Law makers legitimately brought public domain works into copyright, US court rules

Out-Law News | 20 Jan 2012 | 9:31 am | 3 min. read

US constitutional provisions do not prevent law makers in the country from providing copyright protection to works that were previously freely available for use in the public domain, the US Supreme Court has ruled.

The Court rejected claims made by musicians, conductors, publishers and others who had argued that laws passed by Congress in 1994 breached overarching principles enshrined in the US Constitution.

Congress passed the Uruguay Round Agreements Act (URRA) in 1994 in order to comply with the Berne Convention. The Convention requires member countries to ensure that foreign-originated works still protected by copyright in those countries also receive copyright protections in member countries until such a time as the protection expires "in the country of origin".

The protest group had claimed that Constitutional rights over free speech and limitations on copyright protection meant works available for free in the US public domain could not be given copyright protection, but the Supreme Court disagreed.

"We conclude that [the URRA] does not transgress constitutional limitations on Congress’ authority. Neither the Copyright and Patent Clause nor the First Amendment, we hold, makes the public domain, in any and all cases, a territory that works may never exit," the Court ruled.

Under the Copyright and Patent Clause contained in the US Constitution Congress has 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". The First Amendment rights prohibit Congressmen from making any law "abridging the freedom of speech".

When Congress passed the URAA in 1994 it meant that foreign-originated works from Berne member countries gained the same "full term of protection" in copyright as US-originated works if they had previously not had the protection for one of three reasons. The reasons included if the US did not protect works from that country at the time they were published; because the US did not protect sound records "fixed" prior to 1972; or if the creator "had failed to comply with US statutory formalities," which no longer exist, the ruling (69-page / 317KB PDF) said.

The URRA contained "ameliorating accommodations" for those who had exploited the free works prior to them gaining copyright protection so as to "cushion the impact" of that protection coming into effect, the ruling said.

The US did agree reciprocal arrangements over foreign-originated works in copyright with some countries prior to 1994.

The protest group had argued that the limitations the Copyright and Patent Clause constitutional provisions referred to for copyright protection meant works in the public domain could not be handed copyright protection. They also claimed that Congress' actions had failed to "promote the progress of science" because the URAA only affected works already created, but the Supreme Court rejected both arguments.

"Nothing in the text or history of the Copyright Clause, moreover, confines the 'Progress of Science' exclusively to 'incentives for creation.' Historical evidence, congressional practice, and this Court’s decisions, in fact, suggest that inducing the dissemination of existing works is an appropriate means to promote science. Considered against this backdrop, [the URRA] falls comfortably within Congress’ Copyright Clause authority," the Court said.

"Congress had reason to believe that a well-functioning international copyright system would encourage the dissemination of existing and future works. And testimony informed Congress that full compliance with Berne would expand the foreign markets available to US authors and invigorate protection against piracy of US works abroad, thus benefitting copyright-intensive industries stateside and inducing greater investment in the creative process," it said. "This Court has no warrant to reject Congress’ rational judgment that exemplary adherence to Berne would serve the objectives of the Copyright Clause."

The Court also rejected claims by the protest group that they had "higher order" rights to freedom of expression because of the "vested rights" they had enjoyed when the now-copyright-protected works were free to use in the public domain.

"Nothing in the historical record, subsequent congressional practice, or this Court’s jurisprudence warrants exceptional First Amendment solicitude for copyrighted works that were once in the public domain," the Court said.

"Congress has several times adjusted copyright law to protect new categories of works as well as works previously in the public domain. Section 514 [of the URRA], moreover, does not impose a blanket prohibition on public access. The question is whether would-be users of certain foreign works must pay for their desired use of the author’s expression, or else limit their exploitation to 'fair use' of those works".

"By fully implementing Berne, Congress ensured that these works, like domestic and most other foreign works, would be governed by the same legal regime. Section 514 simply placed foreign works in the position they would have occupied if the current copyright regime had been in effect when those works were created and first published," the ruling said.