05-1259

IN THE UNITED STATES COURT OF APPEALS FOR THE TENTH CIRCUIT

LAWRENCE GOLAN, RICHARD KAPP, S.A. PUBLISHING COL, 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 GONZALES, in his official capacity as Attorney General of the United States, and MARYBETH PETERS, Register of

Copyrights, Copyright Office of the United States, Defendant-Appellees.

On Appeal from the United States District Court

for the District of Colorado

Honorable Lewis T. Babcock, Chief Judge Case No. 1:01-cv-01854 LTB-BNB

APPELLANTS’ OPENING BRIEF

Lawrence Lessig Hugh Q. Gottschalk Center for Internet and Society Carolyn J. Fairless Stanford Law School Wheeler Trig Kennedy LLP 559 Nathan Abbott Way 1801 California Street, Suite 3600 Stanford, CA 94305 Denver, CO 80202 Telephone: 650-723-5674 Telephone: 303-244-1800

STATEMENT REGARDING ORAL ARGUMENT

Plaintiffs request oral argument.

CORPORATE DISCLOSURE STATEMENT

Pursuant to Federal Rule of Appellate Procedure 26.1, Plaintiff-Appellants

(hereinafter “Plaintiffs”) hereby certify that they have no parent corporation, nor

do any publicly held corporations own 10% or more of their stock.

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TABLE OF CONTENTS

Page STATEMENT REGARDING ORAL ARGUMENT ................................................i

CORPORATE DISCLOSURE STATEMENT ........................................................ ii

TABLE OF AUTHORITIES ....................................................................................vi

STATEMENT OF RELATED CASES....................................................................xi

I. JURISDICTIONAL STATEMENT......................................................................1

II. STATEMENT OF THE ISSUES PRESENTED FOR REVIEW........................2

III. STATEMENT OF THE CASE...........................................................................2

IV. STATEMENT OF THE FACTS ........................................................................6

A. Background Of URAA.................................................................................6

B. Background Of CTEA................................................................................11

C. Plaintiffs’ Harms From The URAA ...........................................................12

V. SUMMARY OF THE ARGUMENT ................................................................20

A. The URAA Must Be Scrutinized Under The First Amendment................20

B. Congress Does Not Have The Power Under The Progress Clause To Restore Copyrights To Works In The Public Domain........................21

C. District Court’s Dismissal Of Plaintiffs’ CTEA Claim Is In Error............22

VI. ARGUMENT....................................................................................................22

A. Standard Of Review ...................................................................................22

B. Plaintiffs Are Entitled To First Amendment Review Of The URAA........23

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1. The District Court Wrongly Held Copyright Law Immune From First Amendment Review ......................................................................23

2. The URAA Deviates From The “Traditional Contours Of Coypright Protection” And Thus Should Be Subject To Ordinary First Amendment Review ................................................................................26

a. Congress has never granted a copyright to works that have passed into the public domain ..........................................................28

i. The government has made no showing that the Copyright Act of 1790 removed works from the public domain of The United States.........................................................................28

ii. The government can make no showing that works were in the public domain throughout the United States in 1790, because the status of the state common law of copyright was fundamentally uncertain ..............................................................34

iii. The Wartime Statutes did not remove works from the public domain .........................................................................................40

iv. Even if this Court believes the wartime statutes removed works from the public domain, they would not constitute a “traditional contour of copyright protection” exempting them, or the URAA, from First Amendment review...................44

b. The 1832 restoration of patents is irrelevant to Plaintiffs’ First Amendment argument ......................................................................45

C. The Progress Clause Does Not Give Congress The Power to Restore Copyrights To Works That Have Passed Into The Public Domain ............46

1. The “Limited Times” Clause Has Been Interpreted By The Supreme Court To Restrict The Power Of Congress To Remove Works From The Public Domain ...........................................................47

2. There Is No Longstanding Congressional Practice That Can Justify Granting A Copyright To Works In The Public Domain.......................51

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a. Neither the 1790 Act, the 1919 Act, nor the 1941 Act establish a precedent for restoring the copyrights of works in the public domain ..............................................................................................52

b. The 1832 Patent Act did not restore the Inventions from the Public Domain ..................................................................................52

D. Plaintiffs Must Be Afforded The Opportunity To Demonstrate That The Existing Terms Of Copyright Have Become So Long As To Be Effectively Perpetual...................................................................................54

VII. CONCLUSION ................................................................................................58

VIII. STATEMENT REGARDING ORAL ARGUMENT.....................................58

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TABLE OF AUTHORITIES

CASES Page Allen v. Culp, 166 U.S. 501, 504 (1897)............................................................ 53-54 Donaldson v. Becket (17 Parl. Hist. Eng. 953; 4 Burr. 2408, 98 Eng. Rep. 257).............................................................................................36

Eldred v. Ashcroft, 537 U.S. 186, 123 S. Ct. 769 (2003) ................................ passim Eldred v. Reno, 239 F.3d at 375 (D.C. Cir. 2001) .............................................23, 25 Elliott Indus. Ltd. v. BP America Prod. Co., 407 F.3d 1091 (10th Cir. 2005)..............................................................................................22, 56 Feist Publ’ns v. Rural Tele. Serv. Co., 499 U.S. 340 (1991)...................................47

Golan v. Ashcroft, 310 F.Supp.2d 1215 (D. Colo. 2004)........................2, 4, 54, 56

Golan v. Gonzales, 2005 WL 914754 (D. Colo. April 20, 2005).................... passim

Graham v. John Deere Co., 383 U.S. 1 (1966) ................................21, 46-50, 52-54

Hartman v. Kickapoo Tribe Gaming Comm’n, 319 F.3d 1230 (10th Cir. 2003)....................................................................................................22 Hotchkiss v. Greenwood, 52 U.S. (11 How.) 248 (1850)........................................47

Kahle v. Ashcroft, 2004 WL 2663157 (N.D. Cal. 2004) .........................................24

Los Angeles News Service v. Tullo, 973 F.2d 791, (9th Cir. 1992) ..........................25

Millar v. Taylor, 4 Burr. 2303, 98 Eng. Rep. 201 (1769)........................................36

Nihon Keizai Shimbun, Inc. v. Comline Bus. Data. Inc., 166 F.3d 65 (2d Cir. 1999)......................................................................................................25

Suntrust Bank v. Houghton Mifflin Co., 268 F.3d 1257 (11th Cir. 2001) ................25

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Turner Broad. Sys. v. FCC, 520 U.S. 180 (1997)........................................26, 27, 46

Wheaton v. Peters, 33 U.S. (8 Pet.) 591 (1834).......................................................35

White v. Samsung, 989 F.2d 1512 (9th Cir. 1993)....................................................13

STATUTES

U.S. Const., Amend. I ................................................................................................2 U.S. Constitution, Art. I, § 8, cl. 8 ................................................................... passim 15 U.S.C. § 1057(h) .................................................................................................41 17 U.S.C. § 16 (1909) ..............................................................................................41 17 U.S.C. § 104A(a)...................................................................................................8 17 U.S.C. § 104A(a)(1)(B) ........................................................................................8 17 U.S.C. § 104A(c)...................................................................................................8 17 U.S.C. § 104A(d)(2)..............................................................................................9 17 U.S.C. § 104A(d)(2)(A)(ii) ...................................................................................8 17 U.S.C. § 104A(d)(2)(B) ........................................................................................8 17 U.S.C. § 104A(d)(2)(B)(ii) ...................................................................................8 17 U.S.C. § 104A(d)(3)(A) ................................................................................ 10-11 17 U.S.C. § 104A(d)(3)(B) ......................................................................................11 17 U.S.C. § 104A(g) ..................................................................................................8 17 U.S.C. § 104A(h)(2)..............................................................................................8 17 U.S.C. § 104A(h)(3)..............................................................................................8 17 U.S.C. § 104A(h)(4)..............................................................................................8 17 U.S.C. § 104A(h)(6).......................................................................................... 7-8 17 U.S.C. § 109(a) ...................................................................................................10 17 U.S.C. § 115..........................................................................................................9 17 U.S.C. § 301........................................................................................................11 17 U.S.C. § 302........................................................................................................11

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17 U.S.C. § 303........................................................................................................11 17 U.S.C. § 304........................................................................................................11 17 U.S.C. § 401(a) .....................................................................................................7 17 U.S.C. § 405........................................................................................................40 17 U.S.C. § 407........................................................................................................41 17 U.S.C. § 601(a) (1976)........................................................................................41 28 U.S.C. § 1291........................................................................................................1 28 U.S.C. § 1331........................................................................................................1 28 U.S.C. § 1361........................................................................................................1 28 U.S.C. § 1391(e) ...................................................................................................1 28 U.S.C. § 2201........................................................................................................1 35 U.S.C. § 112 ¶ 1 ..................................................................................................49 35 U.S.C. § 251..................................................................................................41, 53 74 Stat. c69-71 (1960)..............................................................................................43 58 Stat. 1129-31 (1944) ...........................................................................................43 Copyright Act of May 31, 1790, ch. 15, § 1, 1 Stat. 124................................. passim Copyright Act of Feb. 3, 1831, ch. 16, 4 Stat. 436 ............................................11, 27 Copyright Act of Mar. 4, 1909, ch. 320, Pub. L. 60-349, 35 Stat. 1080-81.......................................................................................... passim Copyright Act of Dec. 8, 1919, Pub. L. 66-102, 41 Stat. 368-69........................................................................................28, 42, 52 Copyright Act of Sept. 25, 1941, Pub. L. 77-258, 55 Stat. 732 ....................................................................................... 28, 42-43, 52 Copyright Term Extension Act of 1998 Pub. L. 105-298, Title I, 112 Stat. 2827 (1998) ......................................... passim NAFTA Implementation Act, Pub. L. No. 103-182 107 Stat. 2057 (1993)......................................................................................7, 44 Patent Act of July 3, 1832, ch. 162, 4 Stat. 559........................................... 45, 52-53

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Uruguay Round Agreements Act, section 514, Pub. L. No. 103-465, 17 U.S.C. § 104A (Dec. 8, 1994) ............................ passim Pub. L. No. 87-668, 76 Stat. 555 (1962)..................................................................27 Pub. L. No. 89-142, 79 Stat. 581 (1965)..................................................................27 Pub. L. No. 90-141, 81 Stat. 464 (1967)..................................................................27 Pub. L. No. 90-416, 82 Stat. 397 (1968)..................................................................27 Pub. L. No. 91-147, 83 Stat. 360 (1969)..................................................................27 Pub. L. No. 91-555, 84 Stat. 1441 (1970)................................................................27 Pub. L. No. 92-170, 85 Stat. 490 (1971)..................................................................27 Pub. L. No. 92-566, 86 Stat. 1181 (1972)................................................................27 Pub. L. No. 93-573, Title I, § 104, 88 Stat. 1873 (1974).........................................27 Pub. L. No. 94-553, § 302(a), 90 Stat. 2572 (1976) ................................................12 Pub. L. No. 94-553, § 304, 90 Stat. 2573 (1976).....................................................27 Pub. L. No. 105-298, § 102, 112 Stat. 2827 (1998)...........................................11, 27 10th Cir. R. 28.2..........................................................................................................1 Fed. R. App. P. 3........................................................................................................1 Fed. R. App. P. 28(f)..................................................................................................7 Fed. R. Civ. P. 12(b)(6)............................................................................................22 Fed. R. Civ. P. 56(f) ...................................................................................................4 Republic of Belarus’s Legal Act On Copyright and Contiguous Rights, Belarus edition of the Law No. 194-3, Art. 22, ¶1 .............................................31

