No. 01-618

In the Supreme Court of the United States

       ERIC ELDRED, ET AL., PETITIONERS

                        v.

               JOHN D. ASHCROFT


       ON PETITION FOR A WRIT OF CERTIORARI
      TO THE UNITED STATES COURT OF APPEALS
       FOR THE DISTRICT OF COLUMBIA CIRCUIT



   BRIEF FOR THE RESPONDENT IN OPPOSITION



                        THEODORE  B.  OLSON
                         Solicitor General
                              Counsel of Record
                        ROBERT  D.  MCCALLUM, JR.
                         Assistant Attorney General
                        WILLIAM  KANTER
                        JOHN  S.  KOPPEL
                         Attorneys
                         Department of Justice
                         Washington, D.C. 20530
                         (202) 514-2217



               QUESTIONS PRESENTED

  1. Whether the 20-year extension of the terms of all
copyrights, set forth in the Copyright Term Extension
Act of 1998 (CTEA), Pub. L. No. 105-298, 112 Stat.
2827, violates the Copyright Clause of the Constitution.
  2. Whether the CTEA's 20-year extension of the
terms of all copyrights violates the First Amendment.
  3. Whether a court of appeals may decline to con-
sider arguments raised by an amicus that differ from
the arguments raised by the party that the amicus
seeks to support.






















                           (I)



                                  TABLE  OF  CONTENTS
                                                                                                          Page
Opinions below  ...............................................................................               1
Jurisdiction ......................................................................................           1
Statement ........................................................................................            2
Argument ........................................................................................            11
Conclusion .......................................................................................           24

                               TABLE  OF  AUTHORITIES
Cases:
    Aalmuhammed  v. Lee, 202 F.3d 1227 (9th Cir.
       1999) .........................................................................................     16-17
    Ashwander  v.  Tennessee Valley Auth., 297 U.S. 288
       (1936) ........................................................................................       10
    Burrow-Giles Lithographic Co.  v.  Sarony, 111 U.S.
       53 (1884) .................................................................................         9, 15
    CBS Broad., Inc.  v.  Echostar Communications
       Corp., 265 F.3d 1193 (11th Cir. 2001)  .................................                              22
    Davis  v.  United States, 417 U.S. 333 (1974) .......................                                    21
    Erickson  v.  Trinity Theatre, 13 F.3d 1061 (7th Cir.
       1994) .........................................................................................       16
    Feist Publ'ns, Inc.  v.  Rural Tel. Serv. Co.,
       499 U.S. 340 (1991) ...............................................................                 7, 12
    Frantz Mfg. Co.  v.  Phenix Mfg. Co., 457 F.2d 314
       (7th Cir. 1972) .....................................................................              14, 16
    Graham  v.  John Deere Co., 383 U.S. 1 (1966) ....................                                       12
    Greenberg  v.  National Geographic Soc'y, 244 F.3d
       1267 (11th Cir.), cert. denied, 122 S. Ct. 347
       (2001) ......................................................................................         17
    Harper & Row, Publishers, Inc.  v.  Nation
       Enters., 471 U.S. 539 (1985)  .....................................                         3, 4, 5, 19
    Ladd  v.  Law & Technology Press, 762 F.2d 809
       (9th Cir. 1985), cert. denied, 475 U.S. 1045 (1986)  ...........                                       8
    McClurg  v.  Kingsland, 42 U.S. (1 How.) 202
       (1843) ........................................................................................      4, 9




                                                     (III)



                                                    IV


Cases-Continued:                                                                                         Page
  Mitchell Bros. Film Group  v.  Cinema Adult
    Theater, 604 F.2d 852 (5th Cir. 1979), cert. denied,
    445 U.S. 917 (1980) .............................................................                   15, 16
  New Jersey  v.  New York, 523 U.S. 767 (1998)  ...............                                        10, 22
  Pennock & Sellers  v.  Dialogue, 27 U.S. (2 Pet.) 1
    (1829) ........................................................................................          3
  Rosemont Enter. Inc.  v.  Random House, Inc.,
    366 F.2d 303 (2d Cir. 1966), cert. denied, 385 U.S.
    1009 (1967) .............................................................................               16
  Schnapper  v. Foley, 667 F.2d 102 (D.C. Cir. 1981),
    cert. denied, 445 U.S. 948 (1982)  .......................................                           6, 15
  Trade-Mark Cases, 100 U.S. 82 (1879) ................................                                  7, 12
  United States  v.  Lopez, 514 U.S. 549 (1995) .......................                                      9
  United Video  v.  FCC, 890 F.2d 1173 (D.C. Cir.
    1989) .................................................................................            3, 4, 22
  Wisniewski  v. United States, 353 U.S. 901 (1957) ..............                                          21
Constitution and statutes:
  U.S. Const.:
    Art. I,  8, Cl. 8 (Copyright Clause)  .............................                               passim
    Amend. I ............................................               3, 4, 5, 11, 19, 20, 21, 22
  Act of May 31, 1790, ch. 15, 1 Stat. 124  .................................                            2, 15
     1, 1 Stat. 124 ...................................................................                 2, 15
     3, 1 Stat. 125 .......................................................................                15
  Act of Feb. 3, 1831,  1-2, 4 Stat. 436-437  ...........................                                  2
  Act of Mar. 4, 1909,  24, 35 Stat. 1075-1088  ........................                                    2
  Copyright Act of 1976, Pub. L. No. 94-553, 90 Stat.
    2541 (17 U.S.C. 101 et seq.) ...................................................                         2
        17 U.S.C. 302 ......................................................................                 2
        17 U.S.C. 302(a) (1978)  .....................................................                       2
        17 U.S.C. 304 ......................................................................               2, 3
  Sonny Bono Copyright Term Extension Act, Pub. L.
    No. 105-298, 112 Stat. 2827 (1988) .................................                          passim
         102(b), 112 Stat. 2827 .....................................................                     2, 3
         102(d), 112 Stat. 2827 .....................................................                     2, 3



                                          V


Miscellaneous:                                                                   Page
  7 Cong. Deb. App. CXIX (1830) .............................................      17
  S. Rep. No. 315, 104th Cong., 2d Sess. (1996)  ......................             8



In the Supreme Court of the United States

                       No. 01-618

          ERIC ELDRED, ET AL., PETITIONERS

                            v.

