A work of authorship is in the “public domain” if it is no longer under copyright protection (e.g., because the term for protection has expired) or if it fails to meet the requirements for copyright protection. Works in the public domain may be used freely without the permission of the former copyright owner.
Prior to 1994, foreign works which had not been separately registered for copyright protection through the U.S. Copyright Office were often relied on as “public domain works.” Thus orchestras, musicians, recording artists, publishers, etc. enjoyed the right to freely exploit these works within the U.S. The landscape changed in 1994 when Congress granted foreign works, which had previously enjoyed copyright protection abroad but not in the United States, the same full protection available to U.S. works through of the Uruguay Round Agreements Act (URAA). Now, foreign works which had previously been “free for the using” all of a sudden were protected under U.S. copyright law. See §514 of the URAA, 108 stat. 4976 (codified in 17 U.S.C. § 104A, 109(a)). For a brief history of the events leading to the URAA, see note 1.
In 2001 during the Bush administration, several plaintiffs brought a lawsuit claiming that §514 was violative of the U.S. Constitution’s Copyright Clause and First Amendment. The case eventually reached the U.S. Supreme Court, and on January 18, 2012, the U.S. Supreme Court, in a 6 to 2 decision (Justice Kagan did not participate), affirmed the holding of the Tenth Circuit that §514 was constitutional on both fronts. See Golan, et al., v. Holder, Attorney General, et al., 565 U.S. (2012).
The following discusses the arguments set forth by the petitioners and the Golan Court’s response. Citations to the Golan case provide the page numbers for the Slip Opinion.
The Copyright Clause and §514
The Copyright Clause of the U.S. Constitution states that “Congress shall have 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. Art. I, §8, cl. 8.
The petitioners relied on a two-pronged approach to try and persuade the Golan Court that §514 was unconstitutional under the Copyright Clause. The petitioners first argued that the “limited Times” phrase prevented Congress from: 1) ever changing any previously prescribed statutory limited time period for copyright protection; and/or 2) “converting” a work previously in the public domain to a protected copyrighted work.” Golan at 14. As the argument went, Congress’ interference with any in-effect statutorily limited copyright term caused unfair unpredictability in the “public domain” works category. The U.S. Supreme Court disagreed with this position on the basis of its decision in Eldred v. Ashcroft, 537 U.S. 186 (2003).
In Eldred, the U.S. Supreme Court had held that Congress acted within its constitutional bounds under the Copyright Clause when it extended the terms of existing copyrights by 20 years under the Copyright Term Extension Act (CTEA). See note 2. As the Eldred Court noted, the Copyright Clause does not specify a specific, fixed period. Instead, ‘ “ the term [limited] is best understood to mean “confined[d] within certain bounds,” “restrained[ed],” or ‘circumscribed.” Golan at 14 quoting Eldred at 192-193.
The Golan petitioners argued that Eldred was distinguishable because §514 implemented a limited time that had “already passed for works in the public domain.” Golan at 14. First, such authority on the part of Congress would allow it to institute a “second “limited” term, after the first expires, a third after that, and so on” to achieve perpetual copyright terms. Golan at 15. Second, prior to §514, Congress had not extended copyright protection to public domain works; the CTEA merely granted pre-expiration term extensions.
The Golan Court found the “perpetual copyright” argument untenable. The Court first pointed out that prior to §514, the limited term for foreign works once excluded from U.S. Copyright protection as “zero.” As the Court stated, a “limited time” of exclusivity must begin before it may end. Thus, a work which never had copyright protection cannot be as a “copyrighted” work. Instead, §514 was recognizing copyright protection for works enjoying copyright protection in a foreign jurisdiction(s) but not in the United States. Golan at 15.
Furthermore, in support of its holding that Congress did have the right to affect works in the public domain under the Copyright Clause, the Golan Court considered legislative history and case law as far back as 1790. For example, the Copyright Act of 1790 granted protection to many “maps, charts, books, or books already printed within these United States” which had previously been in the public domain. This Act “launched a uniform national system” for copyright protection so that copyright decisions would no longer be at the discretion of the individual States and result in situations where a work may enjoy copyright protection in one state but not another. Golan at 16. The Court also cited several private bills between 1849 and 1898 which restored the copyrights of works that previously had been in the public domain as evidence to support its position that “Congress has not understood the Copyright Clause to preclude protection for existing works.” Golan at 17.
