Foreign Copyright

By Mary Ellen Tomazic

Against the backdrop of legislative activity in the Congress aimed at curbing online piracy of copyrighted works, the Supreme Court has ruled in favor of an existing law that strengthens the protection of U.S. copyright works overseas by adherence to global treaties.

In affirming the constitutionality of §514 of the 1994 Uruguay Round Agreements, which codified the extension of copyright coverage to works still protected in their own countries but not in the United States, the Court ruled against the petitioners, including orchestra conductors, musicians, publishers and others who formerly enjoyed free access to works that §514 removed from the public domain.

By Mary Ellen Tomazic

Against the backdrop of legislative activity in the Congress aimed at curbing online piracy of copyrighted works, the Supreme Court has ruled in favor of an existing law that strengthens the protection of U.S. copyright works overseas by adherence to global treaties.

In affirming the constitutionality of §514 of the 1994 Uruguay Round Agreements, which codified the extension of copyright coverage to works still protected in their own countries but not in the United States, the Court ruled against the petitioners, including orchestra conductors, musicians, publishers and others who formerly enjoyed free access to works that §514 removed from the public domain.

These parties asserted that a work that has entered the public domain, for whatever reason, must forever remain there. The works in question never enjoyed copyright protection here for any of three reasons: the United States did not protect works from the country of origin at the time of publication; the United States did not protect sound recordings fixed before 1972; or the author had failed to comply with U.S. statutory formalities, which are no longer required as prerequisites to copyright protection.

The Court allowed the restoration of the copyright protection foreign works would have enjoyed had the United States maintained copyright relations with the author’s country or removed formalities incompatible with the Berne Convention for the Protection of Literary and Artistic Works, which the U.S. joined in 1989. Foreign authors, however, did not get credit for the protection they lacked in the years prior to the enactment of §514, and therefore enjoy fewer total years of exclusivity than do their U.S. counterparts.

The foreign works which had their copyrights restored “subsist for the remainder of the term that the work would have otherwise been granted if the work never entered the public domain.” The decision emphasized that historical practice in the interpretation of the Copyright Clause has many examples of federal acts which accorded copyright protection to works that had lapsed into the public domain, or expanded the term of protection for copyrighted works.

From the First Congress in 1790 which launched the uniform national system of copyright protection, to the Sonny Bono Copyright Term Extension Act of 1998, Congress has “recurrently adjusted the Copyright Law to protect works once outside the law’s protection.”

The Congress did not view the public domain as inviolate – on occasion it has seen fit to protect works and inventions once freely available, without offending the Copyright Clause. The Court also uses examples of the restoration or granting of patents for inventions which were in public use at the time of the Copyright Act’s passage, “because the Clause empowering Congress to confer copyrights also authorized patents”, which confirms that Congress has not understood the Copyright Clause to preclude protection for existing works.

The argument that the petitioners put forth insisting that the “limited term” used in the Clause means that a time limit, once set, becomes fixed or inalterable, was rejected by the Court in both this case and in Eldred v. Ashcroft, which upheld the Copyright Term Extension Act in 2003. The Court said in Eldred that “the word ‘limited’ does not convey a meaning so constricted, (but) rather, the term is best understood to mean “confine[d] within certain bounds”, “restrain[ed],” or “circumscribed.” The petitioners argued that the ‘limited time’ has already passed for works in the public domain, but the foreign works in some cases received a term of “zero” years protection in the United States, and the Court asserted that “ a limited time of exclusivity must begin before it can end.”

The Court agreed with the Tenth Circuit Court of Appeals that § 514 was narrowly tailored to fit the important government aim of protecting U.S. copyright holders’ interests abroad; it also corrects the inadequate compliance with §18 of the Berne Convention, which took effect in 1886, and is the principal accord governing international copyright relations.

After the U.S. joined in 1989, Congress did not fully implement Berne’s enforcement requirements, but adopted a minimalist approach, which did not sit well with other Berne members. Other countries complained about the U.S.’s refusal to grant copyright protection to their authors’ works, and some balked at protecting U.S. works until the United States reciprocated with respect to their authors’ works. This changed in 1994 with the Uruguay Round Agreements on trade related aspects of intellectual property rights, out of which came the World Trade Organization, which mandated implementation of Berne’s requirements upon pain of tariffs or cross- sector retaliation for the subject member countries.

