No. 01-618
IN THE
Supreme Court of the United States
ERIC ELDRED, et al.,
Petitioners,
v.
JOHN D. ASHCROFT,
In his official capacity as Attorney General,
Respondent.
On Petition for Writ of Certiorari to the
United States Court of Appeals for the District of Columbia Circuit
BRIEF OF AMICI CURIAE
EAGLE FORUM EDUCATION & LEGAL DEFENSE FUND
AND THE CATO INSTITUTE
IN SUPPORT OF PETITIONERS
ERIK S. JAFFE
Counsel of Record
ERIK S. JAFFE, P.C.
5101 34th Street, N.W.
Washington, D.C. 20008
(202) 237-8165
Counsel for Amici Curiae
TABLE OF CONTENTS
Pages
TABLE OF CONTENTS......................................................... i
TABLE OF AUTHORITIES..................................................ii
INTEREST OF AMICI CURIAE........................................... 1
SUMMARY OF ARGUMENT.............................................. 2
ARGUMENT.......................................................................... 4
I. THE DECISION BELOW IS IN THE MINORITY OF A
6-4 CIRCUIT SPLIT REGARDING THE ROLE OF
AMICI. ............................................................................ 4
II. RESOLVING THE CIRCUIT SPLIT REGARDING THE
ROLE OF AMICI IS IMPORTANT TO THE PROPER
ADMINISTRATION OF THE JUDICIAL SYSTEM AND
THE FEDERAL RULES OF APPELLATE PROCEDURE. ........ 6
III. THE FIRST AMENDMENT CONFLICT SHOULD BE
RESOLVED PROMPTLY DUE TO THE NATIONWIDE
CHILL CREATED BY THE CTEA AND THE
DECISION BELOW. ....................................................... 11
IV. THE COPYRIGHT CLAUSE LIMITS CONGRESS'
POWER TO "PROMOT[ING] THE PROGRESS OF
SCIENCE.".................................................................... 15
CONCLUSION..................................................................... 18
ii
TABLE OF AUTHORITIES
Pages
Cases
Bridges v. City of Bossier, 92 F.3d 329 (CA5 1996),
cert. denied, 519 U.S. 1093 (1997)..................................... 5
CBS Broadcasting, Inc. v. EchoStar
Communications Corp., 265 F.3d 1193 (CA11
2001)................................................................................. 11
Corrosion Proof Fittings v. EPA, 947 F.2d 1201
(CA5 1991) ......................................................................... 5
Florida Prepaid Postsecondary Educ. Expense Bd.
v. College Sav. Bank, 527 U.S. 627 (1999) ...................... 13
Florida v. J.L., 529 U.S. 266 (2000)....................................... 9
Graham v. John Deere Co., 383 U.S. 1 (1966) .............. 15, 16
Gulf Power Co. v. United States, 187 F.3d 1324
(CA11 1999) ....................................................................... 5
Harper & Row Publishers, Inc. v. Nation Enters.,
471 U.S. 539 (1985).................................................... 11, 12
Mapp v. Ohio, 367 U.S. 643 (1961) ....................................... 9
Massachusetts Food Ass'n v. Massachusetts
Alcoholic Beverages Control Comm'n, 197 F.3d
560 (CA1 1999), cert. denied, 529 U.S. 1105
(2000).................................................................................. 4
Montana v. Egelhoff, 518 U.S. 37 (1996)............................... 9
National Comm'n on Egg Nutrition v. FTC, 570
F.2d 157 (CA7 1977), cert. denied, 439 U.S. 821
(1978).................................................................................. 5
New Castle County v. National Union Fire Ins. Co.,
243 F.3d 744 (CA3 2001)................................................... 4
Nixon v. Shrink Missouri Government PAC, 528
U.S. 377 (2000)................................................................... 9
iii
Samuels, Kramer & Co. v. CIR, 930 F.2d 975
(CA2), cert. denied, 502 U.S. 957 (1991) .......................... 4
Schnapper v. Foley, 667 F.2d 102 (CADC 1981),
cert. denied, 455 U.S. 948 (1982)..................................... 16
Suntrust Bank v. Houghton Mifflin Co., 268 F.3d
1257 (CA11 2001) ............................................................ 12
Swan v. Peterson, 6 F.3d 1373 (CA9 1993), cert.
