05-1259 in the united states court of appeals...
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05-1259
IN THE UNITED STATES COURT OF APPEALS FOR THE TENTH CIRCUIT
LAWRENCE GOLAN, RICHARD KAPP, S.A. PUBLISHING COL, INC., d/b/a ESS.A.Y. RECORDINGS, SYMPHONY OF THE CANYONS, RON
HALL d/b/a FESTIVAL FILMS, AND JOHN McDONOUGH, d/b/a TIMELESS VIDEO ALTERNATIVES INTERNATIONAL,
Plaintiffs-Appellants, v.
ALBERTO GONZALES, in his official capacity as Attorney General of the United States, and MARYBETH PETERS, Register of
Copyrights, Copyright Office of the United States, Defendant-Appellees.
On Appeal from the United States District Court
for the District of Colorado
Honorable Lewis T. Babcock, Chief Judge Case No. 1:01-cv-01854 LTB-BNB
APPELLANTS’ OPENING BRIEF
Lawrence Lessig Hugh Q. Gottschalk Center for Internet and Society Carolyn J. Fairless Stanford Law School Wheeler Trig Kennedy LLP 559 Nathan Abbott Way 1801 California Street, Suite 3600 Stanford, CA 94305 Denver, CO 80202 Telephone: 650-723-5674 Telephone: 303-244-1800
STATEMENT REGARDING ORAL ARGUMENT
Plaintiffs request oral argument.
CORPORATE DISCLOSURE STATEMENT
Pursuant to Federal Rule of Appellate Procedure 26.1, Plaintiff-Appellants
(hereinafter “Plaintiffs”) hereby certify that they have no parent corporation, nor
do any publicly held corporations own 10% or more of their stock.
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TABLE OF CONTENTS
Page STATEMENT REGARDING ORAL ARGUMENT ................................................i
CORPORATE DISCLOSURE STATEMENT ........................................................ ii
TABLE OF AUTHORITIES ....................................................................................vi
STATEMENT OF RELATED CASES....................................................................xi
I. JURISDICTIONAL STATEMENT......................................................................1
II. STATEMENT OF THE ISSUES PRESENTED FOR REVIEW........................2
III. STATEMENT OF THE CASE...........................................................................2
IV. STATEMENT OF THE FACTS ........................................................................6
A. Background Of URAA.................................................................................6
B. Background Of CTEA................................................................................11
C. Plaintiffs’ Harms From The URAA ...........................................................12
V. SUMMARY OF THE ARGUMENT ................................................................20
A. The URAA Must Be Scrutinized Under The First Amendment................20
B. Congress Does Not Have The Power Under The Progress Clause To Restore Copyrights To Works In The Public Domain........................21
C. District Court’s Dismissal Of Plaintiffs’ CTEA Claim Is In Error............22
VI. ARGUMENT....................................................................................................22
A. Standard Of Review ...................................................................................22
B. Plaintiffs Are Entitled To First Amendment Review Of The URAA........23
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1. The District Court Wrongly Held Copyright Law Immune From First Amendment Review ......................................................................23
2. The URAA Deviates From The “Traditional Contours Of Coypright Protection” And Thus Should Be Subject To Ordinary First Amendment Review ................................................................................26
a. Congress has never granted a copyright to works that have passed into the public domain ..........................................................28
i. The government has made no showing that the Copyright Act of 1790 removed works from the public domain of The United States.........................................................................28
ii. The government can make no showing that works were in the public domain throughout the United States in 1790, because the status of the state common law of copyright was fundamentally uncertain ..............................................................34
iii. The Wartime Statutes did not remove works from the public domain .........................................................................................40
iv. Even if this Court believes the wartime statutes removed works from the public domain, they would not constitute a “traditional contour of copyright protection” exempting them, or the URAA, from First Amendment review...................44
b. The 1832 restoration of patents is irrelevant to Plaintiffs’ First Amendment argument ......................................................................45
C. The Progress Clause Does Not Give Congress The Power to Restore Copyrights To Works That Have Passed Into The Public Domain ............46
1. The “Limited Times” Clause Has Been Interpreted By The Supreme Court To Restrict The Power Of Congress To Remove Works From The Public Domain ...........................................................47
2. There Is No Longstanding Congressional Practice That Can Justify Granting A Copyright To Works In The Public Domain.......................51
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a. Neither the 1790 Act, the 1919 Act, nor the 1941 Act establish a precedent for restoring the copyrights of works in the public domain ..............................................................................................52
b. The 1832 Patent Act did not restore the Inventions from the Public Domain ..................................................................................52
D. Plaintiffs Must Be Afforded The Opportunity To Demonstrate That The Existing Terms Of Copyright Have Become So Long As To Be Effectively Perpetual...................................................................................54
VII. CONCLUSION ................................................................................................58
VIII. STATEMENT REGARDING ORAL ARGUMENT.....................................58
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TABLE OF AUTHORITIES
CASES Page Allen v. Culp, 166 U.S. 501, 504 (1897)............................................................ 53-54 Donaldson v. Becket (17 Parl. Hist. Eng. 953; 4 Burr. 2408, 98 Eng. Rep. 257).............................................................................................36
Eldred v. Ashcroft, 537 U.S. 186, 123 S. Ct. 769 (2003) ................................ passim Eldred v. Reno, 239 F.3d at 375 (D.C. Cir. 2001) .............................................23, 25 Elliott Indus. Ltd. v. BP America Prod. Co., 407 F.3d 1091 (10th Cir. 2005)..............................................................................................22, 56 Feist Publ’ns v. Rural Tele. Serv. Co., 499 U.S. 340 (1991)...................................47
Golan v. Ashcroft, 310 F.Supp.2d 1215 (D. Colo. 2004)........................2, 4, 54, 56
Golan v. Gonzales, 2005 WL 914754 (D. Colo. April 20, 2005).................... passim
Graham v. John Deere Co., 383 U.S. 1 (1966) ................................21, 46-50, 52-54
Hartman v. Kickapoo Tribe Gaming Comm’n, 319 F.3d 1230 (10th Cir. 2003)....................................................................................................22 Hotchkiss v. Greenwood, 52 U.S. (11 How.) 248 (1850)........................................47
Kahle v. Ashcroft, 2004 WL 2663157 (N.D. Cal. 2004) .........................................24
Los Angeles News Service v. Tullo, 973 F.2d 791, (9th Cir. 1992) ..........................25
Millar v. Taylor, 4 Burr. 2303, 98 Eng. Rep. 201 (1769)........................................36
Nihon Keizai Shimbun, Inc. v. Comline Bus. Data. Inc., 166 F.3d 65 (2d Cir. 1999)......................................................................................................25
Suntrust Bank v. Houghton Mifflin Co., 268 F.3d 1257 (11th Cir. 2001) ................25
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Turner Broad. Sys. v. FCC, 520 U.S. 180 (1997)........................................26, 27, 46
Wheaton v. Peters, 33 U.S. (8 Pet.) 591 (1834).......................................................35
White v. Samsung, 989 F.2d 1512 (9th Cir. 1993)....................................................13
STATUTES
U.S. Const., Amend. I ................................................................................................2 U.S. Constitution, Art. I, § 8, cl. 8 ................................................................... passim 15 U.S.C. § 1057(h) .................................................................................................41 17 U.S.C. § 16 (1909) ..............................................................................................41 17 U.S.C. § 104A(a)...................................................................................................8 17 U.S.C. § 104A(a)(1)(B) ........................................................................................8 17 U.S.C. § 104A(c)...................................................................................................8 17 U.S.C. § 104A(d)(2)..............................................................................................9 17 U.S.C. § 104A(d)(2)(A)(ii) ...................................................................................8 17 U.S.C. § 104A(d)(2)(B) ........................................................................................8 17 U.S.C. § 104A(d)(2)(B)(ii) ...................................................................................8 17 U.S.C. § 104A(d)(3)(A) ................................................................................ 10-11 17 U.S.C. § 104A(d)(3)(B) ......................................................................................11 17 U.S.C. § 104A(g) ..................................................................................................8 17 U.S.C. § 104A(h)(2)..............................................................................................8 17 U.S.C. § 104A(h)(3)..............................................................................................8 17 U.S.C. § 104A(h)(4)..............................................................................................8 17 U.S.C. § 104A(h)(6).......................................................................................... 7-8 17 U.S.C. § 109(a) ...................................................................................................10 17 U.S.C. § 115..........................................................................................................9 17 U.S.C. § 301........................................................................................................11 17 U.S.C. § 302........................................................................................................11
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17 U.S.C. § 303........................................................................................................11 17 U.S.C. § 304........................................................................................................11 17 U.S.C. § 401(a) .....................................................................................................7 17 U.S.C. § 405........................................................................................................40 17 U.S.C. § 407........................................................................................................41 17 U.S.C. § 601(a) (1976)........................................................................................41 28 U.S.C. § 1291........................................................................................................1 28 U.S.C. § 1331........................................................................................................1 28 U.S.C. § 1361........................................................................................................1 28 U.S.C. § 1391(e) ...................................................................................................1 28 U.S.C. § 2201........................................................................................................1 35 U.S.C. § 112 ¶ 1 ..................................................................................................49 35 U.S.C. § 251..................................................................................................41, 53 74 Stat. c69-71 (1960)..............................................................................................43 58 Stat. 1129-31 (1944) ...........................................................................................43 Copyright Act of May 31, 1790, ch. 15, § 1, 1 Stat. 124................................. passim Copyright Act of Feb. 3, 1831, ch. 16, 4 Stat. 436 ............................................11, 27 Copyright Act of Mar. 4, 1909, ch. 320, Pub. L. 60-349, 35 Stat. 1080-81.......................................................................................... passim Copyright Act of Dec. 8, 1919, Pub. L. 66-102, 41 Stat. 368-69........................................................................................28, 42, 52 Copyright Act of Sept. 25, 1941, Pub. L. 77-258, 55 Stat. 732 ....................................................................................... 28, 42-43, 52 Copyright Term Extension Act of 1998 Pub. L. 105-298, Title I, 112 Stat. 2827 (1998) ......................................... passim NAFTA Implementation Act, Pub. L. No. 103-182 107 Stat. 2057 (1993)......................................................................................7, 44 Patent Act of July 3, 1832, ch. 162, 4 Stat. 559........................................... 45, 52-53
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Uruguay Round Agreements Act, section 514, Pub. L. No. 103-465, 17 U.S.C. § 104A (Dec. 8, 1994) ............................ passim Pub. L. No. 87-668, 76 Stat. 555 (1962)..................................................................27 Pub. L. No. 89-142, 79 Stat. 581 (1965)..................................................................27 Pub. L. No. 90-141, 81 Stat. 464 (1967)..................................................................27 Pub. L. No. 90-416, 82 Stat. 397 (1968)..................................................................27 Pub. L. No. 91-147, 83 Stat. 360 (1969)..................................................................27 Pub. L. No. 91-555, 84 Stat. 1441 (1970)................................................................27 Pub. L. No. 92-170, 85 Stat. 490 (1971)..................................................................27 Pub. L. No. 92-566, 86 Stat. 1181 (1972)................................................................27 Pub. L. No. 93-573, Title I, § 104, 88 Stat. 1873 (1974).........................................27 Pub. L. No. 94-553, § 302(a), 90 Stat. 2572 (1976) ................................................12 Pub. L. No. 94-553, § 304, 90 Stat. 2573 (1976).....................................................27 Pub. L. No. 105-298, § 102, 112 Stat. 2827 (1998)...........................................11, 27 10th Cir. R. 28.2..........................................................................................................1 Fed. R. App. P. 3........................................................................................................1 Fed. R. App. P. 28(f)..................................................................................................7 Fed. R. Civ. P. 12(b)(6)............................................................................................22 Fed. R. Civ. P. 56(f) ...................................................................................................4 Republic of Belarus’s Legal Act On Copyright and Contiguous Rights, Belarus edition of the Law No. 194-3, Art. 22, ¶1 .............................................31
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OTHER
2 W. Blackstone, Commentaries on the Laws of England 406-07 n.h (Robert Bell ed. 1771) ........................................................................................36
1 William W. Crosskey, Politics and the Constitution in the History of the United States 477 (1953) ....................................................................................34
James Gilreath, Federal Copyright Records 1790-1800 xxxi (1987) .....................32
Paul Goldstein, International Copyright 61-66 (2001) ...........................................30
Marshall Leaffer, International Copyright from an American Perspective, 43 Ark. L. Rev. 373, 402 (1990).........................................................................41 William J. Maher, Copyright Term, Retrospective Extension, and the Copyright Law of 1790 in Historical Context, 49 Journal of the Copyright Society of the U.S.A. 1021 (2002) ........................................ 31-33, 38 1 M. Nimmer & D. Nimmer, Nimmer on Copyright §1.05[A][2] ..........................48
2 M. Nimmer & D. Nimmer, Nimmer on Copyright § 7.01-04 ..............................42 2 M. Nimmer & D. Nimmer, Nimmer on Copyright § 7.15-17 ..............................42 2 M. Nimmer & D. Nimmer, Nimmer on Copyright §7.23[E] ...............................41 3 M. Nimmer & D. Nimmer, Nimmer on Copyright § 9A.07[A] ..................... 43-44
L. Ray Patterson, Copyright in Historical Perspective 183 (1968).........................34
William Rawle, A View of the Constitution of the United States of America 102 (1825)...........................................................................................................35 Christopher Sprigman, Reform(aliz)ing Copyright, 57 Stanford L. Rev. 485, 521 & n. 135 (2004)....................................................................................12
3 Story’s Commentaries on the Constitution of the United States 48, § 1147 (1833)......................................................................................... 34-35,
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Edward C. Walterscheid, Inherent or Created Rights: Early Views on the Intellectual Property Clause, 19 Hamline L. Rev. 81, 87 (1995) ......................34
Noah Webster, Acknowledgments, American Magazine 130 (Feb. 1788) .............35 The Federalist No. 43 at 267 (Henry Cabot Lodge ed., 1888)........................... 36-37 http://ncpi.gov.by/eng/legal/V19600370.htm (last visited July 11, 2005) ..............31
http://www.ascap.com/restored_works/restore_index.cfm (last visited July 11, 2005)..................................................................................10 http://www.copyright.gov/gatt.html (last visited July 11, 2005)...............................9 http://www.supremecourtus.gov/oral_arguments/argument_transcripts/01-618.pdf (last visited July 15, 2005)..................................................................................56 http://eldred.cc/legal/01-618.Eldred3.mer.pdf (last visited July 15, 2005) .............56 STATEMENT OF RELATED CASES
There are no prior or related cases.