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OTHER

2 W. Blackstone, Commentaries on the Laws of England 406-07 n.h (Robert Bell ed. 1771) ........................................................................................36

1 William W. Crosskey, Politics and the Constitution in the History of the United States 477 (1953) ....................................................................................34

James Gilreath, Federal Copyright Records 1790-1800 xxxi (1987) .....................32

Paul Goldstein, International Copyright 61-66 (2001) ...........................................30

Marshall Leaffer, International Copyright from an American Perspective, 43 Ark. L. Rev. 373, 402 (1990).........................................................................41 William J. Maher, Copyright Term, Retrospective Extension, and the Copyright Law of 1790 in Historical Context, 49 Journal of the Copyright Society of the U.S.A. 1021 (2002) ........................................ 31-33, 38 1 M. Nimmer & D. Nimmer, Nimmer on Copyright §1.05[A][2] ..........................48

2 M. Nimmer & D. Nimmer, Nimmer on Copyright § 7.01-04 ..............................42 2 M. Nimmer & D. Nimmer, Nimmer on Copyright § 7.15-17 ..............................42 2 M. Nimmer & D. Nimmer, Nimmer on Copyright §7.23[E] ...............................41 3 M. Nimmer & D. Nimmer, Nimmer on Copyright § 9A.07[A] ..................... 43-44

L. Ray Patterson, Copyright in Historical Perspective 183 (1968).........................34

William Rawle, A View of the Constitution of the United States of America 102 (1825)...........................................................................................................35 Christopher Sprigman, Reform(aliz)ing Copyright, 57 Stanford L. Rev. 485, 521 & n. 135 (2004)....................................................................................12

3 Story’s Commentaries on the Constitution of the United States 48, § 1147 (1833)......................................................................................... 34-35,

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Edward C. Walterscheid, Inherent or Created Rights: Early Views on the Intellectual Property Clause, 19 Hamline L. Rev. 81, 87 (1995) ......................34

Noah Webster, Acknowledgments, American Magazine 130 (Feb. 1788) .............35 The Federalist No. 43 at 267 (Henry Cabot Lodge ed., 1888)........................... 36-37 http://ncpi.gov.by/eng/legal/V19600370.htm (last visited July 11, 2005) ..............31

http://www.ascap.com/restored_works/restore_index.cfm (last visited July 11, 2005)..................................................................................10 http://www.copyright.gov/gatt.html (last visited July 11, 2005)...............................9 http://www.supremecourtus.gov/oral_arguments/argument_transcripts/01-618.pdf (last visited July 15, 2005)..................................................................................56 http://eldred.cc/legal/01-618.Eldred3.mer.pdf (last visited July 15, 2005) .............56 STATEMENT OF RELATED CASES

There are no prior or related cases.

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I. JURISDICTIONAL STATEMENT

This is an action for declaratory relief pursuant to 28 U.S.C. § 2201, seeking

the invalidation of two federal statutes — section 514 of the Uruguay Round

Agreements Act (“URAA”) and the Copyright Term Extension Act of 1998

(“CTEA”).

The District Court had subject matter jurisdiction pursuant to 28 U.S.C.

§§ 1331, 1361 and 2201, because this declaratory judgment action challenges the

constitutionality of federal statutes. Personal jurisdiction over Defendants Gonzales

and Peters (hereinafter “the government”) in their respective official capacities is

appropriate. Venue is properly laid in the District Court under 28 U.S.C. § 1391(e).

This Court of Appeals has appellate jurisdiction pursuant to 28 U.S.C.

§ 1291. Plaintiffs timely filed their appeal pursuant to Federal Rule of Appellate

Procedure 3 on May 27, 2005.1 Aplt. App. at 2356. The Court’s March 15, 2004

Order dismissed Plaintiffs’ CTEA claim, and the Court’s April 20, 2005 Order

granted final summary judgment on all remaining claims.2 Final judgment was

1 Plaintiffs’ original notice of appeal was timely amended to clarify all orders from which Plaintiffs appeal. See Aplt. App. at 2359 [Plaintiffs’ Corrected Notice of Appeal, filed July 8, 2005]. 2 Pursuant to 10th Cir. R. 28.2, the District Court’s April 20, 2005 and March 15, 2004 Orders are appended to this Brief as Exhibits A and B, respectively.

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entered on May 12, 2005. Aplt. App. at 2353. Accordingly, this appeal is from the

orders and final judgment that dispose of all parties’ claims.

II. STATEMENT OF THE ISSUES PRESENTED FOR REVIEW

(1) Whether the District Court erred in holding that section 514 of the

URAA is free from First Amendment scrutiny, U.S. Const., Amend. I. Exh. A at

27-28; Aplt. App. at 2348; see also Golan v. Gonzales, 2005 WL 914754 at *17

(D. Colo. April 20, 2005).

(2) Whether the District Court erred in holding that Congress is permitted

under Article I, section 8, clause 8 of the Constitution to enact legislation that

removes work(s) from the public domain. Exh. A at 4-24; Aplt. App. At 2324-

2344; see also Golan, 2005 WL 914754 at *2-14.

(3) Whether the District Court erred when it dismissed Count IV of

Plaintiffs’ First Amended Complaint which alleged that the term of copyright

provided under the CTEA is an “effectively perpetual” term in violation of the

“limited Times” requirement of the Article I, section 8, clause 8 of the

Constitution. Exh. B at 4; Aplt. App. at 320; Golan v. Ashcroft, 310 F.Supp.2d

1215, 1218 (D. Colo. 2004).

III. STATEMENT OF THE CASE

Article I, section 8, clause 8 of the US Constitution grants Congress the

power to “promote the Progress of Science and useful Arts, by securing for limited

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Times to Authors and Inventors the exclusive Right to their respective Writings

and Discoveries” (the “Progress Clause”). This case is about the limits to

Congress’s power to regulate speech pursuant to this clause.

Plaintiffs are creators who depend upon the public domain for their work

and livelihood. By “restoring” the copyrights to works that had long passed into

the public domain, Congress has burdened Plaintiffs’ creative expression. By

extending the copyright term by 20 years, Congress has ignored the “limited

Times” requirement of the Progress Clause. Plaintiffs ask this Court to test

Congress’s actions against the limits articulated in the Constitution and in Supreme

Court precedent.

Plaintiffs’ First Amended Complaint raised four counts: three challenging

the constitutionality of the URAA and one challenging the constitutionality of the

CTEA. Aplt. App. at 18. Count I alleged that section 514 of the URAA, by

removing works from the public domain, exceeds Congress’s power under the

Progress Clause as that clause has been interpreted by the Supreme Court. Id. at 52.

Count II alleged that section 514 unconstitutionally restricts free speech. Id. at 53-

54. Count III alleged that section 514’s retroactive restoration of copyrights to

works in the public domain violates the Fifth Amendment’s due process clause. Id.

at 54. Count IV alleged that the 20-year extension of copyright under the CTEA

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violated the “limited Times” requirement of the Progress Clause because the

copyright term provided for is “effectively or virtually perpetual.” Id. at 57.

By order entered March 15, 2004, the District Court dismissed Plaintiffs’

CTEA claim. See Exhibit B at 1; Aplt. App. at 317; see also Golan, 310 F. Supp. at

1218. Thereafter, Plaintiffs filed a Second Amended Complaint adding Defendant

Peters, the Register of Copyrights, to the case. Aplt. App. at 426. The Second

Amended Complaint realleged Counts I, II, and III challenging the URAA based

on the Progress Clause, First Amendment and due process clause, respectively. Id.

at 426-460.

In the first month of discovery, the government moved for summary

judgment against all of the URAA counts and repeated the arguments raised in its

earlier renewed motion to dismiss. Id. at 327-329. After obtaining time for

discovery pursuant to Federal Rule of Civil Procedure 56(f), Plaintiffs opposed the

government’s motion for summary judgment, id. at 476, and submitted 12

affidavits from fact and expert witnesses. These affidavits (1) provided evidence

that the URAA burdens speech, (2) outlined less speech restrictive methods to

achieve the same ends that the URAA seeks, and (3) established important

historical facts showing that the Framers and First Congress never “removed”

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works from the public domain of the United States. Id. at 585-1815.3 After

completing discovery, Plaintiffs also filed a cross motion for summary judgment

on Count I, the Progress Clause claim. Id. at 1986. The District Court did not hear

oral argument on these dispositive motions.

By order entered April 20, 2005, the District Court granted the government’s

summary judgment motion on all counts and rejected Plaintiffs’ cross motion on

the Progress Clause claim. See Exhibit A; Aplt. App. at 2321; see also 2005 WL

914754. The District Court entered final judgment on May 12, 2005. Aplt. App. at

2353. Plaintiffs timely appealed the District Court’s judgment. Id. at 2356, 2359.

By this appeal, Plaintiffs seek reversal of the District Court’s judgment which

erroneously held that section 514 of the URAA is free of First Amendment

scrutiny and does not exceed Congress’s power under the Progress Clause.4

Plaintiffs also seek reversal of the District Court’s improper dismissal of Plaintiffs’

claim that the CTEA violates the “limited Times” requirement of the Constitution,

as alleged in Count IV of Plaintiffs’ First Amended Complaint.

3 The twelve declarations submitted by Plaintiffs are the Declarations of Lionel Bently, John Blackburn, Lawrence Golan, Ron Hall, Richard Kapp, Randy Luck, Ray McAlister, John McDonough, Richard Prelinger, Mark Rose, Kortney Stirland and Hal Varian. See id. For clarity of reference in this brief, all citations to these declarations are to Appellants’ Appendix (Aplt. App. at [page]), and also include a parenthetical cite to the specific declaration in question (e.g., “XXX Decl., ¶#).

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IV. STATEMENT OF THE FACTS

Plaintiffs are individuals who have devoted their lives to the pursuit and

promotion of creative arts in this country. In their artistic pursuits, they depend on

the public domain as a vital source of materials to teach, perform and disseminate

to the public. Without free access to materials in the public domain — and the

corresponding assurance that those materials will remain in the public domain —

their ability to pursue their creative interests and promote learning in this country is

severely hampered.

Plaintiffs challenge the constitutionality of section 514 of the URAA and the

CTEA’s 20-year copyright term extension. This fact summary describes briefly the

workings of the URAA and the CTEA,5 and details some of the harms suffered by

Plaintiffs and the public as a result of these enactments.

A. Background Of URAA

Section 514 of the URAA purports to restore copyrights in works that long

ago passed into the public domain for failure to comply with United States

copyright law. To affix copyright notice to a work was an essential requirement of

copyright eligibility under the 1909 Copyright Act, and continued to be a

4 Plaintiffs do not challenge the District Court’s summary judgment that section 514 comports with Fifth Amendment due process.

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requirement (subject to limited exceptions) under the 1976 Copyright Act. In 1989,

after the United States joined the Berne Convention, Congress eliminated this

notice requirement — but only prospectively for future works. See 17 U.S.C.

§ 401(a). On December 8, 1993, in order to comply with the North American Free

Trade Agreement, Congress restored copyrights to motion pictures created in

Mexico or Canada from January 1, 1978 to March 1, 1989 that had entered the

public domain in the U.S. for failure to affix the proper copyright notice. See

NAFTA Implementation Act, Pub. L. No. 103-182. Exactly one year later,

Congress granted many more copyrights to public domain works from foreign

countries under the auspices of section 514 of the URAA, Pub. L. No. 103-465, 17

U.S.C. § 104A(h)(6) (Dec. 8, 1994).