denied, 513 U.S. 985 (1994)............................................... 6
Teague v. Lane, 489 U.S. 288 (1989)..................................... 9
Tyler v. City of Manhattan, 118 F.3d 1400 (CA10
1997)................................................................................... 6
United States v. Matthews, 209 F.3d 338 (CA4),
cert. denied, 531 U.S. 910 (2000)....................................... 4
United States v. Morrison, 529 U.S. 598 (2000) .................. 17
Rules
D.C. Cir. R. 29 ........................................................................ 9
Fed. R. App. P. 2..................................................................... 7
Fed. R. App. P. 29.......................................................... passim
Fifth Cir. Local R. 29.2........................................................... 9
Supreme Court Rule 37..................................................... 7, 10
Third Cir. Local App. R. 29.1................................................. 9
Other Authorities
1967 Adv. Comm. Note to Fed. R. App. P. 2......................... 7
1967 Adv. Comm. Note to Fed. R. App. P. 29....................... 7
1998 Adv. Comm. Note to Fed. R. App. P. 29....................... 8
New Lexicon Webster's Dictionary (1994).......................... 17
Ninth Cir. R. 29-1, Cir. Adv. Comm. Note............................. 9
IN THE
S
S
S
Suuuupreme Court of the United S
preme Court of the United S
preme Court of the United S
preme Court of the United Sttttates
ates
ates
ates
ERIC ELDRED, et al.,
Petitioners,
v.
JOHN D. ASHCROFT,
In his official capacity as Attorney General,
Respondent.
On Petition for Writ of Certiorari to the
United States Court of Appeals for the District of Columbia Circuit
INTEREST OF AMICI CURIAE1
Eagle Forum Education & Legal Defense Fund ("Eagle
Forum ELDF") is an Illinois nonprofit corporation organized
in 1981. Eagle Forum ELDF's mission is to enable conserva-
tive and pro-family men and women to participate in the
process of self-government and public policy making so that
America will continue to be a land of individual liberty, fam-
ily integrity, and respect for the United States Constitution.
One of the ways Eagle Forum ELDF performs these functions
is through filing amicus curiae briefs in this Court and in the
federal circuit courts of appeals. It thus has a significant in-
1 This brief is filed with the written consent of all parties. No counsel for
a party authored this brief in whole or in part, nor did any person or entity,
other than amici or their counsel, make a monetary contribution to the
preparation or submission of this brief.
2
terest in the treatment of arguments by amici by this Court
and other federal courts. Eagle Forum ELDF also has a sig-
nificant interest in striking the retroactive provisions of the
Sonny Bono Copyright Term Extension Act of 1998
("CTEA") as an overreaching by Congress beyond the limita-
tions imposed by the Copyright Clause and the First Amend-
ment.
The Cato Institute was established in 1977 as a nonparti-
san public policy research foundation dedicated to advancing
the principles of individual liberty, free markets, and limited
government. Cato's Center for Constitutional Studies was
established in 1989 to help restore the principles of limited
constitutional government and to secure those rights, both
enumerated and unenumerated, that are the foundation of in-
dividual liberty. Toward those ends the Institute and the Cen-
ter undertake a wide variety of publications and programs,
including amicus briefs in the federal courts of appeals and
this Court. The instant case raises squarely the question of
the role of amici in the federal courts and thus is of central
interest to Cato and the Center.2
SUMMARY OF ARGUMENT
This case raises important issues regarding the constitu-
tional constraints upon Congress's copyright powers that have
divided the courts of appeals. It also involves a significant
and frequently-occurring issue regarding the role of amici cu-
riae that impacts the administration of justice and likewise
has divided the courts of appeals. In the course of rejecting
petitioners' position on the constitutional issues presented, the
D.C. Circuit refused to consider additional arguments pre-
sented by amici in support of petitioners on those same issues,
and thereby eliminated any role for amici solely because
2 Cato joins Parts I & II of this brief regarding the role of amici in the
courts of appeals, but takes no position on the merits of the First Amend-
ment and Copyright Clause issues discussed in Parts III & IV.
3
those arguments had not been made or adopted by the parties
in this case. That limitation on the role of amici, however, is
contrary to Federal Rule of Appellate Procedure 29, every
Local Rule that addresses the content of amicus briefs, and
the approach taken by this Court and six circuit courts of ap-
peals. Rule 29 and the majority of courts disfavor repetitive
arguments by amici and affirmatively encourage amici to
raise new legal arguments not raised by the parties. The ap-
proach now adopted by the D.C. Circuit and used in three
other circuits, however, turns the role of amici on its head and
harms the administration of justice by allowing the creation of
precedent based on incomplete or erroneous constructions of
law that will have impact far beyond the parties themselves.
Regarding the constitutional questions presented by the
petition, the decision below is wrong on both textual and
structural grounds. The First Amendment imposes a con-
straint on Congress' copyright power that is not limited to, or
satisfied by, copyright's idea/expression dichotomy. Particu-
larly where new statutory provisions increase the burden on
speech, traditional First Amendment scrutiny is appropriate
for such provisions. The D.C. Circuit's categorical rejection
of the First Amendment challenge to retroactive extension of
copyrights thus is inconsistent with the limitations placed by
the First Amendment on all exercises of Article I powers.