The United States’ refusal to fully comply with Berne was damaging the credibility of the U.S. as a trade partner, and U.S. negotiators reported that “widespread perception of U.S. noncompliance was undermining our leverage in copyright negotiations.” In response to the possibility of a trade enforcement proceeding, Congress codified § 514 of the URAA at 17 U.S.C. §104A and 109(a), extending copyright protection to works that garnered protection in their countries of origin, but had no right to exclusivity in the United States for the three reasons mentioned previously.

Included in the new law were several concessions to “reliance parties” which had, before the URAA’s enactment, used or acquired a foreign work then in the public domain. Reliance parties were allowed to continue to exploit a restored work until the owner gave notice of intent to enforce, and after that the reliance parties could continue to exploit existing copies for a grace period of one year.

The reliance parties who had created a “derivative work” based on a restored work before the enactment of the URAA could indefinitely exploit the derivation upon payment to the copyright holder of “reasonable compensation”, as set by a district judge if the parties could not agree. This gave more rights than currently allowed by §106 of the Copyright Act to parties other than the copyright holder to make a derivative work, since for current copyrighted works it is a negotiable license, and the holder may refuse to allow any such exploitation at all. The last point of the petitioners was that the First Amendment prohibits the restoration authorized under § 514, not only because if the “limited time” portion of the Copyright Clause, but that it restricts the economic incentive to create and disseminate ideas.

As in the Eldred case, the Court asserted that the “traditional contours of copyright protection, the “idea/expression dichotomy” and the “fair use” defense serve as built-in First Amendment accommodations, which were left undisturbed by the new law. The idea/expression dichotomy, codified at Copyright Act at 17U.S.C. §102(b), provides that copyright does not protect “…any idea, procedure, process, system, method of operation, concept, principle or discovery … described, explained, illustrated or embodied in [the copyrighted] work.” This section “strikes a balance between the First Amendment and the Copyright Act by permitting free communication of facts while still protecting the author’s expression.”

The second contour, the “fair use” defense, is codified at 17U.S.C. §107, and allows fair use of a copyrighted work for purposes of criticism, comment, news reporting, teaching, scholarship or research, and affords considerable latitude for those purposes and even for parody. The petitioners, who enjoyed unlimited use of copyrighted works before §514’s enactment, argued that the limited rights they retain under the copyright law’s “built-in safeguards” are no substitute for their previous free use.

The Court rejected that view, reminding the petitioners that public domain works cannot be copyrighted, even by the creator, and that “once the term of protection ends, the works do not revest in any rights holder, [and] no one, after the copyright term has expired, acquires ownership rights in the once-protected works.” The dissent focuses first on a claimed inhibition of dissemination of the restored foreign works due to higher consumer prices or administrative costs in finding the owner and striking a bargain.

The restored copyright holders can now charge higher fees for works that consumers previously used free, and in the case of certain derivative works, can charge what the market will bear. As previously mentioned however, the new law assures that derivative works made from the restored work have a statutory right to continue to exploit the work in that way, while makers of any new derivative works using copyrighted works of any type must negotiate with the rights holder and may be refused the right to make the work.

The dissenters also put forth the argument that the new law will aggravate the “already serious problem of cultural education in the United States” due to school orchestras or other nonprofit organizations not being able to afford the new charges. Despite the dissenters’ concerns, I found the constitutional and other arguments of the conductors, musicians and others to be convincingly addressed by the majority in Golan v. Holder, as they were in the companion case of Eldred v. Ashcroft.

If the United States expects foreign countries to help expand the worldwide availability of their markets to U.S. authors, and invigorate protection against piracy of U.S. works abroad, the tradeoff of restoring some foreign works from the public domain is worthwhile. As the Court definitively holds, “neither the Copyright and Patent Clause nor the First Amendment makes the public domain, in any and all cases, a territory that works may never exit.”


Mary Ellen Tomazic is an attorney in Cleveland specializing in entertainment issue
such as copyright, trademarks, contracts and licenses for musical groups and filmmakers.