                   JOHN D. ASHCROFT


         ON PETITION FOR A WRIT OF CERTIORARI
        TO THE UNITED STATES COURT OF APPEALS
         FOR THE DISTRICT OF COLUMBIA CIRCUIT



   BRIEF FOR THE RESPONDENT IN OPPOSITION


                   OPINIONS BELOW
  The opinion of the court of appeals (Pet. App. 1a-23a)
is reported at 239 F.2d 372.  The opinion of the court of
appeals (Pet. App. 24a-33a) on denial of rehearing and
rehearing en banc is reported at 255 F.3d 849.  The
Memorandum and Order of the district court (Pet. App.
34a-39a) is reported at 74 F. Supp. 2d 1.
                     JURISDICTION
  The judgment of the court of appeals was entered on
February 16, 2001, and a petition for rehearing was
denied on July 13, 2001.  The petition for a writ of cer-
tiorari was filed on October 11, 2001.  This Court's juris-
diction is invoked under 28 U.S.C. 1254(1).



                            (1)



                             2

                       STATEMENT
  1. The Copyright Clause of the Constitution confers
upon Congress the "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."
U.S. Const. Art. I,  8, Cl. 8.  Beginning in 1790, see Act
of May 31, 1790, ch. 15, 1 Stat. 124, Congress has
enacted a number of copyright statutes pursuant to
that authority.  The 1790 Copyright Act established a
copyright term of 14 years and applied it both to newly
created works and to subsisting works protected under
the copyright laws of the various States.  Act of May 31,
1790,  1.  Congress extended the term of copyright
protection for new and subsisting copyrighted works
again in 1831 and 1909.  Act of Feb. 3, 1831,  1-3, 4
Stat. 436-437; Act of Mar. 4, 1909,  24, 35 Stat. 1075-
1088.  Currently, most copyright claims are governed
by the Copyright Act of 1976, Pub. L. No. 94-553, 90
Stat. 2541, codified as amended at 17 U.S.C. 101 et seq.
As originally enacted, the Copyright Act of 1976
accorded the exclusive right to publish and reproduce
an original work to the author of that work during the
author's life plus 50 years.  See 17 U.S.C. 302(a) (1978).
  In 1998, Congress enacted the Sonny Bono Copyright
Term Extension Act (CTEA or Act), Pub. L. No. 105-
298, 112 Stat. 2827, bringing United States copyright
law into conformity with the copyright laws of the
European Union.  See Pet. App. 13a.  Among other
things, the CTEA extends the terms of copyrights for
20 years.  See CTEA,  102(b) and (d), 112 Stat. 2827
(amending 17 U.S.C. 302, 304).  Thus, an additional term
of 20 years is added to the duration of all existing
copyrights (i.e., for all original works that, at the time of



                             3

the Act's effective date, had not yet fallen into the
public domain).  CTEA  102(d), 112 Stat. 2827 (amend-
ing 17 U.S.C. 304).  The Act also provides that any
future copyrights will have a term of the life of the
author plus 70 years. CTEA,  102(b), 112 Stat. 2827
(amending 17 U.S.C. 302).
  2. Petitioners brought this action in the United
States District Court for the District of Columbia to
challenge, among other things, the constitutionality of
the CTEA's 20-year extension of existing copyrights.
Specifically, they alleged that the extension violates the
First Amendment and the Copyright Clause of the Con-
stitution.
  The parties filed cross-motions for judgment on the
pleadings.  By Memorandum and Order filed on October
28, 1999 (Pet. App. 34a-39a), the district court granted
respondent's motion and denied petitioners'.  The court
first rejected petitioners' First Amendment claim.
"The District of Columbia Circuit," the district court
held, "has ruled definitively that there are no First
Amendment rights to use the copyrighted works of
others."  Id. at 37a (citing United Video, Inc. v. FCC,
890 F.2d 1173, 1191 (D.C. Cir. 1989), and Harper &
Row, Publishers, Inc. v. Nation Enterprs., 471 U.S.
539, 556 (1985)).
  The court also held that Congress did not exceed its
powers under the Copyright Clause of the Constitution
by extending the terms of existing copyrights.  The
court stated that the duration requirement of that
clause-which requires that copyrights persist only for
"[l]imited [t]imes"-is "subject to discretion of Con-
gress."  Pet. App. 37a (citing Pennock & Sellers v.
Dialogue, 27 U.S. (2 Pet.) 1, 16-17 (1829)).  Congress,
the district court further held, "has authority to enact
retrospective laws under the copyright clause."  Id. at