The court's interpretation of the Copyright Clause also is in-
consistent with the Constitution, rendering superfluous the
very definition of Congress' power "To promote the Progress
of Science." Unconditional retroactive extension of existing
copyrights does not promote progress at all, and effectively
eliminates the requirement that copyrights be granted only for
"limited Times."
4
ARGUMENT
I. THE DECISION BELOW IS IN THE MINORITY OF A 6-4
CIRCUIT SPLIT REGARDING THE ROLE OF AMICI.
Federal Rule of Appellate Procedure 29(a) provides that a
non-governmental amicus curiae "may file a brief * * * if the
brief states that all parties have consented to its filing." De-
spite this express authorization to file an amicus brief where
all parties have consented (as in this case), there is a circuit
split over whether a court of appeals must consider supple-
mental arguments by amici that are relevant to the issues on
appeal when the parties have not likewise made the same ar-
guments to that court. The D.C. Circuit in this case takes the
minority view that such supplemental arguments are not
properly before the court.
At least six circuits will consider supplemental arguments
raised by amici that are not also made by the parties on ap-
peal. See Massachusetts Food Ass'n v. Massachusetts Alco-
holic Beverages Control Comm'n, 197 F.3d 560, 567 (CA1
1999) (finding no need to allow intervention in order to raise
new legal arguments because "a court is usually delighted to
hear additional arguments from able amici that will help the
court toward right answers"), cert. denied, 529 U.S. 1105
(2000); Samuels, Kramer & Co. v. CIR, 930 F.2d 975, 986 &
n. 9, 988-990 (CA2) (considering argument by amicus regard-
ing a phrase in Appointments Clause even though party relied
upon different language and expressly rejected reliance on
language argued by amicus), cert. denied, 502 U.S. 957
(1991); New Castle County v. National Union Fire Ins. Co.,
243 F.3d 744, 754 (CA3 2001) (noting that "[o]f the three
briefs submitted in this case, only the amicus attempts a pub-
lic policy argument," and addressing that argument); United
States v. Matthews, 209 F.3d 338, 344 n. 3 (CA4) (addressing
the merits of an argument expressly eschewed by the party at
oral argument but raised by one of his amici), cert. denied,
5
531 U.S. 910 (2000); Bridges v. City of Bossier, 92 F.3d 329,
335 n. 8 (CA5 1996) (allowing argument "first raised" by
amicus but which had not been argued by appellant in the dis-
trict court or in his initial brief on appeal, and citing Corro-
sion Proof Fittings v. EPA, 947 F.2d 1201, 1208 (CA5 1991),
for the proposition that the "court can consider different ar-
guments raised by amicus curiae on issues raised by appel-
lant"), cert. denied, 519 U.S. 1093 (1997); Gulf Power Co. v.
United States, 187 F.3d 1324, 1330-31 (CA11 1999) (ad-
dressing on the merits different arguments from amici on a
takings question).
Contrary to that wide acceptance of new amicus argu-
ments on existing issues, however, the D.C. Circuit in this
case held that it would not consider an argument by amicus
relating to the proper construction of the Copyright Clause
and to the circuit's erroneous precedent on the matter because
it claimed that the "argument is rejected by the actual parties
to this case and therefore is not properly before" the court.
Pet. App. 11a. The court further claimed that "because the
plaintiffs conspicuously failed to adopt the argument of the
amicus, the Government was not alerted to any need to argue
this point and did not do so." Id.; see also id. at 16a (argu-
ment made by amicus may only be considered "in a future
case in which a party to the litigation argues the point"); id. at
25a (opinion on rehearing) (even viewing the "issue" broadly,
"we would still not reach what would then be the supporting
argument of the amicus"); id. at 26a ("because the plaintiffs-
appellants did not take the same tack as the amicus, the Gov-
ernment did not on brief address the district court's interpreta-
tion of this court's decision in Schnapper").
Three other circuits similarly will not consider supple-
mental arguments on appeal by amici unless the parties have
likewise made the same argument. See National Comm'n on
Egg Nutrition v. FTC, 570 F.2d 157, 160 (CA7 1977) (hold-
ing that because amicus' "argument was not made before the
FTC or even by the petitioners themselves in this court [it] is
6
therefore not properly before us"), cert. denied, 439 U.S. 821
(1978); Swan v. Peterson, 6 F.3d 1373, 1383 (CA9 1993)
(holding that while new amicus arguments may be allowed on
limited subjects, such as jurisdiction, that could be raised sua
sponte, because the parties "did not adopt amicus' argument
by reference in their brief and none of the other exceptions
apply," it would not consider the argument by amicus), cert.
denied, 513 U.S. 985 (1994); Tyler v. City of Manhattan, 118
F.3d 1400, 1404 (CA10 1997) (declining to consider argu-
ment by amicus where party "did not adopt amicus' argument
by reference in his brief" and the exceptions listed by the
Ninth Circuit in Swan did not apply).
