Kahle v. Gonzales

FOR PUBLICATION
UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT

BREWSTER KAHLE; INTERNET 
ARCHIVE; RICHARD PRELINGER;
PRELINGER ASSOCIATES, INC.,
Plaintiffs-Appellants, No. 04-17434
v.
 D.C. No.
CV-04-01127-MMC
ALBERTO R. GONZALES, Attorney
General, in his official capacity as OPINION
Attorney General of the United
States,
Defendant-Appellee.

Appeal from the United States District Court
for the Northern District of California
Maxine M. Chesney, District Judge, Presiding

Argued and Submitted
November 13, 2006—San Francisco, California

Filed January 22, 2007

Before: Mary M. Schroeder, Chief Circuit Judge,
Jerome Farris and Johnnie B. Rawlinson, Circuit Judges.

Opinion by Judge Farris

889
 KAHLE v. GONZALES 891

COUNSEL

Jennifer Stisa Granick, Lawrence Lessig, and Christopher
Sprigman, Center for Internet and Society, Stanford, Califor-
nia, for the plaintiffs-appellants.

John S. Koppel, Department of Justice, Washington, D.C., for
the defendant-appellee.
892 KAHLE v. GONZALES
OPINION

FARRIS, Senior Circuit Judge:

Plaintiffs appeal from the district court’s dismissal of their
complaint. They allege that the change from an “opt-in” to an
“opt-out” copyright system altered a traditional contour of
copyright and therefore requires First Amendment review
under Eldred v. Ashcroft, 537 U.S. 186, 221 (2003). They also
allege that the current copyright term violates the Copyright
Clause’s “limited Times” prescription.

Arguments similar to Plaintiffs’ were presented to the
Supreme Court in Eldred, which affirmed the constitutionality
of the Copyright Term Extension Act against those attacks.
The Supreme Court has already effectively addressed and
denied Plaintiffs’ arguments. We AFFIRM.

In March 2004, Plaintiffs Brewster Kahle, Internet Archive,
Richard Prelinger, and Prelinger Associates, Inc. filed an
amended complaint seeking declaratory judgment and injunc-
tive relief. Brewster Kahle and Internet Archive have built an
“Internet library” that offers free access to digitized audio,
books, films, websites, and software. Richard Prelinger and
Prelinger Associates make digital versions of “ephemeral”
films available for free on the internet. Each Plaintiff pro-
vides, or intends to provide, access to works that allegedly
have little or no commercial value but remain under copyright
protection. The difficulty and expense of obtaining permission
to place those works on the Internet is overwhelming; owner-
ship of these “orphan” works is often difficult, and sometimes
impossible, to ascertain.

Prior to 1978, the number of orphaned works was limited
by the renewal requirement. Renewal served as a filter that
passed certain works — mostly those without commercial
value — into the public domain. Along with formalities such
as registration and notice (which have also been effectively
 KAHLE v. GONZALES 893
eliminated), renewal requirements created an “opt-in” system
of copyright in which protections were only available to those
who affirmatively acted to secure them. The majority of cre-
ative works were thus never copyrighted and only a small per-
centage were protected for the maximum term.

The Copyright Renewal Act of 1992, Pub. L. No. 102-307,
106 Stat. 264 (1992), and the Sonny Bono Copyright Term
Extension Act, Pub. L. No. 105-298, 112 Stat. 2827 (1998),
altered the system to one Plaintiffs characterize as “opt-out.”
Among other effects, the CRA and the CTEA eliminated the
renewal requirements for works created between 1964 and
1977. Plaintiffs confine their First Amendment challenge to
the extensions granted to those works.

Eliminating the renewal requirement dramatically increased
the average copyright term and correspondingly decreased the
number of works currently entering the public domain. The
change is most noticeable for works that have little commer-
cial value and thus, under an opt-in system, provide little
incentive for their creators to renew the copyright. Plaintiffs
characterize this change as altering the “traditional contours
of copyright” and therefore requiring First Amendment
review under Eldred.

Plaintiffs also argue that they should be allowed to present
evidence that the present copyright term violates the Copy-
right Clause’s “limited Times”1 prescription as the Framers
would have understood it. That claim was not directly at issue
in Eldred, though Justice Breyer discussed it extensively in
his dissent. See Eldred, 537 U.S. at 243. Plaintiffs assert all
existing copyrights are effectively perpetual.
1
The Copyright Clause grants Congress the power “To promote the
Progress of Science and useful Arts, by securing for limited Times to
Authors and Inventors the exclusive Right to their respective Writings and
Discoveries.” U.S. CONST. art. I, § 8, cl. 8.
894 KAHLE v. GONZALES
Although the Supreme Court recently addressed similar
issues in Eldred, Plaintiffs argue that their specific claims
were not answered — or if they were, only in dicta. They
place particular emphasis on the increased possibilities for
archiving and disseminating expressive content over the Inter-
net and the detrimental impact the change from an opt-in to
an opt-out system has on those efforts. Plaintiffs articulate
policy reasons behind their position; they do not, however,
provide a legal argument explaining why we should ignore
the clear holding of Eldred.

