Edward Samuels·

 

I. The Emergence of a Theory of the Public Domain

 

            A. The Public Domain, Circa 1993

 

            In a 1993 article published in the Journal of the Copyright Society, I posed the following questions:

 

Is the public domain simply whatever is left over after various tests of legal protection have been applied? Is it the mere "background," the "negative" of whatever may be protected? Or is there something about the public domain, some compelling public policy or legal principle, that gives it a life of its own, that would tend to attribute positive aspects to it, that would make it something of the form instead of just the background?[1]

 

I answered the questions as follows:

 

            After reviewing the various proposed arguments supporting a general theory of the public domain . . . it would appear that there simply is no such general theory. Instead, there are several discrete contexts in which arguments about the public domain are encountered, each context raising different considerations that may have little or nothing to do with each other, and that cumulatively constitute what remains after one examines all possible sources of legal protection for works of authorship. What is gained by reifying the negative, and imagining a "theory" of the public domain? If one wants to encourage a presumption against new forms or areas of protection, then one can do so without having to invoke a magical "public domain." There are dozens of battlegrounds between those who want to expand intellectual property protection and those who want to limit it or narrow it in any given context. The arguments in each context should be kept separate, since they raise different policy issues.

 

            Nevertheless, the individual issues sometimes tend to be elusive, and one's attitude toward them tends to be flavored as often as not by one's general attitude toward copyright law. If those who find themselves continually on the side arguing for a limitation of protection need a rallying cry, perhaps it can be "the public domain." The invocation may seem to add a moral overtone to the argument, to counterbalance the morally charged principles invoked time and again by the protectionists. In the final analysis, however, [paraphrasing Ralph Brown] "such vague rhetoric does little more than adorn the stage on which actual choices must be played out."[2]

 

Prof. James Boyle has responded to the questions I asked in my earlier article, as follows:

 

What is gained by reifying the negative? Professor Samuels' question is a good one. He supplies part of the answer with his thought that perhaps the language of the public domain will be used to counter the language of sacred property. This is indeed an important point; language matters, and not just as "rhetoric."

. . .

Of equal importance is the power of a concept like the environment both to clarify and to reshape perceptions of self interest.[3]

 

Prof. Boyle goes on to compare the development of the "public domain" movement to the development of the environmental law movement.

 

Notwithstanding the power of the word, or the phrase, that Prof. Boyle describes, I believe that what I said in 1993 is essentially still correct. The major difference is that the literature invoking, creating, celebrating, or applying the "public domain" ideology has expanded tremendously in the intervening years. Not since economic theory invaded copyright (and just about every other area of law) have we seen such a joining of voices to create a new body of scholarship, building one article and book upon another—without having much actual influence, however, upon the development of the law as created by legislators and judges. That last point may be about to change. In their attack upon the copyright term extension act, the petitioners in Eldred v. Ashcroft[4] hope to bring the public domain rhetoric and theory to the fore, and make it, from now on, a dominant force in Congress's deliberations and judges' reviews of copyright generally.

 

In my article, I identified six different categories of the public domain. In each category, the trend over the past 200 years has been an expansion of copyright, and a concomitant diminution of what might be considered the public domain. In the first category, the duration of copyright has been extended from a maximum of 28 years to, under the Copyright Term Extension Act of 1998, life of the author plus 70 years. The second category, public domain through forfeiture of copyright, has been all but eliminated by the abandonment of copyright formalities under the Berne Implementation Act of 1988. The third category, works categorically excluded from copyright, has also been diminishing over the years as the scope of copyright has expanded to cover a widening category of works. I argued that the other three categories, although aligned by some writers with public domain theory, should particularly be decided on other grounds: public domain aspects of otherwise copyrightable works, public domain as a substitute for preemption analysis, and public domain as a substitute for measuring the retroactivity of copyright enactments. In all six areas, the public domain advocates were making arguments against the tide; they lamented the expansions of copyright, but could hardly claim that the public domain analysis had in fact already worked its way into dominant copyright theory.

 

B. The Technological Battleground—Everybody's Losing!

 

In the intervening years, the public domain agenda seems to have been spurred primarily by technological concerns. What is fascinating to me is that, in the technological realm, everybody thinks that they've lost the copyright battle. The copyright owners look on as others digitize and disseminate their works on the Internet. In the words of Apple's advertisements for its new iMac, the mantra is "Rip. Mix. Burn." This sounds awfully like "Copy. Make a derivative work. Distribute." which are supposed to be the exclusive rights of copyright under section 106. The copyright owners are horrified at the "hemorrhaging" of their control over their works.

 

Some of the early technological pronouncements had a decidedly flippant tone, as if no one but the digerati could possibly understand what was going on. As declared in Wired Magazine in March 1994, and repeated by such advocates as Mitch Kapor and John Perry Barlow in presentations across the country,

 

Notions of property, value, ownership, and the nature of wealth itself are changing more fundamentally than at any time since the Sumerians first poked cuneiform into wet clay and called it stored grain. Only a very few people are aware of the enormity of this shift, and fewer of them are lawyers or public officials.

 

This was the same time as Internet gurus were proclaiming that the Internet world was not subject to other basic concepts, like principles of investment, accounting or gravity.

 

            However, the established interests did in fact "get it." Various copyright industries were successful in convincing Congress to pass copyright laws directed at the new digitization of copyrighted works. The Record Rental Amendment of 1984 created an exception to the first sale doctrine in the case of rented audio works, largely because the emergence of DVDs made the copying of rented music much more of a threat to the existing markets for distribution of music.[5] The Computer Rental Software Amendment of 1990 created a similar exception for the rental of computer software.[6] Congress passed the Audio Home Recording Act of 1992[7] to handle the modern consequences of home recording using the new digital recording devices. Congress passed the Digital Performance Rights in Sound Recordings Act of 1995[8] to handle the distribution of music over the Internet and other digital distribution systems. And then, in 1998, Congress adopted the Digital Millennium Copyright Act[9] to allow copyright owners to better enforce their rights through technological protection measures and copyright management information systems.