The broad circuit split regarding whether supplemental
amicus arguments not expressly adopted by the parties may
be considered by the courts of appeals should be resolved by
this Court. That issue is significant not just to matters of local
circuit administration, but to the proper construction of the
Federal Rules of Appellate Procedure and to the administra-
tion of justice in general.
II. RESOLVING THE CIRCUIT SPLIT REGARDING THE ROLE
OF AMICI IS IMPORTANT TO THE PROPER
ADMINISTRATION OF THE JUDICIAL SYSTEM AND THE
FEDERAL RULES OF APPELLATE PROCEDURE.
Amici curiae, particularly at the appellate level, play an
important role in the administration of justice. As cases move
higher up in the judicial system, their effective impact rapidly
expands beyond the particular parties or the local district, and
encompasses persons in multiple states and throughout the
country as a whole. That expanding impact is particularly
noticeable in the D.C. Circuit, where the court often rules on
nationwide programs and sets precedent with impact far be-
yond its geographic borders. Given the reach of such deci-
sions, it is important that courts of appeals remain open to
consideration of all legal arguments relevant to the resolution
of issues properly before them.
7
The split in authority regarding the role of amici is espe-
cially troubling because the minority view excluding new
amicus arguments is contrary to the Federal Rules of Appel-
late Procedure. As noted above, amici having the consent of
the parties need no further authority to file their briefs. Their
right to file in such circumstances is provided directly by the
Federal Rules.
When adopted in 1967, Rule 29 regularized the treatment
of amicus briefs, which previously had been regulated by lo-
cal rule in only five circuits. The new Federal Rule followed
the majority practice in the circuits by requiring leave of court
to file an amicus brief, "except under the circumstances" of
filing by certain government entities or filing with consent of
the parties. 1967 Adv. Comm. Note to Fed. R. App. P. 29.3
The 1998 amendments to Rule 29 made a number of sub-
stantive changes that clarified the role of amici under the
Rules. In discussing a new requirement that an amicus seek-
ing leave to file from the court state the relevance of the mat-
ters discussed in its brief, the Advisory Committee clarified
the role of amici by quoting from Supreme Court Rule 37.1:
"An amicus curiae brief which brings relevant matter
to the attention of the Court that has not already been
brought to its attention by the parties is of considerable
help to the Court. An amicus curiae brief which does
3 Federal Rule of Appellate Procedure 2 provides that "a court of appeals
may to expedite its decision or for other good cause suspend any pro-
vision of these rules in a particular case and order proceedings as it di-
rects, except as otherwise provided in Rule 26(b)." The primary purpose
of this rule is to grant power to courts of appeals to "expedite the determi-
nation of cases of pressing concern to the public or to litigants by prescrib-
ing a time schedule other than that provided by the rules" and to relieve
litigants of the consequences of defaults under the rules where "manifest
injustice would otherwise result." 1967 Adv. Comm. Note to Fed. R.
App. P. 2. Neither circumstance is relevant to this case or to the general
issue of whether a court must consider different arguments timely pre-
sented by amici on the issues presented in a case.
8
not serve this purpose simply burdens the staff and fa-
cilities of the Court and its filing is not favored."
1998 Adv. Comm. Note to Fed. R. App. P. 29, subd. (b).
The clear expectation is that amici in the courts of ap-
peals, no less than in the Supreme Court, will say something
new something not already said by the parties and that
significant overlap between the arguments of the parties and
the amici would be considered a burden on the courts. That
expectation is confirmed by the shorter page limits for amicus
briefs provided in the 1998 amendments. As explained in the
Advisory Committee Notes, such shorter limits are appropri-
ate because "an amicus brief is supplemental" and "should
treat only matter not adequately addressed by a party." 1998
Adv. Comm. Note to Fed. R. App. P. 29, subd. (d).
The propriety of supplemental arguments also is reflected
in the requirement that the brief must be filed "no later than 7
days after the principal brief of the party being supported is
filed," unless the court grants leave for later filing. Fed. R.
App. P. 29(e). As explained by the Advisory Committee, the
"7-day stagger was adopted because it is long enough to per-
mit an amicus to review the completed brief of the party be-
ing supported and avoid repetition argument." 1998 Adv.
