A First Amendment Right to Peter and the Wolf? Restoration of Copyright for Works of Foreign Authors in Doubt

By Lisa Tittemore.

April 2009 IP Update

A recent federal court decision throws into doubt a federal law providing for the restoration of copyright in certain works by foreign authors. The law, which Congress  passed to satisfy U.S. obligations under an international treaty, was held to violate the First Amendment rights of the authors, musicians, artists, and businesses who challenged it.

While the decision in Golan v. Holder is a tremendous victory for the plaintiffs – a challenge to a copyright law on First Amendment grounds was not expected to succeed – it is not likely to be the end of the matter. The case, which has been before a Court of Appeals once already, will likely be taken up on appeal again.

Before Congress passed the challenged law, the works at issue had entered the “public domain,” primarily for failure to comply with various formalities imposed by U.S. copyright law, some of which are not imposed under the law of other countries. The effect of the challenged legislation was to restore the copyright in those works, precluding anyone other than the owners of the restored copyrights from exploiting these works — even those who had begun to do so after the works had fallen into the public domain.

The federal district court in Colorado ruled on April 3 that the restoration of copyright in this manner violated the First Amendment rights of the plaintiffs, who had relied on their right to exploit these works.

It was in 1994, as part of the Uruguay Round Agreements Act (“URAA”), that Congress acted to restore U.S. copyright to foreign authors who had lost protection of their work. Their loss of copyright resulted from noncompliance with U.S. copyright law, “including failure of renewal, lack of proper notice, or failure to comply with any manufacturing requirements” or because prior U.S. law did not protect those works such as in the case of certain sound recordings or due to lack of national eligibility. 17 U.S.C. § 104A.

Congress passed § 104A in order to comply with the Berne Convention, one of the key international treaties aimed at protecting copyright, which among other things seeks to make national copyright laws more consistent with international norms.

In 2001, the musician Lawrence Golan and other artists and businesses challenged the constitutionality of § 104A.  In 2005, the district court in Colorado first granted summary judgment in favor of the U.S. government.  The plaintiffs appealed this decision to the Tenth Circuit Court of Appeals.

In 2007, the Tenth Circuit reversed the district court’s decision and ordered the lower court to determine whether § 104A ran afoul of the First Amendment.  Although the Tenth Circuit held that Congress had not exceeded its authority under the Copyright Clause of the Constitution, it concluded that the plaintiffs had “shown sufficient free expression interests in works removed from the public domain to require First Amendment scrutiny” of § 104.

As the Tenth Circuit noted, “[e]ach plaintiff in this case relies on artistic works in the public domain for his or her livelihood. Lawrence Golan, for example, performs and teaches works by foreign composers, including Dmitri Shostakovich and Igor Stravinsky.  … Prior to the URAA, each plaintiff utilized or performed works by foreign artists in the public domain, such as Sergei Prokofiev’s renowned ‘Peter and the Wolf.’ Since the passage of the URAA, plaintiffs must pay higher performance fees and sheet music rentals as well as other royalties. In many cases, these costs are prohibitive.”

The reliance on public domain works was at the heart of the case. The Tenth Circuit found merit in the plaintiffs’ observation that the experience of other countries suggests that the United States could comply with the Berne Convention through less restrictive means, such as by permitting “reliance parties” to continue to make those uses of the work that they had made before the copyright was restored.

The URAA, by contrast, had provided “only a safe harbor allowing a party to use a restored work for one year after receiving notice of the restored copyright protection.”

The Tenth Circuit concluded that, because § 104A “contravened a bedrock principle of copyright law that works in the public domain remain in the public domain,” and  “altered the traditional contours of copyright law,” it is subject to First Amendment scrutiny. In so concluding, the Tenth Circuit relied heavily on language from the Supreme Court in Eldred v. Ashcroft, one of the leading Supreme Court decisions of recent years to touch on this issue.

Clearly taking its cues from the Tenth Circuit, the district court, on remand, concluded that § 104A was content-neutral, thus the defendants were required to show that the statute was “narrowly tailored to serve a significant governmental interest.”

Next, the court determined that Congress had sufficient discretion under the Berne Convention to comply with the Convention “without interfering with a substantial amount of protected speech – for example, by permanently ‘excepting parties, such as plaintiffs, who have relied upon works in the public domain,’” but had failed to do so.

Although the U.S. argued that § 104A served other important governmental interests – such as protecting the copyrights of United States authors abroad – the court found that the U.S. had failed to support such arguments.

While agreeing that Congress has a legitimate interest in complying with the Berne Convention, the court concluded that § 104A is substantially broader than necessary to achieve the Government’s interest. On this basis, the court entered summary judgment in the plaintiffs’ favor.

Whether those “restored works” remain in the public domain, or become available for public use under more narrowly tailored conditions, will depend on further action by the Tenth Circuit or by Congress, which will likely act to implement its obligations under the Berne Convention even if the district court’s decision is upheld on appeal.

In any event, Golan reveals the strong imperative of the courts to protect free speech rights relating to works in the public domain, even in the face of Congressional action seeking to implement international treaty obligations.