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I. JURISDICTIONAL STATEMENT
This is an action for declaratory relief pursuant to 28 U.S.C. § 2201, seeking
the invalidation of two federal statutes — section 514 of the Uruguay Round
Agreements Act (“URAA”) and the Copyright Term Extension Act of 1998
(“CTEA”).
The District Court had subject matter jurisdiction pursuant to 28 U.S.C.
§§ 1331, 1361 and 2201, because this declaratory judgment action challenges the
constitutionality of federal statutes. Personal jurisdiction over Defendants Gonzales
and Peters (hereinafter “the government”) in their respective official capacities is
appropriate. Venue is properly laid in the District Court under 28 U.S.C. § 1391(e).
This Court of Appeals has appellate jurisdiction pursuant to 28 U.S.C.
§ 1291. Plaintiffs timely filed their appeal pursuant to Federal Rule of Appellate
Procedure 3 on May 27, 2005.1 Aplt. App. at 2356. The Court’s March 15, 2004
Order dismissed Plaintiffs’ CTEA claim, and the Court’s April 20, 2005 Order
granted final summary judgment on all remaining claims.2 Final judgment was
1 Plaintiffs’ original notice of appeal was timely amended to clarify all orders from which Plaintiffs appeal. See Aplt. App. at 2359 [Plaintiffs’ Corrected Notice of Appeal, filed July 8, 2005]. 2 Pursuant to 10th Cir. R. 28.2, the District Court’s April 20, 2005 and March 15, 2004 Orders are appended to this Brief as Exhibits A and B, respectively.
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entered on May 12, 2005. Aplt. App. at 2353. Accordingly, this appeal is from the
orders and final judgment that dispose of all parties’ claims.
II. STATEMENT OF THE ISSUES PRESENTED FOR REVIEW
(1) Whether the District Court erred in holding that section 514 of the
URAA is free from First Amendment scrutiny, U.S. Const., Amend. I. Exh. A at
27-28; Aplt. App. at 2348; see also Golan v. Gonzales, 2005 WL 914754 at *17
(D. Colo. April 20, 2005).
(2) Whether the District Court erred in holding that Congress is permitted
under Article I, section 8, clause 8 of the Constitution to enact legislation that
removes work(s) from the public domain. Exh. A at 4-24; Aplt. App. At 2324-
2344; see also Golan, 2005 WL 914754 at *2-14.
(3) Whether the District Court erred when it dismissed Count IV of
Plaintiffs’ First Amended Complaint which alleged that the term of copyright
provided under the CTEA is an “effectively perpetual” term in violation of the
“limited Times” requirement of the Article I, section 8, clause 8 of the
Constitution. Exh. B at 4; Aplt. App. at 320; Golan v. Ashcroft, 310 F.Supp.2d
1215, 1218 (D. Colo. 2004).
III. STATEMENT OF THE CASE
Article I, section 8, clause 8 of the US Constitution grants Congress the
power to “promote the Progress of Science and useful Arts, by securing for limited
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Times to Authors and Inventors the exclusive Right to their respective Writings
and Discoveries” (the “Progress Clause”). This case is about the limits to
Congress’s power to regulate speech pursuant to this clause.
Plaintiffs are creators who depend upon the public domain for their work
and livelihood. By “restoring” the copyrights to works that had long passed into
the public domain, Congress has burdened Plaintiffs’ creative expression. By
extending the copyright term by 20 years, Congress has ignored the “limited
Times” requirement of the Progress Clause. Plaintiffs ask this Court to test
Congress’s actions against the limits articulated in the Constitution and in Supreme
Court precedent.
Plaintiffs’ First Amended Complaint raised four counts: three challenging
the constitutionality of the URAA and one challenging the constitutionality of the
CTEA. Aplt. App. at 18. Count I alleged that section 514 of the URAA, by
removing works from the public domain, exceeds Congress’s power under the
Progress Clause as that clause has been interpreted by the Supreme Court. Id. at 52.
Count II alleged that section 514 unconstitutionally restricts free speech. Id. at 53-
54. Count III alleged that section 514’s retroactive restoration of copyrights to
works in the public domain violates the Fifth Amendment’s due process clause. Id.
at 54. Count IV alleged that the 20-year extension of copyright under the CTEA
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violated the “limited Times” requirement of the Progress Clause because the
copyright term provided for is “effectively or virtually perpetual.” Id. at 57.
By order entered March 15, 2004, the District Court dismissed Plaintiffs’
CTEA claim. See Exhibit B at 1; Aplt. App. at 317; see also Golan, 310 F. Supp. at
1218. Thereafter, Plaintiffs filed a Second Amended Complaint adding Defendant
Peters, the Register of Copyrights, to the case. Aplt. App. at 426. The Second
Amended Complaint realleged Counts I, II, and III challenging the URAA based
on the Progress Clause, First Amendment and due process clause, respectively. Id.
at 426-460.
In the first month of discovery, the government moved for summary
judgment against all of the URAA counts and repeated the arguments raised in its
earlier renewed motion to dismiss. Id. at 327-329. After obtaining time for
discovery pursuant to Federal Rule of Civil Procedure 56(f), Plaintiffs opposed the
government’s motion for summary judgment, id. at 476, and submitted 12
affidavits from fact and expert witnesses. These affidavits (1) provided evidence
that the URAA burdens speech, (2) outlined less speech restrictive methods to
achieve the same ends that the URAA seeks, and (3) established important
historical facts showing that the Framers and First Congress never “removed”
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works from the public domain of the United States. Id. at 585-1815.3 After
completing discovery, Plaintiffs also filed a cross motion for summary judgment
on Count I, the Progress Clause claim. Id. at 1986. The District Court did not hear
oral argument on these dispositive motions.
By order entered April 20, 2005, the District Court granted the government’s
summary judgment motion on all counts and rejected Plaintiffs’ cross motion on
the Progress Clause claim. See Exhibit A; Aplt. App. at 2321; see also 2005 WL
914754. The District Court entered final judgment on May 12, 2005. Aplt. App. at
2353. Plaintiffs timely appealed the District Court’s judgment. Id. at 2356, 2359.
By this appeal, Plaintiffs seek reversal of the District Court’s judgment which
erroneously held that section 514 of the URAA is free of First Amendment
scrutiny and does not exceed Congress’s power under the Progress Clause.4
Plaintiffs also seek reversal of the District Court’s improper dismissal of Plaintiffs’
claim that the CTEA violates the “limited Times” requirement of the Constitution,
as alleged in Count IV of Plaintiffs’ First Amended Complaint.
3 The twelve declarations submitted by Plaintiffs are the Declarations of Lionel Bently, John Blackburn, Lawrence Golan, Ron Hall, Richard Kapp, Randy Luck, Ray McAlister, John McDonough, Richard Prelinger, Mark Rose, Kortney Stirland and Hal Varian. See id. For clarity of reference in this brief, all citations to these declarations are to Appellants’ Appendix (Aplt. App. at [page]), and also include a parenthetical cite to the specific declaration in question (e.g., “XXX Decl., ¶#).
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IV. STATEMENT OF THE FACTS
Plaintiffs are individuals who have devoted their lives to the pursuit and
promotion of creative arts in this country. In their artistic pursuits, they depend on
the public domain as a vital source of materials to teach, perform and disseminate
to the public. Without free access to materials in the public domain — and the
corresponding assurance that those materials will remain in the public domain —
their ability to pursue their creative interests and promote learning in this country is
severely hampered.
Plaintiffs challenge the constitutionality of section 514 of the URAA and the
CTEA’s 20-year copyright term extension. This fact summary describes briefly the
workings of the URAA and the CTEA,5 and details some of the harms suffered by
Plaintiffs and the public as a result of these enactments.
A. Background Of URAA
Section 514 of the URAA purports to restore copyrights in works that long
ago passed into the public domain for failure to comply with United States
copyright law. To affix copyright notice to a work was an essential requirement of
copyright eligibility under the 1909 Copyright Act, and continued to be a
4 Plaintiffs do not challenge the District Court’s summary judgment that section 514 comports with Fifth Amendment due process.
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requirement (subject to limited exceptions) under the 1976 Copyright Act. In 1989,
after the United States joined the Berne Convention, Congress eliminated this
notice requirement — but only prospectively for future works. See 17 U.S.C.
