Return of the Undead: Golan v. Holder and the Public Domain

The Copyright and Patent Clause

Golan follows on the Court's decision in Eldred v. Ashcroft, 123 S.Ct. 769, 537 U.S. 186 (2003), which rejected a constitutional challenge to the Copyright Term Extension Act (“CTEA”) extending the term of copyright protection for existing and future works (assertedly in violation of the “limited Times” provision of the Copyright Clause). The Court concluded in Eldred, as it later did in Golan, that “[t]ext, history, and precedent” support Congress' authority to extend copyright protection. Id. at 199. Eldred also rejected Petitioners' argument that “the CTEA's extension of existing copyrights does not 'promote the Progress of Science' ' because it does not stimulate the creation of new works.” Id. at 211-12. Eldred instead held that the Copyright Clause's “Constitutional Command” requires only that “Congress ' create a 'system' that promotes the progress of science.” Id. at 212 (emphasis added, quoting Graham v. John Deere Co. Kansas City, 383 U.S. 1, 6 (1966). Protecting and advancing that system (rather than individual works) was the primary basis for upholding the CTEA in Eldred and the Restoration Act in Golan.

Following Eldred, Golan held that the “limited Tim[e]” provision of the Copyright Clause does not preclude the grant of copyright protection to prevent works from entering the public domain or, in this instance, removing existing works from the public domain. Golan, 132 S.Ct. at 889. Regarding the related concern under the Copyright and Patent Clause that Congress' authority is limited by the prefatory language framing its legislative power to “promote the Progress of Science and the useful Arts,” Golan held that, by aligning the United States with the practices followed in other Berne member nations, Congress would expand the foreign markets available to U.S. authors and help protect against piracy of U.S. works abroad, thus benefitting U.S. copyright owners and in this way stimulating “the Progress of Science,” as contemplated by the Constitution. Id. at 876. Over a strenuous dissent, that the Restoration Act could not possibly advance the purpose of promoting the creation of new original works, because it only rewards authors of pre-existing works ' indeed, works that had already passed into the public domain, Id. at 900, the Court concluded that the Restoration Act did not exceed the constitutional mandate even where the Restoration Act encouraged creation of no new works but rather, only restored rights in older, pre-existing works already in the public domain. Id. at 889.

Fundamentally, the majority and the dissent thus parted ways on a basic philosophical question: namely, whether the overall benefits of the U.S. copyright system in a global context promote the progress of the arts, rather than whether the statute encourages creation of any specific new works. Irreducibly, the policy adopted by the Court simply is what it is.

A Page of History

The decision in Golan rested to a considerable degree on the historical precedents ' both statutory and judicial ' concerning the power of Congress to withdraw materials from the public domain or allow protection of previously unprotected works by providing protection under patent or copyright. Indeed, the First Congress, in the Copyright Act of 1790, protected works that had been theretofore unprotected under state copyright laws, and various subsequent bills restored the copyrights and patents of works and inventions that had been in the public domain. Congress has also passed a range of legislation granting copyrights and patents to works and inventions that had lost protection. Nonetheless, although the dissent cited few examples of past Congressional exercises of power, almost by definition one would not expect affirmative examples of legislation demonstrating a lack of legislative authority. However, in response to the majority's recitation of history, the dissent cited a similar number of case law precedents suggesting a narrower scope of Congressional discretion, demonstrating perhaps that while a page of history may be worth a volume of logic, a volume of history may not be worth a page of logic. In short, the historical references provided no simple answer bridging the divide between majority and dissent, as there is no direct precedent for the exercise of legislative authority at issue.

First Amendment

The Court resolved First Amendment concerns regarding the Restoration Act because the statute does not regulate speech on the basis of content. As the Court acknowledged, all copyright protection impinges to some extent on free speech. Golan, 132 S.Ct. at 889. However, Congress has already struck a balance between private proprietary interests and public interests in freedom of expression by declining copyright protection for ideas or facts, and by virtue of the fair use defense, each of which helps ensure that copyright will not impinge unduly on public discourse. Id. at 890. Moreover, after finding that the passage of some works into the public domain does not create “vested rights” held by the public to make use of any given works, the Court concluded that protecting rights in restored works does not burden speech any more or less than does protecting copyright in any works in the first place. Id. at 891.