Comm. Note to Fed. R. App. P. 29, subd. (e). The stagger is
sufficiently short so that the "opposing party will have suffi-
cient time to review arguments made by the amicus and ad-
dress them in the party's responsive pleading." Id.
Most circuits have found it unnecessary to supplement the
Federal Rules concerning the nature of amicus participation.
Four circuits, however, have confirmed through local rules
the essential point that amici are expected to make new argu-
ments, not merely echo the parties. The D.C. Circuit, for ex-
ample, has the most forceful reiteration of this basic point,
requiring that an amicus brief "must avoid repetitious of facts
or legal arguments made in the principal (appellant/petitioner
or appellee/respondent) brief and focus on points not made or
9
adequately elaborated upon in the principal brief, although
relevant to the issues before this court." D.C. Circuit Rule 29.
Local Rules from three other circuits are to similar effect.4
Moreover, this Court itself has considered arguments and
even claims raised on appeal only by an amicus. In Teague v.
Lane, 489 U.S. 288, 300 (1989), this Court addressed a retro-
activity argument notwithstanding that "[t]he question of ret-
roactivity with regard to petitioner's fair cross section claim
has been raised only in an amicus brief." Likewise, in Mapp
v. Ohio, 367 U.S. 643, 646 n. 3 (1961), this Court noted, in
the course of overruling prior precedent, that "[a]lthough
appellant chose to urge what may have appeared to be the
surer ground for favorable disposition and did not insist that
Wolf be overruled, the amicus curiae * * * did urge the Court
to overrule Wolf." See also Florida v. J.L., 529 U.S. 266, 272
(2000) (addressing the merits of a separate amicus argument
on the reliability of a tip); Nixon v. Shrink Missouri Govern-
ment PAC, 528 U.S. 377, 395 n. 7 (2000) (addressing the
merits of an amicus argument that contribution limits were
insufficiently narrow for First Amendment purposes in light
of other means of addressing the harms alleged); Montana v.
Egelhoff, 518 U.S. 37, 46-48 (1996) (considering the merits
of amicus' alternative theory of a due process violation).
Given that Rule 29 is expressly modeled on this Court's own
4 See Third Cir. Local App. R. 29.1 (for amicus briefs on rehearing: "Be-
fore completing the preparation of an amicus brief, counsel for an amicus
curiae shall attempt to ascertain the arguments that will be made in the
brief of any party whose position the amicus is supporting, with a view to
avoiding any unnecessary repetition or restatement of those arguments in
the amicus brief."); Fifth Cir. Local R. 29.2 (an amicus brief "should
avoid the repetition of facts or legal arguments contained in the principal
brief and should focus on points either not made or not adequately dis-
cussed in those briefs"); Ninth Cir. R. 29-1, Cir. Adv. Comm. Note
("Movants are reminded that the court will review the amicus curiae brief
in conjunction with the briefs submitted by the parties, so that amicus
briefs should not repeat arguments or factual statements made by the par-
ties.").
10
Rule 37, the practice of this Court is instructive on the proper
interpretation of Rule 29 in the courts of appeals.
Federal Rule of Appellate Procedure 29 provides a uni-
form rule that contemplates significant and non-redundant
participation by amici curiae. Alternative legal arguments on
existing issues fit precisely within the purpose of that Rule.
The approach taken by the D.C. Circuit, however, effectively
destroys the role of amici, or forces them to do exactly what
the rules declare they should avoid merely repeat or embel-
lish the arguments already made by the parties. As Judge
Sentelle correctly noted in his dissent from the panel decision,
amicus in this case did "precisely" what was required of it in
"avoiding repetition of facts or legal arguments" already
made, and its supplemental arguments should have been con-
sidered fully on the merits. Pet. App. 22a. By refusing to
consider those arguments, the D.C. Circuit's decision "effec-
tively eliminates any role for amicus curiae in the practice of"
the circuit. Id. at 28a (Sentelle, J., dissenting from the denial
of rehearing en banc).
If allowed to stand, this holding will effectively bar fu-
ture amici from adding anything except possibly rhetori-
cal flourish to arguments already outlined and embraced
by the parties. This is particularly the case for those
amici who, true to their traditional role as "friends of the
court," operate independently to assist the Court in its
determinations.
Id. at 31a. Because Federal Rule 29 eschews such a useless
and court-burdening role for amici, and because the circuits
are split over this important question for the administration of
the appellate courts, this Court should grant the petition and
re-establish the uniform and sensible approach contemplated
by Rule 29.
11
III. THE FIRST AMENDMENT CONFLICT SHOULD BE
RESOLVED PROMPTLY DUE TO THE NATIONWIDE
CHILL CREATED BY THE CTEA AND THE DECISION
BELOW.