                                                 4

37a (citing McClurg v. Kingsland, 42 U.S. (1 How.) 202,
206 (1843)).1
    3. Petitioners appealed, and the court of appeals
affirmed.  Pet. App. 1a-16a.  The court unanimously
rejected petitioners' First Amendment claim, but one
member of the panel dissented with respect to the claim
that Congress had exceeded its powers under the
Copyright Clause.
    a. On the First Amendment claim, the court of ap-
peals first held that petitioners have standing to
challenge the CTEA's application both to subsisting
copyrights and to future copyrights.  Pet. App. 4a-5a.
The court disagreed with the government's contention
that petitioners lack standing to raise the latter chal-
lenge.  Petitioners "benefit from works in the public
domain and are deprived of that benefit so long as such
works are under copyright," the court stated.  That
alleged deprivation, the court of appeals continued, is
threatened as much "for works not yet created as for
extant works on which the copyrights are about to
expire."  Id. at 5a.
    On the merits of the First Amendment claim, the
court held that this Court's decision in Harper & Row,
Publishers, Inc. v. Nation Enterprises, 471 U.S. 539
(1985), and the D.C. Circuit's decision in United Video,
Inc. v. FCC, 890 F.2d 1173 (1989), "stand as insuperable
bars to [petitioners'] first amendment theory."  Pet.
App. 5a.  Copyright, the court explained, merely gives

                                                  
    1 The district court also rejected petitioners' argument that the
extension violates the "to Authors" term of the Copyright Clause,
and their claim that it violates the public trust doctrine.
Petitioners did not renew those two distinct legal arguments in the
court of appeals; nor have they attempted to do so in their petition
to this Court....



                            5

the author an exclusive right in the form of expression;
it does not give the author a monopoly on the idea or
fact being expressed.  See id. at 5a-6a.  Accordingly, the
court held, copyright laws do not infringe freedom of
speech.  Id. at 6a.  Indeed, it continued, this Court had
so recognized in Harper & Row.  Pet. App. 6a (quoting
471 U.S. at 556).
  The court of appeals rejected, as "wholly illusory,"
petitioners' attempt to distinguish Harper & Row and
United Video.  Pet. App. 7a.  It is true, the court
pointed out, that the litigants in those cases "demand-
[ed] a right to use otherwise legitimately copyrighted
material," id. at 6a, whereas petitioners in this case
bring a "First Amendment challenge[] to the consti-
tutionality of the statute granting a [copy]right in the
first instance.' "  Ibid.  The court of appeals concluded,
however, that the purported distinction did not make a
logical difference.  The relevant question for First
Amendment purposes is "whether the party has a first
amendment interest in a copyrighted work."  Id. at 7a.
Answering that question in the negative, the court
concluded that petitioners "lack any cognizable first
amendment right to exploit the copyrighted works of
others."  Id. at 8a.
  b. The court of appeals also rejected petitioners'
claim that the CTEA, by extending the duration of
already existing copyrights, exceeds Congress's powers
under the Copyright Clause.  Petitioners had argued
that Congress "cannot extend an extant copyright," be-
cause a pre-existing "copyrighted work already exists
and therefore lacks originality."  Pet. App. 8a.  The
court responded by pointing out that a "work with a
subsisting copyright has already satisfied the require-
ment of originality, and need not do so anew for its
copyright to persist."  Ibid.  Petitioners, the court



                            6

further noted, "point to no case or commentary  *  *  *
that calls into question the distinction between a new
grant of copyright-as to which originality is an issue-
and the extension of an existing grant."  Id. at 9a.
  c. The court of appeals also rejected petitioners'
"contention that the CTEA violates the constitutional
requirement that copyrights endure only for `limited
Times.' "  Pet. App. 10a.  Petitioners argued, in effect,
that increases in the duration of an already existing
copyright could not be justified under the Copyright
Clause, because such increases would not "promote the
Progress of Science and useful Arts."  Petitioners' idea
was that "the phrase `limited Times' should be inter-
preted not literally but rather as reaching only as far
as is justified by the preambular statement of
purpose"-i.e., that "if `50 years are enough to promote
.  .  .  Progress,' then a grant of 70 years is uncon-
stitutional." Ibid.
  That argument, the court of appeals held, was fore-
closed by Schnapper v. Foley, 667 F.2d 102 (D.C. Cir.
1981), cert. denied, 455 U.S. 948 (1982).  In that case,
the court of appeals "rejected the argument `that the
introductory language of the Copyright Clause consti-
tutes a limit on congressional power.' "   Pet. App. 10a
(quoting Schnapper, 667 F.2d at 112).  In this case, the
court observed, petitioners did not ask that Schnapper
be overturned.  Instead, petitioners had urged the
court of appeals to circumvent Schnapper's holding by
interpreting the term "limited Times" to take its
meaning (and incorporate temporal limits) from the
preamble.  The court rejected that argument as unper-
suasive.  "[O]ne cannot concede that the preamble `is
not a substantive limit' and yet maintain that it limits
the permissible duration of a copyright more strictly
than does the textual requirement that it be for a



                           7

`limited Time.' "     Id. at 10a-11a.  Further, although
petitioners relied on Feist Publications, Inc. v. Rural
Telephone Service Co., 499 U.S. 340 (1991), and Trade-
Mark Cases, 100 U.S. 82 (1879), the court of appeals
concluded that neither of those cases requires that the
phrase "limited Times" be read as taking its substance
from the preamble's statement of purpose.  Instead, the
court held, those cases turn on the meaning of the
words "Authors" and "Inventions"-which imply an
element of originality-and not on any independent
effect of the Copyright Clause's preamble.  Pet. App.
10a-11a.
  d. The court declined to entertain or adopt an argu-
ment that had been raised solely by an amicus.  Pet.
App. 11a-12a.  According to the amicus, Schnapper does
not preclude courts from requiring that Copyright
Clause legislation, viewed as a whole, promote science
and the useful arts.  Instead, the amicus argued,
Schnapper merely bars courts from requiring that each
case-specific application of the copyright power-the
award and protection of copyrights in individual cases
-promote science and the useful arts.  Because that
argument had been raised only by an amicus, and
because it had not been adopted by any of the parties,
the court concluded that it need not address it.  Id. at
11a-12a.  The decision not to address amicus's argu-
ment, the court further held, was supported by two
prudential considerations.  First, federal courts gener-
ally should not seek out constitutional issues not before
them.  Id. at 11a.  Second, the court observed, the
parties' "conspicuous[]" failure to adopt amicus's argu-
ment had prevented the government from being
"alerted to any need to argue this point."  Ibid.  Be-
cause the government in fact did not argue the point,



