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Oral Arguments in Golan Case May Focus
On Justice Scalia Views of Original Intent

Sept. 29, 2011, 4:00 AM

The parties’ briefs and briefs by amici curiae in a case soon to be argued before the U.S. Supreme Court seem to indicate that the views of Justice Antonin G. Scalia may be important to determining whether Congress has the constitutional power to restore copyrights to certain foreign works previously in the public domain, a copyright law expert told BNA (Golan v. Holder).

Several recently filed amicus briefs, added to the many already filed on both sides in the case, take the government’s position that Congress did not exceed its constitutional powers or infringe free speech rights in restoring rights in an attempt to comply with U.S. treaty obligations.

Berne Convention Raises Issues.

On Oct. 5, the Supreme Court will entertain oral arguments in the case, which originates in the U.S. accession in 1989 to the Berne Convention for the Protection of Literary and Artistic Works of 1886. Article 18 of the treaty requires that all signatory states mutually recognize each other’s copyrights, retroactively to pre-existing foreign works, even if those works had been treated as public domain works in a country prior to its Berne accession.

In conjunction with accession by the United States, Congress enacted the Berne Convention Implementation Act of 1988, Pub. L. No. 100-568, 102 Stat. 2853, 2860. However, the statute did not implement the retroactivity principle set forth in Article 18. It recognized only those foreign copyrights covering works that were not already in the public domain under U.S. law, and it applied the treaty to those foreign works created only after March 1, 1989.

In negotiating the Uruguay Round of the General Agreement on Tariffs and Trade—which led to the U.S. accession to the Agreement on Trade-Related Aspects of Intellectual Property—the United States made commitments to comply with Article 18 of the Berne Convention.

Eventually, Congress enacted the Uruguay Round Agreements Act of 1994, Pub. L. No. 103-456, 108 Stat. 4809, 17 U.S.C. §§104A, 109. Section 514 of the URAA restored rights in any foreign work that was in the public domain as a result of (1) the failure of the copyright owner to comply with formalities mandated by pre-Berne Convention U.S. law, (2) the lack of subject matter protection, or (3) the lack of national eligibility. It did not restore rights in works that had originally been protected, but whose protection had expired under U.S. law.

Section 514 also offered some concessions to “reliance parties,” entities that had made use of certain foreign works with the understanding that they were in the public domain. An owner of a foreign work was required to file notice of restoration or give actual notice to a reliance party, and the reliance party would be given a certain amount of time to sell its inventory of copies of the work in question before infringement liability would kick in. Use of derivative works could continue if the reliance party paid compensation in an amount set by agreement or by a federal court.

Coalition of Users Fight Statute in Court.

In 2001, a group of businesses and artists—including orchestra conductors, teachers, performers, publishers, archivists, and movie distributors—that had relied upon the public domain availability of pre-1989 foreign works initiated a lawsuit against the federal government, arguing that the restoration of rights interfered with their First Amendment rights and also violated the Copyright Clause of the U.S. Constitution.

The case went up to the U.S. Court of Appeals for the 10th Circuit, which held that Section 514 was a content-neutral regulation of speech (119 DER A-9, 6/23/10). The plaintiffs appealed to the Supreme Court, which granted certiorari on the following questions:

1. Does the Progress Clause of the United States Constitution prohibit Congress from taking works out of the Public Domain?

2. Does Section 514 violate the First Amendment of the United States Constitution? (45 DER A-3, 3/8/11)

Several amici curiae have filed briefs in this case, many of them supporting the petitioners (151 DER A-4, 8/5/11). The American Bar Association and a group of foreign publishers filed briefs supporting the government (157 DER A-8, 8/15/11; 153 DER A-8, 8/9/11).

‘Original Intent’ Often Argued in Briefs.

Steven Lieberman, a copyright lawyer with Rothwell, Figg, Ernst & Manbeck, Washington, D.C., told BNA that he found it interesting that many of the briefs, in particular, the briefs of the parties, seemed to focus on the issue of original intent.

“Both sides … spent a very substantial portion of their briefs focusing on the original intent of the first Congress,” Lieberman said. “That’s not what one would normally expect on issues of this sort, but they both must think that Justice Scalia’s views on this are going to be critical.”

Furthermore, Lieberman noted that the petitioners had made arguments questioning the influence of internationalism on U.S. law.

Speaking personally, Lieberman said that he believed that “most people” looking at the issues would consider that in the case of the URAA, Congress has made “a policy judgment entitled to considerable deference.”

He noted the government’s arguments that “Congress is perfectly entitled to look at how it can best protect U.S. authors abroad” and that “Section 514 was a good way of doing that,” considering the strong possibility that failure to comply with Article 18 may result in foreign governments retaliating against U.S. authors and other copyright holders by taking away their rights in those countries.

Anti-Internationalist Views Being Aired.

Lieberman suggested that at least part of the petitioners’ argument seemed to echo conservative arguments decrying the participation of the United States in the international legal sphere or considering the legal decisions of foreign authorities.

Indeed, amici such as the Eagle Forum Education and Legal Defense Fund are strongly associated with such a view.

“Here, the petitioners are sounding the drum [that it is] not constitutional for Congress to buckle to other countries or the perception of what other countries will do,” Lieberman said.

This seems to reflect the views of a certain category of anti-internationalists who say that it “is inappropriate for U.S. courts to rely on or even cite to foreign law, which is of course a ridiculous argument,” he said. “A court is entitled to cite to anything it believes is logically persuasive, including philosophers, historians, novels, or the decisions or statutes of foreign bodies.”

Parties Should Study History.

Lieberman said he expects that the justices will “be very interested in the historical issues and original intent issues. … The government and the petitioners have very, very different views as to what the first Congress was thinking and what subsequent congresses were thinking.”