In siding with Congress, the Golan Court several times pointed out that the foreign works which are now protected by U.S. Copyright Law through §514 “got there after a term of zero or a term cut short by failure to observe U.S. formalities.” See, e.g., Golan at 30, note 35. This is not a situation where the copyrights of the works had already expired and entered the public domain to due to the lapse of time under the copyright terms of the originating country. The foreign works subject to §514 are being accorded the same copyright protection as if they had been created in the United States and still within the period of copyright protection under the law.
The petitioners next attempted to justify their position as the correct one by arguing that the Copyright Clause’s purpose was to spur the creation of new works as a way to meet the purpose articulated in the Copyright Clause of “promoting the Progress of Science and the Useful Arts.” Golan at 20. As the argument went, §514, by dealing solely with works already created, ‘ “provides no plausible incentive to create new works” ’ and is therefore invalid. Golan at 20 (quoting “Progress of Science” petitioners’ brief).
Again the Golan Court found this “reaching argument” non-persuasive based on its holding in Eldred. The Court explained that the permissible ends of the Copyright Clause extended beyond the creation of new works and rejected the notion that the only way Congress can provide incentives to promote the progress of science is to provide incentives to create new works. Golan at 21. In fact, the U.S. Supreme Court had previously recognized that ‘ “copyright supplies the economic incentive to create and disseminate ideas.” ’ Golan at 22 quoting Harper & Row, Publishers, Inc. v. Nation Enterprises, 471 U.S. 539, 558 (1985); and Eldred 537 U.S. at 206. The Golan Court further pointed out that until 1976, federal copyright protection was contingent on publication and that at that time, the law provided “Copyright” incentives not just for creation but also dissemination through publication” Golan at 21-22.
Quite apart from the legal acrobatics relied on by the Golan petitioners, common sense would also suggest that incentives for creation and dissemination of copyrighted works go hand-in-hand. For example, most authors write a book in hopes that the book will be published. Similarly, most composers hope that their composition will be played by an orchestra and/or recorded. Most creators are not creating the copyrighted work with the intent to lock it away in a safety deposit box. And disseminated copyrighted works can help pave the way for the creation and publication of new works and derivative works via income from existing works. See Golan at 20, note 25. Therefore the right to enjoy copyright protection throughout the world under the URAA involves both the creation of copyrightable works as well as their dissemination. See Golan at 21-22.
In reaching its conclusion that “§514 falls comfortably within Congress’ authority under the Copyright Clause,” the Golan Court noted that the congressional record shows that [f]ull compliance with Berne [via §514 of the URAA] was expected to expand foreign markets available to U.S. authors and invigorate protection against piracy of U.S. works abroad “thereby benefitting copyright-intensive industries [in the U.S.] and inducing greater investment in the creative process.” Golan at 22 referring to S. Rep. No. 103-412. The Copyright Clause operates to “empower Congress to determine the intellectual property regimes, that overall, in that body’s judgment, will service the ends of the clause.” Golan at 21 quoting Eldred at 222. And in the Court’s judgment, §514 therefore does not violate the Copyright Clause.
The First Amendment and §514
The petitioners also mounted an odd First Amendment (freedom of expression) violation charge by arguing that §514, by restoring previously “freely accessible works” to copyright status violated the First Amendment. Under our First Amendment jurisprudence, any law which is deemed to interfere with an individual’s freedom of speech is subjected to a heightened judicial scrutiny standard. The Tenth Circuit had held that even though it did have some impact on the petitioners’ freedom of expression, §514 withstood heightened scrutiny because the “constriction of public domain was narrowly tailored to fit an important government objective, namely the aim of protecting U.S. copyright holders’ interests abroad. See Golan at 13 citing Tenth Circuit’s decision on the matter. Thus, §514 does not violate the First Amendment.
