Tenth Circuit: First Amendment analysis required when public domain works "restored" to copyright

September 05, 2007
Post by Blog Staff

In an important copyright decision posted today (but apparently filed yesterday), the Tenth Circuit addressed the First Amendment implications of the "restoration" of public domain works to copyright protection as a result of the Uruguay Round Agreement Act (URAA). The URAA implemented Article 18 of the Berne Convention, which brought works back under copyright that were in the public domain in the United States if the copyright had not yet expired in their country of origin. The plaintiffs in the case had been using various works that were in the public domain before the URAA for various educational and other purposes (such as Sergei Prokofiev's Peter and the Wolf), but once the copyright was restored, it became prohibitively expensive to do so.

The Tenth Circuit held that removing a work from the public domain and placing it back under copyright implicated the First Amendment, as it "altered the traditional contours of copyright protection." The court did not explicitly find the URAA unconstitutional, but remanded the case to the district court for further consideration, applying First Amendment scrutiny. The upshot of this is that depending on how the district court rules on remand, it is possible that works whose copyright were "restored" by the URAA may once again fall back into the public domain. This also seems like a case that may be ripe for review by the Supreme Court, and it seems likely the government will file a petition for certiorari.

The plaintiffs contended that the copyright restoration by the URAA was unconstitutional for, among other reasons, violating the First Amendment. The logic was that Congress's removal of these works from the public domain impinged the plaintiffs' right to freedom of expression, as they had been using the works in various ways before the copyrights were restored. The district court was unimpressed, and granted summary judgment.

The Tenth Circuit vacated and remanded. In Eldred v. Ashcroft, the Supreme Court noted that ordinarily acts of Congress are not subject to First Amendment scrutiny because of the statutory fair use protections and the idea/expression dichotomy (also known as the merger doctrine). However, such an act would be subject to First Amendment scrutiny if it "altered the traditional contours of copyright protection."

Here, the court held that the URAA did just that. As described by the court:

Until § 514, every statutory scheme preserved the same sequence. A work progressed from 1) creation; 2) to copyright; 3) to the public domain. Under § 514, the copyright sequence no longer necessarily ends with the public domain: indeed, it may begin there. Thus, by copyrighting works in the public domain, the URAA has altered the ordinary copyright sequence.

The court traced the history of copyright law from the time of the framers forward, and found no appreciable instances (other than the URAA and acts around World War I where the statutory formalities were temporarily revised) where works in the public domain were placed back under copyright protection. Because of this, the court remanded the case to the district court to apply traditional First Amendment analysis to determine whether the URAA is constitutional. Depending on the outcome, this ruling could have a substantial impact on foreign works whose copyright was restored by the URAA.

To read the full decision in Golan v. Gonzales, click here.

More coverage of the decision:

Stanford Law School Center for Internet and Society

Patry Copyright Blog

Public Knowledge

How Appealing

Lawrence Lessig (who argued on behalf of the Appellants)

Balkinization Jack Balkin's post is particularly interesting because he reminds us of his take after Eldred v. Ashcroft was decided that aspects of the DMCA may be unconstitutional under the test set forth in that case.

Update (9/6): Orin Kerr has a post on the case at the Volokh Conspriacy.

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