The D.C. Circuit below held that "copyrights are cate-
gorically immune from challenges under the First Amend-
ment." Pet. App. 6a. As petitioners correctly note, such a
categorical exclusion of Congress' copyright power from
First Amendment scrutiny conflicts with the approach
adopted by the Eleventh Circuit. See Pet. 22-23 (discussing
CBS Broadcasting, Inc. v. EchoStar Communications Corp.,
265 F.3d 1193 (CA11 2001)). Because much of the confu-
sion in this area is a function of potentially ambiguous guid-
ance from this Court in Harper & Row Publishers, Inc. v. Na-
tion Enterprises, 471 U.S. 539 (1985), it will not be resolved
until this Court clarifies the constitutional truism that all of
Congress' enumerated powers are subject to, and constrained
by, the First Amendment.
In Harper & Row, this Court addressed the situation
where the defendant "effectively arrogated to itself the right
of first publication." 471 U.S. at 549. This Court quoted with
approval the statement that "copyright's idea/expression di-
chotomy `strike[s] a definitional balance between the First
Amendment and the Copyright Act by permitting free com-
munication of facts while still protecting an author's expres-
sion.'" Id. at 556 (citation omitted). That statement, unfortu-
nately, has been taken to mean that so long as the
idea/expression dichotomy is in place, no other aspect of
copyright law is subject to First Amendment scrutiny. Such
an extreme conclusion, however, goes too far. To say, in the
context of the first-publication right in Harper & Row, that
copyright may protect "expression" without violating the First
Amendment is a far cry from saying that the First Amend-
ment allows any form of restriction to be placed on "expres-
sion" rather than "ideas." And, indeed, this Court did not
make such a sweeping ruling. Rather, it merely rejected a
12
reading of the First Amendment that would "effectively de-
stroy any expectation of copyright protection in the work of a
public figure," id. at 557, and thus completely override core
aspects of the copyright power. That this Court took the time
to note copyright's positive effects on First Amendment val-
ues in the context of that case, id. at 559, actually demon-
strates the propriety of a targeted First Amendment analysis
rather than simply applying a categorical rule excepting all
copyright restrictions on "expression" from First Amendment
scrutiny.
While the exercise of the copyright power will, in many
instances, survive First Amendment scrutiny, the provisions
of the Copyright Act in general, and each new expansion of
that Act in particular, are nonetheless subject to such scrutiny
and the survival of each added speech restriction is not preor-
dained. The establishment of "fair use," first as a judicial
doctrine and then as a statutory rule, illuminates that point.
As the Eleventh Circuit recently observed in Suntrust Bank v.
Houghton Mifflin Co., 268 F.3d 1257, 1264 (CA11 2001),
prior to 1976, "fair use was a judge-made right developed to
preserve the constitutionality of copyright legislation by pro-
tecting First Amendment values." In 1976, however, Con-
gress amended the Copyright Act and effectively increased its
restriction on speech by eliminating the requirement that au-
thors publish their works in order to receive copyright protec-
tion. The statute, however, also codified fair use as a limita-
tion on copyright. "Had fair use not been recognized as a
right under the 1976 Act, the statutory abandonment of publi-
cation as a condition of copyright that had existed for over
200 years would have jeopardized the constitutionality of the
new Act because there would be no statutory guarantee that
new ideas, or new expressions of old ideas, would be accessi-
ble to the public." Id. (emphasis added). Notwithstanding the
idea/expression dichotomy, therefore, the newly restrictive
aspect of the 1976 Copyright Act was saved from likely con-
13
stitutional infirmity by an independent accommodation of the
First Amendment interests threatened.
The latest restriction added to the Copyright Act a retro-
active twenty-year extension of existing monopolies should
likewise be considered separately from past endorsements of
the Act in order to see whether such new restriction can sur-
vive the First Amendment or whether the burden on speech
exceeds the trivial and speculative benefit alleged by the gov-
ernment. When conducting such review, it is important to
keep first principles firmly in mind.
As this Court has recently reiterated in another context,
Article I powers do not supersede restrictions created by
Amendments. See, e.g., Florida Prepaid Postsecondary
Educ. Expense Bd. v. College Sav. Bank, 527 U.S. 627, 635-
36 (1999) (provision that "[a]ny State * * * shall not be im-
mune, under the eleventh amendment of the Constitution of
the United States or under any other doctrine of sovereign
immunity, from suit in Federal court * * * for infringement of
a patent" was unconstitutional, in part because "Congress
may not abrogate state sovereign immunity pursuant to its
Article I powers"). Rather, Amendments to the Constitution
narrow congressional authority that would otherwise exist
under Article I standing alone. The First Amendment ques-
tion is whether government action is unconstitutional despite
Congress' enumerated power. The constitutional hierarchy is
no different in the case of copyright law. A law within Con-
gress's copyright power may still be prohibited by the First
Amendment.
