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Golan v. Holder: Potential Shift in Judicial Scrutiny

December 19, 2011

Arner, Erika Harmon


Authored by Erika Harmon Arner and Justic R. Lowery

Eight years ago in Eldred v. Ashcroft, the U.S. Supreme Court addressed Congress' power under the progress clause of the Constitution, which empowers Congress to grant copyrights and patents to "promote the Progress of Science and the useful Arts." In Eldred, the court rejected a challenge to a copyright term extension act that extended existing copyrights and provided for a copyright term of 70 years plus the life of the author, concluding that Congress had broad powers to determine what copyright scheme best promoted progress.

Now, in Golan v. Holder, the court again faces a challenge to the outer limits of congressional power in enacting copyright laws. The case concerns a 1994 act of Congress which implemented part of the Berne Convention, aimed at harmonizing global copyright laws.

The act granted copyrights to foreign works, including numerous famous orchestral pieces, that had previously been in the public domain and freely performed in the United States. A group of musicians and publishers challenged the act as exceeding Congress's copyright power and violating the First Amendment. The Supreme Court heard argument in the case on Oct. 5, 2011, and a decision is expected early 2012.

Challengers' Position

The petitioners focus on the constitutional limitation on Congress's power, that any grant of patents or copyrights must be done for only a limited time. Petitioners claim that taking works out of the public domain effectively eliminates the concept a copyright for a limited time, as Congress could restore dead copyrights at any point.

However the justices appeared less concerned with this broader argument, instead concentrating on the specifics of this case. Justice Ruth Bader Ginsburg opened questioning by stating that the act gave foreign authors the same limited time as U.S. authors to bring us into compliance with a worldwide system, and rejected the petitioners' attempt to connect this case to more troublesome scenarios, such as Congress restoring copyrights that have been dead 100 years or, by analogy, Congress extending a statute of limitations that has since expired.

Justice Sonia Sotomayor likewise viewed the act as different from the restoration hypothetical the petitioners put forward, instead viewing this act as a unique occurrence to grant rights to foreign authors, similar to how the initial Copyright Act of 1790 provided uniform protection to previously created and potential public domain works.

Petitioners also argued that the new law did not promote progress of science and the useful arts, yet again faced pushback from the justices. Petitioners relied on the general proposition that taking works out of the public domain cannot provide incentives or stimulate the creation of anything new.

The justices again turned to the specifics of the act itself. Justice Sotomayor questioned whether the act might promote foreign authors to bring their works to the U.S., Chief Justice John Roberts argued that American authors receiving reciprocal protections overseas would be further incentivized, and Justice Antonin Scalia noted that granting additional rights to existing authors could encourage those authors to create new works, although he questioned whether the "mere marketing" of a work in the United States promotes progress. Each questioner, however, seemed to find at least some reason Congress could believe that the act would promote progress.

Petitioners also had trouble distinguishing Eldred's broad statement of the constitutional grant of power to Congress. Justice Anthony Kennedy asked whether Eldred outright rejected petitioners' limited times argument, with petitioners relying on a distinction between restoration and extension of copyright terms. Chief Justice Roberts likewise noted that the court has not required much from Congress in proving that their copyright scheme promotes progress in previous decisions.

Petitioners' final major argument relied on the First Amendment, often viewed as a complementary restriction on Congress' copyright power. Petitioners claim that by taking works out of the public domain, the act implicates the public's right to copy and use those works. Thus, by providing copyrights to works that the public, including petitioners, had relied on and performed for years, the act departed from the "traditional contours" of copyright protection, a circumstance that Eldred stated called for heightened scrutiny.

However, Justice Kennedy questioned what legal meaning can attach to the "public domain," asking for example whether the public actually "owns" works that are in the public domain. Justice Ginsburg also rejected the idea that the Constitution necessarily renders the public domain "untouchable."

Position of the United States

Solicitor General Donald Verrilli argued for the United States and began by piggybacking on the justices' questions regarding the specifics of this case. He agreed that these were not expired works, but instead works that had never had a chance for copyrights in the first place.

He argued that the act brings equity to U.S. law's treatment of foreign authors and corrects an error by giving foreign authors the term they would have had otherwise. General Verrilli also dismissed the argument that Congress intentionally put these works in the public domain and then removed them, noting that the U.S. did not have treaties with these countries.

