Plaintiffs, consisting of performers and business owners who use public domain works in their professions, filed an amended complaint in April 2004 seeking declaratory and injunctive relief from the Sonny Bono Copyright Term Extension Act of 1998 (CTEA) and § 514 of the Uruguay Round Agreement Act (URAA) for unconstitutionally removing literary and artistic works from the public domain. Section 514 of the URAA restored full copyright protection to all foreign works which had been exploited in the U.S. without authorization in the past because of failure to comply with U.S. formalities. Copyrights in eligible foreign works are restored automatically from the “date of restoration.” Since restoration is automatic, the owner of the restored copyright does not have to register this work. Because the URAA re-copyrighted many public domain movies, shows, and musical pieces, sale and performance of these art works became illegal.On March 15, 2004, the court denied the government’s motion to dismiss. While striking one claim pertaining to the CTEA, the court allowed the remaining three out of four counts of the complaint to proceed.
Count 1 alleged that § 514 of the URAA violates the Copyright and Patent Clause, because “Congress may not authorize the issuance of patens whose effects are to remove existent knowledge from the public domain, or to restrict free access to materials already available.” Graham v. John Deere Co., 383 U.S. 1, 6 (1966). In response, the government argued that Congress has the power to restore protection to public domain works pursuant to McClurg v. Kingland, 42 U.S. 202 (1843). However, the court found that McClurg could be distinguished from the present case because it only upheld the protection of an existing patent, rather than give a patent to an invention that was already in the public domain. Plaintiffs also asserted that there is no clear history for the restoration of copyrights in the public domain to support government’s allegation that § 514 of the URAA is a valid exercise of Congress’s power under the Copyright and Patent Clause.
On Count 2, plaintiffs contend that § 514 of the URAA restricts plaintiff’s right to free speech under the First Amendment because while they once could publish and perform works in the public domain, they cannot do so now for works that have been re-copyrighted. Plaintiffs asserted that § 514 of the URAA alters the traditional contours of copyright protection, modifying the basic principle that works in the public domain are not copyrightable and altering the first sales doctrine. The court found that the plaintiffs adequately distinguished their claim from the free speech holding in Eldred.
On Count 3, plaintiffs alleged that § 514 of the URAA results in retroactive legislation that is fundamentally unfair: retroactive restoration of copyrights unsettles their reasonable expectations about the free availability of public domain works and, therefore, deprives them of their property without due process of law required under the Fifth Amendment. The government countered that §514 of the URAA is not retroactive, but rather, governs future protection of previously unprotected works. The government further contended that even if § 514 of the URAA is retroactive, it is constitutional in that it passes the rational basis test.
The court refused to dismiss Counts 1, 2, and 3, holding each to state a cognizable claim.
The court dismissed Count 4, which alleged that as a result of the CTEA, the average copyright term is now 95 years—a term that is “staggeringly long”—causing harm to the plaintiffs as well as the public who relied on the previous copyright term. Plaintiffs distinguished the current case from Eldred in that the Petitioners in the Eldred v. Ashcroft did not directly challenge the time-span provided for in the CTEA. However, the court held that the CTEA claim is foreclosed by Eldred, where the extension of the copyright term in the CTEA was found to be constitutional, enduring for “limited times.”
The lawsuit will proceed with Counts 1, 2, and 3 challenging § 514 of the URAA.