Golan v. Gonzales

Decision Date04 September 2007
Docket NumberNo. 05-1259.,05-1259.
PartiesLawrence GOLAN; Estate of Richard Kapp; S.A. Publishing Co, Inc., d/b/a ESS.A.Y. Recordings; Symphony of the Canyons; Ron Hall d/b/a Festival Films; and John McDonough, d/b/a Timeless Video Alternatives International, Plaintiffs-Appellants, v. Alberto R. GONZALES, in his official capacity as Attorney General of the United States; and Marybeth Peters, Register of Copyrights, Copyright Office of the United States, Defendants-Appellees, International Coalition for Copyright Protection, Amicus Curiae.
CourtU.S. Court of Appeals — Tenth Circuit

Lawrence Lessig, Center for Internet and Society, Stanford Law School, Stanford, California (Hugh Q. Gottschalk and Carolyn J. Fairless, Wheeler Trigg Kennedy LLP, Denver, Colorado, with him on the briefs), for Plaintiffs-Appellants.

John S. Koppel, Appellate Staff Civil Division (Peter D. Keisler, Assistant Attorney General, William J. Leone, United States Attorney, and William Kanter, Appellate Staff Civil Division, Washington, D.C., with him on the brief), for Defendants-Appellees.

Eric M. Lieberman and David B. Goldstein, Rabinowitz, Boudin, Standard, Krinsky & Lieberman, P.C., New York, New York, filed an Amicus Curiae brief in support of Defendants-Appellees.

Before HENRY, BRISCOE, and LUCERO, Circuit Judges.

HENRY, Circuit Judge.

Plaintiffs in this case range from orchestra conductors, educators, performers, and publishers to film archivists and motion picture distributors. They challenge two acts of Congress, the Copyright Term Extension Act ("CTEA"), Pub.L. No. 105-298, §§ 102(b) and (d), 112 Stat. 2827-28 (1998) (amending 17 U.S.C. §§ 302, 304), and § 514 of the Uruguay Round Agreements Act ("URAA"), Pub.L. No. 103-465, 108 Stat. 4809, 4976-80 (1994), codified at 17 U.S.C. §§ 104A,1 109.

Also known as the Sonny Bono Copyright Term Extension Act, the CTEA increased the duration of existing and future copyrights from life-plus-50-years to life-plus-70-years. Section 514 of the URAA implements Article 18 of the Berne Convention for the Protection of Literary and Artistic works. Ushered into being in 1886 at the behest of Association Littéraire et Artistique Internationale, an organization founded by Victor Hugo and dedicated to obtaining protection for literary and artistic works, the Berne Convention requires member countries to afford the same copyright protection to foreign authors as they provide their own authors. In this case, congressional compliance with the Berne Convention meant copyrighting some foreign works in the public domain.2

Plaintiffs argue the CTEA extends existing copyrights in violation of the "limited Times" provision of the Constitution's Copyright Clause. With regard to the URAA, plaintiffs contend § 514 shrinks the public domain and thereby violates the limitations on congressional power inherent in the Copyright Clause. In addition, plaintiffs argue that § 514's removal of works from the public domain interferes with their First Amendment right to free expression.

The district court dismissed plaintiffs' CTEA claim and granted summary judgment for the government on plaintiffs' URAA challenges. We exercise jurisdiction pursuant to 28 U.S.C. § 1291 and affirm the district court's dismissal of the CTEA claim as foreclosed by the Supreme Court's decision in Eldred v. Ashcroft, 537 U.S. 186, 123 S.Ct. 769, 154 L.Ed.2d 683 (2003). We also agree with the district court that § 514 of the URAA has not exceeded the limitations inherent in the Copyright Clause. Nevertheless, we hold that plaintiffs have shown sufficient free expression interests in works removed from the public domain to require First Amendment scrutiny of § 514. On this limited basis, we remand for proceedings consistent with this opinion.

I. BACKGROUND

Each plaintiff in this case relies on artistic works in the public domain for his or her livelihood. Lawrence Golan, for example, performs and teaches works by foreign composers including Dmitri Shostakovich and Igor Stravinsky. Before the CTEA, plaintiffs anticipated that certain works would soon outlive copyright protection and enter the public domain. The CTEA delayed this moment by 20 years. Prior to the URAA, each plaintiff utilized or performed works by foreign artists in the public domain, such as Sergei Prokofiev's renowned "Peter and the Wolf." Since the passage of the URAA, plaintiffs must pay higher performance fees and sheet music rentals as well as other royalties. In many cases, these costs are prohibitive.