Section 104A(h)(6) of the Copyright Act now grants copyright automatically

to any “restored work,” meaning any work created by a foreign national and first

published outside the U.S., which passed into the public domain in the U.S.

because either (1) the authors failed to comply with the required formalities of U.S.

copyright law, (2) the works were sound recordings fixed before February 15,

1972, which were not eligible for copyright in the U.S., or (3) the authors were

nationals of and domiciled in foreign countries that had not secured a copyright

5 Pursuant to Fed. R. App. P. 28(f), relevant portions of the text of the URAA and CTEA are attached to this brief as Exhibits C and D, respectively.

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agreement with the United States. See 17 U.S.C. § 104A(h)(6). Under section 514,

any work first published before January 1, 1996 in a Berne Union or WTO member

nation,6 which still enjoys copyright protection in its source country, automatically

receives a “restored” U.S. copyright as of January 1, 1996. Id. § 104A(a), (h)(2),

(h)(3), (h)(6). A “restored” copyright confers on the owner the same exclusive

rights as an original copyright, for the remainder of the term the work would

otherwise have had, if it never entered the public domain. Id. § 104A(a)(1)(B). The

restored copyright owner is under no obligation to license the restored work.7

Under the URAA, from January 1, 1996 to January 1, 1998, owners of

“restored” copyrights had the option to notify “reliance parties” of their intent to

enforce the copyright in two ways: either by serving a notice of intent to enforce

(“NIE”) directly on a reliance party or by filing a NIE with the Copyright Office.

Id. § 104A(c), (h)(4), (d)(2)(B). Under either method, the notice starts the clock

running against the reliance party so that he or she may legally use, but not copy,

the work for only a 12-month period from the date of notice. Id.

§§ 104A(d)(2)(A)(ii), (d)(2)(B)(ii). After the 12-month period, reliance parties are

6 Today there are over 170 member countries to the Berne Convention or WTO. Moreover, section 514 purports to give the President power to extend copyright protection to public domain works of any other countries that provide substantially the same protection for restored works to U.S. nationals. Id. § 104A(g).

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liable for copyright infringement if they engage in unauthorized use of the restored

work. Id. § 104A(d)(2).

The effect of this unprecedented “copyright restoration” is the wholesale

removal of vast numbers of existing works — including thousands of books,

paintings, drawings, music, films, photographs, and other artistic works - from the

public domain. In fact, restored copyright owners wasted no time in vigorously

pursuing their newfound rights under the URAA. The Copyright Office, which is

tasked with publishing all NIEs in the Federal Register, reports receiving NIEs for

nearly 50,000 restored works in response to URAA. See

http://www.copyright.gov/gatt.html (last visited July 11, 2005). Over a 15-month

period between January 1996 and March 1997, a single public domain music

distributor received notices claiming restored copyright in over 115 separate works

from a single rights holder. See Aplt. App. at 746, 937-1018 [Luck Decl., ¶ 8 &

Exhibit E (letters from G. Schirmer to Luck’s Music Library)]. And the American

Society of Composers and Publishers (a.k.a. “ASCAP”) reports a “partial list” of

works by some of the most important composers (such as Stravinsky, Prokofiev,

and Shostakovich) which are now subject to copyright restrictions because of the

URAA. Its “partial list” reflects over 1,500 works which have been plucked from

7 There is one exception, the compulsory licensing provision of the Copyright Act, 17 U.S.C. § 115, for making phonorecords of nondramatic musical works.

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the public domain and now fortuitously “enhance ASCAP's position as the leading

source of performing rights for concert music.” See

http://www.ascap.com/restored_works/restore_index.cfm (ASCAP website

reflecting 1,509 restored works) (last visited July 11, 2005); see also Aplt. App. at

725-743 [Kapp Decl., Exh. E (ASCAP catalog from May 1998 reflecting

approximately 1300 restored works)]. No doubt the NIEs filed with the Copyright

Office and served on individuals, and the lengthy list of restored works on

ASCAP’s website, represent just a sliver of all the creative works affected by

section 514.

In addition to these burdens, section 514(b) of the URAA forbids reliance

parties from exercising their first sale rights after the brief 12-month grace period

expires. Reliance parties are prohibited from selling their own copies of “restored”

works, even though they were legally acquired long before restoration. See 17

U.S.C. § 109(a). This means that after the 12-month period, reliance parties cannot

sell or rent the copies of works they legitimately owned “for purposes of direct or

indirect commercial advantage.” Id.

Finally, reliance parties who legally created derivative works based on

public domain materials that are now restored by section 514 may also be liable for

copyright infringement if they continue to exploit their derivative works, unless

they pay compensation to the owner of the restored copyright. 17 U.S.C.

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§ 104A(d)(3)(A). If the parties cannot agree on such compensation, the restored

copyright holder can sue the reliance party in district court. Id. § 104A(d)(3)(B).

B. Background Of CTEA

The CTEA increased the term of copyright generally by 20 years, for both

subsisting and future copyrights. Works published before 1978 now have a total

term of protection of 95 years. Works created by natural authors in 1978 or later

now have a term equal to the life of the author plus 70 years. Works created in

1978 or later that are works-made-for-hire (or anonymous or pseudonymous

works), now have a term of 95 years from the year of publication or 120 years

from the year of creation, which ever comes first. Pub. L. No. 105-298, Title I, 112

Stat. 2827 (amending 17 U.S.C. §§ 301-304). The CTEA keeps any work from

ever entering the public domain due to the expiry of copyright until the year 2019

at the earliest.

Historically, the term of copyright in the U.S. was much shorter. The

original term of copyright was 14 years, with opportunity to renew for additional

14 years (if the author survived the first time). Act of May 31, 1790, ch. 15, § 1,

1 Stat. 124. In 1831, Congress extended the original term to 28 years, Act of Feb.

3, 1831, ch. 16, § 1, 4 Stat. 436, and in 1909 it extended the renewal term to 28

years, Act of Mar. 4, 1909, ch. 320, §§ 23-24, 35 Stat. 1080-81. Because the vast

majority of copyrighted works were never actually renewed, however, the average

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and effective copyright term until 1976 was never longer than 32.2 years. Aplt.

App. at 29 [First Amended Complaint, ¶ 29]; see also Christopher Sprigman,

Reform(aliz)ing Copyright, 57 Stanford L. Rev. 485, 521 & n. 135 (2004).

In 1976, Congress eliminated the renewal requirement for works created

after January 1, 1978, such that corporate works received protection for 75 years

from publication or 100 years from creation (whichever expired first), while works

by natural authors were protected for 50 years after the author’s death. Pub. L. 94-

553, § 302(a), 90 Stat. 2572. In 1989, Congress eliminated the renewal requirement

for any subsisting copyrights vested before 1978. Thus, all subsisting works were

guaranteed a term of 75 years, whether or not the authors had any continuing

interest in protection. With the enactment of the CTEA in 1998, the average

copyright term for all works expanded immediately from an estimated 32.2 years

to the maximum possible term – either 95/120 years for corporate works or life of

the author plus 70 years for all other works. This new term is staggeringly long

when compared to the “14 + 14” year term enacted by the First Congress, and also

when considered against the 200-year history of copyright protection in the United

States.

C. Plaintiffs’ Harms From The URAA

Plaintiffs are orchestra conductors, educators, performers, film archivists,

and motion picture distributors. Plaintiffs chose their vocations years ago and

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developed their respective businesses based in part upon the design of the United

States copyright system that allowed them freely to use works in the public

domain. Over the years, Plaintiffs purchased, performed, or made available foreign

works that they now must forego using in their artistic and business pursuits

because of the retroactive grant of copyright under the URAA.

The importance of the public domain in promoting creativity is indisputable.

See, e.g., White v. Samsung, 989 F.2d 1512, 1513-14 (9th Cir. 1993). Just a few

examples from this case illustrate this fact. Plaintiffs Lawrence Golan, Richard

Kapp, and Symphony of the Canyons all perform music. Aplt. App. at 614, 707,

1804 [Golan Decl., ¶¶ 3-5, Kapp Decl., ¶ 2, Stirland Decl., ¶ 6]. Their artistic

expression is facilitated by the availability of music in the public domain. Indeed,

the vast majority of works they perform are public domain works. Id. at 618-19,

709, 1804 [Golan Decl., ¶ 17-18, Kapp Decl., ¶ 8, Stirland Decl., ¶ 7]. Without

access to the public domain works which have been “restored” through the URAA,

their range of performances is significantly restricted.

For instance, Plaintiff Lawrence Golan is a professional symphony, opera,

and ballet conductor as well as a music educator. He directs the orchestral studies

program and is a professor of conducting at the University of Denver, Lamont

School of Music. Id. at 614 [Golan Decl., ¶ 3]. As a music director he is obligated

to teach works by important classical and contemporary foreign composers

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including composers from the 20th century like Shostakovich, Prokofiev,

Stravinsky, Glière, Khachaturian and Kabelevsky. Id. at 615-19 [Golan Decl., ¶ 8,

11, 12, 18]. Golan’s students depend on these public domain works for a well-

rounded education in orchestral studies, including studying and learning the

industry’s “standard repertoire” for auditions, competitions, and public

performances. Id. at 617-20 [Golan Decl., ¶ 11, 12, 18, 19]. Unfortunately, because

of copyright restoration in many foreign works, there are many early 20th-Century

works that are part of a musician’s “standard repertoire that, depending on the

orchestra, [Golan] can no longer consider using” because they are no longer freely

available in the public domain. Id. at 617 [Golan Decl., ¶ 12].

Likewise, Plaintiff Kapp, an accomplished pianist and internationally

renowned conductor, testified that he has “depended on the availability of musical

works in the public domain” for performances and recordings for over thirty-five

years. Id. at 709 [Kapp Decl., ¶ 8]. He explained that copyrighted works impose

significant performance fees and much higher sheet music rental costs than public

domain works. Id. at 711 [Kapp Decl., ¶ 14]. Thus, given budget constraints, the

vast majority of the works his orchestras perform must come from the public

domain. Id. The removal of these works from the public domain greatly limits the

pool of music from which his orchestra can select for performance. Id.; see also id.

at 713 [Kapp Decl., ¶ 18] (describing works by Prokofiev, Shostakovich, Vainberg

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and Schnittke that Kapp may no longer effectively consider for inclusion in

programming for the Philharmonia).

Similarly, Plaintiffs Ron Hall, and John McDonough own self-run film

distribution businesses in the Midwest. Id. at 629, 1506 [Hall Decl., ¶ 2,

McDonough Decl., ¶¶ 2-4]. They disseminate public domain films (like La Jetée, a

1962 French film, Night Train to Munich, and Hitchock’s Number Seventeen) for

commercial sale and sometimes rental to colleges, universities, and the public

generally. Id. at 629-31, 1506, 1508-09 [Hall Decl., ¶¶ 2-4, 9; McDonough Decl.,

¶¶ 4, 8, 9]. Third party music distributors Luck’s Music Library and Edwin F.

Kalmus have built similar businesses for distributing orchestral sheet music in the

public domain to orchestras, symphonies, schools and universities of all sizes. Id.

at 745, 1163 [Luck Decl., ¶ 3, McAlister Decl., ¶ 2-3]. Access to public domain

works by distributors like Hall, McDonough, Luck’s and Kalmus ensures the

widest possible dissemination of these cultural materials to the public.