§ 401(a). On December 8, 1993, in order to comply with the North American Free
Trade Agreement, Congress restored copyrights to motion pictures created in
Mexico or Canada from January 1, 1978 to March 1, 1989 that had entered the
public domain in the U.S. for failure to affix the proper copyright notice. See
NAFTA Implementation Act, Pub. L. No. 103-182. Exactly one year later,
Congress granted many more copyrights to public domain works from foreign
countries under the auspices of section 514 of the URAA, Pub. L. No. 103-465, 17
U.S.C. § 104A(h)(6) (Dec. 8, 1994).
Section 104A(h)(6) of the Copyright Act now grants copyright automatically
to any “restored work,” meaning any work created by a foreign national and first
published outside the U.S., which passed into the public domain in the U.S.
because either (1) the authors failed to comply with the required formalities of U.S.
copyright law, (2) the works were sound recordings fixed before February 15,
1972, which were not eligible for copyright in the U.S., or (3) the authors were
nationals of and domiciled in foreign countries that had not secured a copyright
5 Pursuant to Fed. R. App. P. 28(f), relevant portions of the text of the URAA and CTEA are attached to this brief as Exhibits C and D, respectively.
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agreement with the United States. See 17 U.S.C. § 104A(h)(6). Under section 514,
any work first published before January 1, 1996 in a Berne Union or WTO member
nation,6 which still enjoys copyright protection in its source country, automatically
receives a “restored” U.S. copyright as of January 1, 1996. Id. § 104A(a), (h)(2),
(h)(3), (h)(6). A “restored” copyright confers on the owner the same exclusive
rights as an original copyright, for the remainder of the term the work would
otherwise have had, if it never entered the public domain. Id. § 104A(a)(1)(B). The
restored copyright owner is under no obligation to license the restored work.7
Under the URAA, from January 1, 1996 to January 1, 1998, owners of
“restored” copyrights had the option to notify “reliance parties” of their intent to
enforce the copyright in two ways: either by serving a notice of intent to enforce
(“NIE”) directly on a reliance party or by filing a NIE with the Copyright Office.
Id. § 104A(c), (h)(4), (d)(2)(B). Under either method, the notice starts the clock
running against the reliance party so that he or she may legally use, but not copy,
the work for only a 12-month period from the date of notice. Id.
§§ 104A(d)(2)(A)(ii), (d)(2)(B)(ii). After the 12-month period, reliance parties are
6 Today there are over 170 member countries to the Berne Convention or WTO. Moreover, section 514 purports to give the President power to extend copyright protection to public domain works of any other countries that provide substantially the same protection for restored works to U.S. nationals. Id. § 104A(g).
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liable for copyright infringement if they engage in unauthorized use of the restored
work. Id. § 104A(d)(2).
The effect of this unprecedented “copyright restoration” is the wholesale
removal of vast numbers of existing works — including thousands of books,
paintings, drawings, music, films, photographs, and other artistic works - from the
public domain. In fact, restored copyright owners wasted no time in vigorously
pursuing their newfound rights under the URAA. The Copyright Office, which is
tasked with publishing all NIEs in the Federal Register, reports receiving NIEs for
nearly 50,000 restored works in response to URAA. See
http://www.copyright.gov/gatt.html (last visited July 11, 2005). Over a 15-month
period between January 1996 and March 1997, a single public domain music
distributor received notices claiming restored copyright in over 115 separate works
from a single rights holder. See Aplt. App. at 746, 937-1018 [Luck Decl., ¶ 8 &
Exhibit E (letters from G. Schirmer to Luck’s Music Library)]. And the American
Society of Composers and Publishers (a.k.a. “ASCAP”) reports a “partial list” of
works by some of the most important composers (such as Stravinsky, Prokofiev,
and Shostakovich) which are now subject to copyright restrictions because of the
URAA. Its “partial list” reflects over 1,500 works which have been plucked from
7 There is one exception, the compulsory licensing provision of the Copyright Act, 17 U.S.C. § 115, for making phonorecords of nondramatic musical works.
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the public domain and now fortuitously “enhance ASCAP's position as the leading
source of performing rights for concert music.” See
http://www.ascap.com/restored_works/restore_index.cfm (ASCAP website
reflecting 1,509 restored works) (last visited July 11, 2005); see also Aplt. App. at
725-743 [Kapp Decl., Exh. E (ASCAP catalog from May 1998 reflecting
approximately 1300 restored works)]. No doubt the NIEs filed with the Copyright
Office and served on individuals, and the lengthy list of restored works on
ASCAP’s website, represent just a sliver of all the creative works affected by
section 514.
In addition to these burdens, section 514(b) of the URAA forbids reliance
parties from exercising their first sale rights after the brief 12-month grace period
expires. Reliance parties are prohibited from selling their own copies of “restored”
works, even though they were legally acquired long before restoration. See 17
U.S.C. § 109(a). This means that after the 12-month period, reliance parties cannot
sell or rent the copies of works they legitimately owned “for purposes of direct or
indirect commercial advantage.” Id.
Finally, reliance parties who legally created derivative works based on
public domain materials that are now restored by section 514 may also be liable for
copyright infringement if they continue to exploit their derivative works, unless
they pay compensation to the owner of the restored copyright. 17 U.S.C.
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§ 104A(d)(3)(A). If the parties cannot agree on such compensation, the restored
copyright holder can sue the reliance party in district court. Id. § 104A(d)(3)(B).
B. Background Of CTEA
The CTEA increased the term of copyright generally by 20 years, for both
subsisting and future copyrights. Works published before 1978 now have a total
term of protection of 95 years. Works created by natural authors in 1978 or later
now have a term equal to the life of the author plus 70 years. Works created in
1978 or later that are works-made-for-hire (or anonymous or pseudonymous
works), now have a term of 95 years from the year of publication or 120 years
from the year of creation, which ever comes first. Pub. L. No. 105-298, Title I, 112
Stat. 2827 (amending 17 U.S.C. §§ 301-304). The CTEA keeps any work from
ever entering the public domain due to the expiry of copyright until the year 2019
at the earliest.
Historically, the term of copyright in the U.S. was much shorter. The
original term of copyright was 14 years, with opportunity to renew for additional
14 years (if the author survived the first time). Act of May 31, 1790, ch. 15, § 1,
1 Stat. 124. In 1831, Congress extended the original term to 28 years, Act of Feb.
3, 1831, ch. 16, § 1, 4 Stat. 436, and in 1909 it extended the renewal term to 28
years, Act of Mar. 4, 1909, ch. 320, §§ 23-24, 35 Stat. 1080-81. Because the vast
majority of copyrighted works were never actually renewed, however, the average
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and effective copyright term until 1976 was never longer than 32.2 years. Aplt.
App. at 29 [First Amended Complaint, ¶ 29]; see also Christopher Sprigman,
Reform(aliz)ing Copyright, 57 Stanford L. Rev. 485, 521 & n. 135 (2004).
In 1976, Congress eliminated the renewal requirement for works created
after January 1, 1978, such that corporate works received protection for 75 years
from publication or 100 years from creation (whichever expired first), while works
by natural authors were protected for 50 years after the author’s death. Pub. L. 94-
553, § 302(a), 90 Stat. 2572. In 1989, Congress eliminated the renewal requirement
for any subsisting copyrights vested before 1978. Thus, all subsisting works were
guaranteed a term of 75 years, whether or not the authors had any continuing
interest in protection. With the enactment of the CTEA in 1998, the average
copyright term for all works expanded immediately from an estimated 32.2 years
to the maximum possible term – either 95/120 years for corporate works or life of
the author plus 70 years for all other works. This new term is staggeringly long
when compared to the “14 + 14” year term enacted by the First Congress, and also
when considered against the 200-year history of copyright protection in the United
States.
C. Plaintiffs’ Harms From The URAA
Plaintiffs are orchestra conductors, educators, performers, film archivists,
and motion picture distributors. Plaintiffs chose their vocations years ago and
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developed their respective businesses based in part upon the design of the United
States copyright system that allowed them freely to use works in the public
domain. Over the years, Plaintiffs purchased, performed, or made available foreign
works that they now must forego using in their artistic and business pursuits
because of the retroactive grant of copyright under the URAA.
The importance of the public domain in promoting creativity is indisputable.
See, e.g., White v. Samsung, 989 F.2d 1512, 1513-14 (9th Cir. 1993). Just a few
examples from this case illustrate this fact. Plaintiffs Lawrence Golan, Richard
Kapp, and Symphony of the Canyons all perform music. Aplt. App. at 614, 707,
1804 [Golan Decl., ¶¶ 3-5, Kapp Decl., ¶ 2, Stirland Decl., ¶ 6]. Their artistic
expression is facilitated by the availability of music in the public domain. Indeed,
the vast majority of works they perform are public domain works. Id. at 618-19,
709, 1804 [Golan Decl., ¶ 17-18, Kapp Decl., ¶ 8, Stirland Decl., ¶ 7]. Without
access to the public domain works which have been “restored” through the URAA,
their range of performances is significantly restricted.
For instance, Plaintiff Lawrence Golan is a professional symphony, opera,
and ballet conductor as well as a music educator. He directs the orchestral studies
program and is a professor of conducting at the University of Denver, Lamont
School of Music. Id. at 614 [Golan Decl., ¶ 3]. As a music director he is obligated
to teach works by important classical and contemporary foreign composers
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including composers from the 20th century like Shostakovich, Prokofiev,
Stravinsky, Glière, Khachaturian and Kabelevsky. Id. at 615-19 [Golan Decl., ¶ 8,
11, 12, 18]. Golan’s students depend on these public domain works for a well-
rounded education in orchestral studies, including studying and learning the
industry’s “standard repertoire” for auditions, competitions, and public
performances. Id. at 617-20 [Golan Decl., ¶ 11, 12, 18, 19]. Unfortunately, because
of copyright restoration in many foreign works, there are many early 20th-Century
works that are part of a musician’s “standard repertoire that, depending on the
orchestra, [Golan] can no longer consider using” because they are no longer freely
available in the public domain. Id. at 617 [Golan Decl., ¶ 12].
Likewise, Plaintiff Kapp, an accomplished pianist and internationally
renowned conductor, testified that he has “depended on the availability of musical
works in the public domain” for performances and recordings for over thirty-five
years. Id. at 709 [Kapp Decl., ¶ 8]. He explained that copyrighted works impose
significant performance fees and much higher sheet music rental costs than public
domain works. Id. at 711 [Kapp Decl., ¶ 14]. Thus, given budget constraints, the
vast majority of the works his orchestras perform must come from the public
domain. Id. The removal of these works from the public domain greatly limits the
pool of music from which his orchestra can select for performance. Id.; see also id.
at 713 [Kapp Decl., ¶ 18] (describing works by Prokofiev, Shostakovich, Vainberg
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and Schnittke that Kapp may no longer effectively consider for inclusion in
programming for the Philharmonia).
Similarly, Plaintiffs Ron Hall, and John McDonough own self-run film
distribution businesses in the Midwest. Id. at 629, 1506 [Hall Decl., ¶ 2,
McDonough Decl., ¶¶ 2-4]. They disseminate public domain films (like La Jetée, a
1962 French film, Night Train to Munich, and Hitchock’s Number Seventeen) for
commercial sale and sometimes rental to colleges, universities, and the public
generally. Id. at 629-31, 1506, 1508-09 [Hall Decl., ¶¶ 2-4, 9; McDonough Decl.,
¶¶ 4, 8, 9]. Third party music distributors Luck’s Music Library and Edwin F.