                            8

the court deemed it inappropriate to resolve the issue
without the benefit of full adversary presentation.  Ibid.
  The court also stated that, if it were required to
address amicus's legal argument, it might well reject it.
Even if the court were to agree that the Copyright
Clause's preamble-"To promote the Progress of
Science and useful Arts"-imposes a judicially cogniz-
able limitation on Congress's power, the court "might
well hold that the application of the CTEA to subsisting
copyrights is `plainly adapted' and `appropriate' to
`promot[ing] progress.' "  Pet. App. 12a (citing Ladd v.
Law & Techn. Press, 762 F.2d 809, 812 (9th Cir. 1985),
cert. denied, 475 U.S. 1045 (1986)).  The court observed:
"Congress found that extending the duration of copy-
rights on existing works would, among other things,
give copyright holders an incentive to preserve older
works, particularly motion pictures in need of restora-
tion."  Ibid. (citing S. Rep. No. 315, 104th Cong. 2nd
Sess. 12 (1996)).
  e. Finally, the court found that the CTEA's consti-
tutionality is reinforced by three further considera-
tions.  First, the CTEA "matches United States copy-
rights to the terms of copyrights granted by the
European Union."  Pet. App. 13a.  "[I]n an era of multi-
national publishers and instantaneous electronic trans-
mission, harmonization in this regard has obvious
practical benefits for the exploitation of copyrights."
Ibid.
  Second, the claim that Congress lacks authority to
extend the term of copyrights in existing works is
refuted by historical practice.  The First Congress
"made the Copyright Act of 1790 applicable to sub-
sisting copyrights arising under the copyright laws of
the several states."  Pet. App. 13a.  The construction of
the Constitution " `by [those] contemporary with its



                              9

formation, many of whom were members of the con-
vention which framed it, is of itself entitled to very
great weight, and when it is remembered that the
rights thus established have not been disputed [for this
long], it is almost conclusive.' "  Id. at 14a (quoting
Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53,
57 (1884)).  Third, this Court had made it "plain" that
Congress has the power "to amplify the terms of an
existing patent."  Id. at 14a-15a (citing McClurg v.
Kingsland, 42 U.S. (1 How.) 202, 206 (1843)).  There is
no reason, the court of appeals concluded, why Con-
gress would lack similar power with respect to existing
copyrights.  Id. at 15a.
  f. Judge Sentelle dissented in part.  Although he
agreed that Congress has authority to extend the term
of copyright protection for future works, he concluded
that Congress had exceeded its power under the Copy-
right Clause by extending the copyright term of exist-
ing works.  Pet. App. 16a-23a.  He maintained that the
"concept of `outer limits' to enumerated powers applies
not only to the Commerce Clause but to all the enumer-
ated powers, including the Copyright Clause."  Id. at
17a (quoting United States v. Lopez, 514 U.S. 549, 552
(1995)).  He stated that the Copyright Clause "is not an
open grant of power to secure exclusive rights," but
rather "a grant of a power to promote progress," by
granting exclusive rights only for "limited times."  Id.
at 18a.  In his view, "[e]xtending existing copyrights is
not promoting useful arts, nor is it securing exclusivity
for a limited time."  Id. at 19a.
  Accepting the arguments of an amicus, Judge Sen-
telle also expressed the view that Schnapper did not
foreclose the court from looking to the language of  the
preamble to the Copyright Clause to determine the
scope of the "limited Times" requirement.  Pet. App.



                                         10

20a.  Instead, he read Schnapper as barring courts from
requiring that each application of the Copyright Clause,
in individual cases, actually have the effect of
promoting science or art.  Although the argument had
not been raised by a party-it was raised only by an
amicus-Judge Sentelle thought it proper for the court
to consider the argument because it concerned an issue,
the constitutionality of the CTEA, that was before the
court.  Id. at 21a-23a.
   4. Petitioners filed a petition for rehearing en banc,
which the court denied.  Pet. App. 27a.
   The panel majority issued an opinion on rehearing,
reiterating its view that the contentions of petitioners'
amicus were not properly before it, Pet. App. 24a-27a,
and that it would be " `particularly inappropriate' in this
case to reach" those contentions, id. at 25a.  The ma-
jority stressed that petitioners had declined to adopt
the position of its amicus.  Under such circumstances,
the court explained, it was proper to follow New Jersey
v. New York, 523 U.S. 767, 781 n.3 (1998), and to refuse
to address the argument.  The majority also explained
that its decision not to reach amicus's argument was
supported by the principle of constitutional avoidance.
The amicus's position "poses an additional consti-
tutional question," the court explained, and therefore is
"subject to the `rule of avoidance.' "  Pet. App. 26a
(citing Ashwander v. Tennessee Valley Auth.,  297  U .S .
2 88 ,  34 6   ( 19 3 6)   ( Br a nd ei s ,  J.,  c on c u r r i ng ) ) .  Furthermore,
the court continued, " because the plaintiffs-appellants
did not take the same tack as the amicus, the
Government did not on brief address the district court's
interpretation of " Schnapper.  Pet. App. 26a.
   Finally, the court stated that, "even if we considered
the amicus's position we would not reach a different
result in this case."  Pet. App. 26a.  The court explained



