October 11, 2007

IP Alert: Recent Decision In Copyright Case Could Have Broad Implications

Arnold & Porter Advisory

By Carole F. Barrett and Robert E. Spoo

The Tenth Circuit has ruled in Golan v. Gonzales, No. 05-1259, 2007 U.S. App. LEXIS 21199 (Sept. 4, 2007), that a Copyright Act provision that restores copyright in certain foreign works that had previously fallen into the U.S. public domain is subject to scrutiny under the First Amendment. The case has been sent back to the trial court to determine whether the restoration provision violates the free-expression rights of individuals who rely on public-domain works for their livelihood. This is a case that owners of restored copyrights should watch closely.


The facts in Golan were straightforward. The plaintiffs were individuals or entities that depended for their livelihoods on free access to public-domain artistic works, including foreign works that had fallen into the U.S. public domain for failure to comply with certain older U.S. copyright formalities. In 1994, Congress passed the Uruguay Round Agreements Act (URAA), which restored copyright to many of these foreign works, including sound recordings. The URAA restoration provision is codified at section 104A of the U.S. Copyright Act. After passage of URAA, the plaintiffs were forced to pay higher fees and royalties for use of formerly unprotected works.

The plaintiffs filed an action in the U.S. District Court for the District of Colorado, seeking, among other things, a declaration that the URAA restoration provision violated their First Amendment right to free expression by removing from the U.S. public domain foreign works that they relied upon. The district court rejected the plaintiffs' contention.

The Tenth Circuit disagreed and remanded the URAA issue for reconsideration by the district court.


Acknowledging that Congress has broad power to enact copyright laws, the Tenth Circuit nevertheless held that the plaintiffs enjoy a free-expression interest in works removed from the U.S. public domain by the URAA restoration provision. While recent laws extending the terms of existing copyrights could withstand judicial scrutiny, the court noted, a statute that resurrects works from the public domain is one that alters the traditional contours of copyright protection, and so is subject to First Amendment scrutiny. Finding that nothing in the URAA provision or copyright law adequately protects the plaintiffs' free-speech interests, the court concluded that "[b]y removing works from the public domain, [the URAA provision] arguably hampers free expression and undermines the values the public domain is designed to protect." (2007 U.S. App. LEXIS 21199, at *38.)

As a result, the Tenth Circuit remanded the case to the trial court to determine whether plaintiffs' First Amendment rights have been violated by URAA. The trial court will also have to decide what level of First Amendment scrutiny-whether strict scrutiny or something less exacting-must be applied in assessing whether a free-speech violation has occurred.


Previous challenges to the URAA restoration provision have gone nowhere. See, e.g., Luck's Music Library, Inc. v. Ashcroft, 407 F.3d 1262 (D.C. Cir. 2005). Golan is the first to have some success. For owners of URAA-restored copyrights in non-U.S. works, this is a case to watch. Whether the restored work is a musical composition, a novel, a motion picture, a sound recording, or another type of work, a judicial decision that the URAA provision is unconstitutional could affect the enforceability of the work's copyright in the United States. While decisions within the Tenth Circuit are confined to that circuit and do not become the law of the land, any ruling that struck down the URAA provision as unconstitutional could generate consequences for some copyright owners.

For more information please contact:

Carole F. Barrett
415 677 6290

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