United States Court of Appeals
FOR THE DISTRICT OF COLUMBIA CIRCUIT
———
Argued March 10, 2005 Decided May 24, 2005
No. 04-5240
LUCK'S MUSIC LIBRARY, INC. AND
MOVIECRAFT, INC.,
APPELLANTS
v.
ALBERTO R. GONZALES,
ATTORNEY GENERAL OF THE UNITED STATES AND
MARYBETH PETERS, REGISTER OF COPYRIGHTS, COPYRIGHT
OFFICE OF THE UNITED STATES,
APPELLEES
———
Appeal from the United States District Court
for the District of Columbia
(No. 01cv02220)
———
Daniel H. Bromberg argued the cause for appellants.
With him on the briefs were Geoffrey S. Stewart, Carmen M.
Guerricagoitia, and Jonathan L. Zittrain.
John S. Koppel, Attorney, U.S. Department of Justice,
argued the cause for appellees. With him on the brief were
2
Peter D. Keisler, Assistant Attorney General, Kenneth L.
Wainstein, U.S. Attorney, and William G. Kanter, Deputy
Director.
Before: RANDOLPH and ROBERTS, Circuit Judges, and
WILLIAMS, Senior Circuit Judge.
Opinion for the Court filed by Senior Circuit Judge
WILLIAMS.
WILLIAMS, Senior Circuit Judge: Plaintiffs challenge the
constitutionality of § 514 of the Uruguay Round Agreements
Act (“URAA”), Pub. L. No. 103-465, 108 Stat. 4809, 4976
(1994), codified at 17 U.S.C. §§ 104A, 109, which
implements Article 18 of the Berne Convention for the
Protection of Literary and Artistic Works. The section
establishes copyright in various kinds of works that had
previously entered the public domain, and plaintiffs argue that
any such provision violates the Copyright and Patent Clause
of the U.S. Constitution. U.S. Const. art. I, § 8, cl. 8. Finding
no such bar in the Constitution, the district court dismissed
plaintiffs’ claims. (A district court in Colorado has recently
agreed. Golan v. Gonzales, No. 01-B-1854, 2005 WL 914754
(D. Colo. Apr. 20, 2005).) We review the district court’s
order de novo, Barr v. Clinton, 370 F.3d 1196, 1201 (D.C.
Cir. 2004), and affirm.
***
Section 514 of the URAA establishes copyrights of
foreign holders whose works, though protected under the law
where initially published, fell into the public domain in the
United States for a variety of reasons—the U.S. failed to
recognize copyrights of a particular nation, the copyright
owner failed to comply with formalities of U.S. copyright law,
3
or, in the case of sound recordings “fixed” before February
15, 1972, federal copyright protection had been unavailable.
See 17 U.S.C. § 104A(h)(6). Plaintiff Luck’s Music Library
is a corporation that rents and sells classical orchestral sheet
music. Moviecraft is a commercial film archive that
preserves, restores, and sells old footage and films. Both
plaintiffs allege that because of the URAA they may no longer
freely distribute certain works in their portfolios.
The Copyright and Patent Clause provides that Congress
shall have 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. The Clause
authorizes the granting of a temporary monopoly over created
works, in order to motivate authors and inventors while
assuring the public free access at the end of the monopoly.
See Sony Corp. of America v. Universal City Studios, 464
U.S. 417, 429 (1984). Plaintiffs are correct that the Clause
“contains both a grant of power and certain limitations upon
the exercise of that power.” Bonito Boats, Inc. v. Thunder
Craft Boats, Inc., 489 U.S. 141, 146 (1989). But they are
wrong that the Clause creates any categorical ban on
Congress’s removing works from the public domain.
Plaintiffs first suggest that to pass muster under the
Clause a statute must create an incentive for authors to create
new works: legislation must “promote the progress of
science.” In their view, copyright laws that remove works
from the public domain “do not provide significant incentives
for new creations” because “rewarding prior works will not
provide any significant incentive to create new works because
it will not change the costs and benefits of doing so.”