Plaintiffs filed suit in the United States District Court for the District of Colorado arguing that both the CTEA and the URAA are unconstitutional. The court concluded the Supreme Court's decision in Eldred precluded plaintiffs' challenge to the CTEA and granted summary judgment to the government on plaintiffs' two URAA claims. Golan v. Ashcroft, 310 F.Supp.2d 1215, 1218 (D.Colo.2004). Reasoning that "Congress has historically demonstrated little compunction about removing copyrightable materials from the public domain," the district court ruled that Congress had the power to enact § 514 of the URAA under the Copyright Clause. Golan v. Gonzales, No. Civ. 01-B-1854(BNB), 2005 WL 914754, at *14 (D.Colo. April 20, 2005). The court also granted summary judgment on plaintiffs' First Amendment claim, on the theory they had no protected interest in the now-copyrighted works. This appeal followed.

II. STANDARD OF REVIEW

We review de novo a district court's grant of summary judgment. Steffey v. Orman, 461 F.3d 1218, 1221 (10th Cir.2006). Summary judgment is appropriate only when "there is no genuine issue as to any material fact." FED.R.CIV.P. 56(c). We also examine de novo the district court's conclusions regarding the Constitution. O'Connor v. Washburn Univ., 416 F.3d 1216, 1223 (10th Cir.2005). "[I]t is also appropriate to bear in mind . . . that in the enactment of a statute Congress is presumed to act with knowledge of controlling constitutional limitations or proscriptions and with an intent and purpose to avoid their contravention." Wells, by Gillig, v. Att'y General of the United States, 201 F.2d 556, 560 (10th Cir.1953); see also INS v. Chadha, 462 U.S. 919, 944, 103 S.Ct. 2764, 77 L.Ed.2d 317 (1983) ("We begin . . . with the presumption that the challenged statute is valid.").

III. DISCUSSION

Plaintiffs claim that the CTEA's 20-year extension of existing copyrights violates the Copyright Clause's "limited Times" provision. In addition, they contend that the URAA's removal of works from the public domain exceeds the authority granted to Congress under the Copyright Clause. Finally, plaintiffs maintain that § 514 of the URAA must be subject to First Amendment review because it has altered the traditional contours of copyright protection. Since familiarity with the foundations of copyright law is crucial to understanding the dispute, we begin with an outline of basic copyright principles.

Under the Copyright Clause, Congress may "promote the Progress of Science and useful Arts, by securing for limited Times to Authors . . . the exclusive Right to their Writings." U.S. Const. art. I, § 8, cl. 8. The Supreme Court has explained that "[the Clause] is intended to motivate the creative activity of authors and inventors by the provision of a special reward, and to allow the public access to the products of their genius after the limited period of exclusive control has expired." Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417, 429, 104 S.Ct. 774, 78 L.Ed.2d 574 (1984). By encouraging creative expression through limited monopolies, the Copyright Clause "promot[es] broad public availability of literature, music, and the other arts." Twentieth Century Music Corp. v. Aiken, 422 U.S. 151, 156, 95 S.Ct. 2040, 45 L.Ed.2d 84 (1975). "[O]nce the . . . copyright monopoly has expired, the public may use the . . . work at will and without attribution." Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23, 33-34, 123 S.Ct. 2041, 156 L.Ed.2d 18 (2003). These imaginative works inspire new creations, which in turn inspire others, hopefully, ad infinitum. This cycle is what makes copyright "the engine of free expression." Harper & Row Publishers Inc. v. Nation Enters., 471 U.S. 539, 558, 105 S.Ct. 2218, 85 L.Ed.2d 588 (1985).

