IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLORADO
LAWRENCE GOLAN,
1777 Larimer Street, #1805
Denver, CO 80202
RICHARD KAPP,
20 Oakdale Drive COMPLAINT
Hastings on Hudson, NY 10706,
S.A. PUBLISHING CO., INC.,
d/b/a/ ESS.A.Y RECORDINGS,
145 Palisade Street
Dobbs Ferry, NY 10522-1617,
SYMPHONY OF THE CANYONS,
attn: Kortney Stirland
14 East Center
Kanab, Utah 54741,
RON HALL, d/b/a FESTIVAL FILMS,
6115 Chestnut Terrace
Shorewood, MN 55331, and
JOHN MCDONOUGH, d/b/a TIMELESS
VIDEO ALTERNATIVES INTERNATIONAL,
3303 Fiechtner Drive, S.W.,
Fargo, ND 58103,
Plaintiffs,
v.
JOHN ASHCROFT, in his official capacity
as Attorney General of the United States,
U.S. Department of Justice
950 Pennsylvania Avenue, N.W.,
Washington, D.C., 20530-0001,
Defendant.
COMPLAINT
Plaintiffs, through their undersigned counsel, bring this action seeking declaratory
relief that the Sonny Bono Copyright Term Extension Act of 1998, Pub. L. No. 105-298
("CTEA"), which amended and is codified in relevant parts at 17 U.S.C. §§ 301-304, and
Section 514 of the Uruguay Round Agreements Act ("URAA"), Pub. L. No. 103-465,
which amended and is codified at 17 U.S.C. §§ 104A, 109(a), are unconstitutional.
Plaintiffs also seek preliminary and permanent injunctive relief against the enforcement
of both provisions.
INTRODUCTION
1. This is an action to challenge the constitutionality of Congress's attempt to
remove and radically deplete the supply of literary and artistic works from the public
domain. Central to the constitutional design of our copyright system is the preservation
of a rich and vibrant public domain in which books, paintings, drawings, music, films,
photographs, and other artistic works are free for all to use and copy which, in turn,
fuels the further creation of original works of authorship. Works enter the public domain
in one of two constitutionally guaranteed ways: first, all copyrighted works fall into the
public domain once their limited term of copyright ends; second, all works that fail to
satisfy the requirements of the Copyright Act enter the public domain immediately and
irrevocably upon general publication. However, in two recent and dramatic expansions
of the Copyright Act, Congress has attempted to dismantle both of these constitutionally
guaranteed sources of works for the public domain.
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2. Continuing its recent effort over 10 times in the past 40 years to
expand the term of copyright to unlimited duration, Congress enacted the Sonny Bono
Copyright Term Extension Act of 1998, Pub. L. No. 105-298 ("CTEA"), increasing the
term of copyright by another 20 years to the previous term of copyright protection even
for existing works (many of whose authors have long since passed away), with no
corresponding benefit to the public or effort to promote the progress of science and the
useful arts.
3. Congress's dramatic expansion of the term of copyright has been
accompanied by an even more radical depletion of works from the public domain. On
December 8, 1993, Congress amended the Copyright Act to recognize for the first time in
the history of our copyright law a general provision that purports to "restore" copyrights
retroactively in numerous works that heretofore had indisputably been in the public
domain for failure to satisfy the requirements of the Copyright Act. Purportedly to
further the North American Free Trade Agreement ("NAFTA"), Congress restored
copyrights to motion pictures fixed in Mexico or Canada from January 1, 1978 to March
1, 1989 that were in the public domain in the United States for failure to affix the proper
copyright notice as required by pre-1989 U.S. copyright law. The North American Free
Trade Agreement Implementation Act, Pub. L. No. 103-182.
4. A year later, on December 8, 1994, Congress went even further in its
wholesale diminishment of the public domain. This time, under the auspices of Section
514 of the Uruguay Round Agreements Act, Pub. L. No. 103-465 ("§ 514" or "Section
514"), Congress has extended copyright restoration automatically to all foreign works
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that were in the public domain in the United States if, among other things, (a) the work
"is not in the public domain in its source country through expiration of term of
protection," and (b) the work "is in the public domain in the United States due to (i)
noncompliance with formalities imposed at any time by United States copyright law,
including failure of renewal, lack of proper notice, or failure to comply with any
manufacturing requirements; (ii) lack of subject matter protection in the case of sound
recordings fixed before February 15, 1972, or (iii) lack of national eligibility." 17 U.S.C.
