Golan v. Holder: District Court Upholds First Amendment Challenge to the URAA

Copyright Digest Commentary First Amendment

Golan v. Holder

D. of Colorado, April 3, 2009, No. 01-cv-01854-LTB
Memorandum Opinion (hosted by the Stanford Fair Use Project)

On April 3rd, the United States District Court for the District of Colorado granted plaintiff's motion for summary judgment, upholding the First Amendment challenge to Section 514 of the Uruguay Round Agreements Act (URAA), codified in 17 U.S.C. §104A. The case was on remand from Golan v. Gonzales (10th Cir.), which instructed the District Court to evaluate the First Amendment implications of restoration.  Judge Lewis T. Babcock held that §104A, which restored copyright in certain foreign works that had previously fallen into the public domain, cannot survive First Amendment scrutiny.

The URAA restored the US copyrights of foreign authors whose works entered the public domain for any reason other than the expiration of a copyright term in the work's country of origin. The Tenth Circuit determined that the law "altered the traditional contours of copyright protection" by restoring copyrights in works of foreign origin that were previously in the public domain in the United States and therefore the law was subject to First Amendment scrutiny. The court held that once the works entered the public domain, the plaintiffs acquired a vested interest in the speech. On remand, the District Court - which had previously upheld § 104A - held that this provision of the URAA violates the First Amendment insofar as it suppresses parties' rights to continue using works they had exploited when those works were in the public domain.

According to Anthony Falzone of the Stanford Fair Use Project, which is litigating the dispute, this is "the first time a court has held any part of the Copyright Act violates the First Amendment." The Technology & Marketing Law Blog provides an overview of the case.

Plaintiffs, who were artists or businesses that use works in the public domain, would be forced to either pay royalties or cease using the works entirely if copyrights are restored. They argued that removing these works from the public domain violates their First Amendment rights. The court determined that plaintiffs had, subject to constitutionally permissible restraints, a non-exclusive right to "unrestrained artistic use of these works" that was protected by the First Amendment.

The government defended the statute by arguing that restoration is required by Article 18 of the Berne Convention for the Protection of Literary and Artistic Works, which the US joined in 1988. The court held that although the treaty requires the restoration of copyrights to foreign authors, it allows individual countries to determine how to implement its protections, particularly with regard to "reliance parties" who have a vested interest in works that had become part of the public domain. The court found the government's fears of retaliation by other countries for failing to restore the expired copyrights to be speculative and held that the significant First Amendment concerns outweighed any such potential fallout.

The parties agreed that the provision was a content-neutral regulation of speech, meaning it would be upheld if it advanced an important governmental interest and did not burden substantially more speech than necessary to further those interests (as opposed to the stricter test for content-specific regulations). The court acknowledged that compliance with an international treaty was an important government interest. However, the court found that the provision was "substantially broader than necessary" to serve that interest, and thus violated the plaintiffs' First Amendment reliance interest on the public domain works.