Out of the Public Domain


We’ve all heard of copyrighted works falling into the public domain, but can public-domain works constitutionally be pulled out of the public domain, and placed under the protection of the copyright law?

That was the question resolved by the Supreme Court’s January 18 opinion in Golan v. Holder, and the Court’s answer was “Yes,” but under unique circumstances.

In this column, I’ll explore the Golan majority’s reasoning, and that of Justice Breyer’s dissent, which was joined by Justice Alito.

(Full disclosure: as an author, I have an interest in the enforcement of copyright.  Also, I clerked for Justice Breyer many years ago, when he served as Chief Judge of the U.S Court of Appeals for the First Circuit.)

The Case’s Background

The Golan case concerned the Berne Convention for the Protection of Literary and Artistic Works (“Berne”), which took effect in 1886.  Under Berne’s Article 18, member countries must accord other countries minimum levels of copyright protection, and must treat other countries’ creators as they treat their own when it comes to such protection.  (However, if a work’s copyright has expired in either the country of origin, or the country where copyright protection is claimed, the latter country need not protect the work.)

In 1989, the U.S. joined Berne, but did not protect foreign works, as Berne obligated it to do—even though some of those works had never received copyright protection in the U.S.  Thus, the U.S. did not properly honor Berne’s obligations as between the U.S. and other member countries.

In 1994, another international agreement—the Agreement on Trade-Related Aspects of Intellectual Property Rights—specifically mandated the implementation of Article 18, regarding copyright protection and equal treatment.

The U.S. responded to its obligations under this new agreement by enacting a statute, the Uruguay Rounds Agreement Act (URAA).  The statute addressed foreign works that had never received the parity in copyright protection to which they (and their creators) had been entitled under Article 18, but rather had been wrongly treated by the U.S. as public-domain works.  (These works fell into three categories:  (1) works that had never received copyright protection in the U.S.; (2) pre-1972 sound recordings; and (3) works as to which certain formalities—which had become obsolete under U.S. law—had not been observed.)

The URAA put these three categories of foreign works back under the umbrella of U.S copyright protection, with each type of work being protected anew for the same, full copyright term that governs a U.S. writer’s or musician’s work.  Thus, finally, the U.S. had granted some approximation of what it had promised when it joined Berne:  parity in copyright protection as between U.S. and foreign creators.

It was obvious that the URAA would result in many foreign works’ being pulled out of the U.S.’s public domain.  Thus, a URAA provision offered some accommodation to ameliorate the harsh consequences of the statute for U.S. “reliance parties”—that is, parties who had specifically relied on their access to what had just recently been public-domain works.  Reliance parties, under the statute, could continue to use the works at issue until and unless they received notice of enforcement from the copyright holder.  And even then, they enjoyed a one-year grace period, during which they could continue to use the works without payment.

Still, orchestra conductors, musicians, publishers, and others sued to challenge the statue, claiming that the URAA violated the Constitution’s Copyright and Patent Clause and the First Amendment.  The remedy they sought was the return of the foreign works at issue to the U.S. public domain, which had—albeit due to the U.S.’s violation of Article 18—been their previous home.

However, a 6–2 majority of the Supreme Court—with Justice Kagan recusing herself—disagreed, and thus denied any such remedy.  The majority held that the Copyright and Patent Clause did not prevent Congress from pulling the works at issue out of the public domain, and placing them under the protection of U.S. copyright law.

A Key Precedent: Eldred v. Ashcroft

A key precedent here was the Supreme Court’s 2003 decision in Eldred v. Ashcroft—which pitted (among other interests) the content industries against the “Information wants to be free” crowd.

In Eldred, the Court rejected the argument that it was a Copyright and Patent Clause violation to allow existing copyrights to be extended for 20 more years.  On one hand, the Court noted that the Copyright and Patent Clause simply says that copyrights must be granted for “limited” times and, of course, 20 years is a limited span of time.  On the other hand, those who challenged the 20-year extension made the point that successive extensions of copyright could, in practice, go on forever, and thus could prove, over time, to be formally limited, but effectively unlimited—thus thwarting the purpose of the Clause’s “limited times” language.

Ultimately, the Court allowed the 20-year extension and left for another day—and for future attempted term-extensions—the question of where the outer bound, beyond which no more extensions can be granted, lies.

Those who had challenged the 20-year extension pointed out that the Copyright Clause was not the only relevant constitutional provision at issue in Eldred.  The First Amendment, they argued, was relevant too—for when works fail to fall into the public domain as expected, those who would have read, performed, or otherwise used those works in First-Amendment-related activities, without the need for payment or permission, are thwarted.