§ 104A(h)(6). The effect of "copyright restoration" is the wholesale removal of vast
amounts of existing works thousands of books, paintings, drawings, music, films,
photographs, and other artistic works from the public domain.
5. Both of these acts of Congress are unconstitutional on their face, and as
applied to plaintiffs. Neither the CTEA nor § 514 of the URAA can be squared with the
limitations imposed by the Copyright Clause, which limits the power of Congress to grant
copyright protection "[t]o promote the Progress of Science and useful Arts, by securing
for limited Times to Authors * * * the exclusive Right to their respective Writings." U.S.
CONST. art I, § 8, cl. 8. The CTEA creates a term of copyright that is neither "limited"
nor designed "to promote the Progress of Science and useful Arts." In addition, § 514's
removal of existing works from the public domain under the guise of "copyright
restoration" flouts a fundamental principle of the Copyright Clause that requires that the
public be allowed to use freely any work in the public domain. The CTEA's grant of
extended copyright protection to works already in existence and § 514's restoration of
copyrights to works already in the public domain violate the constitutional requirement of
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originality, that works must be original to receive copyright protection. What's more, the
CTEA and § 514 result in speech restrictions that violate the First Amendment. And the
retroactive application of both Acts to works published years ago violates the Due
Process Clause's proscription against retroactive legislation that so disrupts settled
expectations as to be fundamentally unfair. At the heart of this case is the preservation of
not only the public domain, but the constitutional design of our entire copyright system.
PARTIES
6. Plaintiff Lawrence Golan is the Director of Orchestral Studies, Conductor,
and Professor of Conducting at the University of Denver's Lamont School of Music. He
is also the Music Director and Conductor of the Portland Ballet Orchestra in Portland,
Maine; the founder, Artistic Director, and Conductor of the Atlantic Chamber Orchestra
in Portland, Maine; and the Principal Guest Conductor of the Bolshoi National Opera and
Ballet Theatre of Uzbekistan in Tashkent. He resides at 1777 Larimer Street, #1805,
Denver, CO 80202.
7. Plaintiff Richard Kapp is the founder and conductor of the chamber
orchestra Philharmonia Virtuosi, which performs at The Metropolitan Museum of Art in
New York and venues worldwide. Kapp resides at 20 Oakdale Drive, Hastings on
Hudson, NY 10706.
8. Plaintiff S.A. Publishing Co., Inc., d/b/a ESS.A.Y Recordings ("ESS.A.Y
Recordings"), is a New York corporation and a recording label started and headed by
Plaintiff Kapp. ESS.A.Y Recordings records and sells to the public, through wholesale
distributors and on the Internet at www.essaycd.com, an assortment of music on CDs,
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ranging from classical to contemporary and children's music. ESS.A.Y Recordings is
located at 145 Palisade Street, Dobbs Ferry, NY 10522-1617.
9. Plaintiff Symphony of the Canyons is a small, not-for-profit community
orchestra and unincorporated association that is based out of Kanab, Utah and that
performs at locations mainly in Utah. Kortney Stirland is the founder and conductor of
Symphony of the Canyons, which has about 50 members. Symphony of the Canyons's
address is (attn: Kortney Stirland), 14 East Center, Kanab, Utah 84741.
10. Plaintiff Ron Hall, d/b/a Festival Films ("Festival Films"), specializes in
the sale of films, movies, television shows, and stock footage to colleges, universities,
libraries, film archives, and other members of the public. Hall is the founder and sole
proprietor of Festival Films, a self-run business that sells, through its website
www.fesfilms.com, public domain stock footage of movies, television shows, and
cartoons, as well as copyrighted movies on videotape, DVD, and 16-mm film. Festival
Films's address is 6115 Chestnut Terrace, Shorewood, MN 55331.