The majority hence declined to bow to the concerns articulated by the dissent that the burdens on speech (including the added administrative costs of determining rights in foreign works, many of which are “orphan works” with no identifiable owners), required heightened scrutiny under the First Amendment. Id. at 893. Once again, however, the point of the divide may simply be irreducible policy differences between the majority and the dissent. Whereas the dissent contends that the First Amendment burdens represent a clear loss “without a countervailing benefit,” Id. at 906, the majority determined that the global benefits to U.S. copyright owners and the copyright system did indeed justify the withdrawal from the public domain of the subject works. Id. at 894.

The Public Domain

As noted at the outset, perhaps the most curious aspect of Golan is not what it says about the Copyright Restoration Act itself, but what it says about the public domain. Indeed, the statute has been the subject of very few cases other than Golan itself. See, e.g., Cordon Holding B.V. v. Northwest Publ. Corp., 2002 U.S.Dist.LEXIS 6111, 63 U.S.P.Q.2d 1013 (S.D.N.Y. 2002); Luck's Music Library, Inc. v. Ashcroft, 407 F.3d 1262 (D.C.Cir. 2005); Dam Things from Denmark v. Russ Berrie & Co., 290 F.3d 548 (3d Cir 2002); Estate of Elkan v. Hasbro, 258 Fed.Appx. 125 (9th Cir. 2007). However limited Golan may prove to be in subsequent copyright jurisprudence, the decision may have wider implications in providing insight to the Supreme Court's views on the significance or not of the public domain, and hence the interplay between patent or copyright on the one hand and trademark on the other. Eldred spoke primarily to the Limited Times provision of the Copyright Clause, as it concerned only works still under copyright. However, Golan more directly addressed the full scope of the Copyright and Patent Clause, because it more directly put in issue whether the progress of science and the useful arts can be encouraged by withdrawing material from the public domain. As the petitioners argued (albeit as one of their First Amendment-related contentions), “they ' unlike their counterparts in Eldred ' enjoyed 'vested rights' in works that had already entered the public domain.” Id. at 891. In this respect, the Court directly confronted and gave little deference to the public domain as a source of legal rights. At one juncture the Court raised questions whether “the public domain [is] a category of constitutional significance.” Id. at n. 26. The Court went on to conclude that “[t]o copyright lawyers, the 'vested rights' formulation might sound exactly backwards. Rights typically vest at the outset of copyright protection. ' Once the term of protection ends, the works do not revest in any rightholder.” Id. at 892. And further, “[a]nyone has free access to the public domain, but no one, after the copyright term has expired, acquires ownership in the once-protected works.” Id. Put differently, by definition there can be no vesting of rights in the public domain as it is, inherently, owned by no one.

What is most curious about the Court's withering assessment of ' if not disdain for ' the “rights” of the public domain as expressed in Golan, is how very different this philosophy is from the rationale expressed in other recent Supreme Court jurisprudence. For instance, in Dastar Corp. v. Twentieth Century Fox Film Co., 539 U.S. 23 (2003), where Fox sought to establish rights of attribution to a once-copyrighted film series that had entered the public domain, the Court stated as follows:

The rights of a patentee or copyright holder are part of a “carefully crafted bargain,” Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 150-151, 109 S.Ct. 971, 103 L.Ed.2d 118 (1989), under which, once the patent or copyright monopoly has expired, the public may use the invention or work at will and without attribution. Thus, in construing the Lanham Act, we have been “careful to caution against misuse or over-extension” of trademark and related protections into areas traditionally occupied by patent or copyright. Id. at 33-34.

Adhering to the same “carefully crafted bargain,” Bonito Boats had held pre-empted a Florida law granting patent-like protection (and hence withdrawing from the public domain) to an unpatented boat hull design. The philosophical underpinning for that decision could be found in the language from Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966), quoted by Bonito Boats, that Congress may not create patent monopolies of unlimited duration, nor may it “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.” 383 U.S. at 6.