Congress's power to bestow copyrights is broad. See Eldred, 537 U.S. at 205, 123 S.Ct. 769 ("[I]t is Congress that has been assigned the task of defining the scope of the limited monopoly that should be granted to authors . . . in order to give the public appropriate access to their work product.") (internal quotation marks omitted). But it is not boundless. The Copyright Clause itself limits Congress's power as to what kinds of works can be copyrighted and for how long. For instance, in order to be copyrightable, a work must be original. Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 345, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991) ("The sine qua non of copyright is originality . . . . Originality is a constitutional requirement."). In addition, a copyright must be limited in duration. Dastar, 539 U.S. at 37, 123 S.Ct. 2041 (noting that Congress cannot "create[] a species of perpetual . . . copyright"). The rationale underlying this limitation is that an infinite copyright would deprive the public of the benefit — the right to use and enjoy the expression — that it is supposed to receive in exchange for the grant of monopoly privileges to the author for a discrete period of time. See id. at 33-34, 123 S.Ct. 2041 ("The rights of a . . . copyright holder are part of a carefully crafted bargain under which, once the . . . copyright monopoly has expired, the public may use the . . . work at will and without attribution.") (internal citation and quotation marks omitted).

The Supreme Court has recognized that the First Amendment can limit Congress's power under the Copyright Clause. Eldred, 537 U.S. at 219-21, 123 S.Ct....

To continue reading

Request your trial
17 cases
  • State v. U.S. Envtl. Prot. Agency
    • United States
    • United States Courts of Appeals. United States Court of Appeals (10th Circuit)
    • February 22, 2017
    ...... act with knowledge of controlling constitutional limitations" when it enacts new statutes, Golan v. Gonzales , 501 F.3d 1179, 1183 (10th Cir. 2007), the decision to omit the school lands ......
  • Wyoming v. U.S. Envtl. Prot. Agency
    • United States
    • United States Courts of Appeals. United States Court of Appeals (10th Circuit)
    • February 22, 2017
    ...... act with knowledge of controlling constitutional limitations" when it enacts new statutes, Golan v. Gonzales , 501 F.3d 1179, 1183 (10th Cir. 2007), the decision to omit the school lands provision ......
  • Golan v. Holder
    • United States
    • United States Supreme Court
    • January 18, 2012
    ...does not implicate First Amendment concerns.” Id., at *17.The Court of Appeals for the Tenth Circuit affirmed in part. Golan v. Gonzales, 501 F.3d 1179 (2007). The public domain, it agreed, was not a “threshold that Congress” was powerless to “traverse in both directions.” Id., at 1187 (int......
  • Golan v. Holder
    • United States
    • United States Supreme Court
    • January 18, 2012
    ...does not implicate First Amendment concerns." Id., at *17.The Court of Appeals for the Tenth Circuit affirmed in part. Golan v. Gonzales, 501 F.3d 1179 (2007). The public domain, it agreed, was not a "threshold that Congress" was powerless to "traverse in both directions." Id., at 1187 (int......
  • Request a trial to view additional results
2 firm's commentaries
  • Supreme Court Upholds Restoration Of U.S. Copyright Protection For Foreign Works In The Public Domain
    • United States
    • Mondaq United States
    • January 26, 2012
    ...Court decided that issue in Eldred v. Ashcroft, 537 U.S. 186 (2003), and two appeals to the court of appeals on the remaining issues. 501 F.3d 1179 (2007), and 609 F.3d 1076 (10th Cir. 5 U.S. Const., Art. 1, § 8, cl. 8. 6 17 U.S.C. § 107. 7 17 U.S.C. § 104A(h)(6). The content of this articl......
  • Welcome (Sort Of) To The Public Domain Mickey Mouse!
    • United States
    • Mondaq United States
    • January 11, 2024
    ...Corp., 539 U.S. 23, 33 (2003). 4. Warner Bros. Ent. v. X One X Prods., 644 F.3d 584, 596 (8th Cir. 2011). 5. Id. 6. Golan v. Gonzales, 501 F.3d 1179, 1184 (10th Cir. 7. Id. 8. Warner Bros. Ent. v. X One X Prods., 644 F.3d 584, 596 (8th Cir. 2011). 9. Jennifer Jenkins, Mickey, Disney, and th......
1 books & journal articles
  • Rehabilitating the property theory of copyright's First Amendment exemption.
    • United States
    • Notre Dame Law Review Vol. 89 No. 2, December - December 2013
    • December 1, 2013
    ...2007) (discussing whether Copyright Renewal Act of 1992 exceeded the traditional contours of copyright); Golan v. Gonzales (Golan 1), 501 F.3d 1179, 1187 (10th Cir. 2007) (discussing whether 17 U.S.C. [section] 104A exceeded the traditional contours of copyright); Luck's Music Library, Inc.......

VLEX uses login cookies to provide you with a better browsing experience. If you click on 'Accept' or continue browsing this site we consider that you accept our cookie policy. ACCEPT