Supreme Court Will Review Constitutionality of Restoring Expired Copyrights in Foreign Works

By Gene Quinn
March 10, 2011

U.S. Supreme Court Building

Earlier this week the United States Supreme Court granted the petition for a writ of certiorari filed by lawyers from Stanford Law School’s Fair Use Project (FUP) and Wheeler Trigg O’Donnell LLP and will review the constitutionality of a federal statute that removed thousands of foreign works from the Public Domain and placed them under copyright protection. The case presents a two-pronged constitutional challenge to the 1994 law passed by Congress, which amended the Copyright Act. The case will test whether Congress has the authority to remove works from the Public Domain under the “Intellectual Property Clause” of the United States Constitution and whether the 1994 law violates the First Amendment rights of those who performed, adapted, restored and distributed works which had previously been in the Public Domain.

The Fair Use Project filed the petition in October, 2010 on behalf of orchestra conductors, educators, performers, film archivists and motion picture distributors who relied for years on the free availability of works in the Public Domain, which they performed, adapted, restored and distributed. The 1994 amendment to the Copyright Act, the Uruguay Round Agreements Act (URAA) (see copyright highlights of URAA), removed these works and many others from the Public Domain and placed them under copyright protection in conjunction with the implementation of international intellectual property treaties. That amendment affected the copyright status of thousands of works by foreign authors that had previously fallen into the Public Domain in the United States.

The change in U.S. copyright laws can be traced back to 1989, when the United States joined the Berne Convention for the Protection of Literary and Artistic Works. The Berne Convention requires each signatory to provide the same copyright protections to authors in other member countries that it provides to its own authors. Pursuant to Article 18, when a country joins the Convention, it must provide copyright protection to preexisting foreign works even when those works were previously in the public domain in that country. However, when the United States joined the Berne Convention, the implementing legislation did not extend copyrights to any foreign works that were already in the public domain in the United States.

In April 1994, the United States signed various trade agreements in the Uruguay Round General Agreement on Tariffs and Trade. Included in this round of agreements was the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPs). The TRIPs agreement required, in part, that its signatories comply with Article 18 of the Berne Convention, and thus, extend copyright protection to all works of foreign origin whose term of protection had not expired.

In order to comply with these international agreements, Congress enacted the URAA. In particular, Section 514 of the URAA implements Article 18 of the Berne Convention. Section 514 “restores” copyrights in foreign works that were formerly in the public domain in the United States for one of three specified reasons: failure to comply with formalities, lack of subject matter protection, or lack of national eligibility. See 17 U.S.C. § 104A. Section 514 does not restore copyrights in foreign works that entered the public domain through the expiration of the term of protection.

In addition to restoring copyrights in preexisting foreign works, Section 514 provides some protections for reliance parties who had exploited these works prior to their restoration.  In order to enforce a restored copyright against a party that detrimentally relied on the work being in the public domain the foreign copyright owner must either file notice with the Copyright Office within twenty-four months of restoration or serve actual notice on the party. A party that detrimentally relied on the work being in the public domain is liable for infringing acts that occur after the end of a twelve month grace period, starting from notice of restoration. Those parties that detrimentally relied on the copyrighted work being in the public domain may nevertheless sell or otherwise dispose of restored works during this grace period, but they cannot make additional copies.

Section 514 provides further protections for those parties who relied on the copyrighted work being in the public domain prior to restoration and created a derivative work that was based on a restored work. Under Section 514, “a reliance party may continue to exploit that derivative work for the duration of the restored copyright if the reliance party pays to the owner of the restored copyright reasonable compensation….”  See 104A(d)(3)(A). If the parties are unable to agree on reasonable compensation, a federal court will determine the amount of compensation.

In the United States Federal District Court for the District of Colorado the parties agreed, and the District Court determined, that Section 514 is a content-neutral regulation of speech subject to intermediate First Amendment scrutiny.  The District Court determined that while the Government does have a “legitimate interest in complying” with the Berne Convention, the exceptions in Article 18(3) demonstrate that “Congress could have complied with the Convention without interfering with Plaintiffs’ protected speech.”  The District Court also held the Government had presented no evidence sufficient to show that providing protection for foreign works beyond that required by the Berne Convention would generate any additional benefits to U.S. authors.