                                                11

that, even if one assumed that "the preamble limits the
power of Congress, the CTEA still passes muster under
the `necessary and proper review' applicable to the
Congress's exercise of a power enumerated in Article
I."  Id. at 26a-27a (citing 239 F.3d at 378 (Pet. App.
12a)).  "Congress found that extending the duration of
copyrights on existing works would, among other
things, give copyright holders an incentive to preserve
older works, particularly motion pictures in need of
restoration."  Id. at 27a (citing 239 F.3d at 378 (Pet.
App. 12a)).2
                                       ARGUMENT
    The decision of the court of appeals is correct and
does not conflict with any decision of this Court or of
any other court of appeals.  Petitioners cite no decision
of any court holding that Congress cannot, consistent
with the Copyright Clause, enact legislation that ex-
tends the term of existing copyrights.  They cite no
decision of any court striking down an extension of
copyright terms on First Amendment grounds.  And
they cite no decision of any other court addressing,
much less rejecting, the validity of the Copyright Term
Extension Act of 1998 (CTEA), Pub. L. No. 105-298, 112

                                                  
    2 Judge Sentelle (joined by Judge Tatel) filed a statement
dissenting from the denial of rehearing en banc.  Pet. App. 28a-
33a.  Judge Sentelle stated that the court's "opinion in this case
effectively eliminates any role for amicus curiae in the practice of
this circuit, when it holds that an argument raised by an amicus
may not be considered by the Court."  Id. at 28a.  On the merits,
Judge Sentelle reiterated his view that Congress lacks authority
under the Copyright Clause to extend the copyright term for
subsisting works.  "Once a work is published," he stated, "ex-
tending the copyright term does absolutely nothing to induce
further creative activity by the author."  Id. at 32a-33a.



                           12

Stat. 2827.  Accordingly, further review is not war-
ranted.
  1. Petitioners argue (Pet. 12-16) that the court of
appeals' decision, insofar as it upholds Congress's
power to extend the duration of existing copyrights,
conflicts with decisions of this Court and with other
courts of appeals.  The asserted conflicts, however, do
not exist.  The issues on which petitioners identify
conflicts are not implicated by this case.  And the pri-
mary issue on which petitioners claim conflict is largely
academic in this case, because the court of appeals'
judgment is supported by an alternative holding.
  a. Petitioners first claim that the decision below is
inconsistent with Graham v. John Deere Co., 383 U.S. 1
(1966),  Feist Publications, Inc. v. Rural Telephone
Service Co., 499 U.S. 340 (1991), and Trade-Mark Cases,
100 U.S. 82 (1879).  None of those cases, however, ad-
dresses Congress's power to extend the term of an
existing copyright.  Nor do any of them address the
constitutionality of the CTEA.
  Nonetheless, petitioners claim that Graham estab-
lishes "that it would be beyond Congress's constitu-
tional power to grant a patent [or a copyright] to a
work in the public domain."  Pet. 12.  Even if Graham
establishes that proposition, it has nothing to do with
this case.  Congress did not, by enacting the CTEA,
reinstate copyright protection for works that had
already entered the public domain.  Instead, it ex-
tended the copyright protection accorded to copy-
righted works that had not yet entered the public
domain.  As the D.C. Circuit stated, "[h]ere we ask not
whether any work is copyrightable-indeed, the rele-
vant works are already copyrighted-but only whether
a copyright may by statute be continued in force
beyond the renewal term specified by law when the



                           13

copyright was first granted."  Pet. App. 9a.  The court
of appeals answered that question in the affirmative,
and its answer is in no way inconsistent with Graham.
  Petitioners' reliance upon Feist and Trade-Mark
Cases is misplaced for the same reason.  The principle
of "originality" mandated by those decisions is not vio-
lated here.  In the CTEA, Congress merely extended
the term of properly copyrighted "original" works-
works that had already met the requirement of
originality in qualifying for protection in the first in-
stance.  Thus, this is not a case in which Congress has
sought to protect works that lack originality.  It is a
case in which Congress has extended the term of
protection for works that are concededly original, and
were accorded copyright protection in the first instance
precisely because they are original.
  Unable to point to a conflict between the decision
below and a holding of this Court, petitioners seem to
argue that this Court's cases must be read as recogniz-
ing, sub silentio, that the preamble to the Copyright
Clause-"To promote the Progress of Science and use-
ful Arts"-creates a judicially manageable and enforce-
able limitation on Congress's copyright powers.  That is
true, they argue, because the preamble is the "only"
possible source of the "originality" requirement this
Court has recognized, and the only conceivable source
of the asserted prohibition against removing works
from the public domain.  Pet. 12-13.  A purported con-
flict between a decision of a court of appeals and hypo-
thetical sub silentio reasoning that petitioners attribute
to this Court is not a sound basis for further review.
  Petitioners, in any event, are incorrect in claiming
that the "originality" requirement and the alleged pro-
hibition on Congress's removal of works from the public
domain necessarily stem from the Copyright Clause's