Curiously, Justice Antonin Scalia, who authored the decision in Dastar, joined the majority in Golan. Golan likewise goes further than TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23 (2001). There the court was asked to rule whether subject matter once protected by a patent would, after expiration of the patent, be forever committed to the public domain. Id. The Court did say that the specific subject matter there at issue could not be reappropriated under the Lanham Act, but stopped short of precluding reappropriation in all circumstances. Id. at 35. Unlike Golan, however, TrafFix nowhere suggested that the public domain has no “constitutional significance.”

Various cases illustrate the potential tension between the constitutionally “limited times” of copyright and patent and the potentially unlimited times of trademark protection. In Comedy III Productions, Inc. v. New Line Cinema, 200 F.3d 593 (9th Cir. 2000), a film featuring the Three Stooges characters was in the public domain. As a result, the plaintiff could establish neither valid copyright nor trademark rights so as to prevent defendant's use of the clip, which the court said would be using the Lanham Act to “circumvent” copyright law. Id. at 596. See also, EMI Catalogue P'ship v. Hill Holliday Connors, 228 F.3d 56 (2d Cir. 2000) (no trademark protection in copyrighted song, “Sing, Sing Sing“).

By contrast, other cases have suggested that trademark rights can be claimed in copyrightable subject matter even after protection under copyright has expired, or otherwise independent of the limited times for such protection. Frederick Warne & Co., Inc. v. Book Sales Inc., 481 F. Supp. 1191 (S.D.N.Y. 1979), for instance, concluded that expiration of copyright in the Peter Rabbit book series would not preclude its publisher from asserting trademark rights in character illustrations from the books, given the different purposes of the two sets of rights. Id. at 1196. See also, Huebbe v. Oklahoma Casting Co., 663 F. Supp. 2d 1196 (W.D.Okla. 2009) (“The Court does not interpret Dastar as precluding all copyright infringement plaintiffs from asserting [Lanham Act] ' 43(a) claims.”); Tempo Commc'ns, Inc. v. Columbian Art Works, Inc., 223 U.S.P.Q. 721, 722 (N.D.Ill. 1983); DC Comics, Inc. v. Filmation Assocs., 486 F. Supp. 1273, 1277 (S.D.N.Y. 1982).

Even if few cases have had occasion to adjudicate Congressional action extending or restoring copyright protection, the decision in Golan according no particular weight to the public domain may nonetheless have significant implications outside copyright law altogether. Indeed, the possibility of claiming trademark rights in subject matter no longer protected by copyright or patent remains not only a distinct possibility but a decidedly likely occurrence.

Jonathan Moskin is a partner in the New York office of Foley & Lardner LLP and a member of this newsletter's Board of Editors. ' Jonathan Moskin 2012.

A recurring issue in intellectual property law is the possibility of establishing rights in subject matter from the public domain and drawing the boundaries between what is public and private. In one guise, this issue is now before the Supreme Court in Assoc. for Molecular Pathology v. Myriad Genetics, Inc., No. 12-398, cert. granted, Nov. 30, 2012) (patent eligibility of isolated DNA). Earlier this year the issue arose in another guise in Golan v. Holder , 132 S.Ct. 873 (2012), which upheld the constitutionality of the Uruguay Round Agreements Act (or, informally, Copyright Restoration Act), granting U.S. copyright protection to certain works that had passed into the public domain in the United States, but which were still protected in their country of origin. In doing so, however, the Court construed the scope and significance of the public domain in a manner at odds with prior Supreme Court jurisprudence and in a manner that could have lasting significance for maintenance of trademark rights in subject matter within the scope of patent or copyright.

