Guest blog post by Matthew Slevin.  Matthew is a Summer Associate in the San Francisco office of DLA Piper LLP. He is a J.D. Candidate at the University of California Hastings College of the Law.

Will children in the U.S. soon be unable to hear an orchestral performance of Peter and the Wolf?  In the coming fall term, the U.S. Supreme Court will hear Golan v. Holder, No. 10-545 (2011), which raises important questions about whether Congress can reinstate copyright protection to works formerly held in the public domain.  Among the works concerned are many important foreign films, music and art by authors such as Wolf composer Sergei Prokofiev, not to mention Hitchcock, Shostakovich, Stravinsky, Picasso and H.G. Wells.  The Court will consider two issues: (1) whether the Copyright Clause prohibits Congress from taking works out of the public domain and (2) whether the removal of works from the public domain violates the First Amendment by infringing on the free expression rights of those who rely on the use of those works.

Golan serves as follow-up to the landmark case Eldred v. Ashcroft, 537 U.S. 186 (2003), in which the Supreme Court held that Congress’ extension of copyright terms to keep works out of the public domain did not violate the First Amendment or the “limited [t]imes” provision of the Copyright Clause.  The Court in Eldred, however, left a door open for other potential violations, noting that if Congress “altered the traditional contours of copyright protection,” then it could require First Amendment scrutiny. 

The two-pronged challenge in Golan concerns the “copyright restoration” provision enacted as section 514 of the Uruguay Round Agreements Act (URAA) in 1994 (and codified at 104A and 109(a) of the Copyright Act).  Intended to bring the U.S. into compliance with its treaty obligations under the Berne Convention, the URAA provided new copyright protection to tens of thousands of old foreign works that have long been in the public domain in the U.S. due to not having met registration requirements in the past.  In the case, a group of performers, publishers, distributors, and educators claim those “traditional contours” have been unconstitutionally altered.  They first brought suit against the federal government in the District of Colorado back in 2001, claiming that they relied on using the formerly public works for their livelihood and had to stop once the restored copyrights made licensing them cost-prohibitive. The case has been working its way through the federal courts ever since. 

On the Copyright Clause issue, the Tenth Circuit, in Golan v. Gonzalez, 501 F.3d 1179 (10th Cir. 2007), rejected one of Petitioners’ primary arguments: an attempt to apply Graham v. John Deere, 383 U.S. 1 (1966).  That old case stands for the rule that Congress cannot issue patents for inventions previously held in the public domain.  The appellate court found that Graham was inapplicable, citing a key difference between patent and copyright law: the quid pro quo of a patentee’s disclosure in exchange for protection is not present in copyright, under which authors, the court reasoned, are “eager” to disclose their work.  The court also relied on language in the Eldred case, which had upheld Congress’ “expansive” power to extend copyright terms absent an irrational exercise of authority. 

Now in their brief on the merits filed at the Supreme Court last month, Petitioners advance a more fundamental argument based in statutory interpretation of the “limited [t]imes” provision.  They argue that its plain meaning, along with Framers’ apparent intent to create a “permanent and stable” public domain and Congress’ history of maintaining one, point to the fact that Congress cannot restore protection to works already in the public domain.  They claim that if the URAA provision is valid, then Congress is potentially free to reinstate any work’s copyright after its initial termination, thereby treating no copyright term as truly “limited.”

As to the First Amendment issue, the Tenth Circuit held earlier this year that the URAA provision did not infringe on the petitioners’ free expression.  Golan v. Holder, 609 F.3d 1076 (10th Cir. 2011).  Applying intermediate level scrutiny to the provision, the court found that Congress had several sufficiently important interests to which the URAA was narrowly tailored, chief among them the goal of helping U.S. copyright holders by obtaining reciprocal international protection.  The Petitioners’ brief to the Supreme Court now launches an attack on that alleged interest.  They claim that goal “is not even a legitimate purpose,” because it does nothing but create private economic benefits to authors (or their estates) who created public domain works long ago.  Petitioners assert that as opposed to merely balancing the interests between the U.S. authors and parties who rely on foreign works, Congress sacrificed public speech rights in favor of potentially giving former domestic copyright holders more money.  They argue that creating private benefits is not a legitimate objective of copyright law.

As SCOTUSBlog described, Golan is “a major test of copyright power.”  It raises significant questions about the extent of Congress’ ability to regulate copyright and the complicated overlap that exists between it and First Amendment rights.  Although the facts here deal specifically with foreign works, the Court’s decision next term could have broad ramifications in all artistic spheres in the country.  To what degree can the U.S. public rely on the existence of a public domain? 

The Respondent’s brief on the merits is due to the Supreme Court on August 3.  For further examination of the procedural background and the others arguments raised by both parties, see SCOTUSBlog and Copyhype.