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Enforcement and Compliancy

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U.S. case Golan v. Holder – amicus curiae brief

The case Golan v. Holder has been decided by the U.S. Supreme Court on 18 January 2012.  Further information on the Supreme Court's decision is available here.

An electronic copy of the amicus curiae brief, which was filed in early August 2011 with the U.S. Court, is available here.

IFRRO, together with IFRRO members IPA, STM and CCC, was one of the amici. The U.S. Court has scheduled argument for this case for 5 October 2011.

Copyright law in the U.S. before 1978 was notable for all the conditions required to obtain copyright. Part of the impetus for the 1976 Act was to change the general approach of U.S. copyright so that it would be compatible with Berne and permit the U.S. finally to become a member of Berne. The U.S. joined Berne effective March 15, 1989, but did nothing to deal with compliance with Berne, Art. 18.  It is generally understood that part of the significance of the TRIPs agreement as part of the Uruguay Round of the GATT (and the creation of the WTO) was that it not only required members of WTO to comply with Berne, but that the enforcement mechanism it provided finally pressured the U.S. to comply with its obligations under Berne, Art. 18.   With the threat of trade sanctions confronting it, the U.S. passed its implementing legislation in the form of the Uruguay Round Agreement Act (URAA). 

The URAA restored to copyright foreign (not domestic) works that had fallen into the public domain in the U.S. because of their failures to comply with the formalities of U.S. law, that is, foreign works published before 1978 that failed to comply with notice, registration, renewal and manufacturing obligations, and foreign works published before 1989 that failed to the weaker notice requirements required until March 15, 1989, the effective date of U.S. adherence to Berne.  The legislation did not extend the terms of copyright of those works; it simply restored them to copyright for whatever term they would have had under U.S. law. The URAA also made provisions for "Reliance Parties," those who had used the works in the U.S. during the period when they were in the public domain in the U.S.  

The Golan case was filed by reliance parties, who have used restored works and created businesses based on them. These plaintiffs take the position that the URAA, which puts back in copyright a work that went into public domain according to U.S. law, is an unconstitutional application of U.S. copyright.  The case, which began many years ago, originally also included a constitutional attack on the legislation that extended the term of copyright by 20 years, but that part of the case was resolved by the Supreme Court's earlier Eldred decision.  This part of the case claims that restoration of copyright under the URAA -- taking a work that has entered the public domain under the terms of the applicable copyright law and putting it back into copyright  -- violates the "copyright clause" of the U.S. Constitution, which says that copyright (and patent) monopolies may be provided for "limited times."  There is also a claim that the restoration violates the First Amendment of the Constitution protecting free speech.   The Court of Appeals for the 10th Circuit rejected Golan's position, holding that the URAA did not violate the copyright clause of the Copyright Act.

Copyright owners of foreign treaty partners are positioned to make the point that the U.S. failed to comply with Berne in 1989 until forced to do so by the WTO sanctions, and that the failure of the U.S. to comply with its treaty obligations under Art. 18 would violate the copyright rights of the U.S.'s foreign treaty partners.  In addition, the petitioners intimate that other countries have treated retroactivity in ways that are vastly more favorable to reliance parties without providing any facts to support their broad assertions.  

The argument of the amici brief has four sections:

(1)        a history of U.S./international copyright relations aimed at showing that for about the first 120  years, there essentially were no such relations and that the U.S. was more pirate than observer of copyrights, followed by the 1909 Act and the revisions leading to the 1976 Act, focusing on those sections relevant to the rest of the argument and the increasing trend toward becoming part of Berne;

(2)        a section relating to the general dissatisfaction of the Berne treaty partners with the U.S.'s failure to do anything about implementing Berne Art. 18 until TRIPS and the threat of trade sanctions;  

(3)        that U.S. Congress knew that, when circumstances warranted, it could restore copyrights, rebutting the petitioners' argument that U.S. Congress does not have such powers;

(4)        that U.S. Congress appropriately balanced First Amendment interests in implementing the restoration provision, addressing the petitioners' arguments about why the way other countries implemented Art. 18 would not have been compatible with First Amendment  of the U.S. Constitution. 

The U.S. government's brief is available here.


Enforcement and Compliancy