                           14

preamble.  To the extent the Copyright Clause itself
imposes those limits, they would more logically stem
from the body of the Copyright Clause, which author-
izes Congress to grant to "Authors and Inventors" the
"exclusive Right to their respective Writings and
Discoveries."  U.S. Const. Art. I,  8, Cl. 8 (emphases
added).  The use of the possessive form-"their"
writings-together with the words "Authors" and
"Inventors" might be thought to preclude copyright
protection for works that are not original or that are in
the public domain; in such cases, the individuals seeking
protection might not be considered the "authors," and
the work might not be considered "theirs."  Cf. Frantz
Mfg. Co. v. Phenix Mfg. Co., 457 F.2d 314, 327 n.48 (7th
Cir. 1972) ("An author's `Writing' or an inventor's `Dis-
covery' can, in the constitutional sense, only extend to
that which is his own.  It may not be broadened to
include matters within the public domain.").  Because
Congress in the CTEA extended copyright protection
only for original works that are not already in the
public domain, the origin or scope of the requirement
that works be "original," or of any prohibition on re-
moving works from the public domain, is not at issue
here.
  The question here is whether Congress can extend
the duration of an already subsisting copyright.  Noth-
ing in this Court's cases precludes Congress from
enacting a statute that does so.  Nor does any decision
of this Court hold that the preamble to the Copyright
Clause creates judicially manageable limits on Con-
gress's authority in that regard.  And historical practice
amply supports the sensible view that Congress may
extend the term of existing copyrights when it extends
the term of copyrights for future works.  Pet. App. 13a-
14a & n.1 (noting that Congress extended the terms of



                            15

subsisting copyrights in 1790, 1831, and 1909); p. 2,
supra.  Indeed, as the court of appeals explained-and
petitioners nowhere dispute-the First Congress
"made the Copyright Act of 1790 applicable to
subsisting copyrights arising under the copyright laws
of the several states."  Pet. App. 13a-14a (citing Act of
May 31, 1790,  1, 3, 1 Stat. 124-125).  The construction
of the Constitution by those "contemporary with its
formation, many of whom were members of the con-
vention which framed it, is of itself entitled to very
great weight, and when it is remembered that the
rights thus established have not been disputed [for this
long], it is almost conclusive.' "  Id. at 14a (quoting
Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53,
57 (1884)).  Petitioners nowhere explain why that
practice should not be considered conclusive here.
  b. Petitioners also argue (Pet. 14-15) that the court
of appeals' decision on the scope of Congress's Copy-
right Clause powers conflicts with authority from other
circuits.  That claim of conflict, which principally relies
on Mitchell Brothers Film Group v. Cinema Adult
Theater, 604 F.2d 852 (5th Cir. 1979), cert. denied, 445
U.S. 917 (1980), is wholly without merit.
  As an initial matter, Mitchell Brothers did not in-
volve a constitutional challenge to a statutory extension
of the term of subsisting copyrights.  Instead, it ad-
dressed the unrelated question of whether an obscene
work may be copyrighted.  The court answered that
question in the affirmative, declaring that copyright
statutes need not promote "progress" in science and the
arts in every application.  Far from creating a conflict
with the holding or rationale of Mitchell Brothers, the
D.C. Circuit in Schnapper v. Foley, 667 F.2d 102 (D.C.
Cir. 1981), cert. denied, 445 U.S. 948 (1982), specifically
endorsed the Fifth Circuit's statement of the proper



                                      16

scope of judicial review in a Copyright Clause
challenge-a "necessary and proper" standard that
does "not require that each copyrighted work be shown
to promote the useful arts  *  *  *."  Id. at 112 (quoting
Mitchell Bros., 604 F.2d at 860).  In t hi s  c a s e,  t h e  D .C.
C i r c u i t   m e r e l y  f o l l o w e d  i ts   Schnapper ruling.  Pet. App.
10a.  Petitioners do not explain how a decision following
Schnapper, which follows Mitchell Brothers, can have
created a conflict with Mitchell Brothers.
   Nor can one say that, under Mitchell Brothers, the
Fifth Circuit would reach a different result from that
reached by the D.C. Circuit here.  To the contrary, far
from contradicting the result reached by the court of
appeals,  Mitchell Brothers' broad view of Congress's
powers under the Copyright Clause supports the D.C.
Circuit's decision.  The Mitchell Brothers court indi-
cated that "it is up to Congress to decide upon the
means by which the constitutional command will best
be effectuated," and that Congress's copyright enact-
ments are at most subjected to review under "the
lenient" necessary-and-proper standard.  604 F.2d at
860. Applying that very standard to the CTEA, the
court of appeals in this case concluded that the CTEA is
necessary and proper to Congress's exercise of its
enumerated Copyright Clause powers.  Pet. App. 26a-
27a; pp. 18-19, infra.
   The remaining court of appeals' decisions cited by
petitioners are even further afield.  Pet. 15-16.  The
cases invoked by petitioners do not involve consti-
tutional challenges to copyright statutes, but rather
issues such as interpretation of the scope of a claimed
exclusive right under patent law (Frantz Mfg. Co. v.
Phenix Mfg. Co., 457 F.2d 314 (7th Cir. 1972)); the scope
of joint authorship under the Copyright Act (Erickson
v. Trinity Theatre, 13 F.3d 1061 (7th Cir. 1994); Aalmu-



                                                17

hammed v. Lee, 202 F.3d 1227 (9th Cir. 2000)); inter-
pretation of the scope of "fair use" (Rosemont Enter.
Inc. v. Random House, Inc., 366 F.2d 303 (2d Cir.
1966)); and the scope of a provision of the Copyright
Act governing contributions to collective works (Green-
berg v. National Geographic Soc'y, 244 F.3d 1267 (11th
Cir.), cert. denied, 122 S. Ct. 347 (2001)).  None of those
statutory interpretation cases stands for the proposi-
tion that the Constitution requires a rigorous judicial
inquiry into whether a particular congressional enact-
ment under the Copyright Clause promotes the useful
arts.
    Likewise, those decisions-which involved neither a
copyright extension statute nor the "limited Times"
language of the Copyright Clause-neither compel nor
support the conclusion that the Copyright Clause's
preamble controls the meaning of the "limited Times"
provision. And they certainly do not indicate that those
courts would reach a different result if presented with
the challenge to the CTEA that petitioners raise here.
In sum, those decisions do not conflict with the D.C.
Circuit's ruling, and provide no basis for further review
of the decision below.3
                                                  
