Seldom does a United States Supreme Court justice refer to a (perhaps mythical) statement of a 6th-century British king in interpreting the U.S. Constitution, but it happened last week in Golan v. Holder. That case, which we have reported on at both the trial and appellate level, involves a constitutional challenge to the power of Congress to retroactively restore copyright protection to foreign works.

The United States, like most countries, is a party to the Berne Convention, which requires its members to provide at least as much copyright protection to foreign authors and composers as it does to its domestic authors and composers.

When Congress ratified the Berne Convention in 1989, it was reluctant to apply it retroactively. As a result, U.S. copyright protection was denied to pre-existing works of foreign authors unless those works were already protected under U.S. copyright law (as may have happened if the author registered the work with the U.S. Copyright Office). While other countries objected to this minimalist approach to the treaty, there was initially no effective means of compelling the United States to adopt a more generous interpretation of the treaty.

That changed in 1994 as a result of the Uruguay round of multilateral trade negotiations. The Uruguay Round established the World Trade Organization (WTO); produced the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS); and created a process by which TRIPS violators could be subject to trade sanctions under WTO procedures.

Under the threat of such sanctions, the United States considered more seriously its commitment under the Berne Convention. The result was the enactment of the Uruguay Round Agreements Act (URAA), which at §514 provided for the restoration of copyright in foreign works that predated U.S. accession to the Berne Convention.

The prospect of removing works from the public domain provoked the ire of many, including orchestra conductors, musicians and publishers, all of whom had enjoyed the opportunity to perform or publish millions of foreign works (such as the compositions of Shostakovich and Prokofiev) without having to worry about compensating the authors or composers who created them. Such removal was felt by many to retract, on the effective date of §514, rights of free speech that were available the day before.

They filed a lawsuit against the U.S. attorney general, seeking a ruling that §514 of the URAA was unconstitutional. The case had numerous twists and turn, eventually landing at the doorstep of the Supreme Court.

The case attracted widespread attention. The 52 amicus briefs nearly all argued that Congress had no power to remove works that had already been in the public domain. In a 6-2 decision, the Supreme Court disagreed.

The primary issue at hand was whether restoration of copyright in public domain works was a violation of First Amendment free speech rights. In holding that it was not, the majority found support from the Copyright Act of 1790, which granted protection to many works previously in the public domain: “The First Congress, it thus appears, did not view the public domain as inviolate.” The Court said that the “construction placed upon the Constitution by the drafters of the first copyright act of 1790, ….many of whom were members of the convention which framed [the Constitution], is of itself entitled to very great weight.”

In addressing the apparent conflict between the First Amendment and the copyright and patent clause of the Constitution, the majority said:

Some restriction on expression is the inherent and in tended effect of every grant of copyright. … [T]he Framers regarded copyright protection not simply as a limit on the manner in which expressive works may be used. They also saw copyright as an engine of free expression: By establishing a marketable right to the use of one’s expression, copyright supplies the economic incentive to create and disseminate ideas.

The dissent challenged the notion that restoring copyright in pre-existing works could help to generate new works of authorship, since the only works affected had already been published. The majority appeared to believe that U.S. commitment to intellectual property treaty obligations would indeed help motivate authors and composers.

The amicus briefs argued that, when a work becomes part of the public domain, rights to it become vested in the public and Congress can take those rights away, if at all, only with just compensation. This “vested rights” approach has it exactly backwards, said the Court.

The Court explained that rights in a work typically vest in an author at the outset of copyright protection. Once the term of protection ends, the work simply lapses into the public domain. Anyone has free access to the public domain, but no person acquires ownership rights in the once-protected work.

It was this approach of the majority that elicited the dissent’s reference to the legendary 6th-century statement of King Diarmed: “To every cow her calf, and accordingly to every book its copy.” The point being made by the dissent was that the majority opinion was applying discredited notions of “natural law,”[1] rather than the functional interpretation that the dissent felt should hold sway. According to Justice Breyer’s dissent, the statute would provide no incentive to create new works, and therefore the First Amendment concerns should trump this proposed application of the copyright clause of the Constitution.

So what is the practical import of this ruling? The Act mainly applies to works first published abroad between 1923 and 1989.

There are three categories of such works that are now covered by copyright as a result of §514 of the URAA:

1. Works published in countries that had copyright relations with the United States during this time period, such as most of Western Europe and Latin America, Australia, and Japan, whose authors did not satisfy American copyright formalities, perhaps because the author published the book abroad without proper American notice, or perhaps because the author obtained a valid American copyright but failed to renew it.
2. Works that entered the public domain due to a lack of copyright relations between the US and the country where the work was first published, including all works published in Russia before May 1973, in China before March 1992, in South Korea before October 1987 and in Egypt or Turkey before March 1989.
3. All sound recordings from eligible foreign countries published after February 15, 1972. The practical significance of federal copyright restoration to this category of works is less clear, since these works received, and continued to receive, copyright protection under state law.

All in all, it was a good day for authors and composers, and a bad day for those who believed that works in the public domain would remain there for all to use.

[1] Natural law is an approach that attempts to divine universal principles from man’s inherent nature, while “positive law” is used to describe man-made laws which bestow specific privileges upon, or remove them from, an individual or group. While natural law is sometimes dismissed as founded on slippery concepts, it was embraced by at least some of the Founding Fathers, who included in the Declaration of Independence the statement that it has become necessary for the United States to assume “the separate and equal station to which the Laws of Nature and of Nature’s God entitle them”.