Eldred v. Reno

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G O V E R N M E N T   M O T I O N


ERIC ELDRED, et al.,



JANET RENO, in her official capacity as Attorney General of the United States,


Civil Action No. 1:99CV00065 JLG


The Sonny Bono Copyright Term Extension Act ("CTEA"), Pub. L. 105-298, 112 Stat. 2827 (Oct. 27, 1998) extends by twenty years the basic term of copyright protection for both newly created works of authorship and most pre-existing works with subsisting copyrights. The Act is intended to harmonize the term of copyright protection in the United States with that applicable in the European Union by adopting a basic copyright term equal to life of the author plus 70 years. The Act is also intended to secure to authors the benefits of copyright protection both here and in Europe for a period commensurate with the expected life of the authors themselves and at least one generation of descendants. Where the life of the author cannot be ascertained (i.e., anonymous and pseudonymous works), and for "works made for hire" by authors that are corporate entities, Congress adopted a fixed copyright term that, for most published works, expires 95 years after the date of publication, a period intended to approximate the life plus 70 year term otherwise applicable.

Plaintiffs' challenge in this case is focused upon section 102(d)(1)(B) of the CTEA, which amends 17 U.S.C. § 304(b) to apply the same fixed 95-year term of copyright protection to pre-1978 works with subsisting copyrights. Plaintiffs' principal contention is that an extension of the copyright term for pre-existing works fails to promote the progress of science and the useful arts as contemplated by the Copyright Clause of the Constitution.

For a myriad of reasons spelled out in detail in the legislative history, Congress determined that this objective could best be achieved by applying the extended copyright term adopted in the CTEA to existing works. Those reasons include Congress' expressed desire: (a) to harmonize copyright laws in the United States with those applicable in the European Union and thereby foster international cooperation in the protection of intellectual property, (b) to provide additional resources to both individual and corporate authors to stimulate the creation of new works, and (c) to provide enhanced incentives for the preservation and dissemination of existing works. Since each of these subsidiary objectives is plainly adapted to promoting progress in science and the useful arts, the challenged provision falls well within Congress' discretion to select a policy governing copyrights which in its judgment best effectuates the broad objectives in the Constitution.

Plaintiffs also allege that, although the copyright term incorporated in each statute referenced in the Complaint formally is "limited," Congress' "practice of continually extending copyright terms retroactively means that Congress, in effect, is granting copyright holders more than a 'limited term.'" Plaintiffs' Second Amended Complaint ("Am. Compl."), ¶ 63. As plaintiffs' own allegation essentially concedes, the term of copyright prescribed by section 102(d)(1)(B) of the CTEA is, on its face, "limited" to 95 years. Nothing in the language of the Copyright Clause, in the history surrounding its adoption, in any judicial precedent construing it, or in the legislative enactments since the adoption of the Constitution, suggests that the Framers sought to straight-jacket Congress by placing some undisclosed numerical limit upon either the number of years that copyright protection may be provided or the number of times that statutes governing the term of copyrights may be amended. Quite to the contrary, the reference in the Copyright Clause to "limited Times," by its very language, confers broad discretion and flexibility upon the Congress.

Plaintiffs' alternative attempt, in Count II of their Second Amended Complaint, to import the public trust doctrine—a common law doctrine which holds that riparian lands under the tidewaters are vested in the King of England for the benefit of the people—into the field of copyright, is equally unavailing. Whatever the scope of the public trust doctrine may be, and regardless of whether it could ever be applied in contexts other than soil located under navigable waters, it is settled that the public trust doctrine in no way affects or limits the scope of Congress' express constitutional powers. Once it is established that Congress has authority to enact the CTEA under the Copyright Clause of the United States Constitution, the public trust doctrine (which was derived by the courts from English common law) cannot provide a basis for divesting Congress of its constitutional authority.

In Count III of the Second Amended Complaint, plaintiffs allege that the CTEA violates the First Amendment. However, it is settled that plaintiffs have no First Amendment right to reproduce the copyrighted works of others in violation of the Copyright Act.

Finally, plaintiffs' challenge to the No Electronic Theft (NET) Act, Pub. L. 105-147, 111 Stat. 2678 (Dec. 16, 1997) is predicated entirely upon their contention that Congress lacks the authority to extend the term of copyrights for existing works. As explained above, that contention is without merit. Since Congress unquestionably has the constitutional authority to penalize the infringement of a valid copyright, plaintiffs' challenge to the NET Act should also be dismissed.