In Golan, various orchestra conductors, musicians, publishers, and others who had enjoyed unfettered access to certain such works in the public domain filed suit, objecting that Congress, in enacting the Copyright Restoration Act, exceeded its authority under the Copyright and Patent Clause and under the First Amendment. The Copyright Restoration Act restored rights in works that passed into the public domain for any of three basic reasons: the United States did not protect works from the country of origin at the time of first publication abroad; the United States did not protect sound recordings fixed before 1972; or the author failed to comply with U.S. statutory formalities. When the United States joined Berne in 1989, it did not protect such foreign works that had fallen into the public domain here. In 1994, however, TRIPS required implementation of Berne's first 21 articles, including protection of works of other member states where copyright had not expired in the country of origin.

Given the singular nature of the subject legislation, Golan may have only limited impact on broader issues of copyright jurisprudence. Nor are there precise figures about the number of works the Restoration Act affects. Golan, 132 S.Ct. at 905. Thus, perhaps the most curious aspect of Golan is not what it says about the Copyright Restoration Act itself, but what it says about the Court's views of the public domain ' a subject that has surfaced repeatedly in recent years in numerous guises. In this respect, the modest significance invested in the public domain by Golan may ultimately have greater significance for trademark law than copyright or patent.

The Copyright and Patent Clause

Golan follows on the Court's decision in Eldred v. Ashcroft , 123 S.Ct. 769, 537 U.S. 186 (2003), which rejected a constitutional challenge to the Copyright Term Extension Act (“CTEA”) extending the term of copyright protection for existing and future works (assertedly in violation of the “limited Times” provision of the Copyright Clause). The Court concluded in Eldred, as it later did in Golan, that “[t]ext, history, and precedent” support Congress' authority to extend copyright protection. Id. at 199. Eldred also rejected Petitioners' argument that “the CTEA's extension of existing copyrights does not 'promote the Progress of Science' ' because it does not stimulate the creation of new works.” Id. at 211-12. Eldred instead held that the Copyright Clause's “Constitutional Command” requires only that “Congress ' create a 'system' that promotes the progress of science.” Id. at 212 (emphasis added, quoting Graham v. John Deere Co. Kansas City , 383 U.S. 1, 6 (1966). Protecting and advancing that system (rather than individual works) was the primary basis for upholding the CTEA in Eldred and the Restoration Act in Golan.

Following Eldred, Golan held that the “limited Tim[e]” provision of the Copyright Clause does not preclude the grant of copyright protection to prevent works from entering the public domain or, in this instance, removing existing works from the public domain. Golan, 132 S.Ct. at 889. Regarding the related concern under the Copyright and Patent Clause that Congress' authority is limited by the prefatory language framing its legislative power to “promote the Progress of Science and the useful Arts,” Golan held that, by aligning the United States with the practices followed in other Berne member nations, Congress would expand the foreign markets available to U.S. authors and help protect against piracy of U.S. works abroad, thus benefitting U.S. copyright owners and in this way stimulating “the Progress of Science,” as contemplated by the Constitution. Id. at 876. Over a strenuous dissent, that the Restoration Act could not possibly advance the purpose of promoting the creation of new original works, because it only rewards authors of pre-existing works ' indeed, works that had already passed into the public domain, Id. at 900, the Court concluded that the Restoration Act did not exceed the constitutional mandate even where the Restoration Act encouraged creation of no new works but rather, only restored rights in older, pre-existing works already in the public domain. Id. at 889.

Fundamentally, the majority and the dissent thus parted ways on a basic philosophical question: namely, whether the overall benefits of the U.S. copyright system in a global context promote the progress of the arts, rather than whether the statute encourages creation of any specific new works. Irreducibly, the policy adopted by the Court simply is what it is.

A Page of History

The decision in Golan rested to a considerable degree on the historical precedents ' both statutory and judicial ' concerning the power of Congress to withdraw materials from the public domain or allow protection of previously unprotected works by providing protection under patent or copyright. Indeed, the First Congress, in the Copyright Act of 1790, protected works that had been theretofore unprotected under state copyright laws, and various subsequent bills restored the copyrights and patents of works and inventions that had been in the public domain. Congress has also passed a range of legislation granting copyrights and patents to works and inventions that had lost protection. Nonetheless, although the dissent cited few examples of past Congressional exercises of power, almost by definition one would not expect affirmative examples of legislation demonstrating a lack of legislative authority. However, in response to the majority's recitation of history, the dissent cited a similar number of case law precedents suggesting a narrower scope of Congressional discretion, demonstrating perhaps that while a page of history may be worth a volume of logic, a volume of history may not be worth a page of logic. In short, the historical references provided no simple answer bridging the divide between majority and dissent, as there is no direct precedent for the exercise of legislative authority at issue.

