Supreme Court Upholds URAA Providing Copyright Protection to Certain Foreign Public Domain Works | Practical Law

Supreme Court Upholds URAA Providing Copyright Protection to Certain Foreign Public Domain Works | Practical Law

In its January 18, 2012 opinion in Golan v. Holder, the US Supreme Court upheld Section 514 of the Uruguay Round Agreements Act (URAA), which restores copyright protection to certain foreign works in the public domain. The Court held, 6-2, that Section 514 does not violate the Copyright Clause or the First Amendment of the US Constitution.

Supreme Court Upholds URAA Providing Copyright Protection to Certain Foreign Public Domain Works

by PLC Intellectual Property & Technology
Published on 18 Jan 2012 • USA (National/Federal)
In its January 18, 2012 opinion in Golan v. Holder, the US Supreme Court upheld Section 514 of the Uruguay Round Agreements Act (URAA), which restores copyright protection to certain foreign works in the public domain. The Court held, 6-2, that Section 514 does not violate the Copyright Clause or the First Amendment of the US Constitution.
The US Supreme Court issued its opinion in Golan v. Holder, on January 18, 2012. The Court held that Section 514 of the Uruguay Round Agreements Act (URAA) (codified in Section 104A of the Copyright Act), which provided copyright protection to certain foreign works in the public domain, did not violate the US Constitution's First Amendment or Copyright Clause. The petitioners argued that once a work is in the public domain, it must remain there and cannot later be removed and given copyright protection. As a result of this decision:
  • Many foreign works that were in the public domain now have copyright protection.
  • The new copyright holders may charge fees for works that consumers previously used for free.

Key Litigated Issues

The main issue in Golan v. Holder is whether Congress exceeded its authority under the Copyright Clause and violated the First Amendment by passing Section 514.

Background

In 1994, Congress passed Section 514 of the URAA to perfect its implementation of the Berne Convention for the Protection of Literary and Artistic Works. The Berne Convention is an international treaty that requires works originating in a foreign country, which is a member of the Berne Convention, to be given the same copyright protection in the US as in the member country. Section 514 restores US copyright protection to preexisting works of Berne Convention member countries, which were protected in their country of origin, but lacked protection in the US. A work may lack protection for any of the following three reasons:
  • The US did not protect works from the country of origin at the time of its publication.
  • The US did not protect sound recordings that were fixed before 1972.
  • The author failed to comply with US statutory formalities.
The petitioners, who were primarily groups arguing in favor of continued free access to the works, included orchestra conductors, musicians and publishers. They challenged the constitutionality of Section 514 based on the Copyright Clause and the First Amendment.
The US District Court for the District of Colorado granted summary judgment in favor of the Attorney General. The US Court of Appeals for the Tenth Circuit affirmed in part but remanded to the district court because it believed that the First Amendment claim required further inspection. On remand, the district court concluded that removing works from the public domain violated First Amendment rights because it was not justified by any of the asserted federal interests. The Tenth Circuit reversed, holding that Section 514 was narrowly tailored to protect US copyright holders' interests abroad. The Supreme Court granted certiorari.

Outcome

In a 6-2 decision, the Supreme Court affirmed the Tenth Circuit, holding that Section 514 does not violate the Copyright Clause or the First Amendment. Justice Ginsburg wrote for the Court, while Justice Breyer, joined by Justice Alito, dissented. Justice Kagan abstained.
In reaching its decision, the Court frequently cited Eldred v. Ashcroft, 537 U.S. 186 (2003), where the Court upheld a 20 year extension to the terms of existing copyrights. Although in this case, the issue centered on removing works from the public domain, the Court found the guiding constitutional principles to be the same.

Copyright Clause

The Court determined that the Copyright Clause's language does not exclude applying copyright protection to works that are already in the public domain because:
  • The Copyright Clause contains no command that a time prescription, once set, becomes forever fixed or inalterable.
  • Historical practice supports the majority's reading of the Copyright Clause to permit the protection of previously unprotected works.
  • The "Progress of Science" portion of the Copyright Clause empowers Congress to determine the copyright provisions that will serve the Clause's goals, which extend beyond just the creation of new works.

First Amendment

The Court held that Section 514 does not violate the First Amendment. The Court noted that the restriction of speech is inherent in every grant of a copyright, but that copyright protection is also an engine of free expression, which has the following built-in First Amendment accommodations:
  • The idea/expression dichotomy.
  • The fair use defense.
Neither of these protections is affected by Section 514.
The Court also rejected the petitioners' claim that they had vested rights in public domain works because it held that no one acquires ownership rights in public domain works.

Practical Implications

Holders of works that gained copyright protection under Section 514 may now charge fees for works that the public previously used for free. While there are apparently no precise figures on the number of restored works, in 1996 the Register of Copyrights estimated that there are millions of these restored works.
The Court's decision furthers Congressional power to extend copyright protection.

Court Documents