Plaintiffs’ Br. at 17. This of course was the core argument
advanced against the Copyright Term Extension Act in Eldred
4
v. Ashcroft, 537 U.S. 186 (2003). There it was argued that
extensions for works already in existence could not possibly
affect authors’ incentives to create those works. As a result,
the Eldred plaintiffs urged, Congress utterly lacked the power
to grant such extensions, id. at 199-204, the extension was an
irrational exercise of the power, id. at 204-08, it failed to
promote the progress of science, id. at 211-14, and it failed to
comply with a quid pro quo requirement embedded in the
Clause, id. at 214-17. In all of these variations the argument
lost.
It is true, of course, that changes in the law of copyright
cannot affect the structure of incentives for works already
created. But the knowledge that Congress may pass laws like
the URAA in the future does affect the returns from investing
time and effort in producing works. All else equal, the
expected benefits of creating new works are greater if
Congress can remedy the loss of copyright protection for
works that have fallen accidentally into the public domain.
The Eldred Court made a parallel point in rejecting plaintiffs’
quid pro quo theory, noting that any author of a work “in the
last 170 years would reasonably comprehend, as the ‘this’
[i.e., quid] offered her, a copyright not only for the time in
place when protection is gained, but also for any renewal or
extension legislated during that time.” Id. at 214-15.
To be sure, the extra incentive afforded by § 514 is
meager. But to the extent that Eldred requires any direct
incentive, it plainly need not be great. Justice Breyer argued
in dissent that the extension upheld there would, assuming a
1% chance that a work would yield $100 a year in years 55-75
of the work’s life, have a total present value of seven cents.
Eldred, 537 U.S. at 254-55 (Breyer, J., dissenting). The
majority did not contest his figures, compare id. at 209-10
n.16 (doubting whether the founders, in limiting copyright to
5
“limited times,” “thought in terms of the calculator rather than
the calendar”), so we may assume it regarded such a low
value as direct incentive enough.
Perhaps more than enough. It is by no means clear that
Eldred requires a direct incentive at all. The majority
expressly relied on its understanding that adoption of the 20-
year term extension enhanced the United States’s position in
negotiating with European Union countries for benefits for
American authors. Id. at 205-06. Here, similarly, the Senate
argued in support of § 514 that its adoption helped secure
better foreign protection for US intellectual property and was
“a significant opportunity to reduce the impact of copyright
piracy on our world trade position.” S. Rep. No. 100-352, at 2
(1988). Plaintiffs do not gainsay the value of the rule in § 514
as a bargaining chip.
On a pragmatic plane, plaintiffs argue that a bright line
rule against laws that remove works from the public domain
would assure a sound balance between the founders’ desire to
allow proper incentives for creative effort and their anxiety
about political establishment of unjustifiable monopolies.
Here they make a public choice argument:
Just as the English Crown could not be trusted to
grant socially beneficial monopolies over existing goods
and industries, Congress cannot be trusted to issue patents
and copyrights over existing goods and services because
there is a “persistent asymmetry” in the legislative
process. [William M.] Landes & [Richard A.] Posner,
The Economic Structure of Intellectual Property Law 408
[(2003)].
Plaintiffs’ Br. at 21. They go on to argue that “authors and
large entertainment companies” have a clear and focused
6
interest in obtaining exclusive rights of works in the public
domain, whereas those likely to be adversely affected are a
diffuse group who at the time of legislation will lack an
adequate interest to justify any lobbying effort (or, plaintiffs
might add, even much effort at becoming informed on the
matter). Id.
The picture is a bit overdrawn; authors and the large
entertainment companies are themselves users of
copyrightable works, as literature is itself a source of literature
(think of Shakespeare and Holinshed). Further, the principled
and rigorous application of plaintiffs’ public choice analysis
would radically tilt the relations among the three branches of
government. But the key flaw in the argument is that the
Eldred plaintiffs were similarly arguing for a bright line rule
(no extension of copyright terms for already completed
works), in a context with a closely parallel lobbying
imbalance, and Eldred rejected their claims.
Plaintiffs completely fail to adduce any substantive
distinction between the imbalance (if it be that) in tacking 20
years onto a copyright term about to expire in (say) a year,
and extending protection to material that has fallen into the
public domain. One can imagine that creation of copyright ex
nihilo would entail special practical difficulties for parties that
have relied on the apparent availability of works in the public
domain only to find free access snatched away, but § 514
protects those who have relied without notice, see § 514(d)(2),
17 U.S.C. § 104A(d)(2), and plaintiffs don’t challenge these
provisions’ adequacy.
