United States Court of Appeals
FOR THE DISTRICT OF COLUMBIA CIRCUIT
Filed July 13, 2001
No. 99-5430
Eric Eldred, et al.,
Appellants
v.
John Ashcroft, In his official capacity as Attorney General,
Appellee
On Petition for Rehearing
---------
Before: Ginsburg, Sentelle and Henderson, Circuit
Judges.
Opinion for the Court filed by Circuit Judge Ginsburg.*
Ginsburg, Circuit Judge: The plaintiffs-appellants in this
case, corporations, associations, and individuals who rely for
their vocations and avocations upon works in the public
domain, have petitioned for rehearing and filed a suggestion
for rehearing en banc. They renew their contentions that the
Copyright Term Extension Act of 1998 (CTEA), Pub. L. No.
__________
* Circuit Judge Sentelle dissents from the denial of rehearing.
105-298, 112 Stat. 2827, violates both the First Amendment
and the Copyright Clause of the Constitution of the United
States.
The plaintiffs-appellants further complain that this court
erred in its treatment of the contentions advanced by one of
the amici. We are not persuaded. The district court's
rejection of the plaintiffs-appellants' constitutional attack fol-
lowed from its conclusion, in the light of our decision in
Schnapper v. Foley, 667 F.2d 102, 112 (1981), that "[t]he
introductory language of the copyright clause does not limit
[the Congress's] power." Upon appeal, the plaintiffs-
appellants did not challenge that determination; rather, they
maintained only that the substantive grant of power in the
Copyright Clause -- authorizing the Congress to grant copy-
rights for "limited Times" -- does not authorize the Congress
to extend the terms of copyrights as it did in the CTEA. In
sharp contrast, an amicus contended that the CTEA violates
the preamble to the Copyright Clause because extending the
term of a subsisting copyright does not "promote the Prog-
ress of Science and useful Arts."
As we stated in Part III of our opinion, 239 F.3d 372, 378
(2001), the court deems it "particularly inappropriate" in this
case to reach the merits of the amicus's position. To elabo-
rate: First, in their brief the plaintiffs-appellants themselves
took the position, diametrically opposed to that of the amicus,
"that the preamble of the Copyright Clause is not a substan-
tive limit on Congress' legislative power"; when expressly
offered the opportunity at oral argument to adopt the position
of the amicus, the plaintiffs-appellants did not do so. There-
fore, even if we were to read the plaintiffs-appellants' brief
broadly as raising the issue whether the Copyright Clause as
a whole -- including both the preamble and the grant of
authority -- renders the CTEA unconstitutional, following
the lead of the Supreme Court we would still not reach what
would then be the supporting argument of the amicus. See
New Jersey v. New York, 523 U.S. 761, 781 n.3 (1998)
(although arguments of amici and party stem from same
article of compact, court "must pass over the arguments of
the named amici for the reason that ... the party to the
case[ ] has in effect renounced them, or at least any benefit
they might provide"); see also Amax Land Co. v. Quarter-
man, 181 F.3d 1356, 1367 (D.C. Cir. 1999) (remanding where
the parties "request[ed] us to remand to the district court for
consideration of [legal] issue," whereas "the amicus' pre-
fer[red] that we resolve it" ourselves, which we could readily
have done); Narragansett Indian Tribe v. Nat'l Indian
Gaming Comm'n, 158 F.3d 1335, 1338 (D.C. Cir. 1998) ("Be-
cause we ordinarily do not entertain arguments not raised by
parties ... we consider only the [party's] equal protection
challenge" where amicus filed brief "supporting [party's]
equal protection claim and reiterating its separation of pow-
ers and bill of attainder arguments"); Michel v. Anderson, 14
F.3d 623, 625 (D.C. Cir. 1994) (court ordinarily "would not
entertain an amicus' argument if not presented by a party").
Second, the point advanced by the amicus -- that the
preamble of the Copyright Clause is a substantive limitation
upon the power of the Congress -- implicates discrete terms
of the Clause that are not otherwise at issue. In that sense it
poses an additional constitutional question, subject to the
"rule of avoidance"; and there can hardly be a better reason
to avoid a constitutional question than that the parties are in
agreement. See, e.g., Ashwander v. Tennessee Valley Au-
thority, 297 U.S. 288, 346 (1936) (Brandeis, J., concurring)
("Court will not 'anticipate a question of constitutional law in
advance of the necessity of deciding it' ").