The first federal copyright statute, which was enacted by Congress in 1790, provided copyright protection for an initial period of fourteen years. Act of May 31, 1790, §§ 1 and 3, 1 Stat. 124-125. The statute authorized copyrights not only for works "that shall hereafter be made and composed," but also existing works - - both those "already made and composed, and not printed and published" and those "already printed within these United States." Id., § 1. The 1790 Act also made clear that copyrights were to be freely transferrable. Thus, the statute confers the "sole right and liberty of printing, reprinting, publishing and vending" copyrighted works upon both authors and "their executors, administrators or assigns." Finally, the Act provided that, if the author were a U.S. citizen living at the expiration of the initial fourteen year term, "the same exclusive right shall be continued to [the author(s)] or his or their executors, administrators or assigns, for the further term of fourteen years." Id.

In 1831, Congress amended the Copyright Act to increase the initial term of copyrights from fourteen years to 28 years; the additional renewal period remained fourteen years making the total potential life of the copyright 42 years. Act of Feb. 3, 1831, § 1-2, 4 Stat. 436. The House Judiciary Committee's Report explained that the change was intended "to place authors in this country more nearly on an equality with authors in other countries." 7 Register of Debates in Congress, 21st Cong. 2d Sess., App. CXIX (Dec. 17, 1830). The Report notes that most European nations, including England, had adopted much longer periods of protection for copyrighted works, and that the United States was "very far behind" other countries in protecting intellectual property. Id. The 1831 statute, like its predecessor, extended the benefits of copyright to both authors and their "executors, administrators and legal assigns," and provided for copyrights not only for works that "shall hereafter be made or composed," but also those which "may be now made or composed, and not printed and published." Id.

Two other provisions in the 1831 Act are particularly pertinent here. First, the statute amended the Copyright Act to permit copyrights to be renewed for an additional fourteen year term if either the author or the author's widow or children were still living upon the expiration of the initial 28 year term. Id., § 2. Second, the 1831 Act expressly made the extended copyright term applicable to pre-existing works with copyrights that had not yet expired. In that regard, the Act provided that, "whenever a copyright has been heretofore obtained," the authors, or if the authors were not living upon passage of the statute, the authors' "heirs, executors and administrators, shall be entitled to the like exclusive enjoyment of said copyright . . . for the period of twenty-eight years from the first entry of said copyright, with the like privilege of renewal to the widow, child, or children of [the] author . . . ." Id., ¶ 16.

The above provisions remained largely unchanged until 1909 when Congress enacted a comprehensive revision of the copyright laws. Act of March 4, 1909, 35 Stat. 1075-1088. The 1909 Act left the initial copyright term unchanged at 28 years, and extended the renewal period from 14 to 28 years, making the maximum term of copyright protection 56 years. Id., § 23,

35 Stat. 1080. It permitted copyrights to be renewed and extended by the author, the author's widow, widower, or children, the executor of the author's will or, in the absence of a will, the author's next of kin. Id. Once again, the longer renewal term was applied both to works yet to be published and to pre-existing works with subsisting copyrights. Id., § 24, 35 Stat. 1080-1081.


In 1976, Congress fundamentally altered the method of computing copyright terms by adopting a basic copyright term for individual authors measured by the life of the author plus fifty years. Pub. L. 94-553, 90 Stat. 2541, 2572 at § 301 (Oct. 19, 1976). Adoption of the life plus fifty year standard brought the term of copyright protection in the United States into conformity with the practices adopted by a "very large majority" of other nations.1/ H. Rep. 1476, 94th Cong. 2d Sess. 135, reprinted in 1976 U.S.C.C.A.N. 5659, 5751.

Since the basic term was to be computed from the author's death, special provisions were needed to "deal with cases where the authorship is not revealed or where the 'author' is not an individual." Id. at 5753. Accordingly, section 302 of the Act provided a term of 75 years from first publication or 100 years from creation, whichever is shorter, for anonymous works, pseudonymous works, and works made for hire. Pub. L. 94-553, 90 Stat. 2572 at § 302(c).1/ The House Judiciary Committee's Report explained that, "[i]n general, the terms in these special cases approximate, on the average, the term of the life of the author plus 50 years established for other works." H. Rep. 1476, 94th Cong. 2d Sess. 138, reprinted in 1976 U.S.C.C.A.N. 5659, 5754.1/

The same maximum term of 75 years after publication was adopted for pre-1978 works with subsisting copyrights, including an initial term of 28 years and a renewal period of 47 years. Pub. L. 94-553, 90 Stat. 2572 at § 304. The Report of the House Judiciary Committee reflects that the fixed term of years (rather than the life plus 50 year standard) was retained for pre-1978 works with subsisting copyrights because "[a] great many of the present expectations in these cases are the subject of existing contracts, and it would be unfair and immensely confusing to cut off or alter these interests." H. Rep. 1476, 94th Cong. 2d Sess. 139, reprinted in 1976 U.S.C.C.A.N. 5659, 5755.