    3 Petitioners also predicate the supposed need for review on
        




the hyperbolic claim that the decision below will permit Congress
to extend the duration of copyrights indefinitely, one enactment at
a time, and thereby circumvent the limited duration requirement.
Pet. 9.  As the court of appeals recognized, however, that "clearly
is not the situation" here.  Pet. App. 13a.  Instead, the "temporal
thrust of the CTEA is a good deal more modest:  The Act matches
United States copyrights to the terms of copyrights granted by the
European Union."  Ibid.  That goal is unquestionably a permissible
one.  Indeed, that was precisely Congress's goal when it extended
the duration of copyrights in 1831.  See 7 Cong. Deb. App. CXIX
(1830) (1831 change "to place authors in this country more nearly
on an equality with authors in other countries.").



                           18

  c. Petitioners, moreover, ignore the fact that the
court of appeals' alternative holding, which independ-
ently supports the judgment below, would render this
Court's resolution of the alleged circuit conflicts wholly
advisory.  The court of appeals held that, even if it were
to agree that the phrase "To promote Progress of
Science and the useful Arts" in the preamble acts as a
substantive limit on Congress's authority under the
Copyright Clause, it "would not reach a different result
in this case."  Pet. App. 26a.  See also id at 12a-13a.
Instead, the court concluded, the CTEA would still be
within Congress's authority, because the CTEA is
necessary and proper to Congress's exercise of its
enumerated Copyright Clause powers.  Id. at 26a-27a.
As the court of appeals explained, "Congress found that
extending the duration of copyrights on existing works
would, among other things, give copyright holders an
incentive to preserve older works, particularly motion
pictures in need of restoration.  *  *  *  Preserving
access to works that would otherwise disappear-not
enter the public domain but disappear-`promotes
Progress' as surely as does stimulating the creation of
new works."  Id. at 27a (some internal quotation marks
omitted).  See also id. at 12a-13a.  Nothing in the Con-
stitution, in any event, compels Congress to establish a
dual-system of copyright under which works created
the moment before Congress enacts copyright term
extension legislation must have a shorter term than
works created the moment after.  Rather, Congress
was entitled to establish a system of copyright that
treats authors in a more even-handed fashion.
  In view of the court of appeals' alternative holding,
the issues on which petitioners claim conflict are largely
academic.  Even if this Court were to hold that the
preamble to the Copyright Clause imposes judicially



                                                19

manageable limits on the scope of Congress's authority,
as petitioners assert, the court of appeals' conclusion
that Congress did not exceed its authority-because
the CTEA does promote progress in the useful
arts-would still stand.4  Because this Court's resolu-
tion of the claimed conflicts would not alter the judg-
ment below, further review would be inappropriate.
    2. Petitioners' First Amendment claim fares no
better.  Petitioners initially contend (Pet. 18-22) that
the D.C. Circuit's decision rejecting their First Amend-
ment claim improperly expands this Court's decision in
Harper & Row, Publishers, Inc. v. Nation Enterprises,
471 U.S. 539 (1985).  They are mistaken.  In Harper &
Row, the Court held that the First Amendment did not
give a magazine the right to publish excerpts from
President Ford's copyrighted memoirs in advance of
their authorized publication.  Explaining its decision,
the Court stated:
      [C]opyright's idea/expression dichotomy "strike[s] a
      definitional balance between the First Amendment
      and the Copyright Act by permitting free communi-
      cation of facts while still protecting an author's ex-
      pression."  723 F.2d at 203.  No author may copy-
      right his ideas or the facts he narrates. 17 U.S.C.
       102(b).  See, e.g., New York Times Co. v. United
      States, 403 U.S. 713, 726, n. (1971) (Brennan, J., con-

                                                  
    4 This case, moreover, would be a particularly inappropriate
vehicle for considering the correctness of that holding.  Because
the case was decided on cross-motions for judgment on the plead-
ings, the parties have not developed an extensive record regarding
the extent to which extending existing copyrights might reason-
ably be thought to promote progress in the useful arts.  The
decision below, moreover, is the first to have considered that
question.



                           20

   curring) (Copyright laws are not restrictions on
   freedom of speech as copyright protects only form of
   expression and not the ideas expressed).
471 U.S. at 556.  Petitioners offer no reason why
(absent viewpoint discrimination not present here) the
idea/expression balance does not similarly prevent
copyright from infringing their First Amendment
rights.  Nothing prevents them from using the ideas or
facts contained in works protected by the CTEA.  Nor
do they explain why, to the extent anyone needs to use
copyrighted expression, the "fair use" doctrine incor-
porated into the Copyright Act does not fully vindicate
such interests.  Indeed, this Court has indicated that it
may be permissible to copy protected expression ver-
batim where "necessary adequately to convey the
facts," or where particular expression is "so integral to
the idea expressed as to be inseparable from it," Harper
&  Row, 471 U.S. at 563; and the "merger doctrine"
similarly instructs that "[w]hen there is essentially only
one way to express an idea, the idea and its expression
are inseparable and copyright is no bar to copying that
expression."  Yankee  Candle Co., Inc. v. Bridgewater
Candle Co., LLC, 259 F.3d 25, 35-36 (1st Cir. 2001); see
also Ets-Hokin v. Skyy Spirits, Inc., 225 F.3d 168, 1082
(9th Cir. 2000) ("Under the merger doctrine, courts will
not protect a copyrighted work from infringement if the
idea underlying the copyrighted work can be expressed
in only one way, lest there be a monopoly on the
underlying idea.").
  Instead, petitioners seek to distinguish Harper &
Row.  They argue that Harper & Row applies only
where a litigant demands a right to use otherwise le-
gitimately copyrighted material, and not to a First
Amendment "challenge of the statutes under which