On appeal the Tenth Circuit reversed the judgment of the District Court and held that Section 514 does not violate the First Amendment.  The Tenth Circuit held the Government has an important interest in securing foreign copyright protection for U.S. authors independent of any interest in complying with Berne.  It concluded that Congress had substantial evidence to conclude that providing enhanced protection for foreign authors in the U.S. might induce foreign nations to reciprocate by providing enhanced protection for U.S. authors abroad, whether or not that enhanced protection was required by Berne.  The Tenth Circuit acknowledged that Congress might have been able to comply with the Berne Convention without compromising Petitioners’ speech interests, but ultimately concluded that whether another path to implement the Berne Convention existed was not material because because Section 514 was narrowly tailored to the broader interest of creating enhanced protection for U.S.  authors.

The specific constitutional provisions at issue in the case will be the Intellectual Property Clause of the United States Constitution ( Article I, Section 8, Clause 8 ) and the First Amendment. The Intellectual Property Clause to the United States Constitution gives Congress the power to “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.” The Petitioners will argue that removing material from the Public Domain violates the “limited times” restriction and the URAA as enacted does not “promote the Progress of Science and the useful Arts.” Petitioners contend the URAA violates the First Amendment because it is not narrowly tailored to any important government interest.

“I’m thrilled the Supreme Court took the case,” said FUP Executive Director Anthony Falzone, who is counsel of record for the petitioners. “This statute throws into question one of the most basic premises of intellectual property: once a work of authorship is placed in the Public Domain, it belongs to the public, and remains the property of the public—free for anyone to use for any purpose. That principle was respected for more than 200 years, because it represents a critical limit on the intellectual property ‘monopoly’ the Framers authorized. What Congress did here represents a huge departure from those basic principles with substantial constitutional ramifications.”

I am enormously sympathetic to the challengers.  There is something fundamentally unfair and un-American about changing the rules of law in mid-stream.  I am personally offended that works have been snatched from the public domain.  If that were to happen anyone with even a basic sense of fairness would have grandfathered in existing uses, which did not happen.  Nevertheless, I think the Petitioners will have an uphill battle on their arguments relative to the Intellectual Property Clause.  Historically Congress is given wide latitude to determine what promotes the progress, and I don’t sense this will be any different.  Doing something in hopes of greater rights for U.S. authors who might infinitesimally be further promoted is probably going to be enough.

On the other hand, the First Amendment arguments are right up the Supreme Court’s alley.  If the First Amendment means anything it should mean that Congress cannot after the fact enact laws that take rights away as did this amendment to the Copyright Act.  This is particularly the case where it seems there were in fact other avenues to implement the Berne Convention that would not have negatively impacted First Amendment rights.  If that is taken as true then it seems as obvious as can be that the Supreme Court should require Congress to act in ways that do not compromise First Amendment rights.

Those who watch the Supreme Court know that handicapping what they will do is extraordinarily difficult.  As the top Court in the land there is no other Court to review what they do, and at times that can lead to sloppy judicial analysis, non-decisions and rulings that do not comport with precedent.  So stay tuned!

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded IPWatchdog.com in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

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Discuss this

There are currently 3 Comments comments.

  1. Patent Litigation March 11, 2011 12:39 am

    Here is a similar story

    The Supreme Court said Monday that it would review a decision that gives foreign artists copyright protection from performers and publishers in the United States who make money from foreign works.
    The 10th Circuit’s decision in June 2010 upheld a section of the 1994 Uruguay Round Agreements Act, a federal law that restored U.S. copyright protection to foreign works of art that were previously in the public domain.
    Concluding that the American plaintiffs failed to present a free-speech claim, the Denver-based appeals court reversed the finding of a Colorado federal judge, who said the law ran afoul of the First Amendment.

  2. Elya Peker March 12, 2011 10:51 pm

    The Copyright Law is not defended and not enforced for individual authors. A “law” that is not enforced is not a law, it is a fraud.The word “author”should be removed from the Copyright Law of the United States (par.302a,201e).See Petition for Writ of Mandamus,Supreme Court of the United States,In Re:Peker Docket No.08-8088 (which is a reminder of the Constitution Article 1 Section 8 Clause 8:the Copyright Clause). Also s. Google/Groups/Elya Peker. Elya Peker March12,2011

  3. Pro Se March 12, 2011 11:29 pm

    “This is particularly the case where it seems there were in fact other avenues to implement the Berne Convention that would not have negatively impacted First Amendment rights.”

    Might you have one or more examples of how this could have been done?

    I ask this mindful of the fact that reliance parties are still able to avail themselves of fair use rights, an accomodation within copyright law for the First Amendment.

    Yes, I too share an uneasy feeling when something that has passed into the public domain is unexpectedly withdrawn. However, my uneasiness is much stronger when it comes to matters such as The Orphan Drug Act.