The extended period of protection, like other rights associated with a copyright, are vested in the author unless and until there has been a valid transfer of ownership of the copyright by the author. 17 U.S.C. § 201(a) and (d). Even if the copyright had previously been transferred, the 1976 Act incorporated a special provision designed to ensure that, wherever feasible, authors and their families, rather than transferees, would have the opportunity to benefit from the nineteen year extension of the renewal period for pre-1978 works. Specifically, the statute created a right of termination under which the author, or certain designated surviving members of the author's family, may terminate a prior transfer of a copyright effective at the end of the original 56 year term. Pub. L. 94-553, 90 Stat. 2574-2575 at § 304(c). The termination right was granted for all pre-1978 works with subsisting copyrights other than copyrights in works made for hire.1/ Id.


On October 29, 1993, the European Union issued a Directive on Term which was intended to harmonize the terms of copyrights among member countries of the EU. Senate CTEA Hearing at 11 (Statement of Marybeth Peters, Register of Copyrights). The Directive required each member country of the EU to implement a basic copyright term equal to life of the author plus 70 years, thus extending the previous international standard embodied in the Berne Convention by 20 years. Id. at 12. The Directive also required member countries of the EU to adopt a "rule of the shorter term" with respect to countries outside of the EU. Id. Under that rule, the EU would provide protection for copyrighted works for the "shorter term" applicable in the country of origin of a particular copyrighted work. Id.

On March 2, 1995, Senator Hatch introduced S. 483, the central terms of which were ultimately incorporated into the Sonny Bono Copyright Term Extension Act ("CTEA"), Pub. L. 105-298, 112 Stat. 2827 (Oct. 27, 1998). The CTEA, adopts a basic term of copyright protection for works created on or after January 1, 1978 equal to the life of the author plus 70 years. Id. , § 102(b)(1) (amending 17 U.S.C. § 302(a)). Like the 1976 Copyright Act that preceded it, the CTEA substitutes a fixed term of copyright protection (intended to approximate the life plus 70 year term otherwise applicable) for certain types of works for which the life of the author cannot be ascertained (anonymous and pseudonymous works) and "works made for hire" created by authors that are corporate entities. Specifically, it establishes a fixed copyright term of 95 years after publication or 120 years after creation of the work, whichever is shorter. Id., § 102(b)(3) (amending 17 U.S.C. § 302(c)). Similarly, section 102(d)(1)(B) of the CTEA, which is the provision challenged by plaintiffs here, amends 17 U.S.C. § 304(b) to apply the same 95 year term to pre-1978 works with copyrights subsisting in their renewal term upon the date of enactment of the CTEA.

Section 102(d)(1)(D) of the CTEA adds a new subsection (codified at 17 U.S.C. § 304(d)) which creates a right of termi-nation similar to that adopted in 1976 under which the author, or certain designated surviving members of the author's family, may terminate a prior transfer of a copyright effective at the end of the original 75 year term. Pub. L. 105-298, § 102(d)(1)(D), 112 Stat. 2827, 2828 (Oct. 27, 1998). The termination right provided by 17 U.S.C. § 304(d) supplements those granted in the 1976 Act. See discussion, supra, at 9; 17 U.S.C. §§ 203(a)(3) and 304(c).




The Copyright Clause grants 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." Const., Art. I, § 8, cl. 8.

The Clause thus describes both the objective which Congress may seek and the means to achieve it. The objective is to promote the progress of science and the arts. As employed, the terms "to promote" are synonymous with the words "to stimulate," "to encourage," or "to induce." To accomplish its purpose, Congress may grant to authors the exclusive right to the fruits of their respective works. Goldstein v. California, 412 U.S. 546, 555 (1973).