Third, because the plaintiffs-appellants did not take the
same tack as the amicus, the Government did not on brief
address the district court's interpretation of this court's deci-
sion in Schnapper. See New Jersey v. New York, 523 U.S. at
781 n.3. Therefore, our usual concern with "avoid[ing] unnec-
essary or premature constitutional rulings," here as in Har-
mon v. Thornburgh, 878 F.2d 484, 494 (D.C. Cir. 1989), "is
heightened by the absence of meaningful argument by the
parties on this question."
Finally, as explained in Part III of the opinion, id. at 378-
80, even if we considered the amicus's position we would not
reach a different result in this case: Regardless whether, as
the amicus contends, the preamble limits the power of the
Congress, the CTEA still passes muster under the "necessary
and proper review" applicable to the Congress's "exercise of a
power enumerated in Article I." 239 F.3d at 378. The
Congress found that extending the duration of copyrights on
existing works would, among other things, give copyright
holders an incentive to preserve older works, particularly
motion pictures in need of restoration. Id. at 379. "Preserv-
ing access to works that would otherwise disappear -- not
enter the public domain but disappear -- 'promotes Progress'
as surely as does stimulating the creation of new works." Id.
We reject the plaintiffs-appellants' challenge under the
First Amendment for the reasons stated in the prior opinion.
Accordingly, the petition for rehearing is
Denied.
United States Court of Appeals
FOR THE DISTRICT OF COLUMBIA CIRCUIT
Filed on: July 13, 2001
No. 99-5430
Eric Eldred et al.,
Appellants
v.
John Ashcroft, In his official capacity as Attorney General,
Appellee
---------
BEFORE: Edwards, Chief Judge, Williams, Ginsburg,
Sentelle, Henderson, Randolph, Rogers, Tatel, and Garland,
Circuit Judges.
O R D E R
Appellants' petition for rehearing en banc and the response
thereto have been circulated to the full court. The taking of
a vote was requested. Thereafter, a majority of the judges of
the court in regular active service did not vote in favor of the
petition. Upon consideration of the foregoing, it is
ORDERED that the petition be denied.
Per Curiam
FOR THE COURT:
Mark J. Langer, Clerk
A statement of Circuit Judge Sentelle, joined by Circuit
Judge Tatel, dissenting from the denial of rehearing en banc
is attached.
Sentelle, Circuit Judge, dissenting from the denial of
rehearing en banc, with whom Circuit Judge Tatel joins: In
my view, the decision in this case is not only incorrect, but is
worthy of en banc review on both circuit-specific procedural
grounds and fundamental constitutional grounds.
First, procedurally, the Court's opinion in this case effec-
tively eliminates any role for amicus curiae in the practice of
this circuit, when it holds that an argument raised by an
amicus may not be considered by the Court. See Eldred v.
Reno, 239 F.3d 372, 378 (D.C. Cir. 2001). There is no dispute
that an amicus curiae may not raise new issues in an appeal.
Rather, the role of an amicus is to assist the court in
addressing the issues already raised with new arguments and
perspectives. In this case, the issue before the Court was, in
the panel's words, "whether ... the Copyright Clause of the
Constitution of the United States constrains the Congress
from extending for a period of years the duration of copy-
rights, both those already extant and those yet to come."
Eldred, 239 F.3d at 373. The amicus brief submitted on
behalf of Eagle Forum addressed this issue more persuasive-
ly than did appellants. But amicus did not "expand the
scope" of the appeal by "implicat[ing] issues" not raised by
the appellant. See Resident Council of Allen Parkway Vill.
v. HUD, 980 F.2d 1043, 1049 (5th Cir. 1993) ("We are
constrained only by the rule that an amicus curiae generally
cannot expand the scope of an appeal to implicate issues that
have not been presented by the parties to the appeal."
