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Eldred v. Ashcroft: Copyright, Free Speech and Special Interests with a European Flavour

June 12, 2003

Introduction

In 1998 the Sonny Bono Copyright Term Extension Act, which extended existing copyright protections for 20 more years, was signed into law by President Bill Clinton. The act spurred an intense debate over the issues of copyrights, free speech, and the need of society to protect and encourage creativity and the production of cultural works. Amy Harmon wrote in the New York Times of October 7, 2002: “[the case] has become a touchstone in an increasingly acrimonious debate over how to balance the rights of consumers with those of big media companies at a time when digital technology is threatening both.”[1] The stakes were high.

An Internet publisher by the name of Eric Eldred disputed the CTEA’s constitutionality. The case picked up steam as it came closer to the Supreme Court hearing. 38 friend-of-the-court (amicus curiae) briefs were filed, signed by intellectuals, economists, copyright lawyers, law professors, artists and activists, sometimes defying traditional party lines. The case finally landed in the Supreme Court of the United States and on January 16th 2003 the Justices found that the Sonny Bono Copyright Term Extension Act adhered fully to constitutional provisions. The challenge was dismissed.

This paper will review the history of the CTEA, the lawsuit that brought it before the Supreme Court, and the Court’s decision itself. Particularly, my goal is to examine the government’s claim that the act, among other things, would harmonize American laws with those enforced in the European Union, an argument which seems to have swayed the Justices. In fact, Justice Ginsburg, who wrote the majority opinion for the court, stressed forcefully in several passages that the CTEA had the important function of harmonizing the American legislation to that passed by the European Union in 1993, so as to grant American authors the same protection that their Europeans counterpart enjoy, as well as to encourage more authors, either American or foreign, to register their works in the United States.

My intention is to verify the validity of such an assertion, by analyzing the European Union Directive 93/98/EEC on Copyright Term of Protection, the law as it is now applied in the European Union, and the diverse interpretations that were offered during the proceedings. Furthermore, through an examination of the Supreme Court’s decision itself, a secondary goal is to understand how important a role this claim played in the Supreme Court’s ruling in respect to other issues at stake.

The Sonny Bono Copyright Term Extension Act

The long story of the Sonny Bono Copyright Term Extension Act began in 1995 when a first draft of a legislation that extended the existing copyright protection was introduced to the House and the Senate. Both chambers subsequently held hearings and this first bill never made it out of committee. Special interests, most vocally restaurant and bar owners, demanded special exemptions so that they would not have to pay royalties for the music played in their establishments. Three years later, in 1998, the bar owners were granted the exemption, and the bill cleared the House in March. Yet it stalled in the Senate and it wasn’t until October, at the end of the congressional term, that a compromise was reached. A similar version passed in the House was presented to the Senate and the bill was approved by unanimous consent. On the same day, it went back to the House and it was affirmed by a voice vote, meaning that no member of Congress had to go on record with his or her vote[2].

On October 27, 1998, President Clinton signed the CTEA into law. Under the new law the protection for those works that had been copyrighted by individuals since 1978 was extended to 70 years after the death of the author rather than the existing fifty; for those works made by or for corporations, known as “works made for hire,” the protection was increased to 95 years from the existing 75. Works copyrighted after January 1st 1923 and before 1978 were shielded for 95 years, regardless of how they were produced.

As a result of the extension, thousands of works copyrighted from the 1920s and ’30s that were scheduled to enter the public domain in the following years remained protected for an additional 20 years, even if they were out of print or had no commercial value.

The Lawsuit

Eric Eldred, a technical analyst for a computer magazine with a passion for literature, decided in 1995 that he was going to publish for free on the Internet books that had fallen into the public domain. Unusual and out-of-print books, he thought, were hard to find in libraries and used bookstores, and the other electronic editions he found on the web were often not satisfying, they had typos and especially were difficult to read because they had been scanned improperly. He dreamt of creating a global library to preserve these precious cultural works and make them available to the public at large. His website soon began attracting an increasing number of visitors and the daily hit count grew to 20,000. He also started receiving acknowledgments. In 1997, the National Endowment for the Humanities recognized his Eldritch Press as one of the 20 best humanities sites on the Web. The Nathaniel Hawthorne Society and the William Dean Howells Society followed.