Within the limits of the constitutional grant, Congress has broad flexibility "to implement the stated purpose of the Framers by selecting the policy which in its judgment best effectuates the constitutional aim." Graham v. John Deere Company of Kansas City, 383 U.S. 1, 6 (1966) (emphasis added). Thus, "it is Congress that has been assigned the task of defining the scope of the limited monopoly to be granted to authors or to inventors in order to give the public appropriate access to their work product." Sony Corporation of America v. Universal City Studios, 464 U.S. 417, 429 (1984). In carrying out that task, "Congress need not 'require that each copyrighted work be shown to promote the useful arts . . . .'" Schnapper v. Foley, 667 F.2d 102 (D.C. Cir. 1981), cert. denied 455 U.S. 948 (1982), quoting in part Mitchell Brothers Film Group v. Cinema Adult Theater, 604 F.2d 852, 860 (5th Cir. 1979), cert. denied 445 U.S. 917 (1980). Instead, under the courts' settled construction of the Necessary and Proper Clause, Congress may utilize "all appropriate means which are conducive or adapted to the end to be accomplished, and which in the judgment of Congress will most advantageously effect it." The Legal Tender Cases, 110 U.S. 421, 440 (1884); McCulloch v. Maryland, 17 U.S. (4 Wheat.) 316, 420 (1819); Schnapper, 667 F.2d at 112; Mitchell Brothers Film Group, 604 F.2d at 860.

Given these standards, there can be little question that Congress' judgment here comports fully with the applicable constitutional requirements. The legislative history underlying the CTEA reflects at least three distinct reasons for Congress' decision to apply the CTEA's extended term to pre-existing works with subsisting copyrights, each of which is fully consistent with the purposes of the Copyright Clause.

    1. Need for Harmonization of Copyright Laws

One of Congress' principal objectives in enacting the CTEA is to harmonize the term of copyrights applicable in the United States with those applicable in the European Union. As the Report of the Senate Judiciary Committee reflects, recent technological advances and the increasingly global economy have made international cooperation indispensable to both the author's ability to exploit the full value of the author's works and the government's ability to provide effective protection for intellectual property:

The Committee recognizes the increasingly global nature of the market for U.S. copyrighted works. Uniformity of copyright laws is enormously important to facilitate the free flow of copyrighted works between markets and to ensure the greatest possible exploitation of the commercial value of these works in world markets for the benefit of U.S. copyright owners and their dependents. Indeed, in an age where the information superhighway offers widespread distribution of copyrighted works to almost anywhere in the world at limited costs, harmonization of copyright laws is imperative to the international protection of those works and to the assurance of their continued availability.
Senate CTEA Report at 8.
The same points are reiterated in testimony of the Register of Copyrights before the Committee:
The Copyright Office believes harmonization of the world's copyright laws is imperative if there is to be an orderly exploitation of copyrighted works. In the past, copyright owners refrained from entering certain markets where their works were not protected. In the age of the information society, markets are global and harmonization of national copyright laws is, therefore, crucial. . . . [T]he development of the global information infrastructure makes it possible to transmit copyrighted works directly to individuals throughout the world and has increased pressure for more rapid harmonization.
Id.; Senate CTEA Hearing at 20.

In sum, technological developments have made harmonization of copyright laws, and international cooperation in enforcing those laws, critical to Congress' ability effectively to carry out its core constitutional function of securing to authors "the exclusive Right to their respective Writings," which, in turn, is the constitutionally sanctioned means of promoting progress in science and the useful arts. The concerns, that led Congress to conclude that harmonization of copyright laws is essential, relate to the government's ability generally to protect copyrighted works.1/ Consequently, plaintiffs' narrow focus on the particular circumstances of individual authors (whether they be alive or dead) is misdirected, and does not alter or diminish the need to take steps to foster international cooperation in the protection of copyrighted works.1/

    2. Providing Increased Resources To Stimulate Creation of New Works
Another principal objective of the CTEA is to promote the development of new works of authorship by allowing American authors, and U.S. copyright-related industries generally, to benefit from increased resources that result from extension of the copyright term. Stimulating creative activity by authors is, of course, one of the principal purposes of copyright protection. Sony, 464 U.S. at 429; Goldstein v. California, 412 U.S. at 555; Twentieth Century Music v. Aiken, 422 U.S. 151, 156 (1975).

The Senate Committee's Report identified two sources of such increased resources. First, by virtue of the "rule of the shorter term" adopted by the EU, "[f]ailure on the part of the United States to provide equal protection for works in the United States will result in a loss for American creators and the economy of the benefits of 20 years of international copyright protection that they might otherwise have." Senate CTEA Report at 7. As set out in the Report, intellectual property is the nation's second largest export, accounting for roughly $40 billion in foreign sales in 1994, with a "huge percentage of [those exports] to nations of the European Union." Id. at 9. Second, recent technological developments have extended the commercial life of copyrighted works. As a result, "the likelihood that a work will remain highly profitable beyond the current term of copyright protection has increased significantly . . . ." Id. at 12.

