Golan v. Holder Is the Public Domain Really Permanent?
Article Date: Saturday, June 04, 2011
Written By: Doug Ferguson
In case you've grown tired of modern copyright battles-Internet fair use, online leaks of upcoming major films, and rampant digital piracy-there's now a battle in progress over old, obscure works that most people have never heard of. On March 7, the Supreme Court granted certiorari in Golan v. Holder. The case pits a 1994 law restoring copyright to certain foreign works whose U.S. copyright has expired against the Constitution's Progress Clause and the First Amendment.
The converse effect of restoring a defunct copyright, of course, is to remove that work from the public domain. It is this effect which most impacts those who rely on public domain materials – for example, artists who perform public domain compositions and companies that trade in public domain films. It is also the effect that has created the greatest objection to the law.
The statute that creates copyright restoration, Section 514 of the Uruguay Round Agreements Act (URAA), was an effort to bring United States copyright law into compliance with treaty obligations. Up until 1978, the U.S. copyright regime required certain formalities not present in other nations' copyright laws, such as registration, deposit with the Copyright Office, and timely renewal. Foreign authors, unfamiliar with the specifics of American law, were prone to lose their U.S. copyright protection due to noncompliance with one or more of these formalities. As part of an agreement that was to include enhanced enforcement of American copyrights abroad, Section 514 restores copyright in most foreign works that 1) have at least one foreign author, see Joyce, Craig et al, Copyright Law 7th Edition, Matthew Bender/LexisNexis 2006, at 337, and 2) have once been copyrighted in the United States, but which copyright has lapsed due to noncompliance with some U.S. formality. A copyright that has expired – that is, has reached the end of its statutory term – in either the United States or the work's country of origin is ineligible for renewal. In other words, the effect is to reverse copyright lapses due to noncompliance with technicalities, and restore works to their status had the lapses never occurred.
Renewal is automatic under the law. However, those who have relied on a work's non-copyrighted status ("reliance parties") are entitled to notice of enforcement and a one-year grace period before enforcement begins. Copyright owners intending to enforce were permitted to serve notice via public announcement in the Federal Register between 1997 and 1998; after that time, enforcement has required an owner to contact a reliance party directly. Even when enforcement comes into effect, a reliance party may continue to make use of the work after negotiating an unspecified "reasonable" royalty to the owner.
"Petitioners relied for years on the free availability of works in the Public Domain, which they performed, adapted and distributed. Petitioners … once performed Prokofiev's Classical Symphony and Peter and the Wolf, Shostakovitch's Symphony 14, Cello Concerto (Op. 107) and Piano Concerto (Op. 35), and Stravinsky's Petroushka; The restoration of copyrights in these works now prevents them from doing so...."
Golan v. Holder, Petition for Certiorari,
at 3 (hereinafter "Pet. App.").
The case presents two questions: whether the Constitution's Progress Clause prohibits Congress from passing any law that removes material from the public domain; and whether the treaty requirements implemented by Section 514, by restricting free expression of again-protected works, violate the First Amendment. Intersecting both these questions are the plaintiffs' assertions that the law operates limit the public's free speech rights for the economic benefit of others, and that the "public domain" is a bright-line legal area from which nothing can be removed. While it's clear that some individuals and companies that rely on public domain materials can and have been impacted by Section 514, the impact described by plaintiffs may be overstated.
"Private Economic Windfalls"
One effect of the legislation, according to plaintiffs, is to "create an economic windfall for foreign authors of existing works", by reviving their U.S. copyright. Furthermore, by its stated purpose to induce corresponding protections for American authors in foreign jurisdictions, "[S]ection 514 takes away important public speech rights... simply to put more money in the pockets of U.S. authors whose works were created long ago." Id. at 27-28. The ultimate effect of removing First Amendment privileges for private gain, the argument goes, is to violate the Public Purpose requirements of the Progress Clause.
A valid copyright is indeed a form of property, but when one examines the practical effects of the Section, "windfall" may not be the most apt term. The plaintiffs list some names noted for artistic merit – Stravinsky, H.G. Wells, Fellini, Hitchcock, M.C. Escher – but it is also true that a large proportion of work in the public domain is obscure and of limited economic value. Id. at 3. It is difficult to imagine how holding the copyright on a forgotten work that used to be freely available is going to generate significant revenue.