 

            The landscape has so changed that the public domain advocates are beginning to announce that they, not the copyright industries, are losing the copyright battle. The primary spokesperson, Lawrence Lessig, in his most recent manifesto,[10] portrays a grim future—actually present—in which the digital technologies aren't a liberating force for the masses, but rather a tool of the copyright industries in absolutely controlling access to cultural works.[11] It all comes as something of a surprise to the copyright industries that they have won the war.

 

            Given the recent technological battleground, it is interesting, and perhaps surprising, that the major case to present the public domain agenda before the Supreme Court should have nothing to do with technology. Instead, it ostensibly focuses upon just about the oldest question that has been at the heart of the copyright debate from the beginning—how long should the term of copyright be? As I'll discuss later, there is probably a tendency to try to view the public domain agenda broadly, and decide even the age-old questions in light of the new issues raised by technology. As I'll suggest, it is better for everyone if we focus upon the issues one at a time, and if we don't allow the broader agenda to cloud decisions that must be made in the discrete contexts.

 

C. The Relationship Between Public Domain Analysis and Other Bases of Copyright

 

In my 1993 article, I briefly explored the relationship between the discussions of the public domain and basic theories about the role and basis for copyright, as follows:

 

The writings about the importance of the public domain seem to some extent to parallel other arguments that have been around since copyright was first recognized in English and American law; namely, arguments about the theoretical source or justification for copyright generally. Many protectionists have tried to justify copyright law as based upon (1) natural rights, (2) moral rights or (3) property rights. Critics have tried to limit this approach by (1) gleefully citing the embarrassing early history of copyright law in England . . . ;(2) emphasizing the "social utility" theory of copyright, by which the only or main justification for allowing what is basically a "monopoly" is the ultimate good that is achieved for society by an increase in the number, maybe even the quality, of works destined for the public domain; and (3) in recent years, subjecting copyright protection to a strict economic analysis that would limit any benefit to the copyright owner that was not clearly justified by a concomitant increase in the public good (read "public domain"). These arguments might be bolstered by (4) an explicit or implicit reference to principles, even constitutional standards, from outside the copyright clause, particularly the first amendment's guarantee of free speech.[12]

 

The arguments about the public domain, and the theoretical underpinnings of copyright, have taken on almost a religious fervor in recent years. Otherwise reasonable people arguing different sides of the issue tend to become as emotionally overwrought as any abortion rights (or anti-abortion rights) advocate. In several recent conferences and private discussions about copyright theory, about all one has to do is mention the words "natural rights" or "property rights," and public domain advocates are practically jumping from their seats to "set the record straight." They argue passionately that property rights talk is a development of the latter part of the twentieth century, that copyright wasn't brought under the rubric of "intellectual property" until the last fifty years when the giant corporations somehow manipulated the world into thinking that their exclusive rights of patent, copyright, trademark and other rights were entitled to be protected as "property."[13]

 

            But the natural rights and property rights rhetoric is firmly rooted in copyright history. It is recognized as the basis for copyright protection in civil law and other countries outside of England and the United States.[14] Although it is commonly argued that the English and United States origins were based upon non-property, non-natural rights principles, the preambles to several of the state copyright statutes under the Articles of Confederation incorporated property and natural rights rhetoric with the "social utility" theory. For example, the Connecticut statute of 1783, which served as the model for the Georgia and New York statutes, began:

 

            Whereas it is perfectly agreeable to the principles of natural equity and justice, that every author should be secured in receiving the profits that may arise from the sale of his works, and such security may encourage men of learning and genius to publish their writings; which may do honor and service to mankind . . .[15]

 

            The Massachusetts statute of 1783, which served as a model for the New Hampshire and Rhode Island statutes, provided:

 

Whereas the improvement of knowledge, the progress of civilization, the public weal of the community, and the advancement of human happiness, greatly depend on the efforts of learned and ingenious persons in the various arts and sciences: As the principal encouragement such persons can have to make great and beneficial exertions of this nature, must exist in the legal security of the fruits of their study and industry to themselves; and as such security is one of the natural rights of all men, there being no property more peculiarly a man's own than that which is produced by the labour of his mind . . .[16]        

 

The North Carolina statute of 1785 provided:

 

Whereas nothing is more strictly a man's own than the fruit of his study, and it is proper that men should be encouraged to pursue useful knowledge by the hope of reward; and as the security of literary property must greatly tend to encourage genius, to promote useful discoveries, and to the general extension of arts and commerce . . .[17]

 

In addition, many scholars and observers over the years have found natural and property rights bases in United States copyright legislation. For example, the Report of the Register of Copyrights, in the early stages of copyright revision, identified strands of property right and personal right, as well as monopoly limitation theories.[18]

 

Many of the expansions and other developments of copyright simply can't be explained by a strict "public domain" theory of copyright. As concluded by Paul Goldstein, “The 1976 Copyright Act’s special treatment of involuntary transfers of copyright, for example, and its provisions for termination of transfers can be better explained in terms of natural rights theory than in terms of a utilitarian balance of social benefit.”[19] Contrary to the suggestions of some public domain advocates, Goldstein concludes: "As a general rule, copyright law in the United States entitles copyright owners to capture the full value that consumers attach to their works and not just the minimum sum that they would require to support their investment."[20]

 

Here's my conclusion as expressed in the 1993 article:

 

American copyright law has suffered for two hundred years from the absence of a clearly articulated theoretical basis. Some might see this as some sort of oversight or conspiracy. I don't think so. I think that Congress and the courts have thereby maintained flexibility in the development of the law.