However, with the introduction of the Sonny Bono Copyright Term Extension Act in 1998 Eldred’s project was threatened. Many of the works he had planned to upload on the web had now been granted copyright protection for 20 more years, making his job risky. If sued he was liable to up to six years in prison for this hobby. On the other hand, embarking on an effort to trace back authors or, most likely, their heirs to ask for permission to publish was going to be a very long and challenging job, if not impossible. “In 1930, 10,027 books were published,” writes Lawrence Lessig, the lawyer who took up the legal challenge on behalf of Eldred[3]. “Today, 174 of those books are still in print. What would it take to put the remaining 9,853 out-of-print books onto the Internet? […] To track down the current status of the 9,853 creative works, you would have to hire an army of Sherlock Holmeses. And as Holmeses don’t come cheap, no matter how easy it is to post 9,853 out-of-print books on the Internet technically, the lawyers’ fees would make it practically impossible. Until the copyright expires, these works are trapped in a regulatory black hole.”[4]

Faced with the prospect of having to shut down his electronic library, throwing out hours and hours on the job, Eric Eldred decided to fight back. “I don’t want to let big companies privatise our culture,” he said[5]. Lawrence Lessig, at the time a Harvard Law School professor, noticed some news articles about Eldred. Lessig contacted him to offer to take the case pro-bono. Eldred accepted the offer and Lessig filed a complaint against the government on Eldred’s behalf with the US District Court for the District of Columbia in January 1999. A few of Lessig’s colleagues from Harvard’s Berkman Center for Internet & Society joined the legal team, along with Hale & Dorr, one of Boston’s most prestigious firms, accepted to handle the technical details. Furthermore, nine co-plaintiffs were enlisted, including Higginson Books and the American Film Heritage Association, strengthening the lawsuit.

The lawsuit had started off quietly without attracting much attention, but as the journey through the various courts proceeded, more and more people were drawn to the cause. New York University professor Siva Vaidhyanathan noted: “Back in 1998, when legal scholars and librarians tried to make [their] arguments, they found they had no army of CD burners and TiVo users behind them […] Since that time, public awareness of copyright has blossomed. In just the past month the New York Times has run three stories on its front page about copyright. […] Bill Moyers’ program “Now” will examine the copyright battles in depth. And several important books about copyright have found their ways onto library shelves[6].”

Following two losses in lower courts, Lessig presented a petition for certiorari to the Supreme Court of the United States asking to review the case. The Court agreed to it in February 2002 and on the following October 9th, the two parties, Lawrence Lessig and the solicitor general Theodore B. Olson, representing the government, finally presented their arguments before the Justices.

The Decision

There were three main issues before the Supreme Court.

First of all, considering that the Constitution of the United States says that copyrights are to be for “a limited time” does the CTEA, by issuing the 11th and by far the longest of a series of extensions over the last 40 years, show that Congress has exceeded its powers by, in effect, giving copyright holders what amounted to a permanent monopoly over the use of their material[7]?

Secondly, does the bill infringe on Free Speech rights, as protected by the 1st Amendment, by overly protecting material that would otherwise have fallen into the public domain, thus taking away would-be-users right to incorporate it in their speech[8]?

And lastly, is it true that the Copyright Term Extension Act harmonizes U.S. laws with those currently applied in the European Union?

The Supreme Court on January 16th 2003 delivered its opinion and seemed to agree on all of the three issues with the U.S. Government.

The question about free speech was the easiest one for the Justices to dismiss. The majority opinion, in referring to what the Court of Appeals for the District of Columbia Circuit affirmed, reads: “Copyright, the court reasoned, does not impermissibly restrict free speech, for it grants the author an exclusive right only to the specific form of expression; it does not shield any idea or fact contained in the copyrighted work, and it allows for “fair use” even of the expression itself.”[9] And later it adds more directly: “The First Amendment securely protects the freedom to make – or decline to make – one’s own speech; it bears less heavily when speakers assert the right to make other’s people speeches.”[10]

The centrepiece of the lawsuit was the question about the CTEA transgressing the limitation imposed by the Constitution on Congress when extending copyright protections to old works. In the opening brief the petitioners made a clear point: Rather than granting authors a fixed (i.e., “limited”) term of copyright, Congress has repeatedly extended the terms of existing copyrights—eleven times in the past forty years […] These repeated, blanket extensions of existing copyright terms exceed Congress’s power under the Copyright Clause.[11]” First of all, Eldred’s argument asserts, if Congress repeatedly extends the terms of protection, these terms are, by definition, not limited anymore. Secondly, granting prolonged shelter to old works does not promote the “Progress of Science” as prescribed in the Copyright Clause of the Constitution. And thirdly the quid-pro-quo requirement of the Clause, that monopoly can only be granted in exchange for public benefit in return, is violated.