As the Senate Report reflects, Congress concluded that allowing American authors to benefit from exploiting these new opportunities would further the basic purposes of the copyright laws by providing the resources necessary for them to create new works:

The Committee believes that the basic functions of copyright protection are best served by the accrual of the benefits of increased commercial life to the creator for two reasons. First, the promise of additional income will increase existing incentives to create new and derivative works.

*     *     *

Second, extended protection of existing works will provide added income with which to subsidize the creation of new works. This is particularly important in the case of corporate copyright owners, such as motion picture studios and publishers, who rely on the income from enduring works to finance the production of marginal works and those involving greater risks (i.e., works by young or emerging authors).
Senate CTEA Report at 12.

As plaintiffs allege, Am. Compl., ¶ 65(c), added income to subsidize the creation of new works may well prove to be ineffective in stimulating creative activity in circumstances where benefits flow to an individual author who has either died, or simply ceased to create new works of authorship. However, as set out above, "Congress need not 'require that each copyrighted work be shown to promote the useful arts . . . .'" Schnapper v. Foley, 667 F.2d at 112, quoting in part Mitchell Brothers Film Group v. Cinema Adult Theater, 604 F.2d at 860. The CTEA is clearly designed to stimulate creative activity on a more general level by allowing the benefits of the extended period of copyright protection to flow to authors. As such, the CTEA is plainly adapted to further the objectives of the Copyright Clause, and therefore conforms with the applicable constitutional standards, regardless of whether further creative activity results in each and every case. Id.

    3. Preservation of Existing Works

The Reports of both the House and the Senate Judiciary Committee reflect that the CTEA's increased copyright term for pre-existing works also is intended to provide an "incentive to restore older works and further disseminate them to the public." H. Rep. No. 105-452, 105th Cong. 2d Sess. 4 (March 18, 1998); Senate CTEA Report at 13. As the Senate Report reflects, recent technological developments have created a unique opportunity to restore and preserve countless artistic works from the 1920s and 1930s that might otherwise degrade:

Until now, copyrighted works have been fixed in perishable media, such as records, film, audiotape, paper or canvas. Copies or reproductions of these works usually suffer significant degradation of quality. The digital revolution offers a solution to the difficulties of film, video and audio preservation, and offers exciting possibilities for storage and dissemination of other types of works as well.

*     *     *

Because digital formatting enables the creation of perfect reproductions at little or no cost, there is a tremendous disincentive to investing the huge sums of money necessary to transfer these works to a digital format, absent some assurance of an adequate return on that investment. By extending the current copyright term for works that have not yet fallen into the public domain, including the term for works-made-for-hire (e.g., motion pictures), the bill will create such an assurance by providing copyright owners at least 20 years to recoup their investment.
Id. at 13.

The incentives created by Congress for the preservation and dissemination of existing works are fully in accord with the purposes of the Copyright Clause. As the Supreme Court explained in Sony Corporation of America v. Universal City Studios, the Copyright Clause is designed to do more than simply provide rewards to authors for creative activity:
Creative work is to be encouraged and rewarded, but private motivation must ultimately serve the cause of promoting broad public availability of literature, music and the other arts.
464 U.S. at 431-432, quoting Twentieth Century Music Corp. v. Aiken, 422 U.S. at 156. Thus, copyrights serve not only to "encourage people to devote themselves to intellectual and artistic creation," Goldstein, 412 U.S. at 555, but also "to induce release to the public of the products of [the author's] creative genius." Sony, 464 U.S. at 429, quoting United States v. Paramount Pictures, 334 U.S. 131, 158 (1948); accord, Senate CTEA Hearing at 6 (Statement of Marybeth Peters, Register of Copyrights) ("[C]opyright is granted to promote the public interest by stimulating creativity and by stimulating the dissemination of knowledge."). Because application of the CTEA to pre-existing works is designed to achieve precisely these purposes, plaintiffs' claim that the statute fails to further the purposes of the Copyright Clause is without merit.


Plaintiffs allege that, "[w]hile formally, under each of these extensions, the term is limited, the practice of continually extending copyright terms retroactively means that Congress, in effect, is granting copyright holders more than a 'limited term.'" Am. Compl., ¶ 63. As plaintiffs' allegation acknowledges, it is beyond dispute that the term provided in the CTEA is "limited" to 95 years. Nothing in the Copyright Clause suggests that the Framers intended to impose some fixed, maximum period of years upon copyright protection. Indeed, to the contrary, the express language of the Copyright Clause, which authorizes Congress to provide protection for "limited Times," makes clear that the "the exclusive right shall exist but for a limited period, and that period shall be subject to the discretion of Congress." Pennock & Sellers v. Dialogue, 27 U.S. (2 Pet.) 1, 16 (1829).