This, then, was a classic clash of constitutional language versus underlying purpose, and arguably a clash between two constitutional provisions as well.  Surely, the same Framers who penned the First Amendment would not have wanted to see continually ballooning copyright terms.  And yet, they could have stipulated a fixed copyright term, and did not.

They were wise not to.  After all, the relevant considerations could radically change.  People have begun to live much longer, and, recently, the ability of creators to make a living from their work in light of new technologies has been seriously questioned—for instance, in this disturbing argument by Ewan Morrison.  But by omitting to specify a term, the Framers left modern jurists with an odd conundrum.  And, as I’ll explain below, the “limited times” language that caused such problems in Eldred, was also raised in Golan.

Why the Golan Court Found No Copyright Clause Violation in the Government’s Shifting Certain Foreign Works out of the U.S. Public Domain

In Golan, the Court made short work of the argument that the Copyright and Patent Clause prevents Congress from pulling works out of the public domain.  Indeed, I suspect that many of the majority Justices found this to be an easier case, under the Clause, than Eldred was.

That is because invoking the Copyright Clause’s “limited times” language was much less persuasive in Golan than it was in Eldred—where, as noted above, that argument also lost.  In Eldred, there was a serious and important concern about what would happen in the future, with successive extensions of copyright terms.  InGolan, by contrast, there was every reason to believe that this kind of copyright extension, to reverse past wrongs, would never be repeated.

Moreover, for many of the works at issue in Golan, the issue was not actually copyright extension (which would have triggered the “limited times” language) but copyright recognition.  Many of the works at issue had never enjoyed U.S. copyright protection at all, but rather had always been deemed to reside in the U.S.’s public domain.  And, as the Court put it, the limited time of exclusivity that U.S. copyright provides “must begin before it may end.”

Like third-party beneficiaries in a contract case, the Court reasoned, the foreign copyright owners were simply asking for the benefit of the bargain that the U.S., in joining Berne, had struck years ago—and which had been so long withheld.

And history, the Court pointed out, established that works had been shifted out of the public domain in the past, even as early as 1790—suggesting that the URAA’s measure to make things right for foreign copyright holders was not as unthinkable or unprecedented as some might suggest.

The Court Wrongly Belittled the Argument Based on the Copyright and Patent Clause’s Prefatory Language

In its Golan opinion, the Court seemed almost irritated at the reiteration of some of the arguments it had already dispatched in Eldred.  One such argument was based on the claim that the prefatory words of the Copyright and Patent Clause—proclaiming that the purpose of copyrights and patents is to “promote the Progress of Science and useful Arts”—are significant in interpreting the Contract Clause.

It seems that most of the Justices on the current Court believe that this prefatory language means little, if anything, that is relevant to the interpretation of the Clause.  Yet I’m very glad that the argument based on that language was raised once again, for I believe that it is highly powerful and convincing, and should not be discarded.

According to the Court in Eldred, this language—and that of the Copyright Clause as a whole—“empowers Congress to determine the intellectual property regimes that, overall, in that body’s judgment, will serve the ends of the Clause.”  It does not, however, specially favor the creation of new works, according to the Court.

But that cannot be right.  The Court treats the Clause as if it were some kind of dry administrative scheme, and not an engine for creativity and the progress and enlightenment that creativity brings.  Any fair reading of the Copyright and Patent Clause ought to give creators—scientific, artistic, and writerly—a special place.  It is they, after all, who fulfill the preface’s hope and intent of furthering social progress.

Yet the majority is wrongly dismissive of creators’ role, acknowledging that “[t]he provision of incentives for the creation of new works is surely an essential means to advance the spread of knowledge and learning,” but adding that the provision of such incentives “is not the sole means Congress may use . . . .”

This is a massive understatement, at best. Without creators, in the arts (and original thinkers in the sciences), there would be little progress at all. Thus, giving creators incentives is not just “an essential” means, it is the means, by which progress is accomplished.

Finally, the First Amendment dimensions of the Copyright and Patent Clause make the argument based on the Clause’s prefatory language even stronger:  Let’s assume for purposes of argument that the Clause’s preface can plausibly be read to focus more sharply not on creators, but rather on disseminators—as the Court bizarrely contends.  Once the First Amendment, too, is brought into the mix, surely creators ought to come to the fore.

After all, the First Amendment is all about protecting speakers, writers, and all those who seek to express themselves without government interference.

Justice Breyer’s Dissent in Golan

In his dissent, which Justice Alito joined, Justice Breyer emphasizes the Copyright and Patent Clause’s preface, and thus the Clause’s purposes.  Breyer also stresses the Clause’s emphasis on “encourag[ing] the production of new material,” a role which the Court shockingly all but ignores—for, as I noted above, it belittles the vital, core role that creators play.  (To me, the contrary historical analysis that Breyer provides on this point is so convincing, it is surprising that some of the majority Justices did not join at least this portion of Breyer’s opinion, and perhaps alter the rest of their analysis as well.)