Kalmus have built similar businesses for distributing orchestral sheet music in the
public domain to orchestras, symphonies, schools and universities of all sizes. Id.
at 745, 1163 [Luck Decl., ¶ 3, McAlister Decl., ¶ 2-3]. Access to public domain
works by distributors like Hall, McDonough, Luck’s and Kalmus ensures the
widest possible dissemination of these cultural materials to the public.
Unfortunately, as a result of the URAA, Hall, McDonough, Luck’s and Kalmus
have all had to eliminate significant portions of their holdings and are no longer
able to distribute many important cultural works. See e.g., id. at 630-31, 1506-09,
46-47, 1163-64 [Hall Decl., ¶¶ 8-12, Exh. D; McDonough Decl., ¶¶ 5, 8, 9, Exh. B;
Luck Decl., ¶¶ 8-9; McAlister Decl., ¶¶ 6-7].
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Also, the public domain enables anyone to create new and derivative works,
based on works in the public domain. Third party John Blackburn, for example,
used what he thought was a public domain symphony by Shostakovich as the basis
for creating a new composition for a high school band to perform at a community
event commemorating 9/11. Aplt. App. at 602 [Blackburn Decl., ¶¶ 3-5]. He
specifically chose the underlying Shostakovich work because he thought it was not
encumbered by copyright. Id. Later, to his dismay, he learned that a copyright in
the underlying work was “restored” and now he is unable to use his own derivative
work. Id. at 603-04 [Blackburn Decl., ¶¶ 8-12].
The URAA’s substantial harms to speech interests mirror the importance of
the public domain in powering creativity. In their opposition to summary
judgment, Plaintiffs and third parties detailed examples of many significant
impacts on their speech resulting from the enactment of the URAA. See Aplt. App.
at 490-94, 588-1774, 1803-1815 [Plaintiffs’ Opposition to Defendant John
Ashcroft’s Motion for Summary Judgment, filed Nov. 4, 2004, at 15-19; Appendix
to Plaintiffs’ Opposition to Defendant John Ashcroft’s Motion for Summary
Judgment, filed Nov. 4, 2004 (Declarations of Blackburn, Golan, Hall, Kapp,
Luck, McAlister, McDonough, Prelinger, Stirland, and Varian) (describing in
detail the many examples of how speech is chilled by the removal of works form
the public domain)]. For example, section 514 restricts the artistic expression of
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Plaintiffs Golan, Kapp and Symphony of the Canyons by saddling their public
performances of musical works with licensing and royalty costs that were
completely absent when the works were in the public domain. Id. at 617, 710, 717,
1805 [Golan Decl., ¶ 13, Kapp Decl., ¶ 12, 30, Stirland Decl., ¶ 9]. Golan
discovered that the cost for a single performance of Shostakovich’s Symphony No.
1 by the Lamont Symphony Orchestra went from a one-time cost of approximately
$130 to purchase sheet music for the entire symphony and unlimited performances
to $495 to merely rent the same music for a single performance. Id. at 620 [Golan
Decl., ¶ 20, Ex. D.] Even orchestras that had already owned the sheet music of
some restored works before section 514 went into effect are stopped from
performing these restored works because the performance license fee creates a
burdensome expense smaller orchestras simply cannot absorb. E.g., id. at 717
[Kapp Decl., ¶ 30]. For example, Golan also conducts the Portland Ballet
Orchestra, a group of 42 freelance professional members in Portland, Maine. Id. at
617 [Golan Decl., ¶ 13]. In the past, the Ballet was able to borrow sheet music to
perform Prokofiev’s Peter and the Wolf. Id. But today, since the copyright for this
work has been restored, the Ballet is required to obtain a license for dramatic
performance. As Golan explained the “increased cost caused by the restored
copyright has severely reduced if not completely eliminated the Portland Ballet’s
ability to perform [Peter and the Wolf].” Id.
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Moreover, sheet music publishers like third parties Luck’s Music and
Kalmus cannot disseminate copies of affected works that they had been selling for
many years when they were in the public domain. Id. at 746-47, 1163-64 [Luck
Decl., ¶ 8-9, McAlister Decl., ¶¶ 4-7]. For example, Luck’s Music’s offering of
works by Prokofiev is reduced by 75% (from 50 works down to 12 works) as a
result of the restored copyright to Prokofiev works. Id. at 747 [Luck Decl., ¶ 9].
Kalmus used to offer at least 16 works by Kabalevsky, but today it offers only one.
Id. at 1164 [McAlister Decl., ¶ 7.]
Restored copyright has imposed an additional cost on Plaintiff S.A.
Publishing Co. Inc.’s (dba ESS.A.Y. Recordings) completed collection of
Shostakovich’s String Quartets by removing at least nine of the works from the
public domain and subjecting them to payment of mechanical royalties. Id. at 714-
17 [Kapp Decl., ¶ 22-27 (describing receiving notice from the Harry Fox Agency
seeking mechanical royalties, of between $1.25 and $1.50 per CD)]. Because of
these new royalty requirements, distributing the music CD recordings is rendered
economically unfeasible. Id. at 717 [Kapp Decl., ¶ 27].
Similarly, for Plaintiffs Ron Hall and John McDonough, hundreds of
formerly public domain films that they owned outright can no longer be
distributed. Hall lists over 100 films affected by the law. Id. at 630-31 [Hall Decl. ¶
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9, Exh. D.] McDonough identifies approximately 50 films he can no longer
distribute. Id. at 1506-08 [McDonough Decl., ¶ 5, 8, Exh. B.]
Finally, the URAA has enhanced the proliferation of abusive “policing”
tactics by restored copyright owners. For example, Plaintiff Kapp’s orchestra
established a special concert series for children aged 4 to 8 years called “Cushion
Concerts” (because the children were invited to sit on cushions close to the
musicians during the performances). Aplt. App. at 717 [Kapp Decl., ¶ 29]. At the
concerts, Kapp’s orchestra performed Prokofiev’s famous work Peter and the Wolf
and other popular works from the public domain. Id. After the URAA went into
effect, a representative of G. Schirmer contacted Kapp and asserted restored
copyright in hundreds of works, including Peter and the Wolf and improperly
demanded that Kapp rent the sheet music even though the orchestra had already
legally purchased a copy nearly 15 years earlier. Aplt. App. at 717-18 [Kapp Decl.,
¶ 30]. Since Kapp knew his rights, the G. Schirmer representative eventually
backed down regarding this rental demand, but the experience has chilled Kapp’s
desire to perform Peter and the Wolf and other restored works because he will be
hassled to justify his use to the new copyright holder. Aplt. App. at 718 [Kapp
Decl., ¶ 31]. Ultimately, the orchestra decided to stop performing Peter and the
Wolf. Id..
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Given these and other significant and debilitating impacts of the URAA and
CTEA on Plaintiffs, they brought this action seeking constitutional review of both
enactments. As detailed below, the District Court erroneously rejected Plaintiffs
claims and Plaintiffs now seek reversal of the District Court’s judgment.
V. SUMMARY OF THE ARGUMENT
A. The URAA Must Be Scrutinized Under The First Amendment
Copyright law is a regulation of speech. Eldred v. Ashcroft, 537 U.S. 186
(2003), announced the standard under which that regulation is measured. Under
Eldred, copyright legislation that alters the “traditional contours of copyright
protection” must be subject to ordinary First Amendment review. The District
Court ignored this rule of Eldred, and instead immunized copyright regulation
from First Amendment review.
Applying the rule of Eldred, the URAA must be subject to ordinary First
Amendment review. The URAA departs from a “traditional contour[] of copyright
protection” by “restoring” copyright to works that have passed into the public
domain. The URAA represents the first time in the history of the Republic that
Congress has so dramatically altered this traditional feature of copyright law.
Accordingly, the URAA must be subject to First Amendment review and the
District Court’s judgment should be reversed.
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B. Congress Does Not Have The Power Under The Progress Clause To Restore Copyrights To Works In The Public Domain
The District Court also erred in concluding that the Progress Clause imposes
no prohibition on the restoration of copyright to works in the public domain. As the
Supreme Court has held in Graham v. John Deere Co., 383 U.S. 1 (1966), the
Progress Clause is both a grant and a limitation Congress’s power. One such
limitation, as elaborated by Graham, is 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 already available.” The
District Court’s attempts to distinguish Graham fail. The rule of Graham applies
equally to copyrights and patents by the express terms of the Progress Clause,
which concerns the grant of any “exclusive Right” by Congress. Thus, in the case
of either copyrights or patents, the text of the Constitution prohibits Congress from
restricting free access to materials already available in the public domain, or
subjecting works in the public domain to exclusive rights. Further, unlike the
lengthy history of extending copyrights to existing copyrighted works as was the
case in Eldred, here there is no analogous longstanding practice of granting
copyright to works in the public domain. Accordingly, the District Court’s
judgment should be reversed.
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C. District Court’s Dismissal Of Plaintiffs’ CTEA Claim Is In Error
The District Court’s dismissal of Count 4 of Plaintiffs’ First Amended
Complaint — alleging that the current term of copyright has become so long as to
no longer be a “limited term” for purposes of the Progress Clause — was error.
Plaintiffs’ claim is not foreclosed by Eldred. While the plaintiffs in Eldred
challenged the extension of subsisting copyrights, they expressly disclaimed any
challenge to the resulting length of the copyright term, and the Court declined to
decide this question in its majority opinion. The government has conceded that a
term could be so long as to be “effectively perpetual.” Thus, Plaintiffs here offer to
prove the factual question: would the Framer’s have considered the current term of
copyright to be so long as to be effectively perpetual? It was error for the District
Court to decide this question without affording Plaintiffs the opportunity to
demonstrate factually the Framers’ view. Accordingly, this Court should reverse
the District Court’s judgment.
VI. ARGUMENT
A. Standard Of Review
The District Court’s dismissal of Plaintiffs’ CTEA claim from the First
Amended Claim for failure to state a claim under Rule 12(b)(6) is reviewed de
novo. Elliott Indus. Ltd. v. BP America Prod. Co., 407 F.3d 1091, 1106-07 (10th
Cir. 2005) (citing Hartman v. Kickapoo Tribe Gaming Comm’n, 319 F.3d 1230,
1234 (10th Cir. 2003)). When reviewing a motion to dismiss for failure to state a
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claim, the Court must “admit all well-pleaded facts in the complaint as
distinguished from conclusory allegations.” Id.
The District Court’s grant of summary judgment is likewise reviewed de
novo on appeal. Id. “When applying the de novo standard of review to the district
court's grant of summary judgment,” this Court “view[s] the evidence and draw[s]
all reasonable inferences therefrom in the light most favorable to the party
opposing summary judgment.” Id. at 1107 (internal quotation and citation omitted).
B. Plaintiffs Are Entitled To First Amendment Review Of The URAA
Count II of Plaintiffs’ Second Amended Complaint alleged that the URAA
violates the First Amendment. Aplt. App. 454 [Plaintiffs’ 2d Am. Compl., ¶¶ 80-
83]. The District Court dismissed this count without conducting any First
Amendment review of the URAA. Exh. A at 27-28; Aplt. App. at 2348; see also
Golan v. Gonzales, 2005 WL 914754 at *17. This was error.