I

Dismissals under Fed. R. Civ. P. 12(b)(6) for failure to state
a claim are reviewed de novo. Decker v. Advantage Fund,
Ltd., 362 F.3d 593, 595-96 (9th Cir. 2004). Complaints are
only “dismissed for failure to state a claim [if] it appears
beyond doubt that the plaintiff can prove no set of facts in
support of his claim which would entitle him to relief.” Con-
ley v. Gibson, 355 U.S. 41, 45-46 (1957). The court accepts
the complaint’s well pleaded allegations of fact and construes
them in the plaintiff’s favor. Zimmerman v. City of Oakland,
255 F.3d 734, 737 (9th Cir. 2001).

Plaintiffs assert that the change from discretionary to auto-
matic renewal of copyrights for works created between 1964
and 1977 altered the “traditional contours of copyright protec-
tion.” Under Eldred, that may trigger First Amendment
review. 537 U.S. at 221. However, Eldred also upheld the
CTEA, in effect answering Plaintiffs’ challenge.

[1] Eldred addressed whether extending existing copy-
rights was constitutionally permissible. The Court observed
that when Congress passed the CTEA, it “placed existing and
future copyrights in parity. In prescribing that alignment, we
hold, Congress acted within its authority and did not trans-
gress constitutional limitations.” Id. at 194. Thus, extending
existing copyrights to achieve parity with future copyrights
 KAHLE v. GONZALES 895
does not require further First Amendment scrutiny. Instead,
traditional First Amendment safeguards such as fair use and
the idea/expression dichotomy are sufficient to vindicate the
speech interests affected by the CRA and the CTEA. Id. at
219-20.

[2] Plaintiffs frame their argument that Congress altered
copyright’s “traditional contours” within the context of
renewal requirements, which, while a “formality,” have a
longstanding and vital role in regulating the amount of works
under copyright. See Stewart v. Abend, 495 U.S. 207, 217
(1990) (“Since the earliest copyright statute in this country,
the copyright term of ownership has been split between an
original term and a renewal term.”). The CRA and the CTEA
did eliminate the renewal requirements and lengthen the term
for works created between 1964 and 1977, but in doing so
they simply placed existing copyrights in parity with those of
future works. Thus, Eldred’s explicit holding that efforts to
achieve parity are constitutionally valid refutes Plaintiffs’
claim that eliminating the renewal requirement should trigger
First Amendment scrutiny.

[3] Despite Plaintiffs’ attempt to frame the issue in terms
of the change from an opt-in to an opt-out system rather than
in terms of extension, they make essentially the same argu-
ment, in different form, that the Supreme Court rejected in
Eldred. It fails here as well.

II

In addition to their First Amendment claim, Plaintiffs make
the closely related argument that the current copyright term
violates the Copyright Clause’s “limited Times” prescription
by creating a term that “the Framers would have considered
. . . so long as to be effectively perpetual.” (Pet. Br. at 48.)
This second claim overlaps with the first in that the Plaintiffs’
criticism of the elimination of formalities for works created
between 1964 and 1977 is merely another way of saying that
896 KAHLE v. GONZALES
the copyright term is too long — put differently, “effectively
perpetual.”

[4] Eldred disposes of Plaintiffs’ second argument, as it
did their first. Eldred did not purport to directly address
whether the phrase “limited Times” places substantive limits
on copyright duration. See Eldred, 537 U.S. at 210 n.17 (not-
ing that whether an average copyright duration of ninety-five
years is at the outer boundaries of “limited Times” was not
before the Court). Nevertheless, the Court denied Justice
Breyer’s assertion that the term enacted by the CTEA was
constitutionally impermissible, observing that “[i]t is doubtful
. . . that those architects of our Nation, in framing the ‘limited
Times’ prescription, thought in terms of the calculator rather
than the calendar.” Eldred, 537 U.S. at 210 n.16. Plaintiffs
seize on that phrase as evidence that the Court misunderstood
the Framers’ intent behind the phrase “limited Times.” The
Court’s phrasing in Eldred sacrificed clarity for pithiness: the
calculator and the calendar are merely different ways of mea-
suring economic benefit to authors.

[5] However, the Supreme Court clearly grasped the role
“limited Times” play in the copyright scheme and the Fram-
ers’ understanding of that phrase. In contrast to Plaintiffs, the
Court has long defined “limited Times” by a balancing rather
than an absolute test. See Eldred, 537 U.S. at 205-08; Sony
Corp. of America v. Universal City Studios, Inc., 464 U.S.
417, 429 (1984); Twentieth Century Music Corp. v. Aiken,
422 U.S. 151, 156 (1975) (noting that the “limited copyright
duration required by the Constitution” serves to encourage
authors while eventually bringing their works within the pub-
lic domain).

[6] Put differently, the outer boundary of “limited Times”
is determined by weighing the impetus provided to authors by
longer terms against the benefit provided to the public by
shorter terms. That weighing is left to Congress, subject to
rationality review. See Eldred, 537 U.S. at 206-07 (“Congress
 KAHLE v. GONZALES 897
passed the CTEA in light of demographic, economic, and
technological changes, and rationally credited projections that
longer terms would encourage copyright holders to invest in
the restoration and public distribution of their works.” (inter-
nal citations omitted)). The Court was thus clearly cognizant
of the meaning of “limited Times” when assessing the current
copyright term; it simply reached a different conclusion than
that desired by Plaintiffs. Future extensions may or may not
survive review, but the current term is constitutional. Plain-
tiffs’ claim therefore was properly dismissed.

Both of Plaintiffs’ main claims attempt to tangentially re-
litigate Eldred. However, they provide no compelling reason
why we should depart from a recent Supreme Court decision.

AFFIRMED.