First Amendment

The Court resolved First Amendment concerns regarding the Restoration Act because the statute does not regulate speech on the basis of content. As the Court acknowledged, all copyright protection impinges to some extent on free speech. Golan, 132 S.Ct. at 889. However, Congress has already struck a balance between private proprietary interests and public interests in freedom of expression by declining copyright protection for ideas or facts, and by virtue of the fair use defense, each of which helps ensure that copyright will not impinge unduly on public discourse. Id. at 890. Moreover, after finding that the passage of some works into the public domain does not create “vested rights” held by the public to make use of any given works, the Court concluded that protecting rights in restored works does not burden speech any more or less than does protecting copyright in any works in the first place. Id. at 891.

The majority hence declined to bow to the concerns articulated by the dissent that the burdens on speech (including the added administrative costs of determining rights in foreign works, many of which are “orphan works” with no identifiable owners), required heightened scrutiny under the First Amendment. Id. at 893. Once again, however, the point of the divide may simply be irreducible policy differences between the majority and the dissent. Whereas the dissent contends that the First Amendment burdens represent a clear loss “without a countervailing benefit,” Id. at 906, the majority determined that the global benefits to U.S. copyright owners and the copyright system did indeed justify the withdrawal from the public domain of the subject works. Id. at 894.

The Public Domain

As noted at the outset, perhaps the most curious aspect of Golan is not what it says about the Copyright Restoration Act itself, but what it says about the public domain. Indeed, the statute has been the subject of very few cases other than Golan itself. See, e.g., Cordon Holding B.V. v. Northwest Publ. Corp. , 2002 U.S.Dist.LEXIS 6111, 63 U.S.P.Q.2d 1013 (S.D.N.Y. 2002); Luck's Music Library, Inc. v. Ashcroft , 407 F.3d 1262 (D.C.Cir. 2005); Dam Things from Denmark v. Russ Berrie & Co. , 290 F.3d 548 (3d Cir 2002); Estate of Elkan v. Hasbro , 258 Fed.Appx. 125 (9th Cir. 2007). However limited Golan may prove to be in subsequent copyright jurisprudence, the decision may have wider implications in providing insight to the Supreme Court's views on the significance or not of the public domain, and hence the interplay between patent or copyright on the one hand and trademark on the other. Eldred spoke primarily to the Limited Times provision of the Copyright Clause, as it concerned only works still under copyright. However, Golan more directly addressed the full scope of the Copyright and Patent Clause, because it more directly put in issue whether the progress of science and the useful arts can be encouraged by withdrawing material from the public domain. As the petitioners argued (albeit as one of their First Amendment-related contentions), “they ' unlike their counterparts in Eldred ' enjoyed 'vested rights' in works that had already entered the public domain.” Id. at 891. In this respect, the Court directly confronted and gave little deference to the public domain as a source of legal rights. At one juncture the Court raised questions whether “the public domain [is] a category of constitutional significance.” Id. at n. 26. The Court went on to conclude that “[t]o copyright lawyers, the 'vested rights' formulation might sound exactly backwards. Rights typically vest at the outset of copyright protection. ' Once the term of protection ends, the works do not revest in any rightholder.” Id. at 892. And further, “[a]nyone has free access to the public domain, but no one, after the copyright term has expired, acquires ownership in the once-protected works.” Id. Put differently, by definition there can be no vesting of rights in the public domain as it is, inherently, owned by no one.