                               21

copyrights are established."  Pet. 19-21.  They cite no
cases so holding, and any such distinction is illusory.  As
the court of appeals noted:
   The relevant question under the First Amendment
   -regardless whether it arises as a defense in a suit
   for copyright infringement or in an anticipatory
   challenge to a statute or regulation-is whether the
   party has a first amendment interest in a copy-
   righted work.  The works to which the CTEA
   applies, and in which plaintiffs claim a first amend-
   ment interest, are by definition under copyright;
   that puts the works on the latter half of the "idea/
   expression dichotomy" and makes them subject to
   fair use.  This obviates further inquiry under the
   First Amendment.
Pet. App. 7a.  Indeed, if petitioners' distinction were
accepted, the defendants in Harper & Row could have
prevailed if they had claimed that the Copyright Act
was  invalid insofar as it purported to create a copy-
right in the work they appropriated, rather than claim-
ing that they had a First Amendment right to use
otherwise copyrighted work materials.  Obviously,
those alternative ways of framing the same First
Amendment argument do not change the pertinent
analysis and should not alter the proper result.  In
either case, the question is whether the litigant has a
"cognizable First Amendment right to exploit" the
work that Congress has purported to protect.  Pet.
App. 8a.  Here, as in Harper & Row, petitioners may
freely copy and use the facts and ideas contained in
works subject to the CTEA, and may even copy original
expression in such works to the extent permitted by
the fair use doctrine and related principles.  The con-



                              22

cerns and values reflected in the First Amendment are
therefore fully satisfied.
  Petitioners assert that the basis of the court of
appeals' rejection of their First Amendment claim was
that "there is no First Amendment right to trespass."
Pet. 21.  Seizing upon the term "trespass," they claim
that "the D.C. Circuit's own authority in the context of
abortion protester cases shows" the court's error.  Ibid.
Even if one were to assume that an intra-circuit conflict
exists, it is well settled that such a conflict furnishes no
basis for a grant of certiorari.  See Davis v. United
States, 417 U.S. 333, 340 (1974); Wisniewski v. United
States, 353 U.S. 901, 902 (1957). In any event, peti-
tioners simply miss the point.  To accommodate First
Amendment concerns, copyright statutes have long
limited protection to the form of expression, and per-
mitted others to use all facts and ideas contained in the
copyrighted work.  They similarly have permitted
others to make "fair use" of even otherwise protected
expression.  It is the doctrine of fair use, as well as the
doctrine " `under which ideas are free but their parti-
cular expression can be copyrighted,' " Pet. App. 6a,
that ensures that copyright statutes remain largely
immune from First Amendment challenges.  Nothing in
the abortion protest cases cited by petitioners under-
mines that principle.
  Alternatively, petitioners argue that the D.C. Cir-
cuit's First Amendment holding conflicts with CBS
Broadcasting, Inc. v. Echostar Communications Corp.,
265 F.3d 1193 (11th Cir. 2001).  Pet. 22-24.  The short
answer is that the Eleventh Circuit, in rejecting a First
Amendment challenge to a copyright statute in CBS
Broadcasting, specifically endorsed the law of the D.C.
Circuit in the copyright/First Amendment context,
stating that "[t]here is `no first amendment right to



                            23

*  *  *  make commercial use of the copyrighted works
of others.' "  CBS Broad., 265 F.3d at 1211 (quoting
United Video, Inc. v. FCC, 890 F.2d 1173, 1190-91 (D.C.
Cir. 1989)).  Petitioners' claim of conflict thus is without
merit.
  3. Finally, in a footnote attached to the conclusion
section of the petition, petitioners argue that amici have
a right to inject additional arguments into a case, even
if those arguments are not adopted by the parties.  Pet.
26 n.13.  This purely procedural issue, presented in a
footnote, does not independently warrant the Court's
review.  Whether or not to consider additional argu-
ments presented by amici, where those arguments are
not adopted by the parties, is ordinarily entrusted to a
court's discretion; while courts may consider such
arguments, they may also decline to address them,
especially where, as here, prudential reasons support
that result.  See New Jersey v. New York, 523 U.S. 767,
781 n.3 (1998) (declining to address an argument that
the party has renounced, or renounced the benefit of ).
  Here, the court of appeals found strong prudential
reasons that weighed against considering the argu-
ments of amici, pp. 7-8, 10, supra, and any challenge to
those case-specific reasons is likely to prove case-
specific and of little continuing importance as well.
Moreover, in light of the court of appeals' alternative
holding-that the court would reach the same result
even if it considered and accepted the amicus's legal
theory (see Pet. App. 26a-27a)-any question con-
cerning the scope of amicus participation is not properly
presented in this case.



                             24

                     CONCLUSION
  The petition for a writ of certiorari should be denied.
  Respectfully submitted.

                             THEODORE  B.  OLSON
                              Solicitor General
                             ROBERT  D.  MCCALLUM, JR.
                              Assistant Attorney General
                             WILLIAM  KANTER
                             JOHN  S.  KOPPEL
                              Attorneys

DECEMBER 2001