Not surprisingly, the U.S. Supreme Court also found the First Amendment arguments non-persuasive. In contrast to the Tenth Circuit, however, the U.S. Supreme Court concluded that §514 did not even required the heightened review sought by the petitioners because it does not interfere with the “built in” protections (i.e., idea/expression dichotomy and the fair use doctrine) which strike a balance between the First Amendment and the Copyright Act. In addition, “Congress adopted several measures to ease the transition from a national scheme to an international copyright regime.” See Golan at 25.
Furthermore, the petitioners did not allege a First Amendment issue situation where actual copyright protection actually “hinged on the author’s viewpoint.” Theirs was not a situation where the freedom of expression rights of an actual works creator were at issue. Indeed copyright law by its very nature is restrictive of expression and could be perceived as having a First Amendment implication because it does prevent the right to freely use/express copyrighted works by others. Yet, as the Golan Court pointed out, “[i]f Congress could grant protection to copyrighted works without hazarding heightened First Amendment scrutiny, then what free speech principle disarms it from protecting works prematurely cast into the public domain for reasons antiethical to the Berne Convention?” Golan at 28.
Indeed, the Golan Court seemed offended by the petitioners’ stated contention that the foreign works affected by §514 “belonged to them” or were vested in them. See Golan at 27. The Golan decision was very clear that once a copyrighted work enters the public domain, it belongs to no one. That is, the rights do not reinvest in anybody, and the foreign works at issue in Golan surely had never belonged to the petitioners. The Golan petitioners merely ‘ “ possess unfettered [free] access to any of the works at issue.” ’ Golan at 27 quoting Tenth Circuit’s opinion.
The Golan majority did acknowledge that the dissent had touched on an issue that was never raised by the Golan petitioners: that §514 will result in a “flood” of orphan works. An orphan work is a copyrighted work for which the copyright owner cannot be contacted/located. Users of orphan works risk the possibility that a previously non-locatable copyright owner may come forward and sue infringement. That copyrighted works often become orphans is not surprising given the long protection period afforded by copyright law. See note 3. Reasons for a copyrighted work becoming an orphan are that the copyright owner (an individual) has died or gone out of business (business entity was the owner) before the term of copyright protection has expired and it is not possible to establish to whom ownership of the copyright has passed.
The orphan copyright problem has been recognized as a major issue for many years, and in 2009 the U.S. Senate passed the Shawn Bentley Orphan Works Act which would have helped libraries with mass digitization projects, among others, by limiting damages in any infringement lawsuit later brought by the copyright owner of what was thought to have been an orphan work. The bill died in the House, and as the date of this blog, no further legislation has been introduced.
There is no doubt that orphan copyrights are a major issue, but that the problem existed long before the enactment of §514, in large part due to the passage of the 1976 Copyright Act where Congress eliminated the formalities required for obtaining copyright protection. See note 2. But as the Golan majority opinion rightly pointed out, the issue of orphan works is within the province Congress to address the “host of policy and logistical questions identified by the dissent.” Golan at 31.
An orphan copyright is basically an “in limbo” copyright. By this, the author means that no one is benefitting from the copyrighted work. Because the copyright owner cannot be located, the copyright owner is losing out on potential financial benefits. The public is losing out on an opportunity to enjoy the work through the purchase, e.g., of a symphonic recording of a composition. Potential copyright licensees and assignees are losing out an opportunity to make the work available to the public. And in limbo copyrights, by being unavailable, are arguably even interfering with the objectives of the Copyright Clause: “to promote the progress . . . of the arts.”
From the author’s perspective, legislation to limit any future damages to statutory damages particularly where the user of is non-profit institution is a reasonable accommodation to addressing the tension between orphan copyrights and “known” copyrights providing that the non-profit institution took reasonable, ascertainable steps to contact the copyright owner of what is believed in good faith to be an orphan copyright. Currently, Congress seems to have no interest in passing any relief related to orphan copyrights.