What is most curious about the Court's withering assessment of ' if not disdain for ' the “rights” of the public domain as expressed in Golan, is how very different this philosophy is from the rationale expressed in other recent Supreme Court jurisprudence. For instance, in Dastar Corp. v. Twentieth Century Fox Film Co. , 539 U.S. 23 (2003), where Fox sought to establish rights of attribution to a once-copyrighted film series that had entered the public domain, the Court stated as follows:

The rights of a patentee or copyright holder are part of a “carefully crafted bargain,” Bonito Boats, Inc. v. Thunder Craft Boats, Inc. , 489 U.S. 141, 150-151, 109 S.Ct. 971, 103 L.Ed.2d 118 (1989), under which, once the patent or copyright monopoly has expired, the public may use the invention or work at will and without attribution. Thus, in construing the Lanham Act, we have been “careful to caution against misuse or over-extension” of trademark and related protections into areas traditionally occupied by patent or copyright. Id. at 33-34.

Adhering to the same “carefully crafted bargain,” Bonito Boats had held pre-empted a Florida law granting patent-like protection (and hence withdrawing from the public domain) to an unpatented boat hull design. The philosophical underpinning for that decision could be found in the language from Graham v. John Deere Co. of Kansas City , 383 U.S. 1 (1966), quoted by Bonito Boats , that Congress may not create patent monopolies of unlimited duration, nor may it “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.” 383 U.S. at 6.

Curiously, Justice Antonin Scalia, who authored the decision in Dastar, joined the majority in Golan. Golan likewise goes further than TrafFix Devices, Inc. v. Marketing Displays, Inc. , 532 U.S. 23 (2001). There the court was asked to rule whether subject matter once protected by a patent would, after expiration of the patent, be forever committed to the public domain. Id. The Court did say that the specific subject matter there at issue could not be reappropriated under the Lanham Act, but stopped short of precluding reappropriation in all circumstances. Id. at 35. Unlike Golan, however, TrafFix nowhere suggested that the public domain has no “constitutional significance.”

Various cases illustrate the potential tension between the constitutionally “limited times” of copyright and patent and the potentially unlimited times of trademark protection. In Comedy III Productions, Inc. v. New Line Cinema , 200 F.3d 593 (9th Cir. 2000), a film featuring the Three Stooges characters was in the public domain. As a result, the plaintiff could establish neither valid copyright nor trademark rights so as to prevent defendant's use of the clip, which the court said would be using the Lanham Act to “circumvent” copyright law. Id. at 596. See also, EMI Catalogue P'ship v. Hill Holliday Connors , 228 F.3d 56 (2d Cir. 2000) (no trademark protection in copyrighted song, “ Sing, Sing Sing “).

By contrast, other cases have suggested that trademark rights can be claimed in copyrightable subject matter even after protection under copyright has expired, or otherwise independent of the limited times for such protection. Frederick Warne & Co., Inc. v. Book Sales Inc. , 481 F. Supp. 1191 (S.D.N.Y. 1979), for instance, concluded that expiration of copyright in the Peter Rabbit book series would not preclude its publisher from asserting trademark rights in character illustrations from the books, given the different purposes of the two sets of rights. Id. at 1196. See also, Huebbe v. Oklahoma Casting Co. , 663 F. Supp. 2d 1196 (W.D.Okla. 2009) (“The Court does not interpret Dastar as precluding all copyright infringement plaintiffs from asserting [Lanham Act] ' 43(a) claims.”); Tempo Commc'ns, Inc. v. Columbian Art Works, Inc. , 223 U.S.P.Q. 721, 722 (N.D.Ill. 1983); DC Comics, Inc. v. Filmation Assocs. , 486 F. Supp. 1273, 1277 (S.D.N.Y. 1982).

Even if few cases have had occasion to adjudicate Congressional action extending or restoring copyright protection, the decision in Golan according no particular weight to the public domain may nonetheless have significant implications outside copyright law altogether. Indeed, the possibility of claiming trademark rights in subject matter no longer protected by copyright or patent remains not only a distinct possibility but a decidedly likely occurrence.

Jonathan Moskin is a partner in the New York office of Foley & Lardner LLP and a member of this newsletter's Board of Editors. ' Jonathan Moskin 2012.