(emphases added)). Rather, as the majority noted, amicus
adopted a different "argument." Eldred, 239 F.3d at 378. A
new "argument" is not a new "issue." This is clear from our
circuit's rules. Specifically, an amicus brief "must avoid
repetition of facts or legal arguments made in the principal
(appellant/petitioner or appellee/respondent) brief and focus
on points not made or adequately elaborated upon in the
principal brief, although relevant to the issues before this
court." Circuit Rule 29. The role of amici is to help in this
process, by elaborating upon arguments made by the parties
and presenting arguments of their own that bear upon the
issues raised by the parties themselves. See White v. Illi-
nois, 502 U.S. 346, 352 (1992) ("We consider as a preliminary
matter an argument not considered below but urged by the
United States as amicus curiae in support of respondent.").
"When an issue or claim is properly before the court, the
court is not limited to the particular legal theories advanced
by the parties, but rather retains the independent power to
identify and apply the proper construction of governing law."
Kamen v. Kemper Fin. Servs., Inc., 500 U.S. 90, 99 (1991);
see also United States Nat'l Bank of Oregon v. Indep. Ins.
Agents of Am. Inc., 508 U.S. 439, 446 (1993) (same). Merely
because the parties fail to advance the proper legal theory
underlying their claim does not--indeed cannot--prevent a
court from arriving at the proper legal disposition. Once the
issue is raised, a court has an obligation to determine what
the law is which will govern the case at hand. This is so
irrespective of whether amici curiae enter an appearance.
As it happened, Eagle Forum submitted an amicus curiae
brief augmenting appellants' position by making a different
argument on the issue before the Court, and at least one
member of the panel found it persuasive. Even if the majori-
ty did not find amicus's argument compelling, it was properly
before the Court.
The majority holds that the "argument" raised by one
amicus was "not properly before" this Court because it was
effectively renounced by appellants. Eldred, 239 F.3d at 378.
This claim is not supported by the record. The relevant
amicus brief was submitted some two weeks after appellants'
opening brief. Insofar as the oral argument transcript shows
anything at all, it illustrates that appellants had not explicitly
adopted amicus's arguments in brief but had no problem
taking advantage of amicus's argument.1
__________
1 The relevant portion of the transcript reads as follows:
THE COURT: Have you adopted any point--any arguments
that appear in any of these amicus briefs? Or maybe--I don't
remember--there is more than one, but in any brief other than
your own?
LESSIG: Well, in particular, Mr. Jaffe's brief is a brief that
makes textualist arguments that we believe are quite strong in
this way.
The language of New Jersey v. New York, 523 U.S. 767, 781
n.3 (1998), might be taken to suggest that a court must "pass
over ... arguments" raised only by an amicus, but I believe
that this is a misreading of the case. In New Jersey, the
Court noted that only amici took issue with the special
master's conclusion affirming the Court's prior holding that
"the 'boundary line' between the States established in Article
First [of the Interstate Compact]" was the line of sovereignty
between the states. Id. at 781. In other words, the amici,
and only the amici, sought to overturn Supreme Court prece-
dent. Additionally, insofar as the amici sought to make an
exception to the special master's finding with regard to
Article First of the compact, it sought to obtain the Court's
judgment about a matter about which there was no present
controversy. See United States v. Louisiana, 446 U.S. 253,
260-61 (special master's recommendation not subject to ex-
ception by either party accepted by Court due to lack of
"present controversy"), reh'g denied, 447 U.S. 930 (1980).
Thus, even though the Court used the word "argument" to
characterize the claims put forward by amici, they were
raising issues beyond the purview of the case before the
Court.
Contrary to the suggestion of the panel majority, appel-
lants' argument did implicate the "preamble" of the Copy-
right Clause, just not in the same fashion as amicus. Appel-
lants stipulated to the reading postulated by the district
court, as the panel majority notes. Appellants' Opening Brief
at 29 n.15. Yet in the very footnote cited by the panel
majority, appellants claimed that the remaining portions of
the Copyright Clause must be read "in light of th[e] pream-
ble." Id. Contrary to my colleagues' suggestion, this Court
was not asked to "anticipate" a question of constitutional law,
but to decide a very discreet question--whether the CTEA
exceeds the grant of power in the Copyright Clause. Wheth-
__________
THE COURT: Is there any place in which you have adopted
them, in your briefs?