 

. . . [T]he different theories represent different ways of looking at copyright law that can be used to explain different aspects of it, but none of which is adequate to explain the whole, and none of which trumps the others.

 

I even suggested that, based upon the clear expansions of copyright over the years, and the "convergence" of copyright principles through the adoption of international standards, "It should therefore be possible to ascribe to American copyright law the broad theoretical basis that until recent years may have been premature."[21]

 

            In any event, because there is no consensus that any one copyright principle trumps any other, and because the whole of copyright is ultimately based upon a balancing of interests, the principles simply don't help in resolving discrete copyright issues. If it were within my power, I would call a truce. I wouldn't invoke "natural rights" and "property rights" justifications for copyright, if public domain advocates would concede that there is no "public domain" theory that trumps other rights. We could then proceed to deal with the copyright issues as they arise.

 

            D. "Retroactivity"

 

            In my earlier article, I argued that the public domain rhetoric was sometimes used, inappropriately, as a substitute for measuring the retroactivity of a copyright statute. After analyzing the issue, I concluded as follows:

 

[I]t is simply not clear whether Congress is prohibited from reviving works that previously entered the public domain, and there are at least some convincing suggestions that it has power to revive works not previously protected. In any event, issues of retroactivity should not be determined by an ill-defined concept of the "public domain," but can be analyzed by reference to a richer literature dealing with retroactivity of legislation.[22]

 

Part of that "richer literature" suggests that

 

Even for statutes that affect criminal behavior or contract rights, most securely protected against retroactive legislation by the due process, ex post facto, and impairment of contracts clauses of the Constitution, it is hard to make absolute statements.[23]

 

As stated by one expert in statutory construction,

 

It is misleading to use the terms "retrospective" and "retroactive," as has sometimes been done, to mean that the act is unconstitutional. The question of validity rests on further subtle judgments concerning the fairness of applying the new statute. Even where a constitution explicitly and unqualifiedly prohibits the enactment of retrospective statutes, the courts usually strike down only those statutes whose retroactivity results in measurable unfairness.[24]

 

Since I made my observations, Congress has indeed found a context in which it has restored copyrights in certain works. Congress passed a new section 104A, which provided for the restoration of foreign copyrights that had gone into the public domain, primarily through noncompliance with U.S. copyright formalities.[25] That amendment was passed pursuant to international obligations—first, in 1993, in the North American Free Trade Agreement, and then, in 1994, broadened as a result of the World Trade Organization agreement. Public domain advocates have brought a court challenge to that act in the case of  Golan v. Ashcroft.[26]

 

Section 104A was  designed partly to be fair to foreign authors, whose works went into the public domain in this country through a failure to comply with formalities that no other country required. It was also motivated by a desire to allow U.S. copyright owners to get their works "restored" in other countries that for one reason or another[27] hadn't granted copyright protection.

 

It is not my purpose to defend the Golan case or section 104A here. The Eldred case that is the subject of the rest of this article does not actually involve the retroactive application of copyright law, since the 1998 Copyright Term Extension Act that is challenged in that case doesn't apply to any works that had already fallen into the public domain. And, as I urge here, we shouldn't be arguing the Eldred case by jockeying for position in other contexts. But I do believe that my cautious approach, not necessarily setting off the constitutional alarm every time a magic word, like "retroactive,"[28] is used, is as important today as it was when I made the suggestion a decade ago. Let's save the arguments about Golan for another day.

 

II. Eldred v. Reno/Ashcroft

 

            A. The Undesirable Extremes

 

                        1. The D.C. Circuit Opinion

 

            In 1998, Congress passed the Copyright Term Extension Act (hereinafter "the CTEA"). That act extended the term of protection for all works created after January 1, 1978 (the effective date of the Copyright Act of 1976) by 20 years, from life of the author plus 50 years to life of the author plus 70 years. It extended the term of works created prior to 1978 from 75 years from publication to 95 years from publication. Eric Eldred and various other plaintiffs, represented by Lawrence Lessig, brought a constitutional challenge to the CTEA, suing Janet Reno, as Attorney General, in the District Court of the District of Columbia. That court upheld the constitutionality of the CTEA. In 2001, the District of Columbia Circuit Court of Appeals affirmed the lower court, with a dissent by Judge Sentelle. The Circuit Court denied a petition for rehearing and for rehearing en banc. The Supreme Court granted a writ of certiorari in February 2002.

 

            The approach of the D.C. Circuit Court was to cut off discussion of the constitutional issues by the adoption of what appeared to be an absolute rule that copyright laws were immune from constitutional attack. The court concluded that the preamble to the Constitution's copyright clause (granting Congress the power "To promote the Progress of Science and useful Arts," by securing exclusive rights "for limited Times") "is not a substantive limit on Congress' legislative power." The court went on to conclude that "copyrights are categorically immune from challenges under the First Amendment" because of the idea/expression dichotomy, the fair use doctrine, and other limiting principles that already factor in the constitutional considerations.

 

            The concern of public domain scholars is not only with copyright term extension, but with other recent expansions of copyright. For example, as discussed above, the public domain advocates have brought a lawsuit challenging the restoration of copyright under section 104A of the copyright act. But the 800-pound gorilla looming on the horizon is the Digital Millennium Copyright Act of 1998 ("the DMCA"). That act provided for the legal protection of technological protection systems and copyright management information systems. In Universal City Studios, Inc. v. Reimerdes,[29] the district court for the Southern District of New York, and then, under the name Universal City Studios, Inc. v. Corley,[30] the Second Circuit Court of Appeals upheld the statute against constitutional challenge. Despite the ruling of the Second Circuit Court of Appeals, some scholars still maintain that the statute is constitutionally defective because, as the courts have interpreted it, the act does not apply the idea/expression dichotomy, the fair use doctrine, or other limitations of copyright to the DMCA protections. Constitutional issues might also be relevant to other acts that Congress may consider, such as in the area of database protection.

