Congress 1, Public 0, Part 2: The Dissent in Golan v. Holder

On Tuesday, this Kat discussed the majority’s holding in the U.S. Supreme Court case in Golan v. Holder, in which it was decided that Congress has the power to pull works out of the public domain and put them back under copyright protection.  While the holding is limited at present to foreign works which were not protected in the United States after accession to the Berne Convention for a limited number of reasons, the language of the Court was broad enough to certainly get copyright lawyers talking.

This Kat broke her promise to deliver to you a summary and discussion of the dissent yesterday, but makes good on it now.  

The dissent was written by Justice Breyer and joined by Justice Alito, two justices who will virtually never be seen on the same side of an issue.  IP is one of the few issues in the U.S. where opinions do not run along Democrat/Republican lines - we law geeks love that about it.

Justice Breyer’s dissent stems from one major point:  In his view, the recapture of certain works from the public domain under the Uruguay Round Agreement Act does nothing to further the American utilitarian purpose of copyright law.  The dissent actually contains a solid and concise history of the development of the Anglo-Saxon utilitarian view of copyright which has been adopted in America, as opposed to the natural rights view that prevails in continental Europe.  The utilitarian view, it is explained “understands copyright’s grants of limited monopoly privileges to authors as private benefits that are conferred for a public reason-to elicit new creation.” (Dissent,  Slip Op. at 2).  The recapture of existing works, in the dissent’s view, does nothing to incentivize the creation of new work.  The dissent discusses this point at length, but the majority made short shrift of the argument in its opinion, referencing in a footnote the amicus brief of the Motion Picture Association of America who observed that “income from existing works can finance the creation and publication of new works” (Slip Op. at 20, n. 25).  (The majority went on to make an additional argument that Congress need not limit copyright legislation to that which promotes the creation of new works - it may also promote the dissemination of existing works.  It is not clear to this Kat or a number of others why such an argument needed to be made, and it is striking many in the U.S. copyright world as, well, backwards.  Dissemination is generally understood to occur on a wider scale when works are in the public domain, not when they are protected under copyright.)

Sergei Prokofiev, one of the better known composers,
some of whose works have been recaptured into copyright
in the U.S. under Section 514.

A substantial portion of the dissent's argument arises from the basic premise that Section 514 does nothing to further the cause of promoting new works.  But it also highlights the substantial administrative costs to those who previously used or wished to use the works in questions. (The named plaintiff in the case, Lawrence Golan, discussed these costs in an interview prior to the Court's decision).  On the most obvious level, which works which used to be free are no longer free.  But other costs exist - the works in question are foreign works created between 1923 and 1989, and many of them are “orphan works” whose owners can not be found, or at least not without great expense and difficulty.  Moreover, because the recaptured works are limited to specific categories created by copyright statutes which are not easily known or understood by the average user (and even if they were known, could be difficult or impossible to apply to any particular work), the status of many works is now unknown, effectively removing them from public use altogether.  The dissent is forced to admit that copyright necessarily imposes costs on the public, but points to the “special harm” imposed because of the “foreign location of restored works” and “technical requirements . . .to establish where a work has had its copyright restored by the statute.”  (Dissent Slip Op. at 14).  These harms, according to the dissent, require the Court to “scrutinize with some care” (presumably referring to the intermediate scrutiny standard applied to cases that restrict free speech, but on a content-neutral basis).  The majority, of course, held that works in the public domain are not in a “category of constitutional  significance,” and that First Amendment free speech concerns are not in play.  Furthermore, the majority came far closer to telling Congress it will bury its head in the sand when it comes to that body’s legislation on copyright issues, than to giving it any kind of constitutional scrutiny.  

The small orchestras, symphonies, museums, and schools affected by Section 514 have been affected by it since 1996, so it remains to be seen what new immediate effects this decision may have on users of foreign works created between 1923 and 1988.  But regardless, the decision will be a topic of discussion for some time to come.