But the Justices did not buy this argument. Justice Ginsburg wrote in delivering the opinion of the Court[12]: “The CTEA’s baseline term of life plus 70 years, petitioners concede, qualifies as a “limited Tim[e]” as applied to future copyrights. Petitioners contend, however, that existing copyrights extended to endure for that same term are not “limited.” Petitioners’ argument essentially reads into the text of the Copyright Clause the command that a time prescription, once set, becomes forever “fixed” or inalterable.” The word “limited,” however, does not convey so constricted a meaning. At the time of the Framing, that word meant what it means today: “confine[d] within certain bounds,” “restrain[ed],” or “circumscribe[d] […] In accord with the District Court and the Court of Appeals, we reject petitioners’ challenges to the CTEA.[13]

European Union Directive 93/98/EEC

European law also seems to have played a central role in the Supreme Court’s decision over the CTEA. In several passages of the majority opinion, Justice Ginsburg refers to the important role of such legislation in harmonizing U.S. copyright protections to those applied in the E.U. by citing the Court of Appeals’ decision: “Rather, the court [of appeals] noted, the CTEA ‘matches’ the baseline term for ‘United States copyrights [with] the terms of copyrights granted by the European Union.” And “ ‘[I]n an era of multinational publishers and instantaneous electronic transmission,’ the court said, ‘harmonization in this regard has obvious practical benefits’ and is ‘a ‘necessary and proper’ measure to meet contemporary circumstances rather than as a step on the way to making copyrights perpetual.’” [14]

The government in its Brief for the Respondent, pointed strongly to the CTEA as a means to promote American progress through international trade. Citing a report by the Senate Judiciary Committee, the Brief reads: Uniformity of copyright laws is enormously important to facilitate the free flow of copyrighted works between markets and to ensure the greatest possible exploitation of the commercial value of these works in world markets for the benefit of U.S. copyright owners and their dependents.[15]” And since in 1995 the European Union adopted a common resolution extending copyright protection to life-plus-70-years and decided, consistently with the Berne convention, “to apply ‘the rule of the shortest term’, under which protection for foreign (e.g., United States) works is ‘not [to] exceed the term fixed in the country of origin of the work […] Consequently, if Congress had not altered the United States copyright term for subsisting works, American authors of such works would receive less protection in Europe than their European competitors.[16]

Eric Eldred and Lawrence Lessig also had their clear take on the matter: “The government has yet to demonstrate any meaningful sense in which CTEA ‘harmonized’ copyright terms. Nor could it, for CTEA does no such a thing.[17]

So, what is it exactly that the European Union Directive 93/98/EEC prescribe?

Article 1, which lays down the duration of authors’ rights, commands a protection of life-plus-70-years for literary and artistic works by individual authors, regardless of when the works were lawfully made available to the public. In the case of joint authorship this term is to be calculated from the death of the last surviving author. In the case of pseudonymous or anonymous works, instead, the protection is of 70 years from the day the work is lawfully made available to the public, unless the identity of the author is clearly recognizable or revealed. In such an event the protection is to be that of life-plus-70-years. As far as collective works or when a legal person is designated as the copyright holder for a particular work, which can be considered equivalent to the term “works made for hire” appearing in the CTEA, the protection is to last 70 years from publication, or life-plus-70-years in the event that the individual author’s identity is made public as such in the versions of the work made available to the public[18].

A Comparison

So far I have outlined the main provisions of both the Copyright Term Extension Act and the European Union Directive 93/98/EEC. How, then, do they differ?

It is immediately clear how the directive passed by the European Union is much simpler in its structure than the CTEA. Life-plus-70-years is the term granted to all of the works by individual authors and 70 years from publication is that established for all works made for hire. There is no differentiation depending on the year of publication, which shapes instead the whole of the American legislation.

This fact, what might appear at a glance as just a superficial dissimilarity, does, instead, influence the different connotations and implications of the two directives. For instance, the novel Carrie by Stephen King, published in 1974, will, under the CTEA, pass into the public domain in 2069. Under the European Union Directive instead, it would be protected, like any other, for 70 years after the death of the author. Considering that Stephen King is still alive and well, the protection would expire much later in Europe than it will in the United States.