As an aside, it is recommended that whenever a decedent’s copyrighted works, are to be transferred to an heir(s) of the decedent’s estate either via a will (or trust) or under the intestate laws of the governing state law, that a formal assignment of rights or equivalent document be prepared by the personal representative of the estate or executor showing the transfer of ownership and recorded with the U.S. Copyright Office. If the work had not been previously registered with the U.S. Copyright Office, the heir should register it as the copyright claimant. Such steps will help ensure continuity of ownership documentation and provide a record of ownership to potential copyright users. Recordation with the U.S. Copyright Office should be considered whether or not the copyrighted work is associated with royalties at the time of the decedent’s death. Many copyrighted works have been published posthumously and earned royalties for the heirs of the decedent’s estate. See note 4. And any copyright licensing agreement should include provisions for addressing situations where the copyright owner (an individual) dies, or the copyright owner (a business entity) enters into a joint venture, merges with another business entity, etc.
In summary, the Golan majority decision that §514 is constitutional is appropriate because it is based on legislative history, past precedent, current world economic and trade considerations, and the Court’s understanding that “Congress had determined that U.S. interests were best served by our full participation in the dominant system of international copyright protection [the Berne Convention].” Although there is perhaps no perfect international IP law scheme for totally preventing the unauthorized usage of copyrighted works, the Golan Court noted that §514, by remedying unequal treatment of foreign authors in this country, was intended to secure greater protection for U.S. authors abroad. Indeed, around the time of the Uruguay agreements, there was a “widespread perception that the U.S.’s noncompliance with Article 18 was undermining our leverage in copyright negotiations.” See Golan at 8, note 8. Also, several countries had balked “at protecting U.S. works copyrighted in the U.S., but in those countries’ public domains, until the U.S. reciprocated with respect to their authors’ works.” Golan at 6. Logic tells us that for its authors to be the recipient of “copyright” legal protection abroad, the United States, must, as a first step, offer analogous copyright protection to foreign copyrights.
Notes.
- In 1989, the United States became a party to the Berne Convention for Protection of Literary and Artistic Works (Berne Convention). Under Article 18, member countries to the Convention are to protect foreign copyrights which had been copyrighted in the country of origin. Despite the wording of Article 18, member countries were not truly bound to protect said copyrighted works. The Berne Convention merely provided for a dispute resolution process (DRP) before the International Court of Justice, and there was no requirement that the parties to the convention even had to “follow” the Convention’s DRP. In 1994, the World Trade Organization (WTO) was formed through the Uruguay round of multinational trade negotiations. The Uruguay negotiations resulted in the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). The United States was a signatory to both TRIPS and the URAA. TRIPS requires that all parties must enforce the Berne Convention’s first 21 articles and be subject to the authority of the WTO. The WTO has the authority to rule on any alleged violations of Berne or TRIPS concerning inter alia, failure to protect foreign copyrights. Possible consequences of any violation include sanctions. See also Golan at 8. Furthermore, Congress has extended copyright protection over the years to works which at first blush are not the typical work associated with “the arts.” This protection was obviously in keeping with the times. An excellent example is the WIPO Copyright Treaty of 1996 which provides that computer programs are protected literary works under the Berne Convention. The United States became a signatory to the WIPO Treaty in March 2002.
2. See 17 U.S.C. § 302(a). The Copyright Term Extension Act, enacted after the Unites States’ ascension to the Berne Convention, increased the copyright term to the lifetimes of the authors plus 70 years for works created after 1978. One of the stated rationales was to make the U.S. copyright term consistent with European copyright terms. The U.S. Copyright Office has numerous publications available on-line which explain copyright terms for works created before and after 1978.
3. Copyright protection begins when the idea is reduced to a tangible medium of expression. Actual registration with the U.S. Copyright Office is not required except where the copyright owner plans to file a lawsuit for copyright infringement. There are certain benefits associated with formally registering a copyright within 90 days of publication, and formal copyright registration does have the benefit putting others on notice of the actual copyright.
4. For example, the Confederacy of Dunces and the Neon Bible, both by John Kennedy Toole, were published posthumously through the efforts of Toole’s mother. She is listed as the copyright claimant in copyright registration records maintained by the U.S. Copyright Office.
The foregoing is not legal advice and is for informational purposes only.
