court conveys no information beyond the pre-existing requirement that the form be filed in only one court.  Since the interrelationships conveyed no information beyond that on the face of the form, the interrelationships themselves are not eligible for copyright.

While the Fourth Circuit affirmed the dismissal of LawMode’s copyright claims, it reversed the lower court’s dismissal of the contract claims under rule 12(c).  The Fourth Circuit found that, assuming LawModes’s factual allegations were true (as rule 12(c) requires), LawMode had stated a claim for breach of contract.  Therefore, the court remanded the case for further consideration of the breach of contract claim.

Digital Millennium Copyright Act: Lexmark Reversed on Digital Millennium Copyright Act (DMCA) Since Unprotected Program Is Not Subject to DMCA Protection and Since Encryption Protected Program Was Not Copyrightable

Lexmark International, Inc. (hereinafter Lexmark) is a manufacturer of printers and printer cartridges.  In order to prevent unauthorized re-filling of the printer cartridges, Lexmark has been attempting to enforce its rights using a combination of actions, including one well publicized action based upon the DMCA.  Lexmark brought suit against Static Control Components, Inc. (hereinafter SCC) in the Eastern District of Kentucky and was initially granted a preliminary injunction preventing SCC from selling the chip.  Among the grounds supporting the preliminary injunction, the District Court found that Lexmark was likely to succeed on its claim that SCC’s chip was in violation of 17 USC 1201(a)(2) of the DMCA.  On appeal to the Court of Appeals for the Sixth Circuit, the District Court was reversed on the DMCA claim. Continue reading