Can Congress take works out of the public domain and give protection to the author? Congress says yes, and now so does the Supreme Court.

The recent Supreme Court decision Golan v Holder holds that the Copyright Clause of the Constitution provides for Congress to give copyright protection to works that were previously in the public domain. The case centered around millions of works by foreign authors, including Prokofiev’s Peter and the Wolf, the 1927 film Metropolis, the works of Igor Stravinsky, films by Alfred Hitchcock, paintings by Picasso, drawings by M.C. Escher, and writings by George Orwell and J.R.R. Tolkien. These works were in the public domain for a variety of reasons, including: the U.S. did not protect works from the country or origin at the time of publication; the U.S. did not protect sound recordings fixed before 1972; and failure of the author to comply with U.S. statutory formalities. After the U.S. joined the Berne Convention in 1989 and as part of the Uruguay Round Agreement, Congress granted copyright protection to these works. This part of the Agreement (Section 514) granted protection to the authors that they would have enjoyed had the U.S. maintained copyright relations with the author’s country or had the formalities been removed that were incompatible with the Berne Convention.

The case against Section 514 was brought by Lawrence Golan who is an orchestra conductor at the University of Denver. Golan was concerned that these works will not be affordable to many persons and groups. Orchestras that were previously able to buy a work for a relatively small amount would now be forced to pay for each performance. Golan argued that Congress went against the intent of the Constitution’s copyright clause “to promote the progress of science and useful arts” and also violated First Amendment free speech rights.

In a 6-2 majority opinion, the Court (in an opinion by Justice Ginsburgh and joined by Roberts, Scalia, Kennedy, Thomas, and Sotomayor) held that passage of Section 514 did not exceed the power of Congress under the Copyright Clause of the U.S. Constitution. The Court reasoned that passage of Section 514 directed to works already in existence was in agreement with the purpose of copyright law to promote the progress of science. Finally, the Court held that Section 514 does not violate the First Amendment protection of free speech rights. The Court relied heavily on its previous decision in Eldred v Ashcroft, 537 US 186 (2003)(upholding 20 year extension of copyright term of the Copyright Term Extension Act) as supporting its reasoning for each of these issues.

A dissent written by Justices Breyer and Alito reasoned that granting new powers to foreign authors did not serve the purpose of copyright to encourage the progress of science and the useful arts.

One interesting issue is how this ruling will affect the efforts of various parties to digitize the world’s great libraries. The dissent mentioned this issue in stating that millions of foreign works published abroad now may not be able to be included in the various computer accessible databases. Google and the American Library Association both were actively on the side of Golan.

Another interesting issue is whether this case holds for the more general proposition that Congress has the ability to “re-instate” otherwise abandoned rights. Some have extrapolated this line of reasoning into the patent and trademark realm and believe that Congress now possesses the authority to revive an otherwise abandoned or expired patent or trademark.