Rights Returned: Section 104A of the Copyright Act Harms First Amendment Rights

They are a small, seemingly harmless group: two conductors; one non-profit community orchestra; a small record label; and a guy who sells old movies, TV shows and cartoons.

But they are taking on the U.S. government--and they recently scored a major victory.

A federal district court in Colorado ruled April 3 that copyright law violated these plaintiffs' constitutional rights. More specifically, the court found that Section 104A of the Copyright Act harmed their First Amendment rights. Section 104A restores copyright to some foreign works that had fallen into the public domain.

Golan v. Holder is a groundbreaking decision, as it is the first time any court has overturned any part of the Copyright Act on First Amendment grounds. "It shows that the First Amendment imposes real limits on what Congress can do with copyright laws," says Anthony Falzone, who teaches copyright law at Stanford and is one of the attorneys representing the plaintiffs in this case.

This controversial decision also opens the door for challenges to other provisions of copyright law. "If the order is upheld, we will undoubtedly see more litigation [of this type]," says Tyler Ochoa, who teaches copyright law at Santa Clara Law School.


Copyright Restoration

Section 104A of the Copyright Act was enacted in 1994 so the U.S. could satisfy its obligations under a newly created international treaty, the agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). TRIPS requires each member state to abolish preconditions for copyright protection--formalities such as copyright registration, renewals and copyright notices. TRIPS also requires each member state to restore to foreign works copyright protection that they lost because the work's owner failed to comply with the member state's past copyright formalities.

Section 104A thus restored copyright protection to a variety of foreign works that had entered the public domain in the U.S., including works by Pablo Picasso, J.R.R. Tolkien, Igor Stravinsky and Sergei Rachmaninoff. The restored copyright is owned by whoever created the copyrighted work, or that person's successor/assignee. The plaintiffs in Golan regularly performed or sold copies of these public domain works at the time their copyrights were restored. The plaintiffs claimed the restoration infringed on their First Amendment rights because it restricted them from using works that were once freely available.

They have been fighting an uphill battle. Back in 2003, the Supreme Court foreclosed all First Amendment challenges to copyright law--with one small exception. Rejecting the notion that copyrights could never be challenged under the First Amendment, the court in Eldred v. Ashcroft left open the possibility that such a challenge could be raised if a statute "altered the traditional contours of copyright protection."

And that's what Section 104A did, the 10th Circuit held in 2007. The court stated in Golan v. Gonzales that Section 104A violates "the bedrock principle of copyright law that works in the public domain remain there." Thus, the court held, the statute was not exempt from First Amendment scrutiny. The court then sent the case back to the Colorado district court to examine Section 104A and determine if it violated the plaintiffs' First Amendment rights.

Vested Rights

On remand, the district court in Golan v. Holder found for plaintiffs. (Because the plaintiffs are suing the U.S. government, the defendant's name changes when the U.S. gets a new attorney general.)

The district court began its analysis by finding that Section 104A was content-neutral and so had to meet an intermediate standard of First Amendment review. The statute would be sustained if "it advances important governmental interests ... and does not burden substantially more speech than necessary to further those interests."

The statute served an important government interest, the court found: helping the U.S. comply with its international treaty obligations. But the court also found that the plaintiffs had "vested First Amendment rights to unrestrained use of the restored works."

The Supreme Court in Eldred disparaged a similar First Amendment claim, writing, "The First Amendment securely protects the freedom to make--or decline to make--one's own speech; it bears less heavily when speakers assert the right to make other people's speeches." But the 10th Circuit in Golan v. Gonzalez distinguished Eldred: "The Eldred plaintiffs did not--nor had they ever--possessed unfettered access to any of the works at issue there. ... By contrast, the speech at issue here belonged to plaintiffs when it entered the public domain."

The 10th Circuit ruled that the Golan plaintiffs had "vested First Amendment interests" once the works entered the public domain. The district court on remand agreed that the plaintiffs were entitled to full First Amendment protection.

"Copyright maximalists say there is no First Amendment right to make other people's speeches, but that position took a hit," says Christopher Sprigman, who teaches copyright law at the University of Virginia Law School and has worked for the plaintiffs in this case.

Safe Harbor

Even if plaintiffs had a First Amendment right to use works in the public domain, they needed to prove more in order to win their lawsuit. They had to show that Section 104A went beyond the government's interest in complying with TRIPS and restricted their speech more than was necessary to satisfy the treaty.

They argued that TRIPS enabled each member state to provide permanent safe harbors for "reliance parties," such as plaintiffs who were using the foreign works at the time the copyrights were restored. Section 104A, however, provided only a limited safe harbor. Reliance parties, for instance, could copy and distribute restored copyright works for just one year after the copyright owner provided notice of intent to enforce its copyright. They did not have an unfettered right to continue using the works.

The district court concurred with this argument and held that Section 104A limited plaintiffs' First Amendment rights more than TRIPS required. Thus, the court concluded that Section 104A violated plaintiffs' First Amendment rights.

Golan casts a shadow over other provisions of copyright law--particularly the anti-circumvention provision of the Digital Millennium Copyright Act. That rule forbids people from circumventing technological measures, which restrict users from accessing or copying a work. That law arguably goes beyond the traditional contours of copyright because it provides no exception for fair use.

However, the plaintiffs in this case may be fighting the U.S. government for a while yet. Golan is likely to be appealed, and if it is upheld by the 10th Circuit as many anticipate, there is a good chance the case will go all the way to the Supreme Court. "Any time a federal law is invalidated on constitutional grounds, that's a prime candidate for certiorari," says Rebecca Tushnet, copyright professor at Georgetown Law School.

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