Colorado Federal Court

Federal Government Puts Baby Teeth into Enforcement of Criminal Copyright Infringement Laws

A number of press reports have given the impression that the Colorado District Court’s ruling in Golan v. Holder (fn1) means that that Federal laws reviving expired copyrights violate First Amendment protections on free speech. The actual ruling is far narrower.

184525_flute_player.jpgIn 1993, Congress enacted 17 U.S.C. Section 104A, to permit foreign authors whose copyrights had fallen into the public domain for technical reasons (such as by failing to renew the copyright with the U.S. Copyright Office) to restore their copyrights. Section 104A solely permitted “restoration” of copyright protection for works from “a nation other than the United States.” (fn2) Section 104A was added after the United States joined the Berne Convention for the Protection of Literary and Artistic Works — a treaty first enacted in 1886, but not joined by the U.S. until 1988. Article 18 of the Convention requires member nations to provide copyright protections to works by foreign authors so long as the term of protection in the country of origin has not expired as to the work.

The plaintiffs were U.S. artists who used works by foreign artists that had been in the public domain before 1994, such as Sergei Prokofiev’s “Peter and the Wolf.” The plaintiffs claimed that after Section 104A was enacted, they were subjected to higher performance fees, sheet music rentals and other royalties. In some cases, these costs were prohibitive. (fn3)

The Golan case was the brainchild of Stanford Law professor, founder and co-director of the Center for Internet and Society and Director of the Fair Use Project, Lawrence Lessig. The original complaint claimed that Section 104A shrunk the public domain and thereby violated the limitations on congressional power inherent in the Copyright Clause, and violated First Amendment rights to free expression. The Colorado District Court originally rejected these claims. However, on appeal, the Tenth Circuit found that a legitimate First Amendment claim existed and remanded the case for First Amendment analysis.

The basis for the Tenth Circuit’s ruling was the U.S. Supreme Court ruling in Eldred v. Ashcroft (fn4), in which the Supreme Court stated that a Congressional act modifying copyright law might be subject to First Amendment scrutiny if it “altered the traditional contours of copyright protection.” (fn5) While the Tenth Circuit could not find federal authority that explained the phrase “traditional contours”, it concluded that the traditional contours of copyright protection included the principle that “works in the public domain remain there.” (fn6) It based this on the notion that the general sequence is that copyrighted works has always progressed from “1) creation; 2) to copyright; 3) to the public domain” and that Section 104A changed this sequence. (fn7)

On remand, the District Court first found that since Section 104A was content-neutral, it was subject to what is commonly-referred to as “intermediate scrutiny” under the First Amendment. (fn8) Under this test, a statute can only be sustained: (1) if it furthers an important or substantial government interest that is unrelated to the suppression of free expression, and (2) if the restriction is no greater than necessary to further that interest. (fn9)

The U.S. government claimed that the primary interests advanced by Section 104A were compliance with the Berne Convention and correction of historic inequities imposed on foreign authors. The Court rejected both of these rationales.

The parties agreed that the Berne Convention required restoration of the rights of foreign authors. However, the Court found that Section 104A was not narrowly tailored to meet this interest, because “the government could have complied with Berne while providing significantly stronger protection for the First Amendment interests of reliance parties like the Plaintiffs here.”

Reliance parties are persons who have used a foreign work that was in the public domain, and continue to use it after that work is “restored” under Section 104A. (fn10) Section 104A provides that reliance parties may continue to use restored works for 12 months after receiving a notice of intent to enforce a restored copyright without being subject to suit for infringement, and may continue to use to use a restored work for the duration of the copyright if they pay “reasonable compensation” to the copyright owner. (fn11)

The Court found that these protections for reliance interests were not the broadest permissible under the Berne Convention. Rather, it found that Congress could have permitted reliance users to simply continue using restored works as they had prior to restoration. The Court concluded that Section 104A simply was “not tied to the Government’s interest in complying with the Berne Convention.” (fn12) Since Section 104A did not advance a substantial government interest, it could not withstand First Amendment scrutiny.

The Court also rejected the notion that there was any need to correct inequities for foreign authors. Rather, it found there were no such inequities, because U.S. law imposed the same requirements on all authors, whether foreign or domestic, to obtain copyright protection. Moreover, it also found that Section 104A created inequities, by permitting foreign authors to relieve themselves of failure to comply with formalities required for copyright protection, while denying this right to U.S. authors. (fn13)

The District Court’s decision did not go as far as the plaintiffs had wanted. The plaintiffs had argued that Congress simply has no power to restore copyrights to works in the public domain “at all.” Doubtless, this issue will resurface if the District Court opinion is appealed. No notice of appeal appears to have been filed as of the date of this report.

David D. Johnson is a business lawyer whose practice focuses on litigation and other issues relating to digital media and consumer electronics companies. David can be contacted at (310) 785-5371 or


Fn1 United States District Court, District of Colorado, 01-cv-01854-LTB (April 3, 2009), 2009 WL 928327 (2009).

Fn2 17 U.S.C. § 104A(h)(8).

Fn3 Golan v. Gonzales, 501 F.3d 1179, 1182 (10th Cir. 2007).

Fn4 Eldred v. Ashcroft, 537 U.S. 186, 123 S.Ct. 769, 154 L.Ed.2d 683 (2003).

Fn5 Golan v. Ashcroft, 537 F.3d at 1187.

Fn6 Id. at 1189.

Fn7 Id. The Tenth Circuit also attempted to determine if Congress had ever previously permitted works in the public domain to be copyrighted, but ultimately concluded that Congress’s historical practice was uncertain.

Fn8 Opinion at 6-7.

Fn9 Opinion at 7, citing Turner Broad. Sys., Inc. v. FCC, 512 U.S. 622 (1996).

Fn10 17 U.S.C. § 104A(g)(4).

Fn11 17 U.S.C. § 104A(d).

Fn12 Opinion at 15.

Fn13 Opinion at 19.