The U.S. Supreme Court has decided to hear a constitutional challenge from orchestra conductors, educators, performers, publishers, archivists, and distributors, who use and rely on works that are in the public domain, against the restoration of U.S. copyright protection for certain foreign works as a result of international agreements entered into over 15 years ago. If the court sides with the petitioners and cancels the restored copyrights, the decision could have substantial global implications for copyright owners in and outside of the United States alike.

The core issue in Golan v. Holder stems from enactment of Section 514 of the Uruguay Round Agreements Act (URAA), codified at 17 U.S. Code §§ 104A, 109. The impetus for enactment of the URAA relates back to the Berne Convention for the Protection of Literary and Artistic Works, which the United States joined in 1989, and which requires each signatory to provide the same copyright protections to authors in other member countries that it provides to its own authors — including providing copyright protection to pre-existing foreign works even when those works were previously in the public domain in that country. When the United States implemented the Berne Convention, however, it did not extend copyright protection to any foreign works that were already in the public domain; it was the United States’ agreement to enter into the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPs) in 1994 that required the United States to implement the restoration that was encompassed by Section 514 of the URAA.

The copyrighted works that were subject to restoration included several famous works from the first half of the twentieth century, including the motion pictures Metropolis and The Third Man, compositions by Prokofiev and Stravinsky, and books by H.G. Wells. But the consequence of restoring copyright protection to these works is that the public can no longer use them without complying with the copyright laws. Having previously relied on the public domain nature of these "restored" works, the plaintiffs sued the government, claiming that Section 514 of the URAA was unconstitutional as a violation of the public’s right of free speech and expression under the First Amendment of the Constitution.

Although the case went through several stages, the petition granted by the High Court relates to a decision by the Court of Appeals for the Tenth Circuit, 609 F.3d 1076 (21 June 2010), which concluded that Congress’ enactment of Section 514 did not violate the First Amendment — which permits regulation of speech in cases where a content-neutral statute is narrowly tailored to advance important governmental interests. While the government presented three reasons to support its position, the appellate court focused on one — obtaining legal protections for American copyright holders’ interests abroad — in concluding that the statute did not violate the First Amendment of the Constitution. In doing so, the court credited testimony before Congress that indicated the likelihood of reciprocal treatment abroad, i.e., the likelihood that if the United States did not provide equal treatment to foreign works under U.S. law, then other countries would respond in kind toward works by American copyright holders. The court found that Section 514 was narrowly tailored to address this problem.

The petitioners to the Supreme Court argued that restoring works from the public domain exceeds Congress’ power under the Constitution, that the interests of enacting Section 514 relate primarily to private economic interests of foreign authors rather than serving a public purpose, and that the obligations of Berne could have been satisfied without enacting Section 514. The petitioners further emphasized the need for certainty in the law so that those who wish to use works in the public domain can have the peace of mind that the works will remain there. The government filed a brief in response, urging the Supreme Court to deny certiorari primarily on the ground that the appellate court cited below: that following the Berne Convention is essential to protecting U.S. rights abroad, and that determining how to serve that purpose is within the sound discretion of Congress. On 7 March 2011, the Supreme Court announced that it would certify the petition and review the case. While a grant of certiorari does not mean that the decision below will be reversed, several amicus briefs are likely to come from parties from around the world who own copyrights and use preexisting works. We will keep you updated on this important proceeding on copyright law, international relations, and the scope of the public domain