1. The District Court Wrongly Held Copyright Law Immune From First Amendment Review
Copyright law is a regulation of speech. As with any regulation of speech, it
is subject to First Amendment review. In Eldred v. Ashcroft, 537 U.S. 186, 123 S.
Ct. 769 (2003), the Supreme Court set the terms of this First Amendment review:
Rejecting the lower court’s holding in that case that copyrights were “categorically
immune from challenges under the First Amendment,” 239 F.3d at 375 (D.C. Cir.
- 23 -
2001), and rejecting Plaintiffs’ argument in that case that copyright acts be subject
to ordinary First Amendment review, Eldred, 537 U.S. at 221, the Eldred Court
articulated a standard for First Amendment review tied to copyright law’s
“tradition.” As the Court explained, a copyright act that respects the “traditional
contours of copyright protection” is not subject to “further First Amendment
scrutiny,” Eldred, 537 U.S. at 221. By implication, and as the government has
effectively conceded in a similar case, Kahle v. Ashcroft, 2004 WL 2663157 (N.D.
Cal. 2004); see also Aplt. App. at 532, 557-559 [Plfs’ Opp. to Summ. J., Exh. A
Def.’s Notice of Mot. And Mot. To Dismiss Pls.’ Am. Compl.], a copyright act that
changes the “traditional contours of copyright protection” must be subject to
ordinary First Amendment review.
In this case, Plaintiffs challenge a statute that deviates from the “traditional
contours of copyright protection,” by removing works from the public domain.
Plaintiffs’ speech is obviously and substantially burdened by these removals.
Following Eldred, Plaintiffs therefore asked the District Court to apply ordinary
First Amendment review to the act. But the court below ignored the rule of Eldred,
holding instead that there was “no need to expand upon the settled rule that private
censorship via copyright enforcement does not implicate First Amendment
concerns,” Exh. A at 28; Aplt. App. at 2348; see also Golan v. Gonzales, 2005 WL
914754 at *17. It thus dismissed Plaintiffs’ claim.
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In reaching this conclusion, the District Court cited opinions from the
Second, Ninth, and the Eleventh Circuits, as well as the lower court decision in
Eldred v. Ashcroft. Id. But the cases from the Second and Ninth Circuits predates
Eldred, see Nihon Keizai Shimbun, Inc. v. Comline Bus. Data. Inc., 166 F.3d 65,
74 (2d Cir. 1999) and Los Angeles News Service v. Tullo, 973 F.2d 791, 795 (9th
Cir. 1992). The opinion from the Eleventh Circuit holds the opposite to what the
District Court stated. See Suntrust Bank v. Houghton Mifflin Co., 268 F.3d 1257,
1265 (11th Cir. 2001) (while “courts often need not entertain related First
Amendment arguments in a copyright case” “in this case, we must remain
cognizant of the First Amendment protections interwoven into copyright law”)
(emphasis added). And the language relied upon from Eldred — that copyrights
were “categorically immune from challenges under the First Amendment,” 239
F.3d at 375 — is the one aspect of that decision that the Supreme Court expressly
rejected. See Eldred, 537 U.S. at 221 (“the D.C. Circuit spoke too broadly”). The
District Court thus had no basis to conclude that copyrights do not “implicate” the
First Amendment. The Supreme Court has defined the nature of that
“implicat[ion]”; it was error for the District Court below to ignore its rule.
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2. The URAA Deviates From The “Traditional Contours Of Copyright Protection” And Thus Should Be Subject To Ordinary First Amendment Review
Eldred v. Ashcroft ties First Amendment review of a copyright act to
copyright law’s “tradition.” If a copyright act conforms to the “traditional contours
of copyright protection,” Eldred, 537 U.S. at 221, then “further First Amendment
scrutiny” is unnecessary. Id. By implication, an act that deviates from the
“traditional contours of copyright protection” is subject to ordinary First
Amendment review.
This special rule of First Amendment review makes sense of the
longstanding balance between copyright law and First Amendment principles.
While the Eldred Court was not willing to “immuni[ze]” all copyright regulation
from First Amendment review, it did effectively immunize traditional copyright
regulation. There is a presumption of constitutionality for copyright statutes that
reflect “the traditional contours of copyright protection.” Those “traditional
contours” are presumed constitutional because of their longstanding pedigree. But
deviations from those “traditional contours” cannot automatically8 be presumed
8 The qualification (“automatically”) is important. Obviously, the mere fact a copyright act is subject to First Amendment review does not mean it is unconstitutional. First Amendment review simply requires the government to demonstrate that the law does not “burden substantially more speech than necessary to further [the government’s legitimate] interests.” Turner Broad. Sys. v. (continued . . .)
- 26 -
constitutional without an opportunity to weigh their speech restrictive effects
according to the principles of ordinary First Amendment review.
In this case, Plaintiffs challenged a deviation from a “traditional contour of
copyright protection” — namely that works passing into the public domain stay
there. The public domain is a central feature of design of the Process Clause. It is
essential to the balance copyright law strikes. Never before has Congress restored
copyright to works in the public domain — despite its repeated extension of
existing terms.9 Instead, the uniform practice until now has been that works that
pass into the public domain stay there. This deviation from tradition must therefore
be tested under the First Amendment.
8 (continued . . .) FCC, 520 U.S. 180, 189 (1997). As Turner itself demonstrates, this is a standard not fatal in fact. 9 Congress first extended subsisting copyrights in 1831. It expressly excluded works in the public domain. See Act of Feb. 3, 1831, ch. 16, § 16, 4 Stat. 436. It next extended subsisting copyrights in 1909. It again expressly excluded works in the public domain. See §7, 1909 Copyright Act, 35 Stat. 1077. So too with the eleven other extensions of subsisting terms: none extended copyright protection to works in the public domain. See Pub. L. No. 87-668, 76 Stat. 555 (1962); Pub. L. No. 89-142, 79 Stat. 581 (1965); Pub. L. No. 90-141, 81 Stat. 464 (1967); Pub. L. No. 90-416, 82 Stat. 397 (1968); Pub. L. No. 91-147, 83 Stat. 360 (1969); Pub. L. No. 91-555, 84 Stat. 1441 (1970); Pub. L. No. 92-170, 85 Stat. 490 (1971); Pub. L. No. 92-566, 86 Stat. 1181 (1972); Pub. L. No. 93-573, Title I, § 104, 88 Stat. 1873 (1974); Pub. L. No. 94-553, § 304, 90 Stat. 2573 (1976); Pub. L. No. 105-298, § 102, 112 Stat. 2827 (1998).
- 27 -
The government contests Plaintiffs’ historical claim. But even assuming the
government is correct about statutes after the First Congress’s Copyright Act of
1790, Act of May 31, 1790, 1 Stat. 124 et seq., (“Act of 1790”) the most the
government can assert is that but twice in the 215 year history of American
copyright law — and both times within the 20th century and in response to a war —
has Congress purported to restore copyright to works in the public domain. Two
twentieth century wartime statutes do not define a “traditional contour of American
copyright protection.” At most, these statutes, like the statute at issue in this case,
define deviations from a tradition, requiring ordinary First Amendment review.
a. Congress has never granted a copyright to works that have passed into the public domain.
In the proceedings below, the government pointed to three instances in
which it claims that Congress has granted copyright protection to works in the
public domain: the Copyright Acts of 1790, 1 Stat. 124, 1919, Pub. L. 66-102, 41
Stat. 368-69, and 1941, Pub. L. 77-258, 55 Stat. 732. The government relies upon
these three examples to evince a “tradition” that it claims removes the URAA from
the reach of the Eldred rule. But these statutes demonstrate no such tradition.
i. The government has made no showing that the Copyright Act of 1790 removed works from the public domain of the United States.
The District Court accepted the government’s argument below “that
Congress in 1790 anticipated the removal of some works from the public domain.”
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Exh. A at 19; Aplt. App. at 2339; see also 2005 WL 914754 at *11. On the basis of
this argument, it concluded that the “First Congress evidently determined that such
a practice was constitutionally permissible.” Id. But this argument is
jurisdictionally and empirically flawed.
Jurisdictionally: “The public domain” is local. A work can be “in the public
domain” in one jurisdiction, yet not in the public domain in another. Plaintiffs
challenge Congress’s removal of works from the public domain of the United
States. The Act of 1790 is therefore an historical precedent for such a removal if,
but only if, the Act of 1790 removed works from the public domain of the United
States.
This the Act of 1790 could not do. A work is “in the public domain of
jurisdiction X” when copyright law within jurisdiction X excludes it from
copyright protection. But it follows, then, that no works could have been removed
from the public domain of the United States by the 1790 Act, because before 1790,
there was no copyright law for the jurisdiction of the United States. The 1790 Act
both created copyright law for the United States and created the public domain of
the United States. Within that public domain was all work published throughout
the world by foreign authors, Act of 1790, § 5, 1 Stat. 124 (1790), as well as any
existing work that did not comply with the formalities of the 1790 Act. From this
perspective, then, it was technically impossible for the 1790 Act to remove work
- 29 -
from the “public domain” of the United States. In a precise sense, the 1790 Act
therefore cannot be a precedent for the URAA.
Empirically: The statement “Congress in 1790 anticipated the removal of
some works from the public domain” could also be understood less precisely to
mean that the 1790 Act granted copyright protection to works that were
unprotected under existing state law. But for the comparison with the URAA to be
accurate, the claim must be that Congress in 1790 restored copyright to works that
were unprotected in all of the original 13 states. For again, a work might well be
unprotected in one state, yet protected in another. And thus the only way the
statement “X is in the public domain” could be meaningful is if X were in the
public domain for each jurisdiction within the United States.
The point may be clearer by considering copyright law in Europe today.
There is no copyright jurisdiction for Europe. Instead, there is copyright law in
each of the European states. See Paul Goldstein, International Copyright 61-66
(2001). It follows that there could be no “public domain of Europe” in a
jurisdictional sense, since again, that requires a copyright law for the jurisdiction of
Europe. And it follows, less precisely, that one could say “X is in the public
domain in Europe” only if X was in the public domain of each of the European
states. Thus, Shakespeare is in the public domain of Europe — since in each
country, the works of Shakespeare no longer enjoy copyright protection. But the
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work of an author who died 60 years ago would not be “in the public domain of
Europe,” since there are countries within Europe that have not yet harmonized to
“life plus 70” as the term for copyright protection. See, e.g., Republic of Belarus’s
Legal Act On Copyright and Contiguous Rights, Belarus edition of the Law No.
194-3, Art. 22, ¶1, available at http://ncpi.gov.by/eng/legal/V19600370.htm
(copyright term life plus 50) (last viewed July 11, 2005).
On this understanding, the government would have the burden to
demonstrate that there were works unprotected in all of the original 13 states that
were granted protection under the 1790 Act. And while from today’s perspective
— living within a regime in which copyright is automatic — such a showing
would seem impossible to make, in fact, under the regime of copyright established
in 1790, this is a relatively simple showing to make. Yet the government has failed
to make any such showing.
The reason that such a showing can be made is that copyright in 1790 was
only secured to authors who registered their works. Those registrations, while
incomplete, remain available for research. Professor William J. Maher, University
Archivist at the University of Illinois at Urbana-Champaign, has studied these
registrations. In a paper reviewing registrations under the 1790 Act in the context
of Eldred v. Ashcroft, he attempted to estimate the number of registrations under
the 1790 Act recorded for works that had been created before 1790. William J.