11. Plaintiff John McDonough, d/b/a Timeless Video Alternatives
International ("Timeless Video"), is devoted to the preservation and distribution of public
domain movies, films, and television shows. John McDonough is the founder and sole
proprietor of Timeless Video, a self-run business that serves as a channel of distribution
of public domain works to television stations nationwide. McDonough also preserves old
public domain films on video and sells them to the public. Timeless Video's address is
3303 Fiechtner Drive, S.W., Fargo, ND 58103.
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12. Defendant John Ashcroft is the Attorney General of the United States and
is responsible for the enforcement of the laws of the United States.
JURISDICTION AND VENUE
13. This Court has subject matter jurisdiction pursuant to 28 U.S.C. §§ 1331,
1361, and 2201 because this declaratory judgment action challenges the constitutionality
of federal statutes. This Court has personal jurisdiction over defendant Ashcroft. Venue
is properly laid in this District under 28 U.S.C. § 1391(e).
STANDING
14. Plaintiffs have standing to bring and maintain this action because their
activities have been, and will continue to be, directly harmed by the CTEA's extension of
the term of copyright and § 514's restoration of copyright to thousands, if not millions, of
works. Each of the plaintiffs used, copied, distributed, performed, preserved, or sold
works that were in the public domain and planned on using works that would have fallen
into the public domain, but for the CTEA's recent extension of the term of copyright for
an additional 20 years. Plaintiffs also used works in the public domain that now are
subject to copyright restoration under § 514. Plaintiffs would have continued doing so,
had it not been for the automatic copyright restoration effectuated by § 514.
15. Both the CTEA and § 514 can be civilly and criminally enforced
(including monetary damages, impounding of articles, attorneys' fees, and imprisonment)
against plaintiffs. 17 U.S.C. §§ 501-506. Under 17 U.S.C. § 506(a), criminal charges
may be brought against "[a]ny person who infringes a copyright willfully either - (1) for
purposes of commercial advantage or private financial gain, or (2) by the reproduction or
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distribution, including by electronic means, during any 180-day period, of 1 or more
copies or phonorecords of 1 or more copyrighted works, which have a total retail value of
more than $1,000."
16. As discussed further below, plaintiffs have each suffered concrete and
particularized injuries because of the enactment of the CTEA and § 514. The impact of
these laws on plaintiffs, their businesses, and artistic endeavors is an actual, present
injury, and the threat of enforcement against plaintiffs who violate the laws causes an
imminent injury. These injuries can be redressed by a declaratory judgment that the
CTEA and § 514 are unconstitutional and by preliminary and permanent injunctive relief
against their enforcement.
EVENTS UNDERLYING PLAINTIFFS' INJURIES
A. Copyright Law and the Preservation of the Public Domain
17. Article I, § 8, clause 8 of the United States Constitution bestows upon
Congress a grant of authority as well as a limitation: "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; see Graham v. John Deere Co., 383 U.S. 1, 5 (1966). In interpreting this Clause, the
Supreme Court has long recognized that the overriding goal of our intellectual property
systems must be to serve the public interest in the wide dissemination of works and
inventions. Put simply, "[clreative work is to be encouraged and rewarded, but private
motivation must ultimately serve the cause of promoting broad public availability of
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literature, music, and the other arts." Twentieth Century Music Corp. v. Aiken, 422 U.S.
151, 156 (1975).
18. To that end, the Copyright Clause requires that the term of copyright must
be only for "limited Times" and must ultimately serve the "Progress of Science and
useful Arts." This ensures that the public receives the benefit of the constitutional
bargain struck by our copyright system in giving authors exclusive rights to their works
for limited times in exchange for the eventual dedication of the works to the public.
19. In addition to this strict temporal limitation, the Copyright Clause also
ensures the entry of works into the public domain by requiring, in the first instance, that
copyright protection be granted only to works that are original. See Feist Publications,
Inc. v. Rural Telephone Serv. Co., 499 U.S. 340, 345 (1991). Works that fail to satisfy
the originality requirement necessarily fall into the public domain immediately upon
general publication.