Once it is conceded that the First Amendment is indeed a
restraint on the copyright power, it is not enough simply to
rely upon the idea/expression dichotomy, particularly as new
restrictions are added to the Copyright Act. The notion that
copyright only restricts particular expression, not the underly-
ing ideas, and hence is not subject to further First Amendment
scrutiny, is mistaken. The First Amendment protects not only
the conveyance of concepts generally, but the particular form
14
of expression as well. It generally is left to the speaker to de-
cide not merely what to say, but also how to say it, and the
First Amendment protects the intangible value associated
with a particular "expression" independently from the under-
lying idea.5 Indeed, in the case of music and much poetry and
art, there may not be much of an underlying "idea" at all be-
yond the descriptive beauty conveyed through the particular-
ized "expression." Yet such work is protected by the First
Amendment as well as by copyright, and the idea/expression
dichotomy is insufficient to accommodate the First Amend-
ment interests at stake.
With Congress having retroactively redrawn the balance
between the public domain and private authors, this Court
should balance anew the First Amendment considerations im-
plicated by that retroactive change. The gain from such an
extension does not involve any addition to the incentive for
authors to create new work, but rather involves only the pure
speculation that the unconditional extension might encourage
some authors to preserve existing works that they had not
bothered to preserve during the existing term of their copy-
right. But an additional twenty years of retroactive monopoly
is a significant burden on First Amendment values. The ex-
tension will hinder access to numerous works that would soon
enter the public domain and that need no additional incentive
for preservation. And the CTEA will chill the public use of
works having uncertain status or whose authors are not read-
ily located because few persons will risk the criminal penal-
ties for unauthorized use of such works.
Given the ongoing and irreparable burden on petitioners'
and the public's First Amendment rights, this Court should
grant the petition for certiorari in this case rather than wait for
5 The government could not, consistent with the First Amendment, restrict
publication of works by Plato or Marx on the theory that the ideas could
still be conveyed through other "expression."
15
further cases that may be exceedingly slow in developing due
to the chill imposed by the CTEA.
IV. THE COPYRIGHT CLAUSE LIMITS CONGRESS' POWER
TO "PROMOT[ING] THE PROGRESS OF SCIENCE."
Petitioners correctly argue that the decision below war-
rants review because its erasure of the "promote the Progress"
language from the Copyright Clause conflicts with the con-
struction of that Clause by this Court and by other circuits.
See Pet. 12-17. By unmooring the grant of exclusive rights
from the very power that such grants were meant to support,
the court below has done great damage both to the Copyright
Clause and to the notion of limited and enumerated powers.
On the merits, the decision below misconstrues the Copy-
right Clause and largely ignores the arguments made by
amicus. Despite recognizing petitioners' argument that the
"limited Times" requirement "is informed by the goal of `pro-
mot[ing] the Progress of Science and useful Arts,'" Pet. App.
4a, the D.C. Circuit nonetheless refused to rule upon the
argument by amicus Eagle Forum ELDF that the "promote
the Progress" language of the Copyright Clause defines, and
therefore delimits, congressional power in this area as "pro-
mot[ing] the Progress of Science." The structure of the clause
defines a power "to do X by means of Y." In the case of the
copyright power, "X" to promote the progress of science
is not a superfluity; it is the power granted to Congress. The
remainder of the clause "by securing for limited Times,"
etc. is not an affirmative grant; it is a negative limit on the
means by which the power "[t]o promote" may be exercised.
This Court has recognized the correct structural reading of
Article I, section 8 in the context of the Patent Clause. In
Graham v. John Deere Co., this Court stated:
The clause is both a grant of power and a limitation.
This qualified authority * * * is limited to the promotion
of advances in the "useful arts." * * * The Congress in
16
the exercise of the patent power may not overreach the
restraints imposed by the stated constitutional purpose.
* * * [A patent system] by constitutional command must
"promote the Progress of * * * useful Arts." This is the
standard expressed in the Constitution and it may not be
ignored.
383 U.S. 1, 5-6 (1966) (emphasis added). If patent laws
"must `promote the Progress of * * * useful Arts,'" then
surely copyright laws similarly "must" promote "the Progress
of Science," and Congress' copyright power is limited ac-
cordingly.