Nor does Congress' practice of extending copyright terms "retroactively" violate the Copyright Clause. More than a century ago, the Supreme Court established that the constitutional provision governing patents and copyrights authorizes Congress to enact legislation that is retrospective in its operation: Whether [the plaintiff's] exceptions are well taken or not, must depend on the law as it stood at the emanation of the patent, together with such changes as have been since made; for though they may be retrospective in their operation, that is not a sound objection to their validity; the powers of Congress to legislate upon the subject of patents is plenary by the terms of the Constitution, and as there are no restraints on its exercise, there can be no limitation of their right to modify them at their pleasure, so that they do not take away the rights of property in existing patents. McClurg v. Kingsland, 42 U.S. (1 How.) 202, 206 (1843).

Similarly, Congress has consistently applied changes in copyright terms to pre-existing works with copyrights subsisting at the time the legislation was enacted. See discussion, supra, at 4-11. Indeed, the very first copyright statute enacted in 1790, by its terms, authorized copyrights to be issued for pre-existing works, including works previously published. Act of May 31, 1790, § 1, 1 Stat. 124. As the Supreme Court observed in Burrow-Giles Lithographic Co. v. Sarony:

The construction placed upon the constitution by the first act of 1790 and the act of 1802, by the men who were contemporary with its formation, many of whom were members of the convention that framed it, is of itself entitled to very great weight, and when it is remembered that the rights thus established have not been disputed during a period of nearly a century, it is almost conclusive.
111 U.S. 53, 57 (1884).
Finally, Congress has not violated the Copyright Clause merely because it has repeatedly amended the term of copyrights. The wording of the reference to "limited Times" in the Copyright Clause is, on its face, designed to allow Congress to make precisely such adjustments, and thereby balance the many different competing interests affected by copyright protection. As the Supreme Court observed in Stewart v. Abend:
This evolution of the duration of copyright protection tellingly illustrates the difficulties Congress faces in attempting to "secur[e] for limited Times to Authors . . . the exclusive Right to their respective Writings. U.S. Const., Art. I, § 8, cl. 8. Absent an explicit statement of congressional intent . . ., it is not our role to alter the delicate balance Congress has labored to achieve.
495 U.S. 207, 230 (1990).1/


Plaintiffs also attack the constitutionality of the CTEA on the ground that the benefits conferred by the Act flow "to someone to whom the creator of the work transferred or sold the rights in the work in a transaction that contemplated a shorter copyright term." Plaintiffs assert that such a result is "outside the constitutional power to grant rights to 'Authors.'" Am. Compl., ¶ 65(b).

The fundamental difficulty with this claim is that the Copyright Act expressly provides that a "[c]opyright in a work protected under this title vests initially in the author or authors of the work." 17 U.S.C. § 201(a). Moreover, the Act invalidates most types of involuntary transfers, id., § 201(e), and generally requires that transfers of copyrights, other than by operation of law, be in writing. Id., § 204(a).

The CTEA does not repeal any of these provisions. Consequently, the benefits of the CTEA's extended copyright term flow to the author and the author's heirs, unless the author exercises (or has exercised) his or her right to transfer those benefits to a third party. 17 U.S.C. § 201(d). Thus, contrary to the claims made by plaintiffs here, the Copyright Act grants to authors the exclusive right to their respective writings. If a third party acquires an interest in that right, other than by operation of law (e.g., through state laws relating to intestate succession), it is due to the action of the author, not that of Congress. As Professor Peter Jaszi explained in response to questions posed by Senator Brown at the Senate hearing:

Some copyright contracts do specify a set period during which the rights which are being granted may be exploited by the assignee or licensee. Such contracts would not be materially affected by term extension. Many other agreements contain language granting rights for the entire duration of the copyright in the work, and frequently include references such as "and any extensions thereof." Generally speaking, the benefit of later-occurring extensions can be said to have been "bargained for" in such a contract-although one suspects that such bargains seldom entail any additional consideration.
Senate CTEA Hearing at 124-125.1/

The right to transfer ownership of a copyright has been a fixture of copyright law since the first copyright statute was enacted in 1790. Act of May 31, 1990, § 1, 1 Stat. 124; Wheaton v. Peters, 33 U.S. (8 Pet.) 591, 661 (1834). As the Register of Copyrights testified, "[i]n most cases authors' rewards are tied to the interests of those who exploit their works." Senate CTEA Hearing at 17. Thus, the fact that the benefits of a copyright may flow to an assignee hardly renders the statute unconstitutional. To the contrary, "given eighteenth century publishing practices, [the Framers] must have understood that authors' rights would be routinely assigned, often for a single, lump-sum payment, to publishers who would exploit the copyright thereafter." Id. at 124 (Response of Prof. Peter Jaszi to Questions from Senator Brown).1/


In Count II of the Second Amended Complaint, plaintiffs seek to invalidate the CTEA based upon their contention that "retroactive extension of the term of copyrights" is an "abdication by the government of control of public resources held for common use in violation of the Public Trust Doctrine." Am. Compl., ¶ 72. For the reasons set forth below, this claim is groundless.