20. To implement the true promise of the public domain, the Copyright Clause
guarantees that the public is free to use works in the public domain that have not, for
whatever reason, qualified for copyright protection. As the Supreme Court has
consistently recognized, there is a "`federal policy, found in Art. I, § 8, cl. 8, of the
Constitution and in the implementing federal statutes, of allowing free access to copy
whatever the federal patent and copyright laws leave in the public domain."' Bonito
Boats, Inc. v. Thunder Boats, Inc., 489 U.S. 141, 153 (1989) (quoting Compco Corp. v.
Day-Lite Lighting Inc., 376 U.S. 234, 237 (1964)).
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21. And, once a work or invention goes into the public domain, Congress
cannot remove it from free use by the public. That is the central tenet of the Supreme
Court's holding in Graham v. John Deere Co., 383 U.S. 1, 6 (1966) when the Court
stated in interpreting the Patent Act: "Congress may not authorize the issuance of patents
whose effects are to remove existent knowledge from the public domain, or to restrict
free access to materials already available." And that is also the central tenet of the D.C.
Circuit's conclusion in Eldred v. Reno, 239 F.3d 372, 377 (D.C. Cir. 2001), when the
court of appeals stated in the context of copyright law: "these teachings would indeed
preclude the Congress from authorizing under that Clause a copyright to a work already
in the public domain."
22. The CTEA and § 514 of the URAA violate these foundational principles
of the Copyright Clause, and they threaten to extinguish the supply of works in and to the
public domain. The statutory provisions also impose speech restrictions that cannot
withstand scrutiny under the First Amendment. And they both amount to retroactive
legislation that so disrupts settled expectations as to violate substantive due process.
B. The Sonny Bono Copyright Term Extension Act of 1998
23. The term of copyright used to be limited. The original copyright statute of
1790 granted a term of 14 years, with an opportunity for the author to renew the
copyright for an additional term of 14 years. In 1831, Congress extended the original
term of copyright to 28 years, and in 1909 extended the renewal term to 28 years. Thus,
for over a hundred years, Congress expanded the term of copyright protection only twice,
with 56 years as the maximum possible duration of copyright (although not all authors
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exercised their right to renewal, meaning that in many cases 28 years would be the only
term of copyright).
24. In the past 40 years, however, Congress has expanded the term of
copyright 11 times, so that now under the CTEA the maximum possible duration of
copyright can be for some works 120 years or even greater (depending on the life of the
author). Congress granted each of these copyright term extensions not just to future
works, but also to existing works many of whose authors had long since passed away.
25. In addition, Congress amended the 1909 Copyright Act to make the
renewal of copyright automatic for copyrights derived thereunder and did away with the
renewal term altogether in the 1976 Copyright Act, thereby making the term of copyright
virtually always the maximum term under the statute.
26. The CTEA is the culmination of this dramatic expansion of the term of
copyright. Indeed, the CTEA's 20-year term extension marks the single greatest
increase of the term of copyright (except, conceivably, the terms allowed under the
switch to the "life of the author" metric under the 1976 Copyright Act). On October 27,
1998, President Clinton signed the CTEA into law. It grants both prospectively and
retrospectively an additional 20 years to the term of copyright, which applies differently
depending on when the work was created and the kind of work. For works published
before 1978, the renewal term is extended from 47 to 67 years, thus giving a total term of
copyright protection of 95 years for these works. For any copyrighted work created in
1978 or later, the CTEA extends the term of copyright from the life of the author plus 50
years to the life of the author plus 70 years. For any copyrighted work created in 1978 or
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later that is a work made for hire (or an anonymous or pseudonymous work), the CTEA
extends copyright protection from 75 to 95 years from the year of publication or from
100 to 120 years from the year of creation, whichever comes first. These changes took
effect immediately upon passage of the CTEA.
