Golan v. Holder

• Decision Date: 21 June 2010
• Docket Number: No. 09-1234,09-1261.,09-1234
• Citation: 609 F.3d 1076
• Parties: Lawrence GOLAN; Estate Of Richard Kapp; S.A. Publishing Co., Inc., doing business as ESS.A.Y. Recordings; Symphony of the Canyons; Ron Hall, doing business as Festival Films; John McDonough, doing business as Timeless Video Alternatives International, Plaintiffs-Appellees and Cross-Appellants,v.Eric H. HOLDER, Jr., in his official capacity as Attorney General of the United States; Marybeth Peters, in her official capacity as Register of Copyrights, Copyright Office of the United States, Defendants-Appellants and Cross-Appellees.Association of American Publishers, Defendant.Motion Picture Association of America, Inc.; International Coalition for Copyright Protection; The American Society Of Composers, Authors and Publishers; The American Society of Media Photographers; The Association of American Publishers; Broadcast Music, Inc.; The Music Publishers Association of the United States; The Software and Information Industry Association; The Recording Industry Association of America; Reed Elservier, Inc.; Houghton Mifflin Harcourt Publishing Co.; Professor Daniel Gervais, Amici Curiae.
• Court: U.S. Court of Appeals — Tenth Circuit

609 F.3d 1076

Lawrence GOLAN; Estate Of Richard Kapp; S.A. Publishing Co., Inc., doing business as ESS.A.Y. Recordings; Symphony of the Canyons; Ron Hall, doing business as Festival Films; John McDonough, doing business as Timeless Video Alternatives International, Plaintiffs-Appellees and Cross-Appellants,v. Eric H. HOLDER, Jr., in his official capacity as Attorney General of the United States; Marybeth Peters, in her official capacity as Register of Copyrights, Copyright Office of the United States, Defendants-Appellants and Cross-Appellees.Association of American Publishers, Defendant.Motion Picture Association of America, Inc.; International Coalition for Copyright Protection; The American Society Of Composers, Authors and Publishers; The American Society of Media Photographers; The Association of American Publishers; Broadcast Music, Inc.; The Music Publishers Association of the United States; The Software and Information Industry Association; The Recording Industry Association of America; Reed Elservier, Inc.; Houghton Mifflin Harcourt Publishing Co.; Professor Daniel Gervais, Amici Curiae.

Nos. 09-1234, 09-1261.

United States Court of Appeals Tenth Circuit.

June 21, 2010.

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John S. Koppel, Attorney (Tony West, Assistant Attorney General; David M. Gaouette, Acting United States Attorney; William Kanter, Attorney, with him on the briefs), Appellate Staff, Civil Division, Department of Justice, Washington, D.C., for Defendants-Appellants and Cross-Appellees.

Anthony T. Falzone, Attorney, Center for Internet and Society, Stanford Law School, Stanford, CA, (Julie A. Ahrens, Attorney, Center for Internet and Society, Stanford Law School, Stanford, CA; Hugh Q. Gottschalk and Carolyn J. Fairless, of Wheeler Trigg O'Donnell LLP, Denver, CO; and Lawrence Lessig, Harvard Law School, Cambridge, MA, with him on the briefs), for Plaintiffs-Appellees and Cross-Appellants.

Paul Bender, Christopher A. Mohr, and Michael R. Klipper, of Meyer, Klipper & Mohr PLLC, Washington, D.C.; Thomas Kanan and Jonathan Decker, of McElroy, Deutsch, Mulvaney & Carpenter, Greenwood Village, CO, filed an amici curiae brief for the American Society of Composers, Authors and Publishers, the American Society of Media Photographers, the Association of American Publishers, Broadcast Music, Inc., Houghton Mifflin Harcourt Publishing Co., the Music Publishers Association of the United States, the Software and Information Industry Association, the Recording Industry Association of America, and Reed Elsevier, Inc.

Seth P. Waxman, Randolph D. Moss, D. Hien Tran, and Thomas Saunders, of Wilmer Cutler Pickering Hale and Dorr LLP, Washington, D.C., have filed an amicus curiae brief for the Motion Picture Association of America, Inc.

Eric M. Lieberman, David B. Goldstein, and Christopher J. Klatell, of Rabinowitz, Boudin, Standard, Krinsky & Lieberman, P.C., New York, NY, have filed an amicus curiae brief for the International Coalition for Copyright Protection.

Alan C. Friedberg of Pendleton, Friedberg, Wilson & Hennessey, P.C., Denver, CO, has filed an amicus curiae brief for Professor Daniel J. Gervais.

Before BRISCOE, Chief Judge, CUDAHY,^* and TACHA, Circuit Judges.

BRISCOE, Chief Judge.