The public trust doctrine is a judicially developed doctrine derived from the English common law which pertains to ownership of lands under the tide waters and other navigable waters. The Supreme Court has described the doctrine as follows:

At common law, the title and dominion in lands flowed by the tide water were in the King for the benefit of the nation . . . . Upon the American Revolution, these rights, charged with a like trust, were vested in the original States within their respective borders, subject to the rights surrendered by the Constitution of the United States.
Phillips Petroleum Company v. Mississippi, 484 U.S. 469, 473-474 (1988). By virtue of this doctrine, it is settled "that absolute property in, and dominion and sovereignty over, the soils under the tide waters in the original States were reserved to the several States, and that the new States since admitted have the same rights . . . ." Id. at 474. As the decision in Phillips Petroleum reflects, upon admission into the United States, the several States acquired "absolute property" in the soil under the tide waters even in circumstances where there had been a pre-statehood conveyance of the property to a private party.

As a threshold matter, the public trust doctrine simply has no application to the field of copyright. Neither the federal government nor the States have any form of "title" (in trust or otherwise) in either copyrights or in copyrighted property:

The production to which the protection of copyright may be accorded is the property of the author and not of the United States. But the copyright is the creature of the federal statute passed in the exercise of the power vested in the Congress. * * * In creating this right, the Congress did not reserve to the United States any interest in the production itself, or in the copyright, or in the profits that may be derived from its use. . . . The owner of the copyright, if he pleases, may refrain from vending or licensing and content himself with simply exercising the right to exclude others from using his property.
Fox Film Corporation v. Doyal, 286 U.S. 123, 127 (1932). Since the United States has not retained any interest in copyrighted works, it cannot hold such an interest in trust. Plaintiffs' attempt to transmogrify the public trust doctrine into some overarching limitation upon the authority of Congress over copyrights is therefore completely without foundation.

Even if the public trust doctrine were to have some applicability in the field of copyright, it is a common law doctrine that cannot provide any colorable basis for invalidating federal legislation enacted pursuant to the Copyright Clause of the United States Constitution. Indeed, plaintiffs' theory stands the Supremacy Clause on its head. It is the Constitution and laws of the United States that are the "supreme law of the Land," U.S. Const., Art. VI, cl. 2, not the common law. See e.g., District of Columbia v. Air Florida, 750 F.2d 1077, 1085 (D.C. Cir. 1984) (questioning "whether Congress has preempted some or all of the field which a federal common-law public trust doctrine would occupy").

For this reason, the Supreme Court has consistently held that the property interests of the several states in public trust lands are "subject to the rights surrendered by the Constitution of the United States." E.g., Phillips Petroleum, 484 U.S. 473-474. As the Court held Pollard's Lessee v. Hagan, the state's power over public trust lands:

can never be used so as to affect the exercise of any national right of eminent domain or jurisdiction with which the United States have been invested by the Constitution. For, although the territorial limits of Alabama have extended all her sovereign power into the sea, it is there, as on the shore, but municipal power, subject to the Constitution of the United States, "and the laws which shall be made in pursuance thereof."
44 U.S. (3 How.) 212, 230 (1845).
Similarly, the Supreme Court's decision in Shively v. Bowlby reaffirms that Congress has the constitutional power to dispose of lands in the territories, regardless of whether they might be considered public trust lands at common law:
We cannot doubt, therefore, that congress has the power to make grants of lands below high-water mark of navigable waters in any territory of the United States, whenever it becomes necessary to do so in order to perform international obligations, or to effect the improvement of such lands for the promotion and convenience of commerce with foreign nations and among the several states, or to carry out other public purposes appropriate to the objects for which the United States hold the territory.
152 U.S. 1, 48 (1894).1/
Since Congress is expressly empowered by the Constitution to enact copyright legislation, the public trust doctrine cannot provide any basis for invalidating that legislation.


In Count III of the Second Amended Complaint, plaintiffs seek to mount one final assault upon the CTEA on the theory that it violates the First Amendment by placing unconstitutional restrictions on plaintiffs' speech. Am. Compl., ¶ 79. As set out below, however, the notion that copyright restrictions violate the First Amendment has specifically been considered and rejected by both the Supreme Court and the D.C. Circuit.