 

            The public domain scholars are thus particularly alarmed at the categorical exclusion test adopted by the D.C. Circuit Court in Eldred. Quite frankly, the petitioners should also have been alarmed, since the broadness of the ruling may have been what piqued the interest of the Supreme Court in granting certiorari. The petitioners were able to frame the issue as whether the D.C. Circuit erred in holding that copyrights are "categorically immune from challenge under the First Amendment." The respondent now has to make the tactical decision: to what extent should he box himself into the corner of defending the categorical test announced by the Circuit Court; or, at least for the sake of argument, concede a potential First Amendment claim, and jump right into the merits of the case? Presumably, respondent will address the First Amendment arguments on the merits.

 

            I am sure that, had the D.C. Circuit Court's analysis been the final statement on the matter, future courts, when faced with challenges to other Congressional actions, would have been able to limit the Eldred holding to the facts of the case. No matter what the court said about categorical exclusions, different situations raise different concerns, and those concerns should be separately addressed in the context of each case. Since the case will now be decided by the Supreme Court, that Court should weigh the copyright and First Amendment policies in more detail, instead of relying upon a categorical approach.

 

                        2. Petitioners' Novel Theory

 

            Petitioners' argument is based upon the premise that the CTEA violates the "limited Times" provision of the copyright clause. Presumably recognizing that the life of the author plus 70 years, or 95 years, is obviously a "limited time," they seek to link the limited times provision to a novel interpretation of the copyright clause. They essentially argue that the phrase "to promote the Progress of Science and useful Arts" is synonymous with an increase in the public domain. They argue that Congress may not decrease the public domain (an issue not before the Court in this case, since the CTEA did not remove a single work from the public domain). Extending their novel theory, they argue that once Congress, pursuant to its constitutional power, has set a term of copyright, it is prohibited from extending that term, even if the term has not yet expired.[31]

 

            The gist of petitioners' reasoning is that Congress may only grant rights when to do so will result in the creation of new works. Once a work has been created, under whatever inducement existed at the time of its creation, Congress may not grant any further rights to the copyright owners, since to do so would be to grant rights without the "quid pro quo" called for under the Constitution—the creation of new works.

 

            If the D.C. Circuit opinion was objectionable because it was overly broad, the petitioners' theory is even more objectionable. If the Court were to adopt the petitioners' reasoning, not only would it decide the instant case, but it would have implications in dozens of other settings. I will respond to the petitioners' argument in the next section. But let's take a look now at the "parade of horribles" (or, from petitioners' view, perhaps a "parade of desirables") that might flow from an adoption of their novel theory.

 

            If the 1998 term extension is unconstitutional, then presumably the 1994 addition of section 104A, restoring copyright in foreign works that had already gone into the public domain, would also be unconstitutional. If that is the case, then the United States would be in violation of our treaty obligations under NAFTA and WTO, and there would be serious international repercussions.

 

            If Congress may not extend the term of existing copyrights, as petitioners argue, then the 1976 extension of copyright to life of the author plus 50 years was also unconstitutional. If the 1976 extension is unconstitutional, then we are in violation of the Berne Treaty, with serious international repercussions.

 

            Works used to go into the public domain whenever they failed to comply with the copyright formalities of notice, registration, and renewal. Does that mean that it was unconstitutional in 1988 to dispense with copyright formalities?[32] Was it unconstitutional to "rescue" works from going into the public domain when Congress, in 1992, provided for automatic renewal of works published after 1964?[33] Was it unconstitutional for Congress to expand the scope of rights in copyrighted works, as it has done many times in the 212 year history of copyright? Was it unconstitutional when Congress passed the DMCA, granting new rights in technological protections systems and copyright management systems, even for works that already existed?

 

            Petitioners might be delighted at any of the above suggestions. But the promotion of science and useful arts is allied with, not opposed to, the interests of copyright owners. As stated by James Madison in The Federalist No. 43, "the public good fully coincides . . . with the claims of individuals." As explained by Justice O'Connor in the Harper & Row case, "It should not be forgotten that the Framers intended copyright itself to be the engine of free expression. By establishing a marketable right to the use of one's expression, copyright supplies the economic incentive to create and disseminate ideas . . ."[34] Would it therefore be unconstitutional for Congress to decrease the rights of copyright, affecting the rights in existing works, as it did, for example, in the so-called "Fairness in Music Licensing Act" of 1998?[35]

 

            The problem with petitioners' argument is that it would not only decide the instant case, but it would also frame the issue in practically every other area of copyright. Petitioners argue that the categorical approach of the D.C. Circuit is unacceptable because the court identified no "stopping point" by which to measure what was constitutional.[36] The petitioners' own argument is unacceptable because it, too, has no "stopping point." It would bar Congress from making any adjustments in the terms of existing copyrights.

 

            The Supreme Court should therefore not endorse either the categorical approach of the D.C. Circuit, nor the novel theory of the petitioners. If it affirms the D.C. Circuit, as I believe it should, then it should make clear that the decision is based upon a full consideration of the First Amendment standards, and that courts are not foreclosed in other contexts from considering limitations that may be raised by the preamble to the copyright clause and by the First Amendment. If it should choose to reverse the D.C. Circuit, and either remand the case or make a finding on the merits, then it should make clear that it is deciding only the issue of Congress's power to set the duration of copyright. It should not adopt any particular "theory" of copyright that will have an impact on cases beyond the one argued before it.