Plaintiffs brought this action challenging the constitutionality of Section 514 of the Uruguay Round Agreements Act (“URAA”), Pub.L. No. 103-465, § 514, 108 Stat. 4809, 4976-81 (1994) (codified as amended at 17 U.S.C. §§ 104A, 109), which granted copyright protection to various foreign works that were previously in the public domain in the United States. The district court granted plaintiffs' motion for summary judgment, concluding that Section 514 violates plaintiffs' freedom of expression under the First Amendment. In Case No. 09-1234, the government appeals the district court's order granting plaintiffs' motion for summary judgment and denying the government's motion, arguing that Section 514 is a valid, content-neutral regulation of speech. In Case No. 09-1261, plaintiffs cross-appeal, contending that the statute is facially invalid and that they are entitled to injunctive relief. Exercising jurisdiction pursuant to 28 U.S.C. § 1291, we reverse the judgment of the district court and conclude that Section 514 of the URAA is not violative of the First Amendment.

I. Statutory Background

In 1989, the United States joined the Berne Convention for the Protection of Literary and Artistic Works (“Berne Convention”). The Berne Convention requires each signatory to provide the same copyright protections to authors in other member countries that it provides to its own authors. Pursuant to Article 18, when a country joins the Convention, it must provide copyright protection to preexisting foreign works even when those works were previously in the public domain in that country.¹ However, when the United States joined the Berne Convention, the implementing legislation did not extend copyrights to any foreign works that were already in the public domain in the United States. See Berne Convention Implementation Act of 1988, Pub.L. 100-568, § 12, 102 Stat. 2853, 2860 (“Title 17, United States Code, as amended by this Act, does not provide copyright protection for any work that is in the public domain in the United States.”); see generally 7 William F. Patry Patry on Copyright § 24:21 (2010).

In April 1994, the United States signed various trade agreements in the Uruguay Round General Agreement on Tariffs and Trade. Included in this round of agreements was the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPs). The TRIPs agreement required, in part, that its signatories comply with Article 18 of the Berne Convention, and thus, extend copyright protection to all works of foreign origin whose term of protection had not expired. Unlike the Berne Convention, the TRIPs agreement provided for dispute resolution before the World Trade Organization. See Patry on Copyright at § 24:1.

In order to comply with these international agreements, Congress enacted the URAA. In particular, Section 514 of the URAA implements Article 18 of the Berne Convention. Section 514 “restores” ² copyrights in foreign works that were formerly in the public domain in the United States for one of three specified reasons: failure to comply with formalities, lack of subject matter protection, or lack of national eligibility. See 17 U.S.C. § 104A(a), (h)(6)(C). Section 514 does not restore copyrights in foreign works that entered the public domain through the expiration of the term of protection. See id. § 104A(h)(6)(B).

In addition to restoring copyrights in preexisting foreign works, Section 514 provides some protections for reliance parties ³ such as plaintiffs who had exploited these works prior to their restoration. See id. § 104A(d)(2)-(4). In order to enforce a restored copyright against a reliance party, a foreign copyright owner must either file notice with the Copyright Office within twenty-four months of restoration id. § 104A(d)(2)(A)(i), or serve actual notice on the reliance party id. § 104A(d)(2)(B)(i). A reliance party is liable for infringing acts that occur after the end of a twelve month grace period, starting from notice of restoration id. § 104A(d)(2)(A)(ii)(I), (d)(2)(B)(ii)(I). Reliance parties may sell or otherwise dispose of restored works during this grace period, id. § 109(a), but they cannot make additional copies during this time, id. § 104A(d)(2)(A)(ii)(III), (d)(2)(B)(ii)(III).

Section 514 provides further protections for reliance parties who, prior to restoration, created a derivative work ⁴ that was based on a restored work. Under Section 514, “a reliance party may continue to exploit that derivative work for the duration of the restored copyright if the reliance party pays to the owner of the restored copyright reasonable compensation....” Id. § 104A(d)(3)(A). If the parties are unable to agree on reasonable compensation, a federal court will determine the amount of compensation. See id. § 104A(d)(3)(B).

II. Factual and Procedural Background

The factual background is not in dispute. Plaintiffs are orchestra conductors, educators performers, publishers, film archivists, and motion picture distributors who have relied on artistic works in the public domain for their livelihoods. They perform, distribute, and sell public domain works. The late plaintiff Kapp created a derivative work-a sound recording based on several compositions by Dmitri Shostakovich. Section 514 of the URAA provided copyright protection to these foreign works, removing them from the public domain in the United States. As a result, plaintiffs are either prevented from using these works or are required to pay licensing fees to the copyright holders-fees that are often cost-prohibitive for plaintiffs.

Plaintiffs filed this action, challenging the constitutionality of the Copyright Term Extension Act, Pub.L. No 105-298, § 102(b), (d), 112 Stat. 2827, 2827-28 (1998), and Section 514 of the URAA, seeking declaratory and injunctive relief. Initially, the district court granted summary judgment to the government. On appeal, we concluded that plaintiffs' challenge to the Copyright Term Extension Act was 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). See Golan v. Gonzales, 501 F.3d 1179, 1182 (10th Cir.2007) (“ Golan I ”). We also held that “[Section] 514 of the URAA ha[d] not exceeded the limitations inherent in the Copyright Clause” of the United States Constitution. Id. ⁵ We recognized that “legislation promulgated pursuant to the Copyright Clause must still comport with other express limitations of the Constitution,” id. at 1187, and concluded that plaintiffs had “shown sufficient free expression interests in works removed from the public domain to require First Amendment scrutiny of [Section] 514,” id. at 1182. We then remanded the case to the district court to ...