Indeed, one of the few litigated cases to date implicating a restored copyright concerned a high-profile film, and failed to generate so much as a return for the purported owner, let alone a windfall. Federico Fellini's La Dolce Vita was "indisputably in the public domain in the United States prior to 1996". International Media Films, Inc. v. Lucas Entertainment, Inc., 703 F. Supp. 2d 456, 458 (S.D.N.Y. 2010). International Media Films (IMF), alleging that Lucas Entertainment's adult-themed version of the film infringed its newly restored copyright, was unable to overcome a challenge that often strikes (purported) owners of old copyrights – demonstrating that ownership in the face of incomplete records and imperfect memories. IMF produced several documents and testimonial statements, but was unable to show a chain of ownership to the District Court's satisfaction, and was unsuccessful in asserting rights to the film.
If the ownership of landmark films is sometimes unclear, the ownership of many obscure films must be completely intractable. Here, again, it is unlikely that a party who might be in a position to assert ownership would find it economically feasible to do so.
Compromising the Public Domain
"Public domain" is a loaded term. Its plain meaning is "freely available," but in U.S. copyright law, it means simply "not subject to copyright protections." See, http://www.copyright.gov/help/faq/faq-definitions.html. This is not the same as being freely available. Works of the federal government, for example, are usually designated public domain from a copyright standpoint, but may not be publicly available – for instance, classified military information.
Under U.S. Copyright law, there have historically been two routes for a copyrighted work to become public domain: its protections can expire, or it can pass into the public domain due to a failure to comply with technicalities of registration. (Under U.S. Copyright law, an attempt to release your own work to the public domain may not even be legally enforceable. There is no provision that explicitly permits one to do so, and 17 U.S.C. § 203 gives an author or his successor in interest the right to terminate any transfer after 35 years. Whether committing your work to the public domain constitutes such a terminable "transfer" has not been tested). As discussed above, Section 514 of the URAA concerns former U.S. registration formalities, since done away with; and is designed to return the state of those otherwise non-expired works to where they would be had the formalities been complied with.
This key objection, the unprecedented practice of removing material from the public domain, figures largely in the plaintiffs' arguments. (See generally Pet. App., referring to the government's allusion in Eldred v. Ashcroft (537 U.S. 86 (2003)) to a "bright line" for leaving public domain materials undisturbed). However, the phenomenon of intellectual property slipping into the public domain only to be later retrieved by its former owner is not unheard of. The Supreme Court noted in 1896 that Singer Manufacturing Company no longer held an exclusive right to the "Singer" name, and that the name "could not be taken by the Singer Company out of the public domain by the mere fact of using that name as one of the constituent elements of a trademark." Singer Manufacturing Company v. June Mfg. Co., 163 U.S. 169. After nearly 60 years of Singer's persistent use of the mark, the Fifth Circuit declared that "Singer . . . has recaptured from the public domain the name 'Singer' . . . . [It] has thus become a valid trademark of complainant and is entitled to protection as such." Singer Mfg. Co. v. Briley, 207 F.2d 519 (5th Cir. 1953).
Interestingly, the plaintiffs reject the idea that there is a distinction between entering the public domain due to accidental formality noncompliance or due to scheduled expiration, while at the same time insisting that there is a distinction between extending an existing copyright term and reviving a copyright term after a gap. See, "By drawing distinctions based on how material reached the Public Domain and when, Section 514 creates complexity, uncertainty and ambiguity where there was none." Petitioners' Reply, at 6., and Pet. App. at 22, (comparing the extending/reviving distinction as applied to copyright periods and statutes of limitations).
Idea vs. Expression
The Internet Archive, in an amicus brief for petitioners, declares that the public domain is important in that it contains "knowledge, truths ascertained, conceptions, and ideas . . . ." Amicus Brief from Internet Archive, at 5 (quoting Int'l News Serv. v. Assoc. Press, 248 U.S. 215, 250 (1918)). But copyright protects expressions, not ideas. Nothing in Section 514 restricts the flow of ideas, nor prohibits continued use of any particular expression that's beneficial to both parties. It is true that when material leaves the public domain the public loses something; Golan's plaintiffs now face the challenge of proving that loss outweighs U.S. treaty obligations under Section 514.
Golan v. Holder is scheduled for the Court's October 2011 term.
Doug Ferguson is an attorney and software developer in Durham, NC.
Views and opinions expressed in articles published herein are the authors' only and are not to be attributed to this newsletter, the section, or the NCBA unless expressly stated. Authors are responsible for the accuracy of all citations and quotations.