Unfortunately, as a result of the URAA, Hall, McDonough, Luck’s and Kalmus

have all had to eliminate significant portions of their holdings and are no longer

able to distribute many important cultural works. See e.g., id. at 630-31, 1506-09,

46-47, 1163-64 [Hall Decl., ¶¶ 8-12, Exh. D; McDonough Decl., ¶¶ 5, 8, 9, Exh. B;

Luck Decl., ¶¶ 8-9; McAlister Decl., ¶¶ 6-7].

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Also, the public domain enables anyone to create new and derivative works,

based on works in the public domain. Third party John Blackburn, for example,

used what he thought was a public domain symphony by Shostakovich as the basis

for creating a new composition for a high school band to perform at a community

event commemorating 9/11. Aplt. App. at 602 [Blackburn Decl., ¶¶ 3-5]. He

specifically chose the underlying Shostakovich work because he thought it was not

encumbered by copyright. Id. Later, to his dismay, he learned that a copyright in

the underlying work was “restored” and now he is unable to use his own derivative

work. Id. at 603-04 [Blackburn Decl., ¶¶ 8-12].

The URAA’s substantial harms to speech interests mirror the importance of

the public domain in powering creativity. In their opposition to summary

judgment, Plaintiffs and third parties detailed examples of many significant

impacts on their speech resulting from the enactment of the URAA. See Aplt. App.

at 490-94, 588-1774, 1803-1815 [Plaintiffs’ Opposition to Defendant John

Ashcroft’s Motion for Summary Judgment, filed Nov. 4, 2004, at 15-19; Appendix

to Plaintiffs’ Opposition to Defendant John Ashcroft’s Motion for Summary

Judgment, filed Nov. 4, 2004 (Declarations of Blackburn, Golan, Hall, Kapp,

Luck, McAlister, McDonough, Prelinger, Stirland, and Varian) (describing in

detail the many examples of how speech is chilled by the removal of works form

the public domain)]. For example, section 514 restricts the artistic expression of

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Plaintiffs Golan, Kapp and Symphony of the Canyons by saddling their public

performances of musical works with licensing and royalty costs that were

completely absent when the works were in the public domain. Id. at 617, 710, 717,

1805 [Golan Decl., ¶ 13, Kapp Decl., ¶ 12, 30, Stirland Decl., ¶ 9]. Golan

discovered that the cost for a single performance of Shostakovich’s Symphony No.

1 by the Lamont Symphony Orchestra went from a one-time cost of approximately

$130 to purchase sheet music for the entire symphony and unlimited performances

to $495 to merely rent the same music for a single performance. Id. at 620 [Golan

Decl., ¶ 20, Ex. D.] Even orchestras that had already owned the sheet music of

some restored works before section 514 went into effect are stopped from

performing these restored works because the performance license fee creates a

burdensome expense smaller orchestras simply cannot absorb. E.g., id. at 717

[Kapp Decl., ¶ 30]. For example, Golan also conducts the Portland Ballet

Orchestra, a group of 42 freelance professional members in Portland, Maine. Id. at

617 [Golan Decl., ¶ 13]. In the past, the Ballet was able to borrow sheet music to

perform Prokofiev’s Peter and the Wolf. Id. But today, since the copyright for this

work has been restored, the Ballet is required to obtain a license for dramatic

performance. As Golan explained the “increased cost caused by the restored

copyright has severely reduced if not completely eliminated the Portland Ballet’s

ability to perform [Peter and the Wolf].” Id.

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Moreover, sheet music publishers like third parties Luck’s Music and

Kalmus cannot disseminate copies of affected works that they had been selling for

many years when they were in the public domain. Id. at 746-47, 1163-64 [Luck

Decl., ¶ 8-9, McAlister Decl., ¶¶ 4-7]. For example, Luck’s Music’s offering of

works by Prokofiev is reduced by 75% (from 50 works down to 12 works) as a

result of the restored copyright to Prokofiev works. Id. at 747 [Luck Decl., ¶ 9].

Kalmus used to offer at least 16 works by Kabalevsky, but today it offers only one.

Id. at 1164 [McAlister Decl., ¶ 7.]

Restored copyright has imposed an additional cost on Plaintiff S.A.

Publishing Co. Inc.’s (dba ESS.A.Y. Recordings) completed collection of

Shostakovich’s String Quartets by removing at least nine of the works from the

public domain and subjecting them to payment of mechanical royalties. Id. at 714-

17 [Kapp Decl., ¶ 22-27 (describing receiving notice from the Harry Fox Agency

seeking mechanical royalties, of between $1.25 and $1.50 per CD)]. Because of

these new royalty requirements, distributing the music CD recordings is rendered

economically unfeasible. Id. at 717 [Kapp Decl., ¶ 27].

Similarly, for Plaintiffs Ron Hall and John McDonough, hundreds of

formerly public domain films that they owned outright can no longer be

distributed. Hall lists over 100 films affected by the law. Id. at 630-31 [Hall Decl. ¶

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9, Exh. D.] McDonough identifies approximately 50 films he can no longer

distribute. Id. at 1506-08 [McDonough Decl., ¶ 5, 8, Exh. B.]

Finally, the URAA has enhanced the proliferation of abusive “policing”

tactics by restored copyright owners. For example, Plaintiff Kapp’s orchestra

established a special concert series for children aged 4 to 8 years called “Cushion

Concerts” (because the children were invited to sit on cushions close to the

musicians during the performances). Aplt. App. at 717 [Kapp Decl., ¶ 29]. At the

concerts, Kapp’s orchestra performed Prokofiev’s famous work Peter and the Wolf

and other popular works from the public domain. Id. After the URAA went into

effect, a representative of G. Schirmer contacted Kapp and asserted restored

copyright in hundreds of works, including Peter and the Wolf and improperly

demanded that Kapp rent the sheet music even though the orchestra had already

legally purchased a copy nearly 15 years earlier. Aplt. App. at 717-18 [Kapp Decl.,

¶ 30]. Since Kapp knew his rights, the G. Schirmer representative eventually

backed down regarding this rental demand, but the experience has chilled Kapp’s

desire to perform Peter and the Wolf and other restored works because he will be

hassled to justify his use to the new copyright holder. Aplt. App. at 718 [Kapp

Decl., ¶ 31]. Ultimately, the orchestra decided to stop performing Peter and the

Wolf. Id..

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Given these and other significant and debilitating impacts of the URAA and

CTEA on Plaintiffs, they brought this action seeking constitutional review of both

enactments. As detailed below, the District Court erroneously rejected Plaintiffs

claims and Plaintiffs now seek reversal of the District Court’s judgment.

V. SUMMARY OF THE ARGUMENT

A. The URAA Must Be Scrutinized Under The First Amendment

Copyright law is a regulation of speech. Eldred v. Ashcroft, 537 U.S. 186

(2003), announced the standard under which that regulation is measured. Under

Eldred, copyright legislation that alters the “traditional contours of copyright

protection” must be subject to ordinary First Amendment review. The District

Court ignored this rule of Eldred, and instead immunized copyright regulation

from First Amendment review.

Applying the rule of Eldred, the URAA must be subject to ordinary First

Amendment review. The URAA departs from a “traditional contour[] of copyright

protection” by “restoring” copyright to works that have passed into the public

domain. The URAA represents the first time in the history of the Republic that

Congress has so dramatically altered this traditional feature of copyright law.

Accordingly, the URAA must be subject to First Amendment review and the

District Court’s judgment should be reversed.

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B. Congress Does Not Have The Power Under The Progress Clause To Restore Copyrights To Works In The Public Domain

The District Court also erred in concluding that the Progress Clause imposes

no prohibition on the restoration of copyright to works in the public domain. As the

Supreme Court has held in Graham v. John Deere Co., 383 U.S. 1 (1966), the

Progress Clause is both a grant and a limitation Congress’s power. One such

limitation, as elaborated by Graham, is that “Congress may not authorize the

issuance of patents whose effects are to remove existent knowledge from the

public domain, or to restrict free access to materials already available.” The

District Court’s attempts to distinguish Graham fail. The rule of Graham applies

equally to copyrights and patents by the express terms of the Progress Clause,

which concerns the grant of any “exclusive Right” by Congress. Thus, in the case

of either copyrights or patents, the text of the Constitution prohibits Congress from

restricting free access to materials already available in the public domain, or

subjecting works in the public domain to exclusive rights. Further, unlike the

lengthy history of extending copyrights to existing copyrighted works as was the

case in Eldred, here there is no analogous longstanding practice of granting

copyright to works in the public domain. Accordingly, the District Court’s

judgment should be reversed.

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C. District Court’s Dismissal Of Plaintiffs’ CTEA Claim Is In Error

The District Court’s dismissal of Count 4 of Plaintiffs’ First Amended

Complaint — alleging that the current term of copyright has become so long as to

no longer be a “limited term” for purposes of the Progress Clause — was error.

Plaintiffs’ claim is not foreclosed by Eldred. While the plaintiffs in Eldred

challenged the extension of subsisting copyrights, they expressly disclaimed any

challenge to the resulting length of the copyright term, and the Court declined to

decide this question in its majority opinion. The government has conceded that a

term could be so long as to be “effectively perpetual.” Thus, Plaintiffs here offer to

prove the factual question: would the Framer’s have considered the current term of

copyright to be so long as to be effectively perpetual? It was error for the District

Court to decide this question without affording Plaintiffs the opportunity to

demonstrate factually the Framers’ view. Accordingly, this Court should reverse

the District Court’s judgment.

VI. ARGUMENT

A. Standard Of Review

The District Court’s dismissal of Plaintiffs’ CTEA claim from the First

Amended Claim for failure to state a claim under Rule 12(b)(6) is reviewed de

novo. Elliott Indus. Ltd. v. BP America Prod. Co., 407 F.3d 1091, 1106-07 (10th

Cir. 2005) (citing Hartman v. Kickapoo Tribe Gaming Comm’n, 319 F.3d 1230,

1234 (10th Cir. 2003)). When reviewing a motion to dismiss for failure to state a

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claim, the Court must “admit all well-pleaded facts in the complaint as

distinguished from conclusory allegations.” Id.

The District Court’s grant of summary judgment is likewise reviewed de

novo on appeal. Id. “When applying the de novo standard of review to the district

court's grant of summary judgment,” this Court “view[s] the evidence and draw[s]

all reasonable inferences therefrom in the light most favorable to the party

opposing summary judgment.” Id. at 1107 (internal quotation and citation omitted).

B. Plaintiffs Are Entitled To First Amendment Review Of The URAA

Count II of Plaintiffs’ Second Amended Complaint alleged that the URAA

violates the First Amendment. Aplt. App. 454 [Plaintiffs’ 2d Am. Compl., ¶¶ 80-

83]. The District Court dismissed this count without conducting any First

Amendment review of the URAA. Exh. A at 27-28; Aplt. App. at 2348; see also

Golan v. Gonzales, 2005 WL 914754 at *17. This was error.

1. The District Court Wrongly Held Copyright Law Immune From First Amendment Review

Copyright law is a regulation of speech. As with any regulation of speech, it

is subject to First Amendment review. In Eldred v. Ashcroft, 537 U.S. 186, 123 S.