LESSIG: We formally acknowledge them in our briefs. I
don't believe we have, Your Honor, no.
er appellants asked this Court to recognize that the so-called
"preamble" is in fact the enumerated power, or merely to
read the rest of the clause "in light of that preamble" should
be immaterial. Indeed, the Supreme Court noted long ago
that the words of the Copyright Clause should be read "with
the words and sentences with which it stands connected."
Wheaton v. Peters, 33 U.S. (8 Peters) 591, 661 (1834); see also
Postmaster-General v. Early, 25 U.S. (12 Wheat.) 136, 152
(1827) (it is a "cardinal rule of construction" that "the whole
law is to be taken together, and one part expounded by any
other which may indicate the meaning annexed ... to ambig-
uous phrases").
Under the panel's holding, it is now the law of this circuit
that amici are precluded both from raising new issues and
from raising new arguments. If allowed to stand, this hold-
ing will effectively bar future amici from adding anything
except possibly rhetorical flourish to arguments already out-
lined and embraced by the parties. This is particularly the
case for those amici who, true to their traditional role as
"friends of the court," operate independently to assist the
Court in its determinations. If this Court is to adopt such a
rule--and I hope we do not--we should do so sitting en banc,
not by a divided panel.
Second, and more importantly, the Court's construction of
the Copyright Clause of the Constitution renders Congress's
power under Art. I, s 8, cl. 8, limitless despite express
limitations in the terms of that clause. The clause grants to
Congress the "power ... [t]o promote the progress of science
and useful arts, by securing for limited times to authors and
inventors the exclusive rights to their respective writings and
discoveries...." Under the Court's decision herein, Con-
gress may at or before the end of each such "limited period"
enact a new extension, apparently without limitation. As the
majority conceded, "[i]f the Congress were to make copyright
protection permanent, then it surely would exceed the power
conferred upon it by the Copyright Clause." Eldred, 239
F.3d at 377. The majority never explained how a precedent
that would permit the perpetuation of protection in incre-
ments is somehow more constitutional than one which did it in
one fell swoop. As the majority noted in describing my panel
dissent, "Judge Sentelle ... sees a categorical distinction
between extending the term of a subsisting copyright and
extending that of a prospective copyright." Id. at 379. In-
deed I do. Establishing the term of a prospective copyright
is not an extension, nor does it in itself implicate the authority
of Congress to incrementally create perpetual exclusivity.
Contrary to my colleagues, I do not accept that it is
sufficient for Congress to merely articulate some hypothetical
basis to justify the claimed exercise of an enumerated power.
The Copyright Clause only bestows the power "to promote
the progress of science and useful arts." In exercising this
power, Congress "may not overreach the restraints imposed
by the stated constitutional purpose," which is "the promotion
of advances in the 'useful arts.' " Graham v. John Deere Co.,
383 U.S. 1, 5, 6 (1966). I accept that extending copyright
terms for future works may well increase creative efforts at
the margin. Once a work is published, however, extending
the copyright term does absolutely nothing to induce further
creative activity by the author--and how could it? The work
is already published. A simple finding by Congress to the
contrary is not sufficient to demonstrate that the exercise of
that power is "necessary and proper." As the Supreme
Court noted in Lopez and again in Morrison, that Congress
concluded a given piece of legislation serves a Constitutional
purpose "does not necessarily make it so." United States v.
Lopez, 514 U.S. 549, 557 n.2 (1995) (citation omitted); United
States v. Morrison, 120 S. Ct. 1740, 1752 (2000).
The panel concluded--wrongly in my view, see Eldred, 239
F.3d at 382-83 (Sentelle, J., dissenting)--that my interpreta-
tion of the Copyright Clause is precluded by Schnapper v.
Foley, 667 F.2d 102 (D.C. Cir. 1981), which appeared to reject
any meaningful limit on the scope of the copyright power.
This interpretation of Schnapper erases from Article I half of
the Copyright Clause--indeed, that half which defines the
very power bestowed. If Schnapper indeed precludes a panel
of this Court from applying the Constitution as written, then
we have yet one more reason to consider this case en banc.
The majority opinion in this case dramatically narrowed the
role of amici before this Court and, in my view, effectively
erased portions of the Copyright Clause of the Constitution.
Though I believe that this Court should grant en banc review
quite sparingly, either issue individually merits en banc re-
view. Because this case presents both questions, it is particu-
larly worthy of the full Court's attention.