27. In general, the CTEA added 20 years to the term of copyrights. Thus,
prior to the enactment of the CTEA, a work that was copyrighted during 1923 would
have entered the public domain on December 31, 1998, because its term of 75 years
would have ended. The CTEA, however, extended the term of copyright of such work to
95 years, meaning that it will not enter the public domain until December 31, 2018. The
CTEA's 20-year extension has already prevented works published in 1923, 1924, and
1925 from entering the public domain. But for the CTEA, all works published in these
years would have already entered the public domain. And from now until 2018, the
CTEA will keep works published in 1927 all the way through 1943 from entering the
public domain the result being that no copyrighted work will enter the public domain
until 2019.
28. To put the current term of copyright in historical perspective, an author
who publishes when 25 years old can now potentially obtain a term of copyright
protection that is over 120 years (if the author lives, say, to age 75, greater if he or she
lives longer). This expansion of the copyright term to over a century's worth of
protection marks nearly a 329 percent increase from the maximum term of copyright (28
years) and over a 750 percent increase from the initial term of copyright (14 years) in the
first Copyright Act of 1790. By comparison, the current term of patent protection is 20
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years, 35 U.S.C. § 154(a), which marks an increase of only 43 percent from the original
term of patent (14 years) in the first Patent Act of 1790. Although the first Copyright and
Patent Acts both had 14 years as the original term of the "exclusive Right" granted, the
CTEA now makes the term of copyright usually 4 to 5 times greater than the patent term.
C. Section 514 of the URAA and Congress's Attempt to Remove Works
from the Public Domain
29. In addition to extending excessively the term of copyright, Congress has
also attempted to remove vast amounts of works from the public domain under the guise
of "copyright restoration." The provision was first enacted on December 8, 1993,
purportedly to further the goals of NAFTA. Pub. L. No. 103-182. The provision
removed from the public domain and gave copyright protection to motion pictures fixed
in Canada or Mexico from January 1, 1978 to March 1, 1989 that had fallen into the
public domain in the United States due to lack of the requisite copyright notice. 17
U.S.C. § 104A (1994). The affixation of copyright notice on the work was an essential
requirement of copyright eligibility under the 1909 Copyright Act and a requirement
(subject to limited exceptions) under the 1976 Copyright Act. In 1989 Congress did
away with the notice requirement but only prospectively for future works after the
United States joined the Berne Convention, a multilateral agreement designed to establish
minimum standards for copyright protection. 17 U.S.C. § 401(a); Norma Ribbon &
Trimming, Inc. v. Little, 51 F.3d 45, 48 (5th Cir. 1995).
30. Congress went even further in removing works from the public domain
when it amended § 104A (and § 109(a)) a year later in § 514 of the URAA. This
13
provision which is currently in force and forms the basis of plaintiffs' challenge now
grants copyright automatically to any "restored work," which is defined as follows:
an original work of authorship that
(A) is protected under subsection (a);
(B) is not in the public domain in its source country through expiration of
term of protection;
(C) is in the public domain in the United States due to
(i) noncompliance with formalities imposed at any time by United
States copyright law, including failure of renewal, lack of proper notice, or
failure to comply with any manufacturing requirements;
(ii) lack of subject matter protection in the case of sound
recordings fixed before February 15, 1972; or
(iii) lack of national eligibility; and
(D) has at least one author or rightholder who was, at the time the work
was created, a national or domiciliary of an eligible country, and if published, was
first published in an eligible country and not published in the United States during
the 30-day period following publication in such eligible country.
17 U.S.C. § 104A(h)(6).
31. Copyright restoration is available to the works from any of the more than
one hundred forty countries that are members of the World Trade Organization ("WTO")
or the Berne Convention. Id. § 104A(h)(3). Section 514 also purports to give power to
the President to declare and extend copyright protection to public domain works of other
countries that provide substantially the same protection for restored works to U.S.
nationals. Id. § 104A(g).
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32. The date of restoration of a restored copyright is "January 1, 1996, if the
source country of the restored work is a nation adhering, to the Berne Convention or a
WTO member country on such date." Id. § 104A(h)(2)(A).