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Maher, Copyright Term, Retrospective Extension, and the Copyright Law of 1790
in Historical Context, 49 Journal of the Copyright Society of the U.S.A. 1021
(2002) (hereinafter, Maher, Copyright in Historical Context).
Bibliographic sources indicate that there were about 21,000 books published
in the United States between 1790-1800. There is evidence, however, of copyright
registrations for only 690 of those books. While that number is low because not all
the records survived, historians agree that the rate of registration was tiny under the
1790 Act. James Gilreath, Federal Copyright Records 1790-1800 xxxi (1987)
(stating that, of 15,000 imprints published in the U.S. between 1790 and 1800
fewer than 800 were copyrighted). Maher then isolated from the 690 registrations
those that were for works published before 1790 — what he calls “old works.” He
found precisely 12 such works.
The resultant numbers from the bibliographic analysis show that only 1.74 % of all of the verified and unique 675 Gilreath registrations combined with the fifteen additional Andrew Law registrations were for “old works.” If this total of twelve works is compared to the approximately 20,829 works identified by Evans as published between 1790-1800, it appears that only 0.058 % of all works issued were “old works” being registered for copyright “retrospectively.” This amount of “old works” being registered late is so low that even if one arbitrarily multiplied it several fold to compensate for the unavoidable duplication known to exist in Evans, it would still be extraordinarily insignificant. Examining the actual “old works” retrospectively registered is also revealing. Only three of these “old
- 32 -
works” “retrospectively” copyrighted dated from before 1784, and none were more than thirteen years old at the time of registration; only five were seven or fewer years old at the time of copyright…. Finally, all but two of the “old works” were published at a time when there was a state copyright law in their state of publication, and indeed five of the twelve “old works” had previously been registered for state copyright in one or more states prior to 1790. In this sense, the federal copyright protection can be seen as bridging the transition from the now obsolete state copyright regimes while supporting the registration of a dozen rather recent works but not as providing wholesale coverage of pre-existing works.”
Maher, Copyright in Historical Context, 49 J. of the Copyright Soc’y. at 1027.
It is the last part of this quote that is of particular relevance to this case.
Records exist of precisely 12 works that could in theory fit the description of the
District Court — as works “remov[ed] from the public domain” by the 1790 Act.
Yet at least 5 of those works were registered under state law, leaving at most 7 that
might have been in the public domain at the time of the 1790 Act. Yet even this
overstates the claim, because of these 7, only two were books published in states
that did not have a copyright statute.
The burden of the government is then to demonstrate that these 7, or more
likely 2, works were in the public domain throughout the 13 states. But of course
the government has not even attempted such a showing because to succeed, the
government would also have to prove that none of these works were protected by
common law copyright in any of the 13 states. But if one thing is clear about this
- 33 -
history, it is that no one can establish the status of state common law copyright at
the time of the 1790 Act. Indeed, resolving the uncertainty around state common
law copyright was in part the purpose of the 1790 Act.
ii. The government can make no showing that works were in the public domain throughout the United States in 1790, because the status of the state common law of copyright was fundamentally uncertain.
For it to be true that the 1790 Act restored copyright to works within the
public domain of the United States, the government would have to establish that
there was no common law protection for copyright in any of the original states
before 1790. This the government cannot do, for the single point that historians of
the period agree upon is that at the time of the founding, the status of common law
copyright was uncertain. As Professor William Crosskey wrote, “the Common
Law of the United States . . . was in a highly uncertain state on the subject of
copyrights.” 1 William W. Crosskey, Politics and the Constitution in the History of
the United States 477 (1953). See also L. Ray Patterson, Copyright in Historical
Perspective 183 (1968); Edward C. Walterscheid, Inherent or Created Rights:
Early Views on the Intellectual Property Clause, 19 Hamline L. Rev. 81, 87
(1995). In 1833, Justice Story wrote in his Commentaries: “The copyright of
authors in their works had, before the revolution, been decided in Great Britain to
be a common law right, and it was regulated and limited under statutes passed by
- 34 -
parliament upon that subject.” 3 Story’s Commentaries on the Constitution of the
United States 48, § 1147 (1833). See generally Aplt. App. at 1779-80 [Rose Decl.
¶ 12-13]. William Rawle believed there were common law copyrights in the United
States as late as 1825. William Rawle, A View of the Constitution of the United
States of America 102 (1825). And as Noah Webster, editor of the American
Magazine explained to his readers in 1788:
The rights of literary property have not yet been clearly ascertained and established in this country… Most of the states however have passed laws securing to authors their literary productions for a limited time; and in those which have not, persons concerned will please to observe that, by solemn adjudication in the courts of Westminster, it is determined that an action will lie at common law for publishing books … without the consent of the author …. This principle, which is founded on common justice, will undoubtedly be admitted into American courts….
Acknowledgments, American Magazine 130 (Feb. 1788) (spelling corrected). See
Aplt. App. at 1784-85, 1796 [Rose Decl. ¶20 & Exh D].
The government below maintained there was no state common law
copyright, relying on its understanding of the Supreme Court’s holding in Wheaton
v. Peters, 33 U.S. (8 Pet.) 591 (1834). But the District Court rightly rejected the
government’s argument. Upon a “close reading of Wheaton,” the District Court
concluded that Wheaton did not hold that there was no common law copyright.
Wheaton held, the District Court stated, that whatever common law copyright there
was, it did not survive publication.
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But the critical historical point to recall is that whatever the Supreme Court’s
view of state common law copyright was in 1834, there is no doubt that the
controversy raging in 1790 was about whether common law copyright would
continue to protect works after publication. Blackstone believed there was a
common law right that survived publication. See Aplt. App. at 1779-80 [Rose
Decl. ¶ 12]. That was the ground upon which Lord Mansfield found for the
publishers in Millar v. Taylor in 1769 (4 Burr. 2303, 98 Eng. Rep. 201). It was also
the ground upon which Donaldson was sued in Donaldson v. Becket (17 Parl. Hist.
Eng. 953; 4 Burr. 2408, 98 Eng. Rep. 257). See Aplt. App. at 1779-80 [Rose Decl.
¶ 12]. Everyone agreed there was a common law right to literary property before
publication. The only dispute litigated by the courts was whether that common law
right survived publication and the enactment of the Statute of Anne. Lord
Mansfield held it did. The House of Lords effectively reversed this judgment in
Donaldson. But as the House of Lords issues no opinion, the reasons for its
decision remain obscure. Id. at 1780 [Rose Decl. ¶ 13]. The first American edition
of Blackstone’s Commentaries reported that in Millar “it was determined (upon
solemn argument and great consideration) by the opinion of three judges to one,
that an exclusive copyright in authors subsists by the common law.” 2 W.
Blackstone, Commentaries on the Laws of England 406-07 n.h (Robert Bell ed.
1771). Madison in the Federalist Papers repeats this understanding, and the
- 36 -
understanding of Lord Mansfield, even though Mansfield’s judgment had been
reversed in the interim. The Federalist No. 43, at 267 (Henry Cabot Lodge ed.,
1888) (“The copyright of authors has been solemnly adjudged, in Great Britain, to
be a right of common law.”). Thus if Madison was confused about the matter, one
should well expect the confusion was common.
At best, one might conclude from this history that the status of state common
law copyright at the founding was uncertain. Aplt. App. at 1783-84 [Rose Decl.
¶ 19]. And in light of this uncertainty, at a minimum, this Court should follow the
Supreme Court’s example in Eldred v. Ashcroft. In that case, the same history was
contested. The government argued that there was no state common law copyright.
Plaintiffs argued that there was. If there had been no state common law copyright,
then the 1790 Act would have been the first statute to extend existing copyright
terms, extending the terms of at least 12 copyrights; if there had been state
common law copyright, then the 1790 Act would have been terminating the
perpetual term for those 12 copyrights at least, as well as any other common law
copyrights left unregistered. But rather than resolve this question, the Supreme
Court declined to rely upon the 1790 Act as precedent. Eldred v. Ashcroft, 537
U.S. 186, 196 n. 3. Similarly, this Court should recognize the uncertainty of the
historical question, and thus consider the constitutional question independently of
the 1790 Act.
- 37 -
Plaintiffs, however, urge this Court one step further. The uncertainty that
historians report about the status of state common law copyright at the time of the
founding is an accurate reflection of the views of the Framers at the time of the
founding as well. No one knew the status of common law copyright. Thus, in light
of that uncertainty, the best reading of Congress’s decision to provide copyright
under the 1790 Act to works “already published” was simply to resolve the
uncertainty, and establish a clear, initial baseline for copyright in America. After
1790, the public domain would be clearly marked, as the sum of all foreign works,
and works published but not registered. That clarity is a more compelling
understanding of the First Congress’s motives in enacting the 1790 Act than any
intent to remove constitutional restraints on Congress.
Professor Maher’s analysis confirms this understanding. As he explains, the
motivation for the “already printed” language was to simplify the process that had
begun through private bills, to consider securing copyright to published works.
Maher, Copyright in Historical Context, 49 J. of the Copyright Soc’y at 1028-30.
The works that had been considered by Congress were all almost certainly
protected under state copyright. See supra at 3133. This again confirms that there
is no reason to read the “already printed” language as Congress’s intent to
“restore” copyright to any works “in the public domain” of the United States.
- 38 -
The special rule of First Amendment review announced in Eldred is an
exception to ordinary First Amendment analysis. As the government would bear
the burden in any First Amendment analysis, it is reasonable the government bear
the burden of demonstrating that a statute falls within the “traditional contours of
copyright.” The uncertainty of the 1790 Act at the very least suggests the
government has not met its burden. At most, the Framers’ acted in light of the
fundamental uncertainty about the continued status of common law copyright, and
resolved, in the transitional sense that the First Congress’s framework statutes had
to, how to establish a new copyright regime. But that is a far distance from the
claim that Congress was acting upon the understanding that a clause that gave it
the power to “promote the Progress of Science” by securing “for limited Times” a
copyright to an author could nonetheless be used to remove works from the public
domain. As a leading copyright historian, Professor Mark Rose concluded:
What is apparent … from the study of the historical parallels between the first U.S. Act and the Statute of Anne is that the purposes of Congress were similar to those of Parliament — that is, to employ legislation to create a single, uniform, and strictly limited copyright regime. Congress, in other words, believed that in enacting the 1790 Act it was ending any claims to perpetuity and ensuring that ultimately all works, including “books already printed,” would enter the public domain and be available for anyone to reprint.
Aplt. App. at 1785 [Rose Decl. ¶ 21].
- 39 -
iii. The Wartime Statutes did not remove works from the public domain.
The only other instances of Congress even arguably removing works from
the public domain are two statutes enacted after World War I and World War II, to
extend the time to comply with certain formalities for foreign works eligible for
copyright protection during these two wars. In Plaintiffs’ view, neither statute
removed works from the public domain. And even if this Court believes otherwise,
two 20th Century wartime enactments cannot constitute the “traditional contours of
copyright protection” as that term is understood in Eldred.
Two points are fundamental to understanding both statutes. First, contrary to
the government’s suggestion, and the District Court’s presumption, there is no
general principle that requires that a patent or copyright that failed to comply with
a formality would automatically be deemed to be within the public domain. For
example, the 1976 Copyright Act allows copyright holders to “cure” failures to
comply with the formality of copyright notice in certain circumstances for works
publicly distributed before the U.S. joined the Berne Convention (for which
copyright notice was still required). See 17 U.S.C. § 405 (failure to comply “does
not invalidate the copyright in a work”). The 1976 Act also requires the formality
of deposit of two copies of published copyrighted works in the Library of
Congress, but creates fines — not forfeiture of copyright — for lack of non-
compliance if the Register of Copyrights has made a written demand for deposit.
