On April 3, 2009, the District Court for Colorado entered a groundbreaking copyright decision, treading on new judicial territory by directly applying the First Amendment to invalidate a provision of the Copyright Act. The case, Golan v. Ashcroft, Civil Case No. 01-cv-01854-LTB, found that, at least as applied to the plaintiffs, the copyright restoration provisions found in Section 104A of the Copyright Act violated rights to material permanently in the public domain by restoring full copyright protection as of January 1, 1996 to such material.

By way of background, when the United States joined the World Trade Organization under the General Agreement on Tariffs and Trade in 1994, it also agreed to abide by the Trade Related Aspects of Intellectual Property Law, otherwise known as TRIPs. One of TRIPs' critical elements was adherence of all WTO members to the Berne Convention, the leading multinational international copyright law treaty. In turn, Article 18 of the Berne Convention requires that member nations provide retroactive protection to the works of authors from other member nations if they are still protected in the source country. This was a substantial issue for the United States. Prior to the Copyright Act of 1976, the works of many foreign authors had fallen into the public domain in this country due to failure to comply with formalities such as registration, renewal and use of a proper copyright notice. Accordingly, to implement this obligation, and as part of the Uruguay Round Agreements Act of 1994 (URAA), Congress restored copyrights to works of foreign authors that had entered the public domain as a result of failure to comply with these formalities.

Judge Babcock, interpreting a mandate from the 10th Circuit reversing his earlier decision in which he affirmed the validity of copyright restoration, held that such restoration provisions of the URAA, as codified in 17 USC § 104A, had altered the traditional contours of U.S. copyright law and, thus, violated the plaintiffs' First Amendment right to continue using speech which had previously entered the public domain. The Court was unimpressed with the Government's concern that TRIPs required copyright restoration in its present form in order to meet the United States' treaty obligations. Instead, the Court applied the traditional First Amendment test for content neutral restrictions on speech and held that the Government could have complied with the copyright restoration mandate of Article 18 of Berne without interfering with plaintiffs' protected speech.

Intriguingly, the Court characterized public domain material as "speech" owned by the plaintiffs, presumably because they are part of the general public. This is an unusual approach, given that no one "owns" works in the public domain, but merely has the right to use such material free from copyright-based restrictions. The Court did not explain how the United States could comply with its treaty obligations, although it suggested that First Amendment concerns would have been satisfied had the URAA permitted prior users of public domain works to permanently continue use of such works without restriction. The Court did not state whether the holding applied only to prior users of specific works or also more generally included persons who had previously made use of any public domain works or even those who merely had a possible future interest in making use of public domain works. If the latter, the decision would seemingly apply to all members of the public.

Normally the courts will give deference to Congress' decision on how best to balance content neutral restrictions with other substantial interests. Accordingly, one key issue was the Government's failure to present any convincing evidence showing other reasonable alternatives had been considered as a means of balancing international treaty obligations, through Section 104A, with the First Amendment. It is not surprising that the legislative process provided no such evidence, because the copyright restoration provisions were included in GATT legislation primarily directed to international trade. The resulting URAA was debated, passed and signed into law on a fast track, thus denying us any meaningful legislative history. Without the typical Congressional record established through the normally thorough process of legislative hearings and analysis, the Government had little of substance on which to rely.

The Golan decision leaves many questions unanswered. Perhaps most importantly, how can the United States now comply with its treaty obligations in a manner acceptable to other WTO members? The failure to do so could potentially subject the U.S. to retaliatory trade restrictions that can be granted as the result of a complaint by another WTO member under the dispute resolution mechanism. Such trade sanctions have, in fact, already been issued in response to WTO complaints dealing with other copyright issues, such as U.S. restrictions on broadcast music performance royalties.

When first enacted on December 8, 1994, effective January 1, 1996, the URAA, with its restored copyright provisions, was described by some as a “zombie copyright act,” with dead works re-emerging from the public domain. If upheld on appeal—an appeal which seems likely—the Golan decision could be the judicial stake in the heart of those zombie copyrights, laying them, once again, to rest.