However, the justices questioned General Verrilli strongly on what the limits of Congress' power would be outside this particular case. Justice Samuel Alito asked the question as petitioners had—whether Congress has the power to restore expired copyrights—and Justice Sotomayor voiced similar concerns. General Verilli did not point to any "ironclad limits," but acknowledged that the text of the Constitution would provide some limitations, such as on works so old that an actual author could not be identified.

However General Verrilli returned to the act, arguing that this particular case does not implicate those problems, both because this is not a "restoration" of expired rights, and because these are merely reciprocal copyrights to rights already enjoyed in another country.

Responding to both the promotion of progress and First Amendment arguments, General Verrilli contended that Congress had a substantial interest to comply with the Berne treaties in order to protect future U.S. authors, further incentivize new works, and protect the U.S. and its authors from retaliation.

Justice Scalia cared little for the United States' international obligations relative to the constitutional restrictions, and Justice Stephen Breyer questioned whether this particular act provided any real incentive. General Verrilli responded that this act could not be separated from the United States' larger obligations under the Berne treaties, and that full compliance with the treaties on the whole promoted progress.

Suggesting that he at least favored giving the act some scrutiny, Justice Breyer also questioned whether there were less restrictive means for compliance with Berne, noting the many amicus briefs that indicate burdens on libraries, musicians and book buyers in the U.S., and questioned whether the Constitution might properly require at least "one new thing" to be produced by some new Copyright restrictions.

General Verrilli again responded that on the whole the act and Berne compliance ensured better protection for authors here and abroad and incentivized new works, pointing back to Eldred's acknowledgement that extending existing copyrights incentivized new authors who could expect that expanded copyright.

Chief Justice Roberts acknowledged an "intuitive" appeal to petitioners' First Amendment argument—one day a work can be freely performed, and the next day it cannot—and provided several hypothetical scenarios of performers whose rights could be restricted by future acts of Congress. General Verrilli first responded that Congress had often enacted legislation which changed the public's rights going forward, and second warned that First Amendment scrutiny here could potentially trigger scrutiny of every copyright act going forward, since copyright inherently regulates expression.

Finally, General Verrilli again returned to Eldred, which pointed to significant accommodations for First Amendment interests inherent in copyright law that are left untouched here. General Verrilli listed a number of actions that could change the "traditional contours" of copyright protection and trigger heightened scrutiny, such as eliminating fair use, providing a copyright in an idea as opposed to an expression, or using copyright to engage in viewpoint discrimination, but stated that no such concern was raised here.

Importantly though, Justice Kennedy asked whether "intermediate scrutiny" under the First Amendment should be applied and Chief Justice Roberts likewise speculated that the "vanishingly small" interest in promotion of progress and other, less burdensome, avenues available to Congress to comply with the Berne treaties may even call the law into question under rational basis scrutiny.

Justice Breyer followed up by noting many of the stories from amici illustrating burdens and negative impacts of the law, though acknowledging that copyright law on the whole may create similar burdens. Justice Sotomayor likewise expressed concern for the burdens on libraries that may contain now-protected works. While General Verrilli rejected that heightened scrutiny applied under Eldred, he also did not doubt the law would pass any level of scrutiny.

General Verrilli concluded his argument with historical support for this action in Congress' previous acts, and precedential support from early intellectual property decisions up through Eldred that decisions on how to implement an intellectual property scheme are largely left to Congress.

Potential Impact

While the court expressed some discomfort with the government's argument and sympathy to petitioners' position, the petitioners still appear to face an uphill battle. The justices showed little support for the idea that this act violated the "limited times" provision of the Constitution, and concentrated primarily on the specific circumstances which the treaty and implementing acts were designed to address. Whether due to the unique circumstances that brought about this particular act, or simply the precedential and prudential reasons to defer to Congress in this area, the government appears most likely to prevail.

However, like Eldred, it would not be surprising if the court reminds Congress that outer limits on the intellectual property powers do exist, even if they have not been reached yet. Likely, the petitioners' best outcome, and the most significant effect on copyright law, would be an application of more searching scrutiny to the act than has been done in past copyright cases, or a restatement of when heightened scrutiny should be applied.

Justices Breyer and Kennedy and the chief justice all expressed some desire to examine this law more closely, whether under the First Amendment or the proper promotion of progress, and several other justices questioned the potential burdens, benefits and less-restrictive means involved. Thus, even if this particular act survives or altogether avoids heightened scrutiny, the decision could nonetheless serve as an indicator of greater judicial scrutiny to come in either copyright or patent law.

Originally printed in Law360 ( Reprinted with permission. This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. This article is only the opinion of the authors and is not attributable to Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, or the firm's clients.