Interestingly, though, despite Breyer’s recognition that creators and the innovations they bring are the very key to the Copyright and Patent Clause, he still contends that the foreign works at issue in Golan cannot be pulled out of the U.S. public domain via statute, in order to fulfill obligations to foreign creators.

Indeed, Breyer makes clear that, in his view, this cannot be done even to remedy the wrong the U.S. perpetrated when it failed to honor its promise to treat those works as copyrighted in the U.S.  Thus, in this context at least, Breyer ends up not being pro-creator after all, despite his pro-creator interpretation of the Clause’s preface.

That seeming inconsistency can be better understood in conjunction with the fact that Breyer encourages a “utilitarian” understanding of the Copyright Clause, as opposed to a “natural rights” one.  Taking a utilitarian perspective, Breyer reasons that Congress may determine, in a given case, that copyright’s ability to spur individual effort outweighs the costs—including the First Amendment costs—of the copyright grant, but that the Supreme Court may also determine that the reverse is true.

In my view, though, copyright’s incentive for individual effort should not be deemed to be just one factor to be weighed in the balance in a utilitarian calculus.  Rather, I think that factor is far more important than the others, especially based on the Clause’s pro-creator prefatory language, and its link to the First Amendment.

Thus, I’d prefer something more like a “natural rights” approach, in Breyer’s terms. Such an approach, I believe, would hew much closer to the Clause’s pro-creator purpose.

Justice Breyer’s Concerns: A Massive Administrative Burden, and Line-Drawing Difficulties, May Hobble Access to the Works at Issue

Turning to the actual foreign works at issue, Breyer embarks on his utilitarian calculus, and notes, in particular, the cost of newly protecting these works with U.S. copyrights.  He expresses concern that new and much higher costs for the use of certain works may affect, for instance, school orchestras that soon could not (after taking advantage of possible “reliance party” status) afford to perform certain compositions, with great detriment to kids’ education.

Breyer also worries about the massive administrative burden of determining—for numerous works—whether each actually counts as having a “restored” copyright; searching for the copyright holder (who may well be a descendant of the creator and not the creator herself or himself—which also greatly weakens, in those cases, the creator-incentive argument); and negotiating a fee.

For these reasons, Breyer fears the loss or limitation of the use of these works.  He is also concerned by the problem of “orphan works”—those as to which the copyright holder is difficult or impossible to track down, and where the work at issue may have little economic value, and yet still have some cultural value.  (One could also describe these works as belonging to the “long tail,” the large corpus of works in which each work is rarely used, but as to which the total number of uses for the whole corpus is still impressive.)

Breyer also notes that some will surely see the high administrative costs of legally procuring and using copyrighted materials as an invitation to piracy—leading, of course, to financial loss for creators and other copyright holders.

For all these reasons, from a utilitarian viewpoint, Breyer suggests that leaving the works at issue in the public domain would be best.

Breyer also points out that here, the kind of difficult line-drawing issues that Eldredraised do not exist.  Eldred raised the question of how long is too long for a copyright extension (Is twenty years too long?  What about thirty? Fifty?), to which numerous answers could be given.  In contrast, Golan allows for a simpler answer, Breyer points out:  Just keep the material where it is now, in the U.S. public domain.

In addition, Breyer acknowledges the case’s First Amendment implications, and—as he had in Eldred—expresses concern that powerful media interests are running the show here, to the detriment of the public interest and of certain creators as well.

In support of his point, Breyer notes that, before passing the statute at issue, Congress heard testimony that almost exclusively came from U.S. copyright holders. Those copyright holders testified to their hope that, if foreign creators’ material is pulled out of the public domain in the U.S., then they may convince other countries to pull U.S. material out of their public domains, as well.

So perhaps the legislation’s real effect and purpose wasn’t restoring foreign creators to their rightful copyright status, but instead raiding foreign countries’ public domains for U.S. works.

Such interests will surely speak much louder than, say, the school orchestras for which Breyer is concerned—and that’s one reason why he was right to speak up for such small and comparatively poor interests.  I only wish that Breyer—and others on the Court—had also spoken up more loudly for creators generally, and for the central role they play—a role that the First Amendment and Copyright and Patent Clause clearly recognize, but that the Court somehow does not.

JULIE HILDEN practiced First Amendment law at the D.C. law firm of Williams & Connolly from 1996-99. She is the author of a memoir, The Bad Daughter and a novel Three. She can be reached through her website.

This column originally appeared in Justia‘s Verdict.

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