Ct. 769 (2003), the Supreme Court set the terms of this First Amendment review:

Rejecting the lower court’s holding in that case that copyrights were “categorically

immune from challenges under the First Amendment,” 239 F.3d at 375 (D.C. Cir.

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2001), and rejecting Plaintiffs’ argument in that case that copyright acts be subject

to ordinary First Amendment review, Eldred, 537 U.S. at 221, the Eldred Court

articulated a standard for First Amendment review tied to copyright law’s

“tradition.” As the Court explained, a copyright act that respects the “traditional

contours of copyright protection” is not subject to “further First Amendment

scrutiny,” Eldred, 537 U.S. at 221. By implication, and as the government has

effectively conceded in a similar case, Kahle v. Ashcroft, 2004 WL 2663157 (N.D.

Cal. 2004); see also Aplt. App. at 532, 557-559 [Plfs’ Opp. to Summ. J., Exh. A

Def.’s Notice of Mot. And Mot. To Dismiss Pls.’ Am. Compl.], a copyright act that

changes the “traditional contours of copyright protection” must be subject to

ordinary First Amendment review.

In this case, Plaintiffs challenge a statute that deviates from the “traditional

contours of copyright protection,” by removing works from the public domain.

Plaintiffs’ speech is obviously and substantially burdened by these removals.

Following Eldred, Plaintiffs therefore asked the District Court to apply ordinary

First Amendment review to the act. But the court below ignored the rule of Eldred,

holding instead that there was “no need to expand upon the settled rule that private

censorship via copyright enforcement does not implicate First Amendment

concerns,” Exh. A at 28; Aplt. App. at 2348; see also Golan v. Gonzales, 2005 WL

914754 at *17. It thus dismissed Plaintiffs’ claim.

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In reaching this conclusion, the District Court cited opinions from the

Second, Ninth, and the Eleventh Circuits, as well as the lower court decision in

Eldred v. Ashcroft. Id. But the cases from the Second and Ninth Circuits predates

Eldred, see Nihon Keizai Shimbun, Inc. v. Comline Bus. Data. Inc., 166 F.3d 65,

74 (2d Cir. 1999) and Los Angeles News Service v. Tullo, 973 F.2d 791, 795 (9th

Cir. 1992). The opinion from the Eleventh Circuit holds the opposite to what the

District Court stated. See Suntrust Bank v. Houghton Mifflin Co., 268 F.3d 1257,

1265 (11th Cir. 2001) (while “courts often need not entertain related First

Amendment arguments in a copyright case” “in this case, we must remain

cognizant of the First Amendment protections interwoven into copyright law”)

(emphasis added). And the language relied upon from Eldred — that copyrights

were “categorically immune from challenges under the First Amendment,” 239

F.3d at 375 — is the one aspect of that decision that the Supreme Court expressly

rejected. See Eldred, 537 U.S. at 221 (“the D.C. Circuit spoke too broadly”). The

District Court thus had no basis to conclude that copyrights do not “implicate” the

First Amendment. The Supreme Court has defined the nature of that

“implicat[ion]”; it was error for the District Court below to ignore its rule.

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2. The URAA Deviates From The “Traditional Contours Of Copyright Protection” And Thus Should Be Subject To Ordinary First Amendment Review

Eldred v. Ashcroft ties First Amendment review of a copyright act to

copyright law’s “tradition.” If a copyright act conforms to the “traditional contours

of copyright protection,” Eldred, 537 U.S. at 221, then “further First Amendment

scrutiny” is unnecessary. Id. By implication, an act that deviates from the

“traditional contours of copyright protection” is subject to ordinary First

Amendment review.

This special rule of First Amendment review makes sense of the

longstanding balance between copyright law and First Amendment principles.

While the Eldred Court was not willing to “immuni[ze]” all copyright regulation

from First Amendment review, it did effectively immunize traditional copyright

regulation. There is a presumption of constitutionality for copyright statutes that

reflect “the traditional contours of copyright protection.” Those “traditional

contours” are presumed constitutional because of their longstanding pedigree. But

deviations from those “traditional contours” cannot automatically8 be presumed

8 The qualification (“automatically”) is important. Obviously, the mere fact a copyright act is subject to First Amendment review does not mean it is unconstitutional. First Amendment review simply requires the government to demonstrate that the law does not “burden substantially more speech than necessary to further [the government’s legitimate] interests.” Turner Broad. Sys. v. (continued . . .)

- 26 -

constitutional without an opportunity to weigh their speech restrictive effects

according to the principles of ordinary First Amendment review.

In this case, Plaintiffs challenged a deviation from a “traditional contour of

copyright protection” — namely that works passing into the public domain stay

there. The public domain is a central feature of design of the Process Clause. It is

essential to the balance copyright law strikes. Never before has Congress restored

copyright to works in the public domain — despite its repeated extension of

existing terms.9 Instead, the uniform practice until now has been that works that

pass into the public domain stay there. This deviation from tradition must therefore

be tested under the First Amendment.

8 (continued . . .) FCC, 520 U.S. 180, 189 (1997). As Turner itself demonstrates, this is a standard not fatal in fact. 9 Congress first extended subsisting copyrights in 1831. It expressly excluded works in the public domain. See Act of Feb. 3, 1831, ch. 16, § 16, 4 Stat. 436. It next extended subsisting copyrights in 1909. It again expressly excluded works in the public domain. See §7, 1909 Copyright Act, 35 Stat. 1077. So too with the eleven other extensions of subsisting terms: none extended copyright protection to works in the public domain. See Pub. L. No. 87-668, 76 Stat. 555 (1962); Pub. L. No. 89-142, 79 Stat. 581 (1965); Pub. L. No. 90-141, 81 Stat. 464 (1967); Pub. L. No. 90-416, 82 Stat. 397 (1968); Pub. L. No. 91-147, 83 Stat. 360 (1969); Pub. L. No. 91-555, 84 Stat. 1441 (1970); Pub. L. No. 92-170, 85 Stat. 490 (1971); Pub. L. No. 92-566, 86 Stat. 1181 (1972); Pub. L. No. 93-573, Title I, § 104, 88 Stat. 1873 (1974); Pub. L. No. 94-553, § 304, 90 Stat. 2573 (1976); Pub. L. No. 105-298, § 102, 112 Stat. 2827 (1998).

- 27 -

The government contests Plaintiffs’ historical claim. But even assuming the

government is correct about statutes after the First Congress’s Copyright Act of

1790, Act of May 31, 1790, 1 Stat. 124 et seq., (“Act of 1790”) the most the

government can assert is that but twice in the 215 year history of American

copyright law — and both times within the 20th century and in response to a war —

has Congress purported to restore copyright to works in the public domain. Two

twentieth century wartime statutes do not define a “traditional contour of American

copyright protection.” At most, these statutes, like the statute at issue in this case,

define deviations from a tradition, requiring ordinary First Amendment review.

a. Congress has never granted a copyright to works that have passed into the public domain.

In the proceedings below, the government pointed to three instances in

which it claims that Congress has granted copyright protection to works in the

public domain: the Copyright Acts of 1790, 1 Stat. 124, 1919, Pub. L. 66-102, 41

Stat. 368-69, and 1941, Pub. L. 77-258, 55 Stat. 732. The government relies upon

these three examples to evince a “tradition” that it claims removes the URAA from

the reach of the Eldred rule. But these statutes demonstrate no such tradition.

i. The government has made no showing that the Copyright Act of 1790 removed works from the public domain of the United States.

The District Court accepted the government’s argument below “that

Congress in 1790 anticipated the removal of some works from the public domain.”

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Exh. A at 19; Aplt. App. at 2339; see also 2005 WL 914754 at *11. On the basis of

this argument, it concluded that the “First Congress evidently determined that such

a practice was constitutionally permissible.” Id. But this argument is

jurisdictionally and empirically flawed.

Jurisdictionally: “The public domain” is local. A work can be “in the public

domain” in one jurisdiction, yet not in the public domain in another. Plaintiffs

challenge Congress’s removal of works from the public domain of the United

States. The Act of 1790 is therefore an historical precedent for such a removal if,

but only if, the Act of 1790 removed works from the public domain of the United

States.

This the Act of 1790 could not do. A work is “in the public domain of

jurisdiction X” when copyright law within jurisdiction X excludes it from

copyright protection. But it follows, then, that no works could have been removed

from the public domain of the United States by the 1790 Act, because before 1790,

there was no copyright law for the jurisdiction of the United States. The 1790 Act

both created copyright law for the United States and created the public domain of

the United States. Within that public domain was all work published throughout

the world by foreign authors, Act of 1790, § 5, 1 Stat. 124 (1790), as well as any

existing work that did not comply with the formalities of the 1790 Act. From this

perspective, then, it was technically impossible for the 1790 Act to remove work

- 29 -

from the “public domain” of the United States. In a precise sense, the 1790 Act

therefore cannot be a precedent for the URAA.

Empirically: The statement “Congress in 1790 anticipated the removal of

some works from the public domain” could also be understood less precisely to

mean that the 1790 Act granted copyright protection to works that were

unprotected under existing state law. But for the comparison with the URAA to be

accurate, the claim must be that Congress in 1790 restored copyright to works that

were unprotected in all of the original 13 states. For again, a work might well be

unprotected in one state, yet protected in another. And thus the only way the

statement “X is in the public domain” could be meaningful is if X were in the

public domain for each jurisdiction within the United States.

The point may be clearer by considering copyright law in Europe today.

There is no copyright jurisdiction for Europe. Instead, there is copyright law in

each of the European states. See Paul Goldstein, International Copyright 61-66

(2001). It follows that there could be no “public domain of Europe” in a

jurisdictional sense, since again, that requires a copyright law for the jurisdiction of

Europe. And it follows, less precisely, that one could say “X is in the public

domain in Europe” only if X was in the public domain of each of the European

states. Thus, Shakespeare is in the public domain of Europe — since in each

country, the works of Shakespeare no longer enjoy copyright protection. But the

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work of an author who died 60 years ago would not be “in the public domain of

Europe,” since there are countries within Europe that have not yet harmonized to

“life plus 70” as the term for copyright protection. See, e.g., Republic of Belarus’s

Legal Act On Copyright and Contiguous Rights, Belarus edition of the Law No.

194-3, Art. 22, ¶1, available at http://ncpi.gov.by/eng/legal/V19600370.htm

(copyright term life plus 50) (last viewed July 11, 2005).

On this understanding, the government would have the burden to

demonstrate that there were works unprotected in all of the original 13 states that

were granted protection under the 1790 Act. And while from today’s perspective

— living within a regime in which copyright is automatic — such a showing

would seem impossible to make, in fact, under the regime of copyright established

in 1790, this is a relatively simple showing to make. Yet the government has failed

to make any such showing.

The reason that such a showing can be made is that copyright in 1790 was

only secured to authors who registered their works. Those registrations, while

incomplete, remain available for research. Professor William J. Maher, University

Archivist at the University of Illinois at Urbana-Champaign, has studied these

registrations. In a paper reviewing registrations under the 1790 Act in the context

of Eldred v. Ashcroft, he attempted to estimate the number of registrations under

the 1790 Act recorded for works that had been created before 1790. William J.

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Maher, Copyright Term, Retrospective Extension, and the Copyright Law of 1790

in Historical Context, 49 Journal of the Copyright Society of the U.S.A. 1021

(2002) (hereinafter, Maher, Copyright in Historical Context).