Professor Dennis Karjala, an expert in copyright issues from the Law School at Arizona State University, compiled in May 2002 a chart that compared the protections for copyrighted works offered in the United States and the European Union after the CTEA was passed. The chart shows both divergence and harmonization[19].

Essentially, when Congress passed the CTEA, it only ensured that U.S. copyright protections matched their European counterparts in the case of individual authors of works published after 1978. Today, indeed, in both the United States and in the member-countries of the European Union these works are shielded for 70 years after the death of the author. In all of the other cases the two legislations still differ completely. In some, as in the case of works made for hire, the American law protects copyrights much longer than the European Union (95 years from publication in the U.S. rather than just 70 in the E.U.). In other, as with natural persons whose works were published before 1950, it’s the E.U. that guarantees the longest protection with a term of life-plus-70-years instead of just 95 years from publication.

Conclusion

The public domain is an invaluable resource for all society; regular people, artists, thinkers, all of us benefit from its vast and diverse state. It is the place where ideas are shared freely, where inspiration nurtures, and new precious creations are conceived.

Media companies seem to have always been aware of the possibilities inscribed in the public domain. Disney works are, for instance, one of the best examples of how old works can turn into something new and exciting. “The Hunchback of Notre Dame” was inspired by a work by Victor Hugo. “Cinderella” and “Snow White” came out of tales by the Brother Grimm.

Nonetheless, these same corporations that have build their fame and success in part on works in the public domain have lobbied heavily in favour of the Sonny Bono Copyright Extension Act. Media companies and their Political Action Committees have been extremely active contributing to members of Congress during the legislative year 1997-1998, when the CTEA was passed. According to the non-profit Center for Responsive Politics, in Washington, more than $6.5 million was donated that year. And Disney was among the most enthusiastic contributors[20]. The Boston Globe Magazine reported that “eight of the Senate bill’s 12 sponsors received contributions from Disney, as did 10 of the original House bill’s 13 sponsors[21].”

Lynda Greenhouse wrote in the New York Times of February 19, 2002: “The 1998 extension was the result of intense lobbying by a group of powerful corporate copyright holders, most visibly the Walt Disney Company, which faced the imminent expiration of copyrights on Mickey Mouse and its other famous cartoon characters[22].” And indeed they were about to lose millions of dollars to the public domain; “Mickey Mouse, copyrighted in 1928 as Steamboat Willie, would have entered the public domain in 2004; Mickey – through Disney’s consumer products division and theme parks – helped bring in $8 billion in 1998, according to the New York investment bank Salomon Smith Barney[23].”

Justice Breyer wrote in his dissenting opinion: “One might conservatively estimate that 20 extra years of copyright protection will mean the transfer of several billion extra royalty dollars to holders of existing copyrights[24].” And he easily foresaw where this enormous amount of money would come from: “The extra royalty payments will not come from thin air. Rather, they ultimately come from those who wish to read or see or hear those classic books or films or recordings that have survived.” [25]

It is important not to overlook this aspect of the CTEA. Special interests pushed Congress to pass the legislation and of course they did not want to see it overturned by the Supreme Court. The government, in presenting the case as it did, must have kept this in mind.

The position that the CTEA did not violate the limitations imposed on Congress by the Constitution in extending copyright protection was a tough one to defend. Common sense and logic suggest that if a limited term is extended over and over, a bit by bit, continuously, that term is not limited anymore. What if Congress passes new legislation in 15 years extending existing copyright for another 20 years? Will these copyright protections ever expire?

The issue of free speech was touchy in the case. Even though at a first it might seem reasonable that the 1st Amendment only protects the right to one’s own speech and not the use of someone else’s, we must still remember and balance the importance a vast public domain has in creating and encouraging speech. And, as I have discussed above, those same corporations that are now so eager to protect their copyrights have also been enthusiastic users of public domain works.

The choice the government made to focus discussion about the Sonny Bono Copyright Extension Act on the assumption that the Act would harmonize American laws with their European counterparts, promoting free trade and protecting the rights of American authors seems to add a patina of honorability that would be hard for most people to question. Whereas the first two issues spurred public debate and disagreement, the theme of harmonization appears to have been much safer.