 

B. The History of the Constitutional Phrase "to promote the Progress of Science and useful Arts."

 

            As stated in the previous section, the petitioners' argument rests upon the premise that the constitutional phrase "to promote the Progress of Science and useful Arts" is synonymous with placing works into the public domain. In my amicus brief filed with the Supreme Court, I review the history of the constitutional phrase "to promote the Progress of Science and useful Arts," and demonstrate that the phrase incorporates many factors, not just an increase in the public domain. To focus upon just the one factor is to thwart the meaning of the constitutional phrase, and to bind Congress in ways inconsistent with the full meaning of the constitutional mandate. Here are the arguments I make in the brief.

 

1. The Constitutional Phrase "the Progress of Science and useful Arts" Is Not Directed Primarily at the Ultimate Increase in the Public Domain.

 

a. The State Statutes under the Articles of Confederation.

 

            There is little direct record of what the drafters of the Constitution intended when they adopted the phrase "to promote the Progress of Science and useful Arts." But much insight can be gleaned from the practice of the states under the Articles of Confederation, since it can be assumed that the drafters of the Constitution and of the first copyright act were familiar with the pre-existing state laws.

 

            As seen earlier, the preambles to the state statutes contained language of "natural rights" and "property rights." The preambles also made clear that the inducement contemplated in the statutes was to "encourage learned and ingenious persons to write" (as stated in the Massachusetts and related statutes) and to "encourage men of learning and genius to publish" (as stated in the Connecticut and related statutes) their works. Although works were obviously intended to go into the public domain at the expiration of the copyrights, the "public good" wasn't something that would be achieved only at that later date; the "public good" was achieved at the outset by the creation and publication of the works.

 

                        b. The Constitutional Phrase.

 

            The Constitution grants Congress the power to pass copyright law as follows:

 

Article I, sec. 8. The Congress shall have Power: . . .

To promote the Progress of Science and useful Arts, by securing, for limited Times, to Authors and Inventors, the exclusive Right to their respective Writings and Discoveries.

 

In The Federalist No. 43, James Madison gave pretty much the only contemporary public explanation of the phrase when he said:

 

The utility of this power will scarcely be questioned. The copyright of authors has been solemnly adjudged, in Great Britain, to be a right of common law. . . .   The public good fully coincides . . . with the claims of individuals. The States cannot separately make effectual provision [for copyright], and most of them have anticipated the decision of this point, by laws passed at the instance of Congress.[37]

 

            By "the public good," Madison could not have meant simply "the public domain," since the "public good" will not "fully coincide . . . with the claims of individuals" after the term of copyright has expired. What he meant was that the progress of science and arts depends entirely upon the creation and distribution of such works. Madison's focus was, as the Constitution's focus was, as the earlier state statutes' focus was, primarily on the creation and distribution of works. Of course, it was assumed that works would ultimately go into the public domain, but that was as a result of the "limited Times" provision, not something necessarily envisioned within the "Progress of Science and useful Arts" clause.

 

c. The Plain Meaning and Logical Understanding of the Constitutional Phrase

 

            The copyright clause of the Constitution is the only enumerated power within Article 1, section 8, that mentions the "purpose" for which it was enacted. Why might the framers have chosen to add that language, instead of empowering Congress to grant exclusive rights to authors and inventors without limitation? Possibly, the framers were simply following the pattern of the prior state enactments, almost all of which had preambles explaining their purpose. The "whereas" clauses in the preambles explained the purposes of the earlier statutes, but they can hardly be read as specific limitations upon the rights granted under those statutes.

 

            The other model for the structure of the constitutional phrase was the Statute of Anne, adopted in England in 1710.[38] That act was entitled "An Act for the Encouragement of Learning, by vesting the Copies of Printed Books in the Authors or Purchasers of such Copies, during the Times therein mentioned." It is hard to imagine how the words "Encouragement of Learning" provided any particular limitation upon what rights were granted.

 

            Petitioners would have us believe that "Science and useful Arts" does not progress until someone, such as petitioner Eldred, has made a work available to the public free of charge.  But that certainly isn't the common sense meaning of "Progress of Science and useful Arts." Millions of works are created, published, read, and commented upon every year. Some of the greatest works receive accolades and criticism, and literary and other awards, shortly after their publication, for the contribution that they make to the arts and sciences. For example, the Nobel Prizes are awarded to those who "shall have conferred the greatest benefit on mankind." Under the Nobel rules, "To be eligible to be considered for a prize, a written work shall have been issued in print or have been published in another form."[39] Pulitzer Prizes are awarded for "work done" and "published" or "performed" during the prior year. The public value of the works is hardly diminished by the fact that they will not go into the public domain for many years.

 

            Authors who make "transformative" uses of copyrighted works should and do have wide leeway to produce their works under the fair use doctrine, as illustrated by the Supreme Court's decision in Campbell v. Acuff-Rose Music, Inc.,[40] and the Eleventh Circuit's decision in Suntrust Bank v. Houghton Mifflin Co.[41] Petitioners, however, are not such "creators" who desire to make transformative uses of existing works; instead, their businesses, for the most part, are in making already existing works available over the Internet or otherwise. While this may be a valuable service to the public, it does not result in any immediate "Progress" of "Science and useful Arts," since the works that they distribute are works that have already been published, almost all of which are already available (though of course for a fee) from other sources.

 

            In short, the "Progress of Science and useful Arts" takes place primarily when works are created and published, not (or at least not primarily) when they go into the public domain.