- 40 -
See id. § 407. The 1909 and 1976 Acts required the publishing in the United States
of English books or periodicals by American authors. See 17 U.S.C. § 601(a)
(1976); 17 U.S.C. §16 (1909). Without knowing fraud, such noncompliance would
not inject the work into the public domain. See 2 M. Nimmer & D. Nimmer,
Nimmer on Copyright §7.23[E] (“Nimmer on Copyright”); accord Marshall
Leaffer, International Copyright from an American Perspective, 43 Ark. L. Rev.
373, 402 (1990). Similarly, the Patent Act requires the formality of including a
specification in the patent application with an adequate written description of the
invention, but specifically allows patentees to correct defective specifications
through the process of a reissued patent. 35 U.S.C. § 251; accord 15 U.S.C.
§ 1057(h) (correction of mistakes in applicant’s trademark registration). These
examples show that, in establishing a formality for future works or conduct,
Congress can always decide that noncompliance with a formality does not result in
the complete forfeiture of rights or the injection of the work into the public
domain.
Second, both wartime acts must be read against the background of the
express statement in the 1909 Act that “[n]o copyright shall subsist in the original
text of any work which is in the public domain.” § 7, Act of March 4, 1909, Pub.
L. 60-349, 35 Stat. 1077. Obviously, Congress could have changed its resolve
- 41 -
(though not consistent with the Constitution). But there is no need to read these
wartime acts as inconsistent with this fundamental policy choice.
1919 Act: The 1919 Act applied to foreign works first published abroad
during the war years. It did not apply to works published in the United States. See
Act of Dec. 8, 1919, Pub. L. 66-102, 41 Stat. 368-69. The only condition precedent
to copyright protection of published works under the then-existing U.S. copyright
laws was publication with copyright notice. See 2 Nimmer on Copyright §§ 7.01-
04, 7.15-17 (describing formalities imposed by the 1909 Act). However, the war
would not have significantly undermined the ability of foreign authors to affix
notice to their published works, so it is doubtful that the 1919 Act affected many
— or any — published works that fell into the public domain for noncompliance
with the notice requirement. Similarly, the 1919 Act did not affect the ability of
foreign authors to obtain renewal of their copyrights — because works first
published abroad during the war years would not have been subject to renewal for
another 28 years, the act did not affect any works that fell into the public domain
for failure to renew.
1941 Act: The 1941 Act authorized extensions of time to comply with
formalities for works “subject to copyright” and works “subject to renewal of
copyright” during the war years. See Act of Sept. 25, 1941, Pub. L. 77-258, 55
Stat. 732. For the most part, however, the Act did not restore copyright in public
- 42 -
domain works. Rather, it put the public on notice: After the Act’s effective date,
foreign works that would have fallen into the public domain in the absence of the
Act would not enter the “public domain” at all. Rather, those works might become
usable for a period, but subject to a reversionary interest, which would best if the
author complied with the requisite formalities under a presidential extension
proclamation. Thus encumbered, these works never fell into the “public domain,”
and the vesting of the authors’ reversionary interests cannot serve as a precedent
for the URAA.
It must be noted that for works for which authors failed to comply with U.S.
formalities between 1938 (the first year in which the provisions of the 1941 Act
apply), and 1941 (i.e., the year of the Act’s passage), the public was not on notice
of foreign authors’ reversionary interests, and so, for this very short period, the
effect of the 1941 Act may have been to reclaim works from the public domain.
See, e.g., 74 Stat. c69-71 (1960) (proclamation of President Eisenhower); 58 Stat.
1129-31 (1944) (proclamation of President Roosevelt). The scope of this
restoration was, of course, far narrower than that effected under the URAA, and,
unlike in the case of the URAA, they arose out of an unparalleled international
crisis, when the “practice . . . was simply to sweep the constitutional issues under
the rug.” See 3 Nimmer on Copyright § 9A.07[A].
- 43 -
iv. Even if this Court believes the wartime statutes removed works from the public domain, they would not constitute a “traditional contour of copyright protection” exempting them, or the URAA, from First Amendment review.
Even if this Court concludes that the wartime statutes do constitute a
removal of works from the public domain, however, for purposes of Appellant’s
First Amendment claim, that removal should not exempt the URAA from First
Amendment review. To benefit from the exemption from ordinary First
Amendment review, the government must demonstrate that the statute at issue is
within the “traditional contours of copyright protection.” Under any reasonable
interpretation of the term “traditional,” two wartime statutes enacted in the 20th
century cannot qualify. As Nimmer has commented upon these wartime statutes,
“[this] pre-history therefore furnishe[s] ready precedent neither for the
constitutionality of NAFTA resurrection nor for the extraordinarily broad recapture
legislated incident to TRIPs.” See 3 Nimmer on Copyright § 9A.07.
The Supreme Court in Eldred of course did not define the term “traditional
contour of copyright.” But the reasoning that justifies this exemption from ordinary
First Amendment review would restrict such “traditional contours” to features of
copyright law that have a longstanding pedigree. That copyright law is not
viewpoint based, for example, is a feature of copyright law that has defined the law
since the founding. Or, as the Court held in Eldred, that term extensions are both
- 44 -
prospective and retrospective, is a feature that has existed since as early as 1831.
Eldred, 537 U.S. at 194. These features have been constant over most of copyright
law’s history. In the Supreme Court’s view, they have therefore earned the
deference of tradition, and an exemption from ordinary First Amendment review.
Two unprecedented wartime statutes affecting foreign works only do not fit
this pattern. If anything, these are deviations from our tradition. Under the rule of
Eldred, these deviations must be tested under ordinary First Amendment review.
And again, it is conceivable that, depending upon the standard of review, these two
statutes would survive ordinary First Amendment review. But that these exceptions
would satisfy First Amendment review does not remove the requirement that the
URAA must satisfy First Amendment review. The URAA deviates from the
“traditional contours of copyright protection.” It is therefore subject to ordinary
First Amendment review.
b. The 1832 restoration of patents is irrelevant to Plaintiffs’ First Amendment argument.
Finally, the government has also alleged below that in 1832 Congress
restored certain patents. Exh. A at 20; Aplt. App. at 2348; see also Golan v.
Gonzales, 2005 WL 914754 at *11. Plaintiffs do not concede the government’s
characterization of those statutes, see infra at 52-54, but even if the government is
correct, those restorations are irrelevant for purposes of the First Amendment.
- 45 -
Patents are not restrictions on speech. Copyrights are. The tradition Eldred spoke
of is a tradition of speech regulation. Patent law is without that tradition.
For all these reasons, the District Court erred in granting summary judgment
on Plaintiffs’ First Amendment claim without imposing upon the government the
burden of demonstrating the URAA does not “burden[] substantially more speech
than necessary to further [its] interests.” Turner Broad. Sys. v. FCC, 520 U.S. 180,
189 (1997). Removing works from the public domain is a sufficiently novel
innovation within copyright law to require the government to justify it — as it
must justify any speech regulation under the First Amendment.
C. The Progress Clause Does Not Give Congress The Power To Restore Copyrights To Works That Have Passed Into The Public Domain
Count I of Plaintiffs’ Second Amended Complaint alleged that Congress’s
restoration of copyright to works that had passed into the public domain was
beyond its power under the Progress Clause. Aplt. App. at 452 [2d Am. Compl. ¶
27]. Plaintiffs based that argument on the Supreme Court’s interpretation of the
term “limited Times” in Graham, infra. The District Court granted summary
judgment to the government on this claim, after concluding that the “limited
Times” language did not impose a requirement that Congress not restore the
copyright of works in the public domain. Exh. A at 4-24; Aplt. App. at 2324-44;
- 46 -
see also 2005 WL 914754 at * 2-14. This holding is contrary to Supreme Court
precedent, and should be reversed by this Court as a matter of law.
1. The “Limited Times” Clause Has Been Interpreted By The Supreme Court To Restrict The Power Of Congress To Remove Works From The Public Domain
The Constitution grants Congress the power “[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.” U.S. Const., Art.
I, sec. 8., cl. 8. As the Supreme Court acknowledged in Eldred, citing Graham v.
John Deere Co. of Kansas City, 383 U.S. 1, 5 (1966), this clause is “both a grant of
power and a limitation.” Eldred, 537 U.S., at 212. Most of the limitations that the
Supreme Court has recognized are implied from the language of the clause. See,
e.g., Feist Publ’ns v. Rural Tele. Serv. Co., 499 U.S. 340, 346-47 (1991) (copyright
limited to original works); Graham v. John Deere Co., 383 U.S. 1, 4 (1966), citing
Hotchkiss v. Greenwood, 52 U.S. (11 How.) 248 (1851) (patents limited to novel
inventions); Graham, 383 U.S. at 6 (patents cannot reduce the public domain).
“Limited Times” is the single express limitation within the Progress Clause.
In its explication of the meaning of the Progress Clause, the Supreme Court
in Graham stated a limit on Congress’s power over patents that flows directly from
- 47 -
the “limited Times” language, and applies equally in the context of copyrights. As
the Supreme Court stated,
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 already available.
Graham, 383 U.S. at 6.
This rule is a perfectly sensible interpretation of the term “limited Times.”
Its clear import has been understood by courts and commentators from the time
Graham announced it. See, e.g., 1 Nimmer on Copyright §1.05[A][2] (“it seems
clear that the Copyright Clause would not permit the granting of copyright to
works that have theretofore entered the public domain”).10 Its clear purpose is to
give effect to the constitutional command that monopolies over knowledge and
expression be limited. If Congress could restore a patent after it had passed into the
public domain, then Congress could easily evade the requirement that terms be
limited. Graham thus sensibly avoids this temptation by restricting Congress’s
power to change the terms of patents to inventions that are still under protection, or
10 Nimmer does believe that Congress’s authority could be supported by other powers vested in Congress. Id. The District Court, however, did not reach this question. Exh. A; Aplt. App. at 2321; see also Golan v. Gonzales, 2005 WL 914754.
- 48 -
yet to be invented. There is no reason in the text of the Constitution, in the policy
behind this interpretation, to treat copyrights any differently.11
The District Court distinguished Graham by crafting a policy argument for
limiting the rule to patents only. As the Court wrote distinguishing patents from
copyrights, “[r]emoval of existent knowledge from the public domain is a
persistent danger in the expansion of patent monopolies and, for that reason,
informs courts’ understanding of Congress’ patent power.” Exh. A at 8, Aplt. App.
at 2328; Golan v. Gonzales, 2005 WL 914754 at *5.
But this analysis is simply mistaken. Restoring a patent does not “remov[e]
existing knowledge from the public domain.” Indeed, the knowledge supporting a
patent must be revealed as a condition of granting the patent. 35 U.S.C. § 112 ¶ 1
(requiring “best mode”, “written description”). The very quid pro quo of a patent
is that the inventor will reveal the knowledge behind the invention in exchange for
a monopoly on practicing the invention. The burden of a restored patent is thus
precisely the burden of a restored copyright: to practice the invention requires
11 Plaintiffs in Eldred had asked the Supreme Court to expand the rule in Graham, by restricting Congress from the power to extend a copyright as well as restoring a copyright. The Supreme Court declined that request on the basis of the longstanding practice of Congress to extend subsisting terms whenever the general term of copyright was extended. Such consistency, the Court held, was justified as a matter of equity. But no similar history or equity would justify the extension in this case.