Bibliographic sources indicate that there were about 21,000 books published

in the United States between 1790-1800. There is evidence, however, of copyright

registrations for only 690 of those books. While that number is low because not all

the records survived, historians agree that the rate of registration was tiny under the

1790 Act. James Gilreath, Federal Copyright Records 1790-1800 xxxi (1987)

(stating that, of 15,000 imprints published in the U.S. between 1790 and 1800

fewer than 800 were copyrighted). Maher then isolated from the 690 registrations

those that were for works published before 1790 — what he calls “old works.” He

found precisely 12 such works.

The resultant numbers from the bibliographic analysis show that only 1.74 % of all of the verified and unique 675 Gilreath registrations combined with the fifteen additional Andrew Law registrations were for “old works.” If this total of twelve works is compared to the approximately 20,829 works identified by Evans as published between 1790-1800, it appears that only 0.058 % of all works issued were “old works” being registered for copyright “retrospectively.” This amount of “old works” being registered late is so low that even if one arbitrarily multiplied it several fold to compensate for the unavoidable duplication known to exist in Evans, it would still be extraordinarily insignificant. Examining the actual “old works” retrospectively registered is also revealing. Only three of these “old

- 32 -

works” “retrospectively” copyrighted dated from before 1784, and none were more than thirteen years old at the time of registration; only five were seven or fewer years old at the time of copyright…. Finally, all but two of the “old works” were published at a time when there was a state copyright law in their state of publication, and indeed five of the twelve “old works” had previously been registered for state copyright in one or more states prior to 1790. In this sense, the federal copyright protection can be seen as bridging the transition from the now obsolete state copyright regimes while supporting the registration of a dozen rather recent works but not as providing wholesale coverage of pre-existing works.”

Maher, Copyright in Historical Context, 49 J. of the Copyright Soc’y. at 1027.

It is the last part of this quote that is of particular relevance to this case.

Records exist of precisely 12 works that could in theory fit the description of the

District Court — as works “remov[ed] from the public domain” by the 1790 Act.

Yet at least 5 of those works were registered under state law, leaving at most 7 that

might have been in the public domain at the time of the 1790 Act. Yet even this

overstates the claim, because of these 7, only two were books published in states

that did not have a copyright statute.

The burden of the government is then to demonstrate that these 7, or more

likely 2, works were in the public domain throughout the 13 states. But of course

the government has not even attempted such a showing because to succeed, the

government would also have to prove that none of these works were protected by

common law copyright in any of the 13 states. But if one thing is clear about this

- 33 -

history, it is that no one can establish the status of state common law copyright at

the time of the 1790 Act. Indeed, resolving the uncertainty around state common

law copyright was in part the purpose of the 1790 Act.

ii. The government can make no showing that works were in the public domain throughout the United States in 1790, because the status of the state common law of copyright was fundamentally uncertain.

For it to be true that the 1790 Act restored copyright to works within the

public domain of the United States, the government would have to establish that

there was no common law protection for copyright in any of the original states

before 1790. This the government cannot do, for the single point that historians of

the period agree upon is that at the time of the founding, the status of common law

copyright was uncertain. As Professor William Crosskey wrote, “the Common

Law of the United States . . . was in a highly uncertain state on the subject of

copyrights.” 1 William W. Crosskey, Politics and the Constitution in the History of

the United States 477 (1953). See also L. Ray Patterson, Copyright in Historical

Perspective 183 (1968); Edward C. Walterscheid, Inherent or Created Rights:

Early Views on the Intellectual Property Clause, 19 Hamline L. Rev. 81, 87

(1995). In 1833, Justice Story wrote in his Commentaries: “The copyright of

authors in their works had, before the revolution, been decided in Great Britain to

be a common law right, and it was regulated and limited under statutes passed by

- 34 -

parliament upon that subject.” 3 Story’s Commentaries on the Constitution of the

United States 48, § 1147 (1833). See generally Aplt. App. at 1779-80 [Rose Decl.

¶ 12-13]. William Rawle believed there were common law copyrights in the United

States as late as 1825. William Rawle, A View of the Constitution of the United

States of America 102 (1825). And as Noah Webster, editor of the American

Magazine explained to his readers in 1788:

The rights of literary property have not yet been clearly ascertained and established in this country… Most of the states however have passed laws securing to authors their literary productions for a limited time; and in those which have not, persons concerned will please to observe that, by solemn adjudication in the courts of Westminster, it is determined that an action will lie at common law for publishing books … without the consent of the author …. This principle, which is founded on common justice, will undoubtedly be admitted into American courts….

Acknowledgments, American Magazine 130 (Feb. 1788) (spelling corrected). See

Aplt. App. at 1784-85, 1796 [Rose Decl. ¶20 & Exh D].

The government below maintained there was no state common law

copyright, relying on its understanding of the Supreme Court’s holding in Wheaton

v. Peters, 33 U.S. (8 Pet.) 591 (1834). But the District Court rightly rejected the

government’s argument. Upon a “close reading of Wheaton,” the District Court

concluded that Wheaton did not hold that there was no common law copyright.

Wheaton held, the District Court stated, that whatever common law copyright there

was, it did not survive publication.

- 35 -

But the critical historical point to recall is that whatever the Supreme Court’s

view of state common law copyright was in 1834, there is no doubt that the

controversy raging in 1790 was about whether common law copyright would

continue to protect works after publication. Blackstone believed there was a

common law right that survived publication. See Aplt. App. at 1779-80 [Rose

Decl. ¶ 12]. That was the ground upon which Lord Mansfield found for the

publishers in Millar v. Taylor in 1769 (4 Burr. 2303, 98 Eng. Rep. 201). It was also

the ground upon which Donaldson was sued in Donaldson v. Becket (17 Parl. Hist.

Eng. 953; 4 Burr. 2408, 98 Eng. Rep. 257). See Aplt. App. at 1779-80 [Rose Decl.

¶ 12]. Everyone agreed there was a common law right to literary property before

publication. The only dispute litigated by the courts was whether that common law

right survived publication and the enactment of the Statute of Anne. Lord

Mansfield held it did. The House of Lords effectively reversed this judgment in

Donaldson. But as the House of Lords issues no opinion, the reasons for its

decision remain obscure. Id. at 1780 [Rose Decl. ¶ 13]. The first American edition

of Blackstone’s Commentaries reported that in Millar “it was determined (upon

solemn argument and great consideration) by the opinion of three judges to one,

that an exclusive copyright in authors subsists by the common law.” 2 W.

Blackstone, Commentaries on the Laws of England 406-07 n.h (Robert Bell ed.

1771). Madison in the Federalist Papers repeats this understanding, and the

- 36 -

understanding of Lord Mansfield, even though Mansfield’s judgment had been

reversed in the interim. The Federalist No. 43, at 267 (Henry Cabot Lodge ed.,

1888) (“The copyright of authors has been solemnly adjudged, in Great Britain, to

be a right of common law.”). Thus if Madison was confused about the matter, one

should well expect the confusion was common.

At best, one might conclude from this history that the status of state common

law copyright at the founding was uncertain. Aplt. App. at 1783-84 [Rose Decl.

¶ 19]. And in light of this uncertainty, at a minimum, this Court should follow the

Supreme Court’s example in Eldred v. Ashcroft. In that case, the same history was

contested. The government argued that there was no state common law copyright.

Plaintiffs argued that there was. If there had been no state common law copyright,

then the 1790 Act would have been the first statute to extend existing copyright

terms, extending the terms of at least 12 copyrights; if there had been state

common law copyright, then the 1790 Act would have been terminating the

perpetual term for those 12 copyrights at least, as well as any other common law

copyrights left unregistered. But rather than resolve this question, the Supreme

Court declined to rely upon the 1790 Act as precedent. Eldred v. Ashcroft, 537

U.S. 186, 196 n. 3. Similarly, this Court should recognize the uncertainty of the

historical question, and thus consider the constitutional question independently of

the 1790 Act.

- 37 -

Plaintiffs, however, urge this Court one step further. The uncertainty that

historians report about the status of state common law copyright at the time of the

founding is an accurate reflection of the views of the Framers at the time of the

founding as well. No one knew the status of common law copyright. Thus, in light

of that uncertainty, the best reading of Congress’s decision to provide copyright

under the 1790 Act to works “already published” was simply to resolve the

uncertainty, and establish a clear, initial baseline for copyright in America. After

1790, the public domain would be clearly marked, as the sum of all foreign works,

and works published but not registered. That clarity is a more compelling

understanding of the First Congress’s motives in enacting the 1790 Act than any

intent to remove constitutional restraints on Congress.

Professor Maher’s analysis confirms this understanding. As he explains, the

motivation for the “already printed” language was to simplify the process that had

begun through private bills, to consider securing copyright to published works.

Maher, Copyright in Historical Context, 49 J. of the Copyright Soc’y at 1028-30.

The works that had been considered by Congress were all almost certainly

protected under state copyright. See supra at 3133. This again confirms that there

is no reason to read the “already printed” language as Congress’s intent to

“restore” copyright to any works “in the public domain” of the United States.

- 38 -

The special rule of First Amendment review announced in Eldred is an

exception to ordinary First Amendment analysis. As the government would bear

the burden in any First Amendment analysis, it is reasonable the government bear

the burden of demonstrating that a statute falls within the “traditional contours of

copyright.” The uncertainty of the 1790 Act at the very least suggests the

government has not met its burden. At most, the Framers’ acted in light of the

fundamental uncertainty about the continued status of common law copyright, and

resolved, in the transitional sense that the First Congress’s framework statutes had

to, how to establish a new copyright regime. But that is a far distance from the

claim that Congress was acting upon the understanding that a clause that gave it

the power to “promote the Progress of Science” by securing “for limited Times” a

copyright to an author could nonetheless be used to remove works from the public

domain. As a leading copyright historian, Professor Mark Rose concluded:

What is apparent … from the study of the historical parallels between the first U.S. Act and the Statute of Anne is that the purposes of Congress were similar to those of Parliament — that is, to employ legislation to create a single, uniform, and strictly limited copyright regime. Congress, in other words, believed that in enacting the 1790 Act it was ending any claims to perpetuity and ensuring that ultimately all works, including “books already printed,” would enter the public domain and be available for anyone to reprint.

Aplt. App. at 1785 [Rose Decl. ¶ 21].

- 39 -

iii. The Wartime Statutes did not remove works from the public domain.

The only other instances of Congress even arguably removing works from

the public domain are two statutes enacted after World War I and World War II, to

extend the time to comply with certain formalities for foreign works eligible for

copyright protection during these two wars. In Plaintiffs’ view, neither statute

removed works from the public domain. And even if this Court believes otherwise,

two 20th Century wartime enactments cannot constitute the “traditional contours of

copyright protection” as that term is understood in Eldred.

Two points are fundamental to understanding both statutes. First, contrary to

the government’s suggestion, and the District Court’s presumption, there is no

general principle that requires that a patent or copyright that failed to comply with

a formality would automatically be deemed to be within the public domain. For

example, the 1976 Copyright Act allows copyright holders to “cure” failures to

comply with the formality of copyright notice in certain circumstances for works

publicly distributed before the U.S. joined the Berne Convention (for which

copyright notice was still required). See 17 U.S.C. § 405 (failure to comply “does

not invalidate the copyright in a work”). The 1976 Act also requires the formality

of deposit of two copies of published copyrighted works in the Library of

Congress, but creates fines — not forfeiture of copyright — for lack of non-

compliance if the Register of Copyrights has made a written demand for deposit.