 

      2. United States Copyright Statutes

 

                        a. The Copyright Act of 1790

 

            The first copyright act, passed in 1790 in the first Congress, was entitled "An Act for the encouragement of learning, by securing the copies of maps, charts, and books, to the authors and proprietors of such copies, during the times therein mentioned." The legislative history of the act confirms that Congress, in passing the act, was focusing upon the inducement to create and publish. President George Washington, in his January 1790 address to a joint session of Congress, urged the new Congress that "there is nothing which can better deserve your patronage than the promotion of science and literature." He went on: "Whether this desirable object [knowledge] will be best promoted by affording aids to seminaries of learning already established, by the institution of a national university, or by any other expedients, will be well worthy of a place in the deliberations of the legislature."[42] Congress responded with an address to the president: "We concur with you in the sentiment that . . . the promotion of science and literature will contribute to the security of a free Government; in the progress of our deliberations we shall not lose sight of objects so worthy of our regard."[43] The act that was passed by Congress and signed into law by President Washington in that same year was the copyright act, entitled "An Act for the encouragement of learning."

 

            The 1790 copyright act was inconsistent with petitioners' theory that Congress may not constitutionally extend the duration of existing works. Most states already had copyright laws that created exclusive rights for periods varying from a minimum of 14 to a maximum of 28 years.[44] The 1790 act not only continued these copyrights in force, but extended the duration to run for a period of 14 to (upon renewal) 28 years from the date of new registration. This was not some incidental effect, but was quite clearly set forth in the statute in a separate provision:

 

Be it enacted . . . That from and after the passing of this act, the author and authors of any map, chart, book or books already printed within these United States . . . shall have the sole right and liberty of printing, reprinting, publishing and vending such map, chart, book or books, for the term of fourteen years from the recording that title thereof in the clerk's office . . .[45]

 

Thus, the authors of existing works, even if they had already received up to seven years of protection under the prior state laws (from 1783 to 1790), or even if their works might have gone into the public domain because they were from a state that hadn’t yet passed an effective copyright law, were entitled to begin their copyrights anew under the 1790 statute.

 

                        b. Subsequent Extensions

 

            All subsequent copyright acts that have extended the term of copyright—to a total of 42 years from the date of publication in 1831,[46] 56 years from publication in 1909,[47] life of the author plus 50 years in 1978, and life of the author plus 70 years in 1998—have specifically applied the extension to existing works. This application of new terms to existing works was not some incidental outcome, but was specifically considered by Congress.

 

In 1831, when the first term of copyright was extended to 28 years, to create a maximum copyright term of 42 years, this result was accomplished by repealing the prior act, but preserving rights under that act and applying the terms of the new act to the existing works.

 

Sec. 14. And be it further enacted, That the "Act for the encouragement of learning, by securing the copies of maps, charts, and books, to the authors and proprietors of such copies during the times therein mentioned," passed May thirty-first, one thousand seven hundred and ninety, and the act supplementary thereto . . . shall be, and the same are hereby, repealed: saving, always, such rights as may have been obtained in conformity to their provisions.

 

Sec. 15 And be it further enacted, That all and several the provisions of this act, intended for the protection and security of copyrights, and providing remedies, penalties, and forfeitures . . . shall be held and construed to extend to the benefit of the legal proprietor or proprietors of each and every copyright heretofore obtained, according to law, during the term thereof, in the same manner as if such copyright had been entered and secured according to the directions of this act.

 

The 1909 act, extending the renewal term of copyright by an additional 14 years, for a total copyright term of up to 56 years, made clear that it did not revive works that had already gone into the public domain; but the extension of the additional 14 years did apply to copyrights that had been obtained under the prior act and had not yet expired.

 

Section 8. Copyright not to subsist in works in public domain, or published prior to July 1, 1909, and not already copyrighted . . .

 

No copyright shall subsist in the original text of any work which is in the public domain, or in any work which was published in this country or any foreign country prior to July 1, 1909, and has not been already copyrighted in the United States . . .

 

            In the 20 years of legislative history leading up to the 1976 Act, Congress carefully considered the varying means for measuring the term of copyright. Although it adopted the life plus 50 year term for works created after the effective date of the statute, Congress chose to continue to measure the term of existing copyrights (and works-for-hire and pseudonymous and anonymous works) from the date of publication.[48]

 

            Under the 1976 Act, life plus 50 years actually resulted in a shorter duration of copyright for works produced toward the end of an author’s life. Such works would be protected for a little over 50 years, less than the 56-year maximum under the 1909 law. Congress concluded that, on average, the life of the author plus 50 years was the equivalent of about 75 years from publication; but, of course, in individual instances, it might be more or less. That’s the inevitable result of using two different methods for computing the duration of copyright.

 

            Congress considered that it might be unfair to grant the benefits of the 19-year term extension to licensees who may have paid only for a shorter license term; accordingly, Congress established in section 304(c) an elaborate provision for "termination," or recapture, of the extension term for the benefit of the authors or their heirs. In this way, the term extension was not necessarily a "victory" for the large corporations that may have owned many of the copyrights, since in many cases they had to renegotiate the rights with the original authors or their heirs.

 

            While Congress in 1976 extended the term of copyright for works that had already been published, it significantly decreased the term of protection for works that were not yet published. Under prior law from 1790 through 1977, state common law copyright in unpublished works had extended in perpetuity. Under the new act, Congress brought works under the federal system of copyright beginning from the date of “fixation” in a “tangible medium of expression” (rather than from the date of publication) and preempted state common law copyright in unpublished works. In section 303, Congress provided that copyright in previously created but unpublished works would be measured by the life plus 50 year term. However, in order to prevent “old” unpublished works from immediately going into the public domain, Congress provided that no such works would go into the public domain before December 31, 2002, at the earliest; and, to encourage publication of such “old” works, Congress provided that if such “old” works were published by the end of the year 2002, they would be granted additional protection until the year 2027. In any event, since the duration of copyright for unpublished works was reduced from “in perpetuity,” and since some copyrights actually received a shorter term of copyright under the new Act, the net effect of the 1976 Act was not simply to “extend” the term of copyright, but more precisely to “adjust” the term of copyright.

