Supreme Court weighs legality of putting public domain works back under copyright

By Timothy B. Lee

The Supreme Court on Wednesday considered whether Congress violated the Constitution when it took thousands of works by foreign authors out of the public domain. As Chief Justice Roberts described it: "One day I can perform Shostakovich; Congress does something, the next day I can't. Doesn't that present a serious First Amendment problem?"

In the 2003 case of Eldred v. Ashcroft, the high court ruled that the Constitution allowed Congress to retroactively extend the terms of in-copyright works. Key to the decision was the fact that Congress had set a precedent by retroactively extending copyright terms on several previous occasions. Writing for the majority, Justice Ruth Bader Ginsberg held that "when, as in this case, Congress has not altered the traditional contours of copyright protection, further First Amendment scrutiny is unnecessary."

Copyright reformers seized on this language and looked for cases where Congress had changed the "traditional contours of copyright." Their attention soon turned to the Uruguay Round Agreements Act, legislation that tried to harmonize US copyright law with international standards by "restoring" copyrights to certain foreign authors whose works had fallen into the public domain, but whose copyrights would still be valid if they were created in the United States.

The URAA was challenged by a coalition of "orchestra conductors, educators, performers, publishers, film archivists, and motion picture distributors" who have used some of these "restored" works or built their own works on top of them. They argued that placing works back under copyright after they had fallen into the public domain was unprecedented and a violation of their First Amendment rights.

The case was tied up in court for years. A lower court originally ruled that the restoration of copyright was unconstitutional, but in June 2010 the United States Court of Appeals for the Tenth Circuit disagreed. It held that the extension was necessary to secure reciprocal copyright protection for American copyright holders overseas, and that this was a compelling government interest sufficient to overcome First Amendment concerns.

On Wednesday, the Supreme Court heard arguments from the plaintiffs and from solicitor general Donald Verrilli who was defending the law on behalf of the Obama administration. Verilli argued that the copyright restorations were "the price of admission to the international system." The United States wanted foreign governments to provide stronger copyright protection and enforcement for American authors, and Verilli claimed that those governments demanded restoration of foreign authors' copyrights in return.

But Justice Antonin Scalia was skeptical. "it seems to me Congress either had the power to do this under the Copyright Clause or it didn't," he said. "I don't think that powers that Congress does not have under the Constitution can be acquired by simply obtaining the agreement of the Senate, the President, and Zimbabwe."

Anthony Falzone, representing the parties challenging the law, agreed. "If the government can get around First Amendment limits by signing a treaty, then the First Amendment is defined only by the perceptions, the complaints, and frankly the imagination of foreign countries," he said. "That can't be the way it works."

Justice Ginsberg was not impressed with Falzone's argument. She suggested that it was entirely appropriate for Congress to extend to a foreign composer like Dmitri Shostakovich protection comparable to that enjoyed by American contemporaries like Aaron Copeland. "All that Congress is doing is giving Shostakovich works the same limited [protection] as Aaron Copeland," she said.

Falzone also argued that retroactively extending copyright terms didn't satisfy the Constitutional requirement that copyrights promote progress. "A statute that does nothing but take old works out of the public domain without any impact on prospective incentives, cannot stimulate the creation of anything," he said.

Justice Breyer, long known as a copyright skeptic, pointed to one example of the harm the restoration of copyright did. Save the Music is an organization that works to preserve Jewish music from the 1930s, 1940s, and 1950s. Breyer noted that the organization, and others like it, are being hampered from posting the works they collect online, even though most of the creators have been dead for decades.

Verrilli conceded that this was a real problem, but argued that it wasn't specific to foreign works, and wasn't a reason to strike down the extension of protection to foreign authors.

Falzone and his clients face an uphill battle. The court decided Eldred by a 7-2 vote, and one of the dissenters in the case was Justice Stevens, who left the bench last year. Shostakovich fans may just have to get used to paying royalties to his heirs to use his work.