- 40 -

See id. § 407. The 1909 and 1976 Acts required the publishing in the United States

of English books or periodicals by American authors. See 17 U.S.C. § 601(a)

(1976); 17 U.S.C. §16 (1909). Without knowing fraud, such noncompliance would

not inject the work into the public domain. See 2 M. Nimmer & D. Nimmer,

Nimmer on Copyright §7.23[E] (“Nimmer on Copyright”); accord Marshall

Leaffer, International Copyright from an American Perspective, 43 Ark. L. Rev.

373, 402 (1990). Similarly, the Patent Act requires the formality of including a

specification in the patent application with an adequate written description of the

invention, but specifically allows patentees to correct defective specifications

through the process of a reissued patent. 35 U.S.C. § 251; accord 15 U.S.C.

§ 1057(h) (correction of mistakes in applicant’s trademark registration). These

examples show that, in establishing a formality for future works or conduct,

Congress can always decide that noncompliance with a formality does not result in

the complete forfeiture of rights or the injection of the work into the public

domain.

Second, both wartime acts must be read against the background of the

express statement in the 1909 Act that “[n]o copyright shall subsist in the original

text of any work which is in the public domain.” § 7, Act of March 4, 1909, Pub.

L. 60-349, 35 Stat. 1077. Obviously, Congress could have changed its resolve

- 41 -

(though not consistent with the Constitution). But there is no need to read these

wartime acts as inconsistent with this fundamental policy choice.

1919 Act: The 1919 Act applied to foreign works first published abroad

during the war years. It did not apply to works published in the United States. See

Act of Dec. 8, 1919, Pub. L. 66-102, 41 Stat. 368-69. The only condition precedent

to copyright protection of published works under the then-existing U.S. copyright

laws was publication with copyright notice. See 2 Nimmer on Copyright §§ 7.01-

04, 7.15-17 (describing formalities imposed by the 1909 Act). However, the war

would not have significantly undermined the ability of foreign authors to affix

notice to their published works, so it is doubtful that the 1919 Act affected many

— or any — published works that fell into the public domain for noncompliance

with the notice requirement. Similarly, the 1919 Act did not affect the ability of

foreign authors to obtain renewal of their copyrights — because works first

published abroad during the war years would not have been subject to renewal for

another 28 years, the act did not affect any works that fell into the public domain

for failure to renew.

1941 Act: The 1941 Act authorized extensions of time to comply with

formalities for works “subject to copyright” and works “subject to renewal of

copyright” during the war years. See Act of Sept. 25, 1941, Pub. L. 77-258, 55

Stat. 732. For the most part, however, the Act did not restore copyright in public

- 42 -

domain works. Rather, it put the public on notice: After the Act’s effective date,

foreign works that would have fallen into the public domain in the absence of the

Act would not enter the “public domain” at all. Rather, those works might become

usable for a period, but subject to a reversionary interest, which would best if the

author complied with the requisite formalities under a presidential extension

proclamation. Thus encumbered, these works never fell into the “public domain,”

and the vesting of the authors’ reversionary interests cannot serve as a precedent

for the URAA.

It must be noted that for works for which authors failed to comply with U.S.

formalities between 1938 (the first year in which the provisions of the 1941 Act

apply), and 1941 (i.e., the year of the Act’s passage), the public was not on notice

of foreign authors’ reversionary interests, and so, for this very short period, the

effect of the 1941 Act may have been to reclaim works from the public domain.

See, e.g., 74 Stat. c69-71 (1960) (proclamation of President Eisenhower); 58 Stat.

1129-31 (1944) (proclamation of President Roosevelt). The scope of this

restoration was, of course, far narrower than that effected under the URAA, and,

unlike in the case of the URAA, they arose out of an unparalleled international

crisis, when the “practice . . . was simply to sweep the constitutional issues under

the rug.” See 3 Nimmer on Copyright § 9A.07[A].

- 43 -

iv. Even if this Court believes the wartime statutes removed works from the public domain, they would not constitute a “traditional contour of copyright protection” exempting them, or the URAA, from First Amendment review.

Even if this Court concludes that the wartime statutes do constitute a

removal of works from the public domain, however, for purposes of Appellant’s

First Amendment claim, that removal should not exempt the URAA from First

Amendment review. To benefit from the exemption from ordinary First

Amendment review, the government must demonstrate that the statute at issue is

within the “traditional contours of copyright protection.” Under any reasonable

interpretation of the term “traditional,” two wartime statutes enacted in the 20th

century cannot qualify. As Nimmer has commented upon these wartime statutes,

“[this] pre-history therefore furnishe[s] ready precedent neither for the

constitutionality of NAFTA resurrection nor for the extraordinarily broad recapture

legislated incident to TRIPs.” See 3 Nimmer on Copyright § 9A.07.

The Supreme Court in Eldred of course did not define the term “traditional

contour of copyright.” But the reasoning that justifies this exemption from ordinary

First Amendment review would restrict such “traditional contours” to features of

copyright law that have a longstanding pedigree. That copyright law is not

viewpoint based, for example, is a feature of copyright law that has defined the law

since the founding. Or, as the Court held in Eldred, that term extensions are both

- 44 -

prospective and retrospective, is a feature that has existed since as early as 1831.

Eldred, 537 U.S. at 194. These features have been constant over most of copyright

law’s history. In the Supreme Court’s view, they have therefore earned the

deference of tradition, and an exemption from ordinary First Amendment review.

Two unprecedented wartime statutes affecting foreign works only do not fit

this pattern. If anything, these are deviations from our tradition. Under the rule of

Eldred, these deviations must be tested under ordinary First Amendment review.

And again, it is conceivable that, depending upon the standard of review, these two

statutes would survive ordinary First Amendment review. But that these exceptions

would satisfy First Amendment review does not remove the requirement that the

URAA must satisfy First Amendment review. The URAA deviates from the

“traditional contours of copyright protection.” It is therefore subject to ordinary

First Amendment review.

b. The 1832 restoration of patents is irrelevant to Plaintiffs’ First Amendment argument.

Finally, the government has also alleged below that in 1832 Congress

restored certain patents. Exh. A at 20; Aplt. App. at 2348; see also Golan v.

Gonzales, 2005 WL 914754 at *11. Plaintiffs do not concede the government’s

characterization of those statutes, see infra at 52-54, but even if the government is

correct, those restorations are irrelevant for purposes of the First Amendment.

- 45 -

Patents are not restrictions on speech. Copyrights are. The tradition Eldred spoke

of is a tradition of speech regulation. Patent law is without that tradition.

For all these reasons, the District Court erred in granting summary judgment

on Plaintiffs’ First Amendment claim without imposing upon the government the

burden of demonstrating the URAA does not “burden[] substantially more speech

than necessary to further [its] interests.” Turner Broad. Sys. v. FCC, 520 U.S. 180,

189 (1997). Removing works from the public domain is a sufficiently novel

innovation within copyright law to require the government to justify it — as it

must justify any speech regulation under the First Amendment.

C. The Progress Clause Does Not Give Congress The Power To Restore Copyrights To Works That Have Passed Into The Public Domain

Count I of Plaintiffs’ Second Amended Complaint alleged that Congress’s

restoration of copyright to works that had passed into the public domain was

beyond its power under the Progress Clause. Aplt. App. at 452 [2d Am. Compl. ¶

27]. Plaintiffs based that argument on the Supreme Court’s interpretation of the

term “limited Times” in Graham, infra. The District Court granted summary

judgment to the government on this claim, after concluding that the “limited

Times” language did not impose a requirement that Congress not restore the

copyright of works in the public domain. Exh. A at 4-24; Aplt. App. at 2324-44;

- 46 -

see also 2005 WL 914754 at * 2-14. This holding is contrary to Supreme Court

precedent, and should be reversed by this Court as a matter of law.

1. The “Limited Times” Clause Has Been Interpreted By The Supreme Court To Restrict The Power Of Congress To Remove Works From The Public Domain

The Constitution grants Congress the power “[t]o promote the Progress of

Science and useful Arts, by securing for limited Times to Authors and Inventors

the exclusive Right to their respective Writings and Discoveries.” U.S. Const., Art.

I, sec. 8., cl. 8. As the Supreme Court acknowledged in Eldred, citing Graham v.

John Deere Co. of Kansas City, 383 U.S. 1, 5 (1966), this clause is “both a grant of

power and a limitation.” Eldred, 537 U.S., at 212. Most of the limitations that the

Supreme Court has recognized are implied from the language of the clause. See,

e.g., Feist Publ’ns v. Rural Tele. Serv. Co., 499 U.S. 340, 346-47 (1991) (copyright

limited to original works); Graham v. John Deere Co., 383 U.S. 1, 4 (1966), citing

Hotchkiss v. Greenwood, 52 U.S. (11 How.) 248 (1851) (patents limited to novel

inventions); Graham, 383 U.S. at 6 (patents cannot reduce the public domain).

“Limited Times” is the single express limitation within the Progress Clause.

In its explication of the meaning of the Progress Clause, the Supreme Court

in Graham stated a limit on Congress’s power over patents that flows directly from

- 47 -

the “limited Times” language, and applies equally in the context of copyrights. As

the Supreme Court stated,

Congress may not authorize the issuance of patents whose effects are to remove existent knowledge from the public domain, or to restrict free access to materials already available.

Graham, 383 U.S. at 6.

This rule is a perfectly sensible interpretation of the term “limited Times.”

Its clear import has been understood by courts and commentators from the time

Graham announced it. See, e.g., 1 Nimmer on Copyright §1.05[A][2] (“it seems

clear that the Copyright Clause would not permit the granting of copyright to

works that have theretofore entered the public domain”).10 Its clear purpose is to

give effect to the constitutional command that monopolies over knowledge and

expression be limited. If Congress could restore a patent after it had passed into the

public domain, then Congress could easily evade the requirement that terms be

limited. Graham thus sensibly avoids this temptation by restricting Congress’s

power to change the terms of patents to inventions that are still under protection, or

10 Nimmer does believe that Congress’s authority could be supported by other powers vested in Congress. Id. The District Court, however, did not reach this question. Exh. A; Aplt. App. at 2321; see also Golan v. Gonzales, 2005 WL 914754.

- 48 -

yet to be invented. There is no reason in the text of the Constitution, in the policy

behind this interpretation, to treat copyrights any differently.11

The District Court distinguished Graham by crafting a policy argument for

limiting the rule to patents only. As the Court wrote distinguishing patents from

copyrights, “[r]emoval of existent knowledge from the public domain is a

persistent danger in the expansion of patent monopolies and, for that reason,

informs courts’ understanding of Congress’ patent power.” Exh. A at 8, Aplt. App.

at 2328; Golan v. Gonzales, 2005 WL 914754 at *5.

But this analysis is simply mistaken. Restoring a patent does not “remov[e]

existing knowledge from the public domain.” Indeed, the knowledge supporting a

patent must be revealed as a condition of granting the patent. 35 U.S.C. § 112 ¶ 1

(requiring “best mode”, “written description”). The very quid pro quo of a patent

is that the inventor will reveal the knowledge behind the invention in exchange for

a monopoly on practicing the invention. The burden of a restored patent is thus

precisely the burden of a restored copyright: to practice the invention requires

11 Plaintiffs in Eldred had asked the Supreme Court to expand the rule in Graham, by restricting Congress from the power to extend a copyright as well as restoring a copyright. The Supreme Court declined that request on the basis of the longstanding practice of Congress to extend subsisting terms whenever the general term of copyright was extended. Such consistency, the Court held, was justified as a matter of equity. But no similar history or equity would justify the extension in this case.