Despite this seemingly self-evident construction of the
Copyright Clause, the D.C. Circuit instead chose to rely upon
its earlier decision in Schnapper v. Foley, 667 F.2d 102, 112
(CADC 1981), cert. denied, 455 U.S. 948 (1982), holding that
the "introductory language of the Copyright Clause does not
limit this power." While petitioners had sought to work
around Schnapper by arguing that the introductory language
nonetheless must inform the construction of the "limited
Times" language in the Copyright Clause, amicus took a more
direct approach, arguing variously that Schnapper could be
read more narrowly to allow the correct interpretation of the
"promote" language, that Schnapper's language to the con-
trary was at best dicta, or that the case should simply be over-
ruled en banc because the purported holding was plainly
wrong. See Br. of Eagle Forum ELDF, at 6 & n. 3.
On the question of whether the CTEA in fact promotes the
progress of science, retrospective extension of existing copy-
rights does nothing to induce the creation of additional writ-
ings and hence does not promote science. As for the D.C.
Circuit's claim that such extension encourages the preserva-
tion of existing works, retroactive promotion of preservation
does not constitute promotion of progress.6 "Progress" in-
6 The court below discussed this argument in the hypothetical, offering its
advisory views on the topic despite refusing to consider and rule formally
17
volves forward movement, advancement, and creation,
whereas preservation involves the very different realm of sta-
sis and avoidance of decay. Compare New Lexicon Web-
ster's Dictionary 799 (1994) ("Progress" means "forward
movement," "improvement, advancement"), with id. at 792
("preserve * * * to keep up, maintain, prevent from ruin or
decay"). While preservation might benefit science or the pub-
lic generally, authorizing the promotion of mere preservation
would effectively nullify the word "Progress" and more
broadly empower Congress to promote science in toto.
Furthermore, because the retroactive extension is not con-
ditioned on any further action by copyright holders, there is
no credible reason to believe that the extension will induce
owners to preserve any works that they have, by hypothesis,
already neglected for years. The CTEA thus does not "pro-
mote" progress or anything else because the connection be-
tween the given right and the supposed benefit is too attenu-
ated and speculative. As this Court observed in United States
v. Morrison, 529 U.S. 598, 615 (2000), reasoning that follows
a "but-for causal chain * * * to every attenuated effect" im-
plicating an enumerated power is "unworkable if we are to
maintain the Constitution's enumeration of powers." While it
might be different if the retroactive extension were somehow
conditioned on further acts of creativity, merely throwing
monopoly rights at people in the attenuated hope they use
them beneficially only mocks the constitutional enumeration.7
on the arguments of amicus. See Pet. App. 12a ("If called upon to do so,
therefore, we might well hold that the application of the CTEA to subsist-
ing copyrights" was a "necessary and proper" action promoting the pro-
gress of science) (emphasis added).
7 It is highly doubtful whether Congress could grant a new copyright for
the preservation of an existing work. Such a copyright would appear to
violate the requirement of originality and the prohibition against removing
works from the public domain. Yet that is precisely the effect of retroac-
tively extending copyrights: Granting more years of exclusive rights in
return for the hope of preservation of works that otherwise would enter the
public domain in due course.
18
Handing Disney a gift of twenty more years on the copyright
for Mickey Mouse, without even requiring that it convert the
copyrighted material into a format that will be preserved and
available for public use in the future, is not the promotion of
progress, it is simply corporate welfare.
Finally, regarding the nature of the "limited Times" al-
lowed for exclusive rights to writings, the approach taken be-
low drains meaning from that language. The correct con-
struction recognizes that the Copyright Clause's use of the
plural "Times" matches the plural "Writings and Discover-
ies," but that its use of the singular "the exclusive Right" sug-
gests only a singular "Time[]" per each writing or discovery.
That interpretation requires Congress to select a time and
stick to it for copyrights already granted, though it could
modify the "Time[]" prospectively as to any future copyright.
It also has the benefit of avoiding the seriatim grant of sup-
posedly limited copyright terms that could, as a practical mat-
ter, be repeated indefinitely. Under the approach endorsed by
the D.C. Circuit, for example, the copyright on Mickey
Mouse already has received two approximately twenty-year
extensions, and the court of appeals suggests no legal princi-
ple that could prevent the next extension twenty years hence,
or any other extension ad infinitum. Absent some theory lim-
iting such repetition, the decision below renders the "limited
Times" language meaningless.
Because the decision below eviscerates the enumerated
limits on the copyright power, and because it conflicts with
decisions from this Court and other courts of appeals, it war-
rants plenary review.
CONCLUSION
For the foregoing reasons, the Petition for Writ of Certio-
rari should be granted.
19
Respectfully
Submitted,
ERIK S. JAFFE
Counsel of Record
ERIK S. JAFFE, P.C.
5101 34th Street, N.W.
Washington, D.C. 20008
(202) 237-8165
Counsel for Amici Curiae
Dated: December 13, 2001.