 

            While Congress's prior enactments of course do not definitively decide the constitutional issue in the case, they do evince a practice of careful deliberation that has been clear and consistent from the first copyright act of 1790 to the copyright act of 1998. Each of these statutes, affecting the terms of existing as well as future copyrights, is inconsistent with the novel constitutional theory proposed by petitioners.

 

c. Other Copyright Acts

 

            Extension of the copyright term is not the only way in which Congress has expanded the scope of copyright over the years. To give just a few examples, owners of previously copyrighted works saw their rights expand when Congress added the right to receive payment under a compulsory licensing system for cable retransmissions in 1976;[49] a public display right in 1976;[50] certain moral rights in 1990;[51] and digital performance rights in sound recordings in 1992.[52] Such additional rights could not possibly represent an incentive to the original copyright owners to create their works; and so, by petitioners' logic, Congress should never have been able to add to the rights in such works already in existence. Yet it is absurd to assume that Congress does not have the power to make periodic adjustments to the scope of existing copyrights.

 

            Congress has "decreased" the public domain (in the sense that it has passed laws slowing the rate at which works go into the public domain) in many other ways besides the extension of the copyright term. For example, many more works traditionally went into the public domain as a result of failure to use the copyright notice, failure to register, or failure to renew, than have gone into the public domain because of expiration of copyright. (If, as petitioners assert in their brief, only 15% of copyrighted works were generally renewed, then 85% of the works went into the public domain when they were not renewed.) When Congress in 1988 eliminated the copyright notice and registration requirements as part of its obligations under the Berne Convention,[53] and when in 1992 it provided for automatic renewal of copyrights still in their first terms, it "rescued" many more existing works from going into the public domain than it did when it passed the CTEA. Again, by petitioners' logic, these "assaults" on the public domain should never have been allowed. The fact that Congress has continually readjusted not only the term of copyright, but also the scope of rights in existing copyrights, and has abandoned the requirement of formalities, also for existing copyrights, demonstrates that Congress simply is not limited in the novel way suggested by petitioners.

 

3. The "Progress of Science and useful Arts" Involves Dozens of Considerations Beyond Merely the Devolution of Copyrighted Works into the Public Domain.

 

a. International Considerations

 

            One of the major accomplishments in U.S. copyright in the latter part of the twentieth century was the internationalization of copyright standards, prompted to a large extent by the internationalization of trade and technology. The 1790 act had protected only U.S. authors. It was not until 1891 that foreign authors were granted at least some minimal level of protection, though that protection, because of copyright formalities, was often more illusory than real. In 1952, the United States was instrumental in convincing much of the world to adopt the Universal Copyright Convention, which allowed a U.S.-inspired international copyright system to exist alongside the Berne convention that governed most of the rest of the world. The situation was an embarrassment within the international copyright community, and undermined the ability of U.S. trade negotiators to encourage other countries to enhance their copyright protection of foreign—including U.S.—books, music, movies, and computer programs. Finally, in 1988, the United States joined the rest of the world by adhering to the Berne Convention.[54]

 

            The Berne Convention provides that all member countries must protect copyright for a minimum term of life of the author plus 50 years,[55] and eliminate all formalities as prerequisites to copyright.[56] The extension of copyright to life plus 50 years, as provided in the major overhaul of U.S. copyright law in 1976, and the elimination of formalities in the Berne Implementation Act of 1988, were therefore absolute prerequisites to U.S. adherence to Berne.

 

            Not only does Berne require a term of life of the author plus 50 years, but it also requires that member countries grant that term to all works that have not already gone into the public domain in a particular country. As provided in Article 18(1): “This Convention shall apply to all works which, at the moment of its coming into force, have not yet fallen into the public domain in the country of origin through the expiry of the term of protection.” Thus, the term extension for existing works still under copyright protection was an absolute necessity for joining Berne under Article 18(1).[57]

 

            The 1998 extension, from life of the author plus 50 years to life of the author plus 70 years, was not required under our international obligations. However, it was designed to match the term of copyright recently adopted throughout the European Union and by other countries. Under Article 7(8) of the Berne Convention, countries with the life plus 70 year term do not have to recognize the rights of foreign authors whose works have expired in their own countries.

 

            Since the United States is a net exporter of copyrighted works, it certainly made sense for the United States to grant the longer term, and thereby allow U.S. authors to take advantage of the longer term available abroad. And, since the United States was simply matching the longer term available in other countries, it is not likely that Congress, absent the strong international considerations, will extend the U.S. term of copyright yet again. Petitioners’ suggestion that Congress will continue to grant further extensions whenever the copyright industries ask for them is simply not a likely scenario.

 

            The petitioners suggest that the drafters of the Constitution would be horrified at a term of life plus 70 years, or 95 years for existing works. In 1790, the term of copyright adopted by Congress matched the British, and what would become the international, standard of the day. Would the framers of the Constitution be shocked to learn that Congress had, over the years, extended the term of copyright to match the expanding international norm? It is more likely that  they would be shocked if we had not done so. Were Madison to view the state of international trade and technology today, he might well conclude, as he did about the individual state statutes in 1790, that one country “cannot separately make effectual provision” for copyright, and that most countries today have “anticipated the decision of this point” by passing laws in conformity with international standards.[58]

 

b. Other Considerations

 

            While the exact contours of the "Progress of Science and useful Arts" are not clear, many of the major theories and limitations of copyright adopted over the years do in fact, and were intended to, promote such progress.