- 49 -

permission of the patent owner, just as to exercise an exclusive right of copyright

requires the permission of the copyright owner. There is thus no policy reason to

distinguish Graham’s rule as applied to patents and copyrights.

Nor is there any reason grounded in the text of the Progress Clause itself.

While there are terms within the Progress Clause that are specific to the respective

monopolies secured by that clause — for example, “the progress of Science,”

“Writings” and “Authors” define the scope of copyrights; while “useful Arts,”

“Discoveries” and “Inventors” define the scope of patents — the parallel

construction of the Progress Clause ties the “limited Times” term to both the patent

and copyright monopolies of the Progress Clause. This common link recognizes a

common purpose behind limiting terms. This Court should respect that common

purpose.

Graham mandated “that the threshold across which works pass into [the

public domain] cannot be traversed in both directions.” Exh. A at 5; Aplt. App. at

2325; see also Golan v. Gonzales, 2005 WL 914754 at *3. The only question

before this Court is whether this rule as applied to patents must also be applied to

copyrights. Plaintiffs submit there is no reason to distinguish the two in either the

text, structure or history of the clause. Nor is there anything in Graham or Eldred

that would require treating the two domains differently. The prophylactic reasons

- 50 -

for protecting the public domain for patents exist as strongly — indeed, Plaintiffs

would argue, more strongly — with copyright.

2. There Is No Longstanding Congressional Practice That Can Justify Granting A Copyright To Works In The Public Domain

In Eldred, the Court relied upon longstanding congressional practice as a

justification for reading the “limited Times” clause to permit the extension of

existing copyrights. In the Court’s view, every time Congress extended the term of

copyrights prospectively, it extended subsisting terms as well. That mirrored

extension was justified, the government suggested, by considerations of equity.

Eldred, 537 U.S. at 204; see also id. at 228 (Stevens, J., dissenting). And based

upon the history of that practice, the Court concluded it would allow Congress to

continue the practice in the future.

In this case, there is absolutely no longstanding practice of granting

copyrights to works in the public domain. The only instances in which Congress

even arguably restored copyrights are in the last century, as a response to world

wars. The single instance of restoring patents alleged by the government is, in fact,

not a restoration at all. See infra at 52-54. There is therefore no historical

precedent for justifying the URAA, unlike the history that supported the Court’s

judgment in Eldred.

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a. Neither the 1790 Act, the 1919 Act, nor the 1941 Act establish a precedent for restoring the copyrights of works in the public domain.

As Plaintiffs have already argued, see supra at 28-34, the 1790 Act is no

precedent for the URAA. As that act simply created federal copyright law, that act

could not “restore” a copyright for a work that had passed into the public domain.

Nor, as Plaintiffs’ have argued, are the wartime extensions precedents for the

URAA. See supra at 40-43. But again, even if this Court disagrees with that

judgment, these two twentieth century extensions could not establish a tradition

that would support reading the Progress Clause differently from how Graham did.

b. The 1832 Patent Act did not restore the Inventions from the Public Domain.

The District Court concluded that the 1832 Patent Act and its provision for

reissued patents allowed the removal of inventions from the public domain. Exh. A

at 21; Aplt. App. at 2341; Golan v. Gonzales, 2005 WL 914754 at *12. That is

entirely false, both as a matter of law and a matter of history. Indeed, if the District

Court’s mistaken understanding of reissued patents were the law today, millions of

inventions would be put at risk of being injected into the public domain if their

patentees ever sought a reissued patent.

The District Court erred in assuming that every error in complying with a

formality automatically injects the material into the public domain. As explained

earlier, that is simply not so. Here, a reissued patent is a simple administrative

- 52 -

process by which a patentee can correct certain types of defects in the specification

by “surrendering” the original patent for a “reissued,” corrected patent. See 35

U.S.C. § 251 (current provision). By this administrative process, the defect in

drafting is corrected, and the underlying invention never enters the public domain.

What the District Court misunderstood is that, from virtually the beginning

of our patent laws, this process of correcting drafting defects through reissuance

has existed as the backdrop against which patent specifications operated. The 1832

Act was the first patent act to codify the process of reissuance, which had first been

recognized by courts as a way to allow patentees to cure errors they had made in

drafting the patent application because of “inadvertency, accident, and mistake,

and without any fraudulent or deceptive intention.” Allen v. Culp, 166 U.S. 501,

504 (1897). While it is true that such drafting errors could result in the patent being

invalid, such drafting errors did not automatically inject the invention into the

public domain. With the process of reissued patents, the public was put on advance

notice that deficient specifications can be corrected by a reissued patent and,

therefore, that the underlying invention was not in the public domain. As the

Supreme Court explained in Allen:

It is true that in making his surrender the patentee declares that his patent is inoperative and invalid; but this is not necessarily so for all purposes, but for the purpose for which he desires to have it reissued. Such a patent might be inoperative and invalid as against certain persons who had pirated the underlying principle of the

- 53 -

patent, and avoided infringing the exact language of the claims, and yet be perfectly valid as against others, who were making machines clearly covered by their language.

166 U.S. at 505 (emphasis added).

For these reasons, this Court should hold as a matter of law that for the same

reason Graham forbids the patenting of works in the public domain, Congress

exceeds its power under the Progress Clause when it copyrights work in the public

domain. There is no difference tied to the language of the Progress Clause that

would justify a different result. Nor is there any practice that should lead the Court

to distinguish patents and copyrights. The same limit should apply in both

contexts, rendering in this context the URAA unconstitutional.

D. Plaintiffs Must Be Afforded The Opportunity To Demonstrate That The Existing Terms Of Copyright Have Become So Long As To Be Effectively Perpetual

Count Four of Plaintiffs’ First Amended Complaint alleged that the term of

copyright has become so long as to no longer be a “limited term” for purposes of

the Progress Clause. Aplt. App. at 57 [First Am. Compl. ¶ 40]. On the basis of the

Court’s decision in Eldred, the District Court dismissed the count. Exh. B at 4;

Aplt. App. at 320; see also Golan v. Ashcroft, 310 F.Supp.2d 1215, 1218 (D. Colo.

2004).

This dismissal was error. Plaintiffs in Eldred challenged the extension of

subsisting copyrights. They expressly disclaimed any challenge to the resulting

- 54 -

length of the copyright term. In their view, the question of “how long would be too

long” was not easily answered by a Court. They offered the Court an easier line to

draw — between extending existing terms, and extending terms prospectively.

Justice Breyer in dissent, however, did raise this claim. As he argued, from

an economic perspective, the term of copyright had become so long as to become

an effectively perpetual term. Eldred, 537 U.S. at 255-256, 123 S.Ct. at 807-808

(Breyer, J., dissenting).

The Court rejected Justice Breyer’s argument, expressly noting that

plaintiffs had not raised it, and its own skepticism about whether the Framers

would have considered a term “unlimited” merely because it was unlimited from

an economic perspective. As Justice Ginsburg wrote for the Court,

It is doubtful, however, that those architects of our Nation, in framing the “limited Times” prescription, thought in terms of the calculator rather than the calendar.

Eldred, 537 U.S. at 210 n.16.

Justice Ginsburg’s intuition is understandable. Her conclusion, however,

could have been based upon nothing more than an intuition. Again, the issue had

not been briefed or argued. And nothing in the record addressed it.

Plaintiffs now offer to prove that her skepticism was unwarranted: that in

fact the Framers would have considered the current term to be so long as to be

effectively perpetual. Plaintiffs submit that evidence from the framing, and from

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the context within which the original terms of copyright were derived, plainly

answers the Court’s skepticism. Plaintiffs sought an opportunity to present this

evidence. The District Court denied Plaintiffs that opportunity by improperly

dismissing this count of the case. Exh. B at 4; Aplt. App. at 320; see also Golan v.

Ashcroft, 310 F.Supp.2d at 1218.

The District Court’s judgment again is plainly mistaken. The government

has already conceded that a term could be so long as to be “effectively perpetual.”

See Eldred Resp. Br. at 27 (available at http://eldred.cc/legal/01-

618.Eldred3.mer.pdf, last viewed July 15, 2005). As it argued, “[s]omething that

was the functional equivalent of an unlimited time would violate the Copyright

Clause.” See Eldred Oral Arg. Tr. at 34 (available at

http://www.supremecourtus.gov/oral_arguments/argument_transcripts/01-618.pdf,

last viewed July 15, 2005).

Thus, for example, if Congress had passed a term of 1,000 years, everyone

would agree that such a term would not be “limited” despite its being fixed. The

only open question in this case, therefore, is a factual one: how long does a term

have to be before it is considered effectively no longer limited? Plaintiffs are

obviously entitled to the presumption for facts alleged in the complaint in a motion

to dismiss. See Elliott Indus. v. BP America, 407 F.3d 1091, 1107 (10th Cir. 2005)

(“A motion to dismiss for failure to state a claim admits all well-pleaded facts in

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the complaint as distinguished from conclusory allegations.”) (internal quotation

omitted). It was therefore improper for the Court below to decide this question

without affording Plaintiffs a further opportunity to demonstrate the Framers’ view

of the term “limited Times.”

Plaintiffs concede that the Supreme Court would, upon the basis of the facts

it assumed to be true, likely reject this argument. But Plaintiffs’ whole point is that

the Court did not know the historical facts: because the issue was raised by no

party, and briefed by no party or amicus, the Court’s uninformed attitude should

not control Plaintiffs’ right to raise a claim. Had the Court had the facts before it,

and had it indicated as it did, then the disposition of the District Court would have

been proper. But the Supreme Court did not have historical facts before it; it had

instead some basic economics about the time value of money. That argument is no

doubt persuasive to some, but Plaintiffs seek to raise a very different argument —

that the Framers themselves would have understood a term of “life plus 70” to be

so long as to be effectively perpetual. Nothing in the record or argument of Eldred

would have given the Court the basis to resolve that claim, and nothing in the

dissent by Justice Breyer even addressed that claim. It was therefore error for the

District Court to dismiss Plaintiffs claim without affording Plaintiffs the

opportunity to make their factual showing.

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VII. CONCLUSION

For the foregoing reasons, Plaintiffs respectfully request that this Court

reverse the District Court’s (1) grant of the government’s summary judgment

motion on the First Amendment and Progress Clause claims, (2) denial of

Plaintiffs’ summary judgment motion on the Progress Clause claim, and (3)

dismissal of Plaintiffs’ CTEA claim from Plaintiffs’ First Amended Complaint.

Plaintiffs further ask this Court to remand this action for further proceedings.

VIII. STATEMENT REGARDING ORAL ARGUMENT

Oral argument in this case is necessary given the complexity and

constitutional importance of the questions presented on this appeal.

Respectfully submitted this 18th day of July, 2005, _________________________

Lawrence Lessig Hugh Gottschalk CENTER FOR INTERNET AND SOCIETY Carolyn Fairless STANFORD LAW SCHOOL WHEELER TRIGG KENNEDY LLP Crown Quadrangle 1801 California Street 559 Nathan Abbott Way Suite 3600 Stanford, CA 94305-8610 Denver, CO 80202-2636 D.C. Box 19 Phone: (303) 292-2525 Fax: (303) 294-1879 Attorneys for Plaintiffs-Appellants

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