Problem: Golan v. Holder 132 S.Ct. 873 (2012)

Justice Ginsburg

The Berne Convention is the principal accord governing international copyright relations. Latecomer to the international copyright regime launched by Berne, the United States joined the Convention in 1989. To perfect U.S. implementation of Berne, Congress, in 1994 [through enactment of] § 514 of the Uruguay Round Agreements Act (URAA) [, extended] copyright protection to preexisting works of Berne member countries, protected in their country of origin, but lacking protection in the United States for any of three reasons: The United States did not protect works from the country of origin at the time of publication; the United States did not protect sound recordings fixed before 1972; or the author had failed to comply with formalities Congress no longer requires as prerequisites to copyright protection. The URAA accords no protection to a foreign work after its full copyright term has expired, causing it to fall into the public domain, whether under the laws of the country of origin or of this country. Works encompassed by § 514 are granted the protection they would have enjoyed had the United States maintained copyright relations with the author's country or removed formalities incompatible with Berne. Foreign authors, however, gain no credit for the protection they lacked in years prior to§ 514's enactment. They therefore enjoy fewer total years of exclusivity than do their U.S. counterparts. As a consequence of the barriers to U.S. copyright protection prior to the enactment of § 514, foreign works "restored" to protection by the measure had entered the public domain in this country. Petitioners include orchestra conductors, musicians, publishers, and others who formerly enjoyed free access to works § 514 removed from the public domain. They maintain that the Constitution's Copyright and Patent Clause, Art. I, § 8, cl. 8, and First Amendment both decree the invalidity of § 514. [All further reference to petitioners' First Amendment argument has been omitted.-ed.] Under those prescriptions of our highest law, petitioners assert, a work that has entered the public domain, for whatever reason, must forever remain there. [W]e conclude that § 514 does not transgress constitutional limitations on Congress' authority.

I Members of the Berne Union agree to treat authors from other member countries as well as they treat their own. Each country, moreover, must afford at least the minimum level of protection specified by Berne. The copyright term must span the author's lifetime, plus at least 50 additional years, whether or not the author has complied with a member state's legal formalities. And, as relevant here, a work must be protected abroad unless its copyright term has expired in either the country where protection is claimed or the country of origin. A different system of transnational copyright protection long prevailed in this country. Until 1891, foreign works were categorically excluded from Copyright Act protection. Throughout most of the 20th century, the only eligible foreign authors were those whose countries granted reciprocal rights to U.S. authors and whose works were printed in the United States. For domestic and foreign authors alike, protection hinged on compliance with notice, registration, and renewal formalities. The United States became party to Berne's multilateral, formality-free copyright regime in 1989. Initially, Congress adopted a "minimalist approach" to compliance with the Convention. The Berne Convention Implementation Act of 1988 (BCIA) accorded no protection for "any work that is in the public domain in the United States."

Congress indicated, however, that it had not definitively rejected "retroactive" protection for preexisting foreign works; instead it had punted on this issue of Berne's implementation, deferring consideration until "a more thorough examination of Constitutional, commercial, and consumer considerations is possible." The minimalist approach essayed by the United States did not sit well with other Berne members. Mexican authorities complained about the United States' refusal to grant protection to Mexican works that remained under copyright domestically. The Register of Copyrights also reported "questions" from Turkey, Egypt, and Austria. Thailand and Russia balked at protecting U.S. works, copyrighted here but in those countries' public domains, until the United States reciprocated with respect to their authors' works. Berne, however, did not provide a potent enforcement mechanism. . . . The landscape changed in 1994. The Uruguay round of multilateral trade negotiations produced the World Trade Organization (WTO) and the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). The United States joined both. TRIPS mandates, on pain of WTO enforcement, implementation of Berne's first 21 articles. The WTO gave teeth to the Convention's requirements: Noncompliance with a WTO ruling could subject member countries to tariffs or cross-sector retaliation. The specter of WTO enforcement proceedings bolstered the credibility of our trading partners' threats to challenge the United States for inadequate compliance with Article 18. Congress' response to the Uruguay agreements put to rest any questions concerning U.S. compliance with Article 18. Section 514 of the URAA extended copyright to works that garnered protection in their countries of origin, but had no right to exclusivity in the United States for any of [the previously listed] three reasons. . . . . . . Copyrights "restored" under URAA § 514 "subsist for the remainder of the term of copyright that the work would have otherwise been granted . . . if the work never entered the public domain." Prospectively, restoration places foreign works on an equal footing with their U.S. counterparts; assuming a foreign and domestic author died the same day, their works will enter the public domain simultaneously. . . . The URAA's disturbance of the public domain hardly escaped Congress' attention. Section 514 imposed no liability for any use of foreign works occurring before restoration. In addition, anyone remained free to copy and use restored works for one year following § 514's enactment. . . . In 2001, petitioners filed this lawsuit challenging § 514. . . .

II We first address petitioners' argument that Congress lacked authority, under the Copyright Clause, to enact § 514. The Constitution states that "Congress shall have Power . . . [t]o promote the Progress of Science . . . by securing for limited Times to Authors . . . the exclusive Right to their . . . Writings."

Questions

1. What does it mean to say that a work is in the "public domain"?

2. a. If you were a Canadian composer in 1950 with a new orchestral piece, fully protected under the copyright laws of Canada (a Berne signatory), what would you have had to do to protect your work in the United States (based on the law as it is presented in Golan)?

b. If you were a Canadian composer in 2005 under similar facts?

3. Before Congress passed § 514 of the URAA what could petitioners do that, after the legislation, was no longer legal?

4. In the words of the Court, why did "Congress have reason to believe" that full compliance with the Berne Convention "would expand the foreign markets available to U.S. authors and invigorate protection against piracy of U.S. works abroad"? Explain.