"At the heart of the First Amendment lies the principle that each person should decide for himself or herself the ideas and beliefs deserving of expression, consideration, and adherence." Turner Broadcasting System v. F.C.C., 512 U.S. 622, 641 (1994). The Copyright Act fully accommodates this principle by permitting copyrights solely on the form of expression, and precluding copyrights on ideas. In that regard, the statute expressly provides that: "In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work." 17 U.S.C. § 102(b).

As the Supreme Court held, in rejecting a First Amendment challenge to the enforceability of a copyright in an action for infringement:

The Second Circuit noted correctly, that copyright's idea/expression dichotomy 'strike[s] a definitional balance between the First Amendment and the Copyright Act by permitting free communication of facts while still protecting an author's expression.' 723 F.2d at 203. No author may copyright 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., 91 S.Ct. 2140, 2147, n. , 29 L.Ed.2d 822 (1971) (Brennan, J., concurring) (Copyright laws are not restrictions on freedom of speech as copyright protects only form of expression and not the ideas expressed).
Harper & Row Publishers, Inc. v. Nation Enterprises, 471 U.S. 539, 556 (1985).
In United Video v. F.C.C., 890 F.2d 1173 (D.C. Cir. 1989), the D.C. Circuit, citing Harper, applied the same reasoning in rejecting a claim by a group of cable television companies who contended that they had a First Amendment right to retransmit copyrighted television broadcasts:
In the present case, the petitioners desire to make commercial use of the copyrighted works of others. They have no first amendment right to do so. Although there is some tension between the Constitution's copyright clause and the first amendment, the familiar idea/expression dichotomy of copyright law, under which ideas are free but their particular expression can be copyrighted, has always been held to give adequate protection to free expression.
890 F.2d at 1191.
The decisions of the Supreme Court and the D.C. Circuit in Harper and United Video, respectively, are controlling here. Because plaintiffs do not have a first amendment right to reproduce the copyrighted work of others in violation of the Copyright Act, their First Amendment challenge to the CTEA is without merit.


Plaintiffs also seek to enjoin enforcement of The No Electronic Theft (NET) Act, Pub. L. 105-147, 111 Stat. 2678 (Dec. 16, 1997). The NET Act does not alter or affect either the scope or duration of existing copyrights; instead, it amends 17 U.S.C. § 506(a) to impose criminal penalties for certain types of wilful copyright infringement.1/ "By virtue of the explicit constitutional grant [in the Copyright Clause], Congress has the unquestioned authority to penalize directly the distribution of goods that infringe copyright, whether or not those goods affect interstate commerce." Dowling v. United States, 473 U.S. 207, 220 (1985). Thus, Congress' authority to impose penalties for wilful copyright infringement is beyond dispute.

Plaintiffs do not assert any independent constitutional claim with respect to the NET Act. Instead, their request for an injunction is predicated entirely upon their underlying constitutional challenge to the CTEA (Am. Compl., ¶¶ 23-26, Prayer for Relief, ¶ 2). For the reasons set out in Points I-III above, the CTEA falls well within Congress' authority under the Copyright Clause. Accordingly, through the NET Act, Congress may punish wilful infringement of copyrights that remain effective by virtue of the CTEA.


For the foregoing reasons, defendant's motion for judgment on the pleadings should be granted, and judgment should be entered in favor of defendant in this action.

Respectfully submitted,

Acting Assistant Attorney General

United States Attorney

VINCENT M. GARVEY (D.C. Bar No. 127191)
JOSEPH W. LOBUE (D.C. Bar No. 293514)
U.S. Department of Justice
Civil Division
901 E Street, N.W., Room 1060
Washington, D.C. 20530
Telephone: (202) 514-4640
Attorneys for Defendants


I hereby I certify that, on June 25, 1999, I caused a copy of the foregoing Defendant's Motion for Judgment on the Pleadings to be served by first-class mail, postage prepaid, upon plaintiff's counsel at the following address:

Geoffrey S. Stewart
Pamela J. Jadwinm
Hale & Dorr, LLP
1455 Pennsylvania Avenue, N.W.
Washington, D.C. 20004

Charles R. Nesson
Lawrence Lessig
Jonathan L. Zittrain
The Berkman Center for Internet & Society
1563 Massachusetts Avenue
Cambridge, Massachusetts 02138

James B. Lampert
Hale & Dorr LLP
60 State Street
Boston, Massachusetts 02109

Last modified July 7, 1999. Berkman Center for Internet & Society