33. The term of copyright for restored works extends "for the remainder of the
term of the copyright that the work would have otherwise been granted in the United
States if the work never entered the public domain in the United States." Id. §
104A(a)(1)(B). This means that many works that had been in the public domain in the
United States may now potentially claim copyright protection for the remainder of a
copyright term of life of the author plus 70 years in the case of works created on or after
January 1, 1978, or 95 years in the case of works made for hire or works in their renewal
term as of October 27, 1998, the effective date of the Sonny Bono Copyright Term
Extension Act of 1998, 17 U.S.C. §§ 302(a), (c), 304(b).
34. The ownership of a restored copyrighted work "vests initially in the
author or initial rightholder of the work as determined by the law of the source country of
the work." 17 U.S.C. § 104A(b).
D. The Harm to Plaintiffs and the Public
35. The CTEA's 20-year expansion of the copyright term and § 514's
retroactive restoration of copyrights cause great harm to the plaintiffs, the public at large,
and the very foundation of our public domain.
36. Before the CTEA went into effect, the public could expect that each year
some copyrighted works would naturally fall into the public domain due to the expiration
of the term of copyright. Thus, on December 31, 1990, the public (including plaintiffs)
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could expect works published in 1915 to enter the public domain; on December 31, 1991,
works from 1916; on December 31, 1992, works from 1917, etc. This yearly natural
progression of works into the public domain is designed to ensure that the public has the
wide availability of works envisioned by the Copyright Clause.
37. In establishing their businesses and pursuing their creative endeavors,
plaintiffs relied on the existence of this natural progression of works into the public
domain. Each year would bring "new" public domain works that plaintiffs could perform
or make available for the public.
38. What the CTEA does is to put an end to this natural progression of works
into the public domain for a 20-year period. On December 31, 1998, copyrighted works
published in 1923 would have fallen into the public domain. The CTEA, however,
prevented it. Starting from 1998, when the CTEA went into effect, and continuing for the
next 20 years, the public no longer can expect that copyrighted works will enter the
public domain due to expiry of the term. In fact, no copyrighted works will enter the
public domain at all until January 1, 2019 assuming of course Congress does not amend
the term of copyright again as it has been wont to do.
39. Section 514's retroactive restoration of copyrights has also caused great
harm to plaintiffs and the public. When plaintiffs began their respective businesses, they
relied on the well-established principle of law indeed one that has been recognized for
nearly the existence of our copyright system that works in the public domain were free
for all to use and were simply beyond the reach of copyright. Indeed, the 1909 Copyright
Act (the formalities of which § 514 now attempts to excuse retroactively) said so
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expressly, stating: "No copyright shall subsist in the original text of any work which is in
the public domain * * *." 1909 Copyright Act, as amended, 17 U.S.C. § 7; see Bouve v.
Twentieth Century-Fox Film Corp., 122 F.2d 51, 54 n.20 (D.C. Cir. 1941). Relying on
this fundamental compact of our copyright system, plaintiffs invested considerable time
and resources to the distribution or performance of public domain works. For all these
years, plaintiffs had absolutely no notice, nor should they have had any expectation, that
Congress would rewrite the copyright law and attempt to jettison this fundamental
principle governing the availability of works in the public domain.
40. Section 514, however, now attempts to do precisely that by removing vast
amounts of works from the public domain under the guise of "restored copyright." Under
§ 514, the owners of copyrights in restored works were given the option from January 1,
1996 to January 1, 1998 to file in the Copyright Office a notice of intent to enforce
("NIE") their restored copyrights against a "reliance party," which includes any person
(such as plaintiffs) who had acquired or made copies of the work before copyright
restoration. 17 U.S.C. § 104A(c), (h)(4). Owners of copyrights in restored works may
also serve notice on a reliance party directly at any point now and in the future. Id. §
104A(d)(2)(B). Either way, the filing or serving of notice essentially starts the clock
running against the reliance party so that he or she can use, but not copy, the work only
for a 12-month period from the date of notice. Id. §§ 104A(d)(2)(A)(ii), (d)(2)(B)(ii).
During the 12-month period, the reliance party is nevertheless forbidden from making
further copies of the work. Id. §§ 104A(d)(2)(A)(ii)(III), (d)(2)(B)(ii)(III). After the 12-
month period, reliance parties are liable for copyright infringement if they copy or
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distribute copies of the work without authorization of the restored copyright owner. Id. §
104A(d)(2). And the restored copyright owner is under no obligation to agree to license
the restored work to any reliance party (except in the limited case of making
phonorecords of nondramatic musical works that fall under the compulsory licensing
provision of the Copyright Act, 17 U.S.C. § 115).