However, Justice Breyer acknowledged in his dissenting opinion that CTEA would not bring American and European copyright protections any closer: “despite appearances, the statute does not create a uniform American-European term with respect to the lion’s share of the economically significant works that it affects—all works made “for hire” and all existing works created prior to 1978.” [26] But this fact never really made it out of the Court and into public discourse. The discussion that preceded and followed the decision was centred on the first two issues (whether copyright protection could still be considered as being for a limited term and the question of free speech) and everybody just seemed to assume that harmonization had indeed been achieved.

Here are just a few examples from the many were harmonization was assumed: Daren Fonda wrote in the Boston Globe Magazine: “Perhaps the lobbyists’ most effective argument was that American copyright law should be made to conform with that of the European Union, where most American culture is consumed.” [27] And Amy Harmon in the New York Times: “The 1998 law also aligns the United States’ copyright terms with those of European countries.” [28] Brian Kelcey went along on the Canadian newspaper The Globe and Mail: “Using its Constitutional power to ‘promote the progress of Science and the useful art’ with copyrights ‘of limited times,’ Congress matched Europe’s standard with the CTEA.” [29]

However, as I have hopefully demonstrated with this paper, this is simply not accurate. Harmonization has not been achieved, apart from the case of the subset of works published after 1978. So maybe Professor Karjala is right when he says that the theme of harmonization was just a smokescreen[30]. It was an ingenuous device giving the Sonny Bono Copyright Extension Act an appearance of inevitability. After all, the argument suggests, it was the European Union that put Congress in the position of needing the latest copyright extension. The government and the Justices had to go along with protecting American interests around the world. What harmonization really was, though, is “simply a high sounding word behind which the special interests supporting the U.S. extension bills are hiding to keep the royalty streams flowing for another 20 years, during which time they will keep working toward their ultimate dream of perpetual copyright.” [31]


[1] Harmon, A. “Court to Review Copyright Law” in The New York Times, October 7, 2002

[2] Fonda, D. “Copyright crusader” in Boston Globe Magazine August 29, 1999.

[3] Lessig, L. “Copyright Law and Roasted Pig” on www.redherring.com, October 22nd, 2002.

[4] Ibid.

[5] “A Mickey Mouse Copyright Law” from wired.com ( http://www.wired.com/news/politics/0,1283,17327,00.html ).

[6] Vaidhyanathan, S. “After the copyright smackdown what’s next?” in www.salon.com , January 17th, 2003.

[7] Harmon, A. “Court to Review Copyright Law” in The New York Times, October 7, 2002

[8] Ibid.

[9] The Opinion of the Court, 537 U. S. ____ (2003), p.6

[10] The Opinion of the Court, 537 U. S. ____ (2003), p. 30-31

[11] Brief for Petitioners, no 01-618, p. 11

[12] Ibid. p. 8

[13] Ibid.

[14] The Opinion of the Court, 537 U. S. ____ (2003), p.7

[15] Brief for the Respondent, no 01-618, p. 37

[16] Brief for the Respondent, no 01-618, p. 37

[17] Brief for the Petitioner, no 01-618, p. 42-43

[18] European Union Directive 93/98/EEC

[19] Karjala, D. Harmonization Chart between the U.S. and E.U. after the Adoption of the Sonny Bono Copyright Term Extension Act, 2002 at http://www.law.asu.edu/HomePages/Karjala/OpposingCopyrightExtension/legmats/HarmonizationChartDSK.html

[20] Fonda, D. “Copyright Crusader” in Boston Globe Magazine, August 29, 1999

[21] Ibid.

[22] Greenhouse, L. “Supreme Court to Intervene in Internet Copyright Dispute” in The New York Times, February 19th 2002.

[23] Fonda, D. “Copyright Crusader” in Boston Globe Magazine, August 29, 1999

[24] Breyer, J. Dissenting, 537 U. S. ____ (2003), p.7

[25] Ibid.

[26] Breyer, J. Dissenting, 537 U. S. ____ (2003), p.16

[27] Fonda, D. “Copyright Crusader” in Boston Globe Magazine, August 29, 1999

[28] Harmon, A. “Court to Review Copyright Law” in The New York Times, October 7, 2002

[29] Kelcey, B. “Case Put Copyright in Public Spotlight” in The Globe and the Mail, October 10, 2002

[30] Statement of Copyright and Intellectual Property Law Professors in Opposition to H.R. 604, H.R. 2589, and S.505 January 28, 1998

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