Golon v. Holder: What is the Public Domain?
By: Paul E. Thomas
January 31, 2012
In 1989, the United States joined a copyright treaty called the Berne Convention for the Protection of Literary and Artistic Works. The member nations of Berne are required to provide the same copyright protections to foreign authors that they provide to domestic authors. Article 18 of Berne requires a joining country to provide copyright protection to preexisting foreign works even when those works were in the public domain in that country before the date of its joining. When the United States joined Berne, however, Congress postponed the enactment of legislation to implement compliance with Article 18, so it did not extend copyrights to any foreign works that were already in the public domain in the United States. Five years later, in 1994, the United States signed several trade agreements in the Uruguay Round General Agreement on Tariffs and Trade, including the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPs). The TRIPs agreement required its signatories to comply with Article 18 of the Berne Convention, so to comply with TRIPs, Congress enacted the Uruguay Round Agreements Act (URAA), Section 514 of which restores copyrights in foreign works that had formerly lain in the public domain in the United States.
The restoration of copyrights in the millions of foreign works of authorship that had been considered public domain works before 1994 threw a wrench into the working gears of several orchestra conductors who had been used to performing, recording, selling, and distributing public domain musical works. Section 514 required these musicians to obtain permission from copyright owners (which may not have been granted in every case), and to pay license fees to make use of works that they had previously been free to use for any purpose without any restrictions whatsoever. Richard Kapp, who had written an arrangement of Dmitri Shostakovich’s String Quartets and distributed a recording of this orchestral work, decided to challenge the constitutionality of Section 514 of the URAA, because he saw the Congressional action as an illegal restraint upon his right of free expression under the First Amendment. Kapp became the lead plaintiff in the case that came to be captioned Golon v. Holder.
The Golon plaintiffs took their case all the way to the U.S. Supreme Court. They won the first round when the U.S. District Court found that Section 514 violated the First Amendment. The Tenth Circuit Court of Appeals found that the statute passed Constitutional analysis and reversed, so the plaintiffs filed a writ of certiorari to be heard before the U.S. Supreme Court, which was granted, and the case came before the Court last autumn.
During the oral argument on October 5, 2011, Justice Kennedy asked the plaintiffs to define the phrase “public domain.” He asked whether the public domain is “just a synonym” for the ending of the term of copyright, or whether there is “something more substantial” to the public domain. “Is it your position,” he asked, “that the public somehow owns what’s in the public domain?” To this question, the plaintiffs answered yes: “it’s creating affirmative rights in every member of the public.” When Kennedy reprised the same question a little later for clarity, the plaintiffs said “the public domain is owned collectively by the public, and, in fact, decisions of this Court going back to the 19th century refer to it as public property.”
That definition of the public domain was impliedly rejected by the majority of six of the Justices when the Court affirmed the Tenth Circuit holding on January 18, 2012. Justice Ginsberg, writing for the majority, said that copyright “rights typically vest at the outset of copyright protection, in an author or rightholder” and that once the term of copyright ends, “the works do not revest in any rightholder.” Instead of the public’s acquiring an affirmative and substantial right in works that enter the public domain, Ginsberg described this passage as a lapsing rather than a revesting of rights: “works simply lapse into the public domain . . . Anyone has free access to the public domain, but no one, after the copyright term has expired, acquires ownership rights in the once-protected works.” In addition to its other reasons for affirming the constitutionality of Section 514, the majority explicitly held that the public domain is not inviolable and that “nothing in the historical record, congressional practice, or our own jurisprudence warrants exceptional First Amendment solicitude for copyrighted works that were once in the public domain.”
In their dissent, Justices Breyer and Alito did not explicitly take up the plaintiffs’ definition of the public domain, but they did emphasize the important policy balance inherent in the copyright law: the need to confer benefits on the many while also conferring benefits on the few. A grant of copyright is a monopoly granted to one, and the economic philosophy of copyright is that the “monopoly privileges” granted to authors under the copyright statute are “private benefits that are conferred for a public reason – to elicit new creation.” The dissenters disapprove of Section 514 because it does not fulfill the “economic philosophy” of copyright by motivating the creativity of authors and artists. Because Section 514 restores copyright protection “only to works already produced, it provides no monetary incentive to produce anything new.” Thus, in the dissenters’ view, the primary question can be rephrased: “the question is whether the Copyright Clause permits Congress seriously to exacerbate” the problems of disseminating artistic works to promote the progress of the arts and sciences “by taking works out of the public domain without a countervailing benefit.”
Only time will reveal whether the majority’s affirmation of the constitutionality of Section 514 will fulfill the economic philosophy of copyright as expressed by the dissenters, but the immediate effect of the Golon decision is that the public domain has been reduced: a significant number, perhaps millions, of foreign works created between 1923 and 1989 which were once unprotected in the United States have now been brought under copyright protection. As practical considerations, anyone seeking to make substantial use of a foreign work created after 1923 should assume that permission is required and that a license fee may also be required.