IP Alerts

January 31, 2012

As reported earlier, on January 18, 2012, the U.S. Supreme Court in Golan v. Holder upheld a 1994 federal law restoring copyright rights in foreign works of authorship previously considered in the U.S. to be freely available as part of the public domain. In this case, the Supreme Court was asked to determine whether Congress had violated the Copyright Clause of the Constitution and the First Amendment when it enacted the 1994 law.

By way of background, Congress passed the 1994 law to implement and comply with the terms of the Berne Convention, an international treaty governing international copyright relations. The Berne Convention requires its member countries to treat authors from other member countries in a manner comparable to the treatment of native authors. This requirement includes providing protection for foreign works unless the copyright terms in such works have expired in the country where protection is claimed or in the country of origin.

The U.S. became a party to the Berne Convention in 1989, but did not initially comply with its requirement to protect foreign works in the U.S. that were created before the U.S. joined. Instead, the U.S. granted copyright protection in the U.S. only to foreign works created after 1989, and provided no copyright protection for works that were considered in the public domain in the U.S. at the time. This policy denied U.S. copyright protection to many foreign works that had been created between 1923 and 1989.

In 1994, as part of the negotiation of other international trade agreements, the U.S. changed the law to restore copyright protection to pre-existing works of other Berne member countries protected in their country of origin but not in the U.S. This meant that many musical compositions, books, films, and paintings by foreign authors that had been previously considered as falling within the public domain were now deemed to be protected as copyrighted works in the U.S. Examples of foreign works that were removed from the public domain as a result of the 1994 law include symphonies composed by Sergei Prokofiev; books by J.R.R. Tolkien, Joseph Conrad, George Orwell, and Virginia Woolf; poems by T.S. Eliot; films by Alfred Hitchcock; and paintings by Pablo Picasso.

In 2001, a group of orchestra conductors, musicians, and publishers challenged the 1994 law, arguing that Congress had exceeded its authority under the Copyright Clause of the U.S. Constitution and had violated the free speech protections afforded by the First Amendment. The group argued that once works enter the public domain, they must remain there. The issue reached the Supreme Court in the Golan case. 

In a 6–2 opinion authored by Justice Ruth Bader Ginsburg, the Supreme Court held that neither the Copyright Clause nor the First Amendment prevented Congress from removing the foreign works from the public domain via the 1994 law.

The Copyright Clause states that “Congress shall have Power…[t]o promote the Progress of Science…by securing for limited Times to Authors…the exclusive Right to their…Writings.” Petitioners contended that the 1994 law violated the “limited Times” restriction of this constitutional clause, as well as the directive to promote the progress of science. The Court noted that the text of the Copyright Clause does not exclude the application of copyright protection to works in the public domain. The Court cited its prior decision in Eldred v. Ashcroft, which had upheld Congress’s lengthening of the duration of existing and future copyrights by twenty years. The Court also held that historical actions of Congress also supported the Court’s reading of the Copyright Clause. The 1994 law was not the first time that Congress had acted to protect works once in the public domain or to protect subject matter previously unprotected. With the 1994 law, Congress provided no more protection to the restored foreign works than had already been extended to domestic works. As a result, held the Court, the law did not violate the “limited Times” portion of the Copyright Clause.

The challenge based on the failure of the law to promote the “progress of science” also failed. Petitioners contended that providing protection to works already in the public domain did not generate or induce the creation of new works, and therefore could not serve the Copyright Clause’s aim to promote knowledge and learning. The Court disagreed, noting that dissemination of existing and future works, which the 1994 law would encourage as part of a well-functioning international copyright system, is also an appropriate way to promote science.

The Court also rejected the First Amendment challenge, holding that the 1994 law did not require heightened scrutiny and noting that the law did not attempt to regulate the content of the works or impose a blanket prohibition on the petitioners’ or on the public’s access to the restored works. The Court observed that the 1994 law simply put the foreign works in the position that they would have occupied if the current copyright laws had been in effect when those works were created and first published. 

The Court’s decision is important in the analysis of pre-1989 copyrighted works of foreign origin. For more information, please contact Fitch Even attorneys Joseph T. Nabor or Alisa C. Simmons, the author of this alert.