He suggested that “both sets of counsel should spend a lot of time with their history consultants, because the court is, I think, going to want to deal with the question ‘what does this “limited times” language mean in the Copyright Clause of the Constitution?' ”

Lieberman generally expressed support for the views reflected in the brief filed by the American Bar Association, which strongly supported the government’s position.

More specifically, he said, “I think that the petitioners are trying to create a limitation on Congress’s abilities to provide additional copyright protection that is simply not in the Copyright Clause. The principal problem with the petitioners’ argument is that they rely on the language in the Copyright Clause—“limited times”—and say that the position the government is taking … somehow transgresses the limited times language. What they miss is that restoration is only for the original term, not for longer than the work would have received if it had not gone into the public domain.”

He said that the petitioners “never adequately deal with” this fact.

Additional Briefs Supporting Government Filed.

Meanwhile, several more amicus briefs have been filed in the case, including one by the Motion Picture Association of America, which began by saying that Section 514 should not, as suggested by the petitioners, be scrutinized under the heightened standards of the First Amendment.

“Copyright laws such as Section 514 are not subject to heightened First Amendment scrutiny,” according to the MPAA. “First, copyright distinguishes between ideas and expression, limiting protection to the latter. Second the fair use defense permits copying of an author’s expression for certain purposes.”

Such limits on a copyright holder’s rights sufficiently protect the First Amendment rights of the public, the brief said.

Like many other briefs supporting the government, the MPAA argued that the Copyright Act of 1790 “extended copyright protection to previously unprotected works. Just as that legislation eased the transition to the international copyright system, Section 514 eases the transition to the international copyright regime established by the Berne Convention and TRIPS.”

Even if heightened scrutiny were to be applied, the MPAA argued, the statute would pass constitutional muster.

The MPAA argued that it is in the national interest of the United States to conform to the international standard, to protect its own citizens both at home and abroad without significantly burdening potential users of the works in question.

AIPLA, IPO Support Government Position.

Two briefs by prominent IP law associations—the American Intellectual Property Law Association and the Intellectual Property Owners Association—both argued the constitutionality of Section 514.

“Since the first copyright Act of 1790, Congress has repeatedly extended and expanded copyright protection pursuant to its powers under the Copyright Clause,” according to the AIPLA brief. “Copyright restoration under section 514 of the URAA is consistent with this history, is a valid exercise of Congress’s power, and does not infringe the protections of the First Amendment.”

Like the RIAA’s brief, the AIPLA brief cited the fair use doctrine and the idea-expression dichotomy as being sufficiently protective of free speech.

The IPO’s brief criticized the petitioners’ characterization of Section 514 as creating “a contest between the alleged private benefits created by Section 514 … and the alleged corresponding harm to the public.”

It is a fallacy to argue that any law that benefits foreign copyright holders necessarily harms the American public, the brief said. According to the IPO:

This purported distinction relies on the false premise that what is helpful to foreign copyright owners must be detrimental to the American public generally. The American public, however, benefits when the United States complies with its treaty obligations. In the global e-commerce economy, the free flow of goods and ideas depends on mutual and reciprocal respect for the rights and interests of all entities that create and disseminate works ….

Copyright Holders Urge Upholding Section 514.

A group of entities representing copyright holders filed another brief supporting the government’s position. This group included:

  • The American Society of Composers, Authors, and Publishers,
  • The American Society of Media Photographers,
  • The Association of American Publishers;
  • Broadcast Music Inc.;
  • Houghton Mifflin Harcourt Publishing Co.
  • The National Music Publishers’ Association;
  • The Recording Industry Association of America;
  • Reed Elsevier Inc.; and
  • The Software and Information Industry Association.

This brief emphasized the point that Section 514 does not restore rights to owners of works that have already run their full course of protection under U.S. law.

“It offers protection to certain foreign works only for the remainder of the copyright term that the foreign work would have enjoyed had it not lost copyright protection for technical reasons,” the brief said. This was in line with the intent of the Copyright Clause’s limitations.

Brief Takes No Position on Scrutiny.

Unusual for briefs supporting the government, the amicus brief filed by the University of New Hampshire’s Franklin Pierce Center for Intellectual Property explicitly refused to take a position on what level of scrutiny should be applied to Section 514.

The brief sought to address only the Progress Clause issue, arguing that under this clause, “Congress [has] considerable latitude to determine the scope of and manner in which the over-arching goal of [the Copyright Clause] can be achieved.”

This did not mean that Congress should be subject to no judicial scrutiny when exercising its powers under this clause; however, in this case Congress had not “altered the ‘traditional contours' ” of copyright protection in a way that “subvert[s]” or “contraven[es] the goal” of the clause, the brief argued.

Congress’s Authority Under Treaty Power Cited.

The International Coalition for Copyright Protection—which includes the Independent-International Picture Corp., Dam Things Holding A.P.S., Action Publishing, and Author Services Inc.—filed a brief arguing that regardless of whether the Copyright Clause gave Congress the authority to enact Section 514, Congress’s power under the Treaty Clause, art. II, §2, cl. 2, was sufficient.

“Section 514 is a small component of a massive piece of international trade legislation, the vast majority of which has nothing to do with copyrights,” the brief said. “Thus, even though Section 514 of the statute pertains to copyrights, Congress had the power to enact it independent of its authority under the Copyright Clause.”

Justice Elena Kagan, who served as U.S. solicitor general in 2009 and 2010, did not take part in consideration of the petition for certiorari in this case. Her recusal in another copyright case last year resulted in a 4-4 split on the court. Costco Wholesale Corp. v. Omega S.A., 131 S. Ct. 565, 96 USPQ2d 2025.

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