- 49 -
permission of the patent owner, just as to exercise an exclusive right of copyright
requires the permission of the copyright owner. There is thus no policy reason to
distinguish Graham’s rule as applied to patents and copyrights.
Nor is there any reason grounded in the text of the Progress Clause itself.
While there are terms within the Progress Clause that are specific to the respective
monopolies secured by that clause — for example, “the progress of Science,”
“Writings” and “Authors” define the scope of copyrights; while “useful Arts,”
“Discoveries” and “Inventors” define the scope of patents — the parallel
construction of the Progress Clause ties the “limited Times” term to both the patent
and copyright monopolies of the Progress Clause. This common link recognizes a
common purpose behind limiting terms. This Court should respect that common
purpose.
Graham mandated “that the threshold across which works pass into [the
public domain] cannot be traversed in both directions.” Exh. A at 5; Aplt. App. at
2325; see also Golan v. Gonzales, 2005 WL 914754 at *3. The only question
before this Court is whether this rule as applied to patents must also be applied to
copyrights. Plaintiffs submit there is no reason to distinguish the two in either the
text, structure or history of the clause. Nor is there anything in Graham or Eldred
that would require treating the two domains differently. The prophylactic reasons
- 50 -
for protecting the public domain for patents exist as strongly — indeed, Plaintiffs
would argue, more strongly — with copyright.
2. There Is No Longstanding Congressional Practice That Can Justify Granting A Copyright To Works In The Public Domain
In Eldred, the Court relied upon longstanding congressional practice as a
justification for reading the “limited Times” clause to permit the extension of
existing copyrights. In the Court’s view, every time Congress extended the term of
copyrights prospectively, it extended subsisting terms as well. That mirrored
extension was justified, the government suggested, by considerations of equity.
Eldred, 537 U.S. at 204; see also id. at 228 (Stevens, J., dissenting). And based
upon the history of that practice, the Court concluded it would allow Congress to
continue the practice in the future.
In this case, there is absolutely no longstanding practice of granting
copyrights to works in the public domain. The only instances in which Congress
even arguably restored copyrights are in the last century, as a response to world
wars. The single instance of restoring patents alleged by the government is, in fact,
not a restoration at all. See infra at 52-54. There is therefore no historical
precedent for justifying the URAA, unlike the history that supported the Court’s
judgment in Eldred.
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a. Neither the 1790 Act, the 1919 Act, nor the 1941 Act establish a precedent for restoring the copyrights of works in the public domain.
As Plaintiffs have already argued, see supra at 28-34, the 1790 Act is no
precedent for the URAA. As that act simply created federal copyright law, that act
could not “restore” a copyright for a work that had passed into the public domain.
Nor, as Plaintiffs’ have argued, are the wartime extensions precedents for the
URAA. See supra at 40-43. But again, even if this Court disagrees with that
judgment, these two twentieth century extensions could not establish a tradition
that would support reading the Progress Clause differently from how Graham did.
b. The 1832 Patent Act did not restore the Inventions from the Public Domain.
The District Court concluded that the 1832 Patent Act and its provision for
reissued patents allowed the removal of inventions from the public domain. Exh. A
at 21; Aplt. App. at 2341; Golan v. Gonzales, 2005 WL 914754 at *12. That is
entirely false, both as a matter of law and a matter of history. Indeed, if the District
Court’s mistaken understanding of reissued patents were the law today, millions of
inventions would be put at risk of being injected into the public domain if their
patentees ever sought a reissued patent.
The District Court erred in assuming that every error in complying with a
formality automatically injects the material into the public domain. As explained
earlier, that is simply not so. Here, a reissued patent is a simple administrative
- 52 -
process by which a patentee can correct certain types of defects in the specification
by “surrendering” the original patent for a “reissued,” corrected patent. See 35
U.S.C. § 251 (current provision). By this administrative process, the defect in
drafting is corrected, and the underlying invention never enters the public domain.
What the District Court misunderstood is that, from virtually the beginning
of our patent laws, this process of correcting drafting defects through reissuance
has existed as the backdrop against which patent specifications operated. The 1832
Act was the first patent act to codify the process of reissuance, which had first been
recognized by courts as a way to allow patentees to cure errors they had made in
drafting the patent application because of “inadvertency, accident, and mistake,
and without any fraudulent or deceptive intention.” Allen v. Culp, 166 U.S. 501,
504 (1897). While it is true that such drafting errors could result in the patent being
invalid, such drafting errors did not automatically inject the invention into the
public domain. With the process of reissued patents, the public was put on advance
notice that deficient specifications can be corrected by a reissued patent and,
therefore, that the underlying invention was not in the public domain. As the
Supreme Court explained in Allen:
It is true that in making his surrender the patentee declares that his patent is inoperative and invalid; but this is not necessarily so for all purposes, but for the purpose for which he desires to have it reissued. Such a patent might be inoperative and invalid as against certain persons who had pirated the underlying principle of the
- 53 -
patent, and avoided infringing the exact language of the claims, and yet be perfectly valid as against others, who were making machines clearly covered by their language.
166 U.S. at 505 (emphasis added).
For these reasons, this Court should hold as a matter of law that for the same
reason Graham forbids the patenting of works in the public domain, Congress
exceeds its power under the Progress Clause when it copyrights work in the public
domain. There is no difference tied to the language of the Progress Clause that
would justify a different result. Nor is there any practice that should lead the Court
to distinguish patents and copyrights. The same limit should apply in both
contexts, rendering in this context the URAA unconstitutional.
D. Plaintiffs Must Be Afforded The Opportunity To Demonstrate That The Existing Terms Of Copyright Have Become So Long As To Be Effectively Perpetual
Count Four of Plaintiffs’ First Amended Complaint alleged that the term of
copyright has become so long as to no longer be a “limited term” for purposes of
the Progress Clause. Aplt. App. at 57 [First Am. Compl. ¶ 40]. On the basis of the
Court’s decision in Eldred, the District Court dismissed the count. Exh. B at 4;
Aplt. App. at 320; see also Golan v. Ashcroft, 310 F.Supp.2d 1215, 1218 (D. Colo.
2004).
This dismissal was error. Plaintiffs in Eldred challenged the extension of
subsisting copyrights. They expressly disclaimed any challenge to the resulting
- 54 -
length of the copyright term. In their view, the question of “how long would be too
long” was not easily answered by a Court. They offered the Court an easier line to
draw — between extending existing terms, and extending terms prospectively.
Justice Breyer in dissent, however, did raise this claim. As he argued, from
an economic perspective, the term of copyright had become so long as to become
an effectively perpetual term. Eldred, 537 U.S. at 255-256, 123 S.Ct. at 807-808
(Breyer, J., dissenting).
The Court rejected Justice Breyer’s argument, expressly noting that
plaintiffs had not raised it, and its own skepticism about whether the Framers
would have considered a term “unlimited” merely because it was unlimited from
an economic perspective. As Justice Ginsburg wrote for the Court,
It is doubtful, however, that those architects of our Nation, in framing the “limited Times” prescription, thought in terms of the calculator rather than the calendar.
Eldred, 537 U.S. at 210 n.16.
Justice Ginsburg’s intuition is understandable. Her conclusion, however,
could have been based upon nothing more than an intuition. Again, the issue had
not been briefed or argued. And nothing in the record addressed it.
Plaintiffs now offer to prove that her skepticism was unwarranted: that in
fact the Framers would have considered the current term to be so long as to be
effectively perpetual. Plaintiffs submit that evidence from the framing, and from
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the context within which the original terms of copyright were derived, plainly
answers the Court’s skepticism. Plaintiffs sought an opportunity to present this
evidence. The District Court denied Plaintiffs that opportunity by improperly
dismissing this count of the case. Exh. B at 4; Aplt. App. at 320; see also Golan v.
Ashcroft, 310 F.Supp.2d at 1218.
The District Court’s judgment again is plainly mistaken. The government
has already conceded that a term could be so long as to be “effectively perpetual.”
See Eldred Resp. Br. at 27 (available at http://eldred.cc/legal/01-
618.Eldred3.mer.pdf, last viewed July 15, 2005). As it argued, “[s]omething that
was the functional equivalent of an unlimited time would violate the Copyright
Clause.” See Eldred Oral Arg. Tr. at 34 (available at
http://www.supremecourtus.gov/oral_arguments/argument_transcripts/01-618.pdf,
last viewed July 15, 2005).
Thus, for example, if Congress had passed a term of 1,000 years, everyone
would agree that such a term would not be “limited” despite its being fixed. The
only open question in this case, therefore, is a factual one: how long does a term
have to be before it is considered effectively no longer limited? Plaintiffs are
obviously entitled to the presumption for facts alleged in the complaint in a motion
to dismiss. See Elliott Indus. v. BP America, 407 F.3d 1091, 1107 (10th Cir. 2005)
(“A motion to dismiss for failure to state a claim admits all well-pleaded facts in
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the complaint as distinguished from conclusory allegations.”) (internal quotation
omitted). It was therefore improper for the Court below to decide this question
without affording Plaintiffs a further opportunity to demonstrate the Framers’ view
of the term “limited Times.”
Plaintiffs concede that the Supreme Court would, upon the basis of the facts
it assumed to be true, likely reject this argument. But Plaintiffs’ whole point is that
the Court did not know the historical facts: because the issue was raised by no
party, and briefed by no party or amicus, the Court’s uninformed attitude should
not control Plaintiffs’ right to raise a claim. Had the Court had the facts before it,
and had it indicated as it did, then the disposition of the District Court would have
been proper. But the Supreme Court did not have historical facts before it; it had
instead some basic economics about the time value of money. That argument is no
doubt persuasive to some, but Plaintiffs seek to raise a very different argument —
that the Framers themselves would have understood a term of “life plus 70” to be
so long as to be effectively perpetual. Nothing in the record or argument of Eldred
would have given the Court the basis to resolve that claim, and nothing in the
dissent by Justice Breyer even addressed that claim. It was therefore error for the
District Court to dismiss Plaintiffs claim without affording Plaintiffs the
opportunity to make their factual showing.
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VII. CONCLUSION
For the foregoing reasons, Plaintiffs respectfully request that this Court
reverse the District Court’s (1) grant of the government’s summary judgment
motion on the First Amendment and Progress Clause claims, (2) denial of
Plaintiffs’ summary judgment motion on the Progress Clause claim, and (3)
dismissal of Plaintiffs’ CTEA claim from Plaintiffs’ First Amended Complaint.
Plaintiffs further ask this Court to remand this action for further proceedings.
VIII. STATEMENT REGARDING ORAL ARGUMENT
Oral argument in this case is necessary given the complexity and
constitutional importance of the questions presented on this appeal.
Respectfully submitted this 18th day of July, 2005, _________________________
Lawrence Lessig Hugh Gottschalk CENTER FOR INTERNET AND SOCIETY Carolyn Fairless STANFORD LAW SCHOOL WHEELER TRIGG KENNEDY LLP Crown Quadrangle 1801 California Street 559 Nathan Abbott Way Suite 3600 Stanford, CA 94305-8610 Denver, CO 80202-2636 D.C. Box 19 Phone: (303) 292-2525 Fax: (303) 294-1879 Attorneys for Plaintiffs-Appellants
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