Unable to offer a material distinction between this case
and Eldred in terms of the language of the Copyright and
Patent Clause or the proper roles of Congress and the
judiciary, plaintiffs turn to a historical distinction. They say
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that taking works out of the public domain is without
precedent, in contrast with the congressional pattern of
extensions of copyright for completed works on which the
Court relied in Eldred. Especially lacking, they say, is a
practice of the First Congress, whose action bears the
imprimatur of the founders themselves. See Eldred, 537 U.S.
at 213-14.
In fact, evidence from the First Congress points toward
constitutionality. The Copyright Act of 1790 granted
copyright protection to certain books already printed in the
United States at the time of the statute’s enactment. See 1
Stat. 124 (1790). If such works were unprotected by common
law copyright, that statute would necessarily have granted
protection to works previously unprotected—that is, works in
the public domain. The historical evidence on this point is
contested, but as early as 1834 the Supreme Court was of the
view that the Act of 1790 created new copyright protection
rather than simply recognizing existing protections, relying on
the statutory language (the author “shall have the sole right,”
etc.) in reaching that conclusion. See Wheaton v. Peters, 33
U.S. (8 Pet.) 591, 661 (1834) (“Congress, then, by this act,
instead of sanctioning an existing right, as contended for,
created it.”).
Apart from the Act of 1790, plaintiffs insist that no
federal statute has ever authorized removing work from the
public domain. But the government and the district court
point to other statutes that seemingly have done just that. The
Act of Dec. 8, 1919, Pub. L. No. 66-102, 41 Stat. 368, gave
the President authority to give authors publishing works
abroad during World War I time to comply with procedural
formalities in the United States after the war’s end. Similarly,
the Act of Sept. 25, 1941, Pub. L. No. 77-258, 55 Stat. 732,
gave the President authority to make copyright protection
8
available to authors who might have been temporarily unable
to comply with required formalities because of disruption or
suspension of needed facilities. Plaintiffs urge that these acts
simply extended the time limits for filing and that they do not
purport to modify the prohibition on removing works from the
public domain. But to the extent that potential copyright
holders failed to satisfy procedural requirements, such works
would necessarily have already entered the public domain at
the time the statutes were passed.
Plaintiffs also invoke a dictum in Graham v. John Deere
Co., 383 U.S. 1 (1966): “Congress may not 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.” Id. at 6. Several factors weaken
the dictum’s force. First, the case dealt with patents rather
than copyright, and ideas applicable to one don’t
automatically apply to the other. For example, the Eldred
Court saw the “quid pro quo” idea as having a special force in
patent law, where the patentee, in exchange for exclusive
rights, must disclose his “discoveries” against his presumed
will. 537 U.S. at 216-17. In contrast, the author is eager to
disclose her work. Id.
Second, the Eldred Court itself weakened any inference
that might be drawn from the Graham dictum, using patent
cases as a basis for upholding the extension of existing
copyrights. Discussing McClurg v. Kingsland, 42 U.S. 202
(1843), the Court said that the
patentee in that case was unprotected under the law in
force when the patent issued because he had allowed his
employer briefly to practice the invention before he
obtained the patent. Only upon enactment, two years
9
later, of an exemption for such allowances did the patent
become valid, retroactive to the time it issued.
Eldred, 537 U.S. at 203. On this view, McClurg upheld the
creation of patent protection for an invention that had lapsed
into the public domain at least two years earlier. Plaintiffs
insist that the Eldred Court misread McClurg, and that its
characterization was mere dictum anyway. See Plaintiffs’
Reply Br. at 14. While McClurg strikes us as one of the most
opaque decisions ever crafted, so that we can hardly rule out
the possibility of a Supreme Court misreading, we do not see
the sort of smoking gun that might embolden us, as an
“inferior” federal court (U.S. Const., art. III, § 1), to substitute
our judgment for the Court’s discussion, now but two years
old. Certainly we are not persuaded that McClurg
“implicitly” agrees with plaintiffs “that Congress may not
grant patents over matters in the public domain.” See
Plaintiffs’ Reply Br. at 13.
***
The decision of the district court is
Affirmed.