For the first time, a federal court has held a copyright statute unconstitutional as violating the free speech provisions of the First Amendment.  In Golan v. Holder, 2009 U.S. Dist. LEXIS 28263 (April 3, 2009) on remand from the Tenth Circuit, the district court denied the government’s motion for summary judgment and granting the plaintiffs’ motion for summary judgment.  The United States District Court for the District of Colorado held that section 514 of the Uruguay Round Agreements Act (17 U.S.C. § 104A), is unconstitutional.  (Note: I represented a group of amici supporting the constitutionality of the statute, so my views are far from neutral.  These are entirely my views, not necessarily theirs.)

How did this case get to this point?  In (very) broad strokes, the Supreme Court upheld the copyright term extension act against two constitutional challenges.  The first, heavily distilled, was essentially that “copyright protection lasts too long.”  The court rejected that argument.  The second was that overly long copyright terms squashed the plaintiffs’ first amendment rights.  The Court rejected that argument as well, but in a more nuanced fashion.  It found that term extension raised no First Amendment issues due to the copyright law’s free speech safeguards, but warned that if Congress changed copyright’s “traditional contours,” more searching review would be appropriate.  The “traditional contours of copyright” language had never before appeared in a reported case.

The scope of these “traditional contours” formed the basis for challenging restoration.  Section 104A of the copyright act restores copyright to certain works by foreign authors that had fallen into the public domain for a failure to comply with the formalities that used to exist under United States law (such as affixing a proper © on publication.  Users that had relied on the public domain status of the work had a 1-year selloff period to get rid of any restored work once they received notice of intent to enforce.  A group of plaintiffs (represented by many of the same academics that challenged term extension), charged that Congress both lacked the power to take works out of the public domain and that the removal of such works violated the First Amendment.  Initially, the district court rejected both claims, but then the case went back to the Tenth Circuit. 

Although the Tenth Circuit found that Congress could take works out of the public domain and, in this case, had valid reasons for doing so, the Tenth Circuit found that Congress had nonetheless redrawn the traditional contours of copyright and the courts were compelled to apply heightened First Amendment review.  Thus, the appellate court reasoned, once the works entered the public domain, the plaintiffs had vested First Amendment rights to use those works.   (The errors in this decision could easily warrant their own post—and then some.  But I digress.).

It tasked the District Court with determining first, whether section 104A was content neutral, and second, what standard to apply—intermediate or strict scrutiny.  The parties agreed that the statute was content-neutral, as did the trial court, and the court therefore used the intermediate scrutiny test.  That test requires it to examine whether the statute advanced important governmental interests unrelated to the suppression of free speech and whether it burdens substantially more speech than was necessary to advance those interests.      

It seems clear from reading the opinion that the Tenth Circuit’s opinion heavily influenced the manner in which the trial court evaluated the way that Congress tailored the statute to deal with the continuing use of works by those that relied on a work’s erstwhile public domain status.  The government proffered three interests that supported enactment of Section 514: (1) to comply with international obligations; (2) to advance the ability of U.S. copyright owners to exploit their works abroad; and (3) to reduce the unfairness in U.S. law under which unwary authors in foreign countries lost copyright protection.  However, because of what it viewed as a relative paucity of evidence supporting the latter two interests, the court found it inappropriate to give any deference to them for purposes of First Amendment analysis. 

As a result, the constitutionality of Section 514 turned on whether the government’s claim that Section 514 was necessary to bring the government into substantial compliance with its international obligations was ”substantial” and that Section 514 did not burden substantially more than needed to achieve that important interest. The Court Although acknowledging that U.S. treaty obligations did in fact require the restoration of copyright in works that had fallen into the public domain, those treaties do not specifically address the activities of “reliance parties,” and thus the United States could have permitted reliance parties to continue using restored works forever. The failure to afford perpetual rights to reliance parties rendered the statute unconstitutional.

Thus, although Section 514 contains a number of protections for reliance parties—e.g., freedom to use a restored work indefinitely unless a proper notice is filed by a copyright owner, one year sell-off of inventory following receipt of proper notice, special rules permitting the use of derivative works created by reliance parties and shielding reliance parties from exposure to statutory damages and attorneys’ fees—these protections were insufficient to protect the “First Amendment” interests of reliance parties even when coupled with the safeguards found in the fair use doctrine and the idea/expression dichotomy.  It seems that under the ruling only a complete “pass” for reliance parties would satisfy the court.

The holding of the case and the opinion raises several questions.  First, it seems clear from the ruling that restoration is not constitutional in its entirety, and that Congress may remove works from the public domain under appropriate circumstances. If Congress, for example, were to pass a statute stating that reliance parties could not be prevented from exploiting a restored work after the date of restoration, this opinion immunizes that statute from constitutional attack.  Restoration would be free and clear.

Second, in a similar vein, the scope of the statute’s unconstitutionality is unclear. The opinion could be read to say that section 514 is unconstitutional only as applied to the plaintiffs in Golan or more broadly to any person who can demonstrate their status as a reliance party.  The scope of the opinion is further muddled by the court’s defining reliance parties as those persons with a vested interest in previously public-domain works. The scope of that “vesting” remains unclear.  For example, suppose a publisher prints copies of a once-public-domain novel to which copyright has been restored.  Under the logic of this opinion, its rights to continue reproducing the work have vested.  However, the opinion leaves opaque whether those vested rights also include, for example, the right to make derivative works from that novel—such as a motion picture.   

Importantly, the court failed to specify in any detail the extent to which its decision enjoins the government from continuing to enforce the act and against whom.  In any event, it seems clear that this case will be appealed to the Tenth Circuit and, ultimately, to the Supreme Court.  It’s a long way from over.