 

            For example, the Supreme Court has noted the “First Amendment protections already embodied in the Copyright Act’s distinction between copyrightable expression and uncopyrightable facts and ideas, and the latitude for scholarship and comment traditionally afforded by fair use.”[59] Works of utility[60] are not covered by copyright, but are free for the taking. The first sale doctrine,[61] the numerous compulsory licenses, the limitations in section 110 protecting various performances, and the exclusion of protection for government works[62] all carve out major limitations that promote the progress of science and arts. The limitation of copyright protection to “original works of authorship,”[63] the special rules for library photocopying,[64] the many definitional limitations in section 101, and the fact that copyright doesn’t prevent all uses of copyrighted works, but only those enumerated in the exclusive rights sections 106 and 106A, all in their own way foster the "Progress of Science and useful Arts." There is hardly a principle of copyright that does not reflect a careful balance between the rights of copyright owners and copyright users. It is presumably precisely because the balance is so intricate and delicate that the framers of the Constitution assigned to Congress the task of setting copyright policy.

 

                                    c. The CTEA.

 

            In enacting the CTEA, Congress again gave careful consideration to balancing the interests of copyright owners and copyright users. For example, Congress coupled copyright term extension with the so-called “Fairness in Music Licensing Act,” which, in amending sections 110(5) and 513, put severe limitations on the enforcement of public performance rights by music copyright holders. Responding to the concerns raised by library representatives, Congress added a new subsection 108(h), which provides for an expanded library exemption for the reproduction of copyrighted works during the last 20 years added by the act.

 

            As explained at p. __, supra, “old” unpublished works were slated to go into the public domain after December 31, 2002. As originally proposed, the CTEA would have extended the protection of such works by an extra ten years.[65] Responding to the concerns raised in the committee hearings, however, Congress determined that no extension should be given for the protection of these works (although Congress did extend by 20 years, to 2047,[66] the “extra” protection granted to such works as an inducement to get them published by the end of 2002). Thus, thousands, or millions, of unpublished works, including private letters dating back to the early history of the United States, will first go into the public domain after December 31, 2002, demonstrating Congress’s sensitivity to the value of the public domain.

 

            As with the 1976 term extension, Congress was concerned that the authors or their heirs, rather than the copyright licensees, be the ones to receive the benefit of the 20 year term extension. Accordingly, Congress provided a new termination right in section 304(d) for authors or heirs who did not previously take advantage of the termination provided in section 304(c).

 

            Congress did not provide, either in 1976 or in 1998, for a termination right in works made for hire. However, in the CTEA, Congress did take the extraordinary step of adopting a sense of Congress that owners of audiovisual works should make arrangements to share the value of the additional 20-year extension with those who participated in the creation of the works. Section 105 of the CTEA provides:

 

It is the sense of the Congress that copyright owners of audiovisual works for which the term of copyright protection is extended by the amendments made by this title, and the screenwriters, directors, and performers of those audiovisual works, should negotiate in good faith in an effort to reach a voluntary agreement or voluntary agreements with respect to the establishing of a fund or other mechanism for the amount of remuneration to be divided among the parties for the exploitation of those audiovisual works.

 

Although this sense of Congress does not have the force of law, it presumably puts the industry on notice that, should such negotiations not be forthcoming, Congress might consider enacting legislation to force the copyright owners to share the benefits of the copyright term extension (assuming, of course, that the Supreme Court doesn’t bar Congress from making ongoing adjustments to existing rights of copyright).

 

            Thus, it is clear that Congress in the 1998 legislation continued doing what it has been doing for the full 212 years of copyright in this country, promoting the “Progress of Science and useful Arts” by carefully balancing the interests of copyright owners and copyright users.

 

                                    d. Copyright Balances

 

            In their amicus brief filed with the Supreme Court petitioning for certiorari, the law professors in support of the petitioners speculated about the impact the appellate court's ruling might have on the Digital Millennium Copyright Act, the restoration of foreign copyrights under section 104A, various other recent enactments, and potential enactments that have not yet even been considered by Congress. The professors were concerned about the impact on court interpretations of the DMCA, particularly involving potential idea/expression and fair use arguments. The law professors did not stress the point in their filing on the merits, and I did not include the following analysis in my own amicus brief.

 

In deciding whether the CTEA is constitutional or not, the Supreme Court must make an all-or-nothing choice. Congress, on the other hand, is the proper body for weighing competing considerations and coming up with a "compromise" that protects the interests of all parties. That's exactly what it did in the CTEA when it expanded the library exemption during the added 20 year term, and when it limited the scope of the musical performance right by various amendments placing restrictions on performing rights societies.

 

In the future, Congress might adopt any number of other "compromises" to assure the continued "Progress of Science and useful Arts." Congress might conclude that the longer term is not appropriate for some categories of works, and adopt a shorter term for such works as works of applied art, as is allowed under the Berne Convention. If Congress is concerned about the availability of older works that are still the subject of copyright, it might adopt a compulsory license to cover the situation, much as it provided for a compulsory license for the continued use of derivative works by "reliance parties" based upon works whose copyright was restored under §104A.[67] For example, the Connecticut statute of 1783 provided that, if an author "shall neglect to furnish the public with sufficient editions thereof, or shall sell the same at a price unreasonable," then a court was empowered to grant a complainant "a full and ample licence to re-print and publish such book, pamphlet, map or chart, in such numbers and for such term as said court shall judge just and reasonable."