41. Section 514(b) of the URAA even purports to deprive reliance parties of
their ability to dispose of copies of their works under the first sale doctrine, a doctrine
that has been recognized for nearly 100 years. See Bobbs-Merrill Co. v. Straus, 210 U.S.
339, 350 (1908). Under the first sale doctrine, the copyright owner cannot claim any
distribution rights over any copy of his or her work in the stream of commerce after its
first sale. The lawful purchaser of the copy can dispose of the copy (e.g., by selling or
renting the work) at will. Section 514(b), however, attempts to abrogate the first sale
doctrine after a 12-month period for any copy of a restored work purchased before
copyright restoration. See 17 U.S.C. § 109(a). This means that reliance parties cannot
sell or rent the copies of works they legitimately owned after the 12-month period "for
purposes of direct or indirect commercial advantage." Id.
42. Reliance parties who made derivative works of public domain works that
have been restored to copyright under § 514 are given no right to continue to exploit their
derivative works, unless "the reliance party pays to the owner of the restored copyright
reasonable compensation." Id. § 104A(d)(3)(A). If the parties cannot agree, the restored
copyright holder can seek an action against the reliance party in district court to
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determine the amount of compensation that the reliance party must pay to the restored
copyright holder. Id. § 104A(d)(3)(B).
43. Section 514 essentially subjects plaintiffs and other reliance parties to the
mercy of the restored copyright holder for continued use of restored works. If the
restored copyright holder simply refuses to authorize copying or distribution of a restored
work (that is not a nondramatic musical work subject to compulsory licensing under §
115). § 514 leaves reliance parties, such as plaintiffs, absolutely no recourse.
44. Moreover, § 514 provides no administrative review to determine the
veracity or validity of NIEs filed with the Copyright Office or served on a reliance party:
the act of filing or serving is purely ministerial. Although an NIE is not supposed to
"create a presumption of validity of any of the facts stated therein," id. § 104A(c),
reliance parties are left with virtually no statutory means to even test the veracity and
validity of the assertions made by purported restored copyright holders (who may be
asserting, for example, that they acquired the rights through one of the heirs of the author
allegations that are made even more difficult for reliance parties to verify since the
underlying facts are likely to have occurred long ago and in a foreign country). The only
"recourse" for reliance parties to test the veracity and validity of such assertions is to be
willing to be sued by the purported restored copyright holder for copyright infringement.
45. Individuals who are not reliance parties (such as people who did not
possess a copy of the work before its restoration) are given even less time to adjust to the
radical depletion of the public domain caused by copyright restoration. Such individuals
may be liable for copyright infringement right away on the date of restoration, which may
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start as early as January 1, 1996, if they attempt to copy a public domain work that is now
subject to restoration. Id. § 104A(d)(l).
46. Section 514 has resulted in the removal of thousands, if not millions, of
works from the public domain. In the two-year statutory period, notices of intent to
enforce restored copyrights flooded the Copyright Office and filled pages and pages of
the Federal Register. See Copyright Restoration of Works in Accordance with the
Uruguay Round Agreements Act, 61 Fed. Reg. 19371-19388 (May 1, 1996); 61 Fed,
Reg. 46133-46159 (Aug. 30, 1996); 61 Fed. Reg. 68453-68461 (Dec. 27, 1996); 62 Fed.
Reg. 20211-20220 (April 25, 1997); 62 Fed. Reg. 44841-44854 (Aug. 22, 1997); 62 Fed.
Reg. 66765-66811 (Dec. 19, 1997); 63 Fed. Reg. 5142-5216 (Jan. 30, 1998); 63 Fed.
Reg. 19288-19366 (April 17, 1998); 63 Fed. Reg. 43830-43832 (Aug. 14, 1998). The
works covered the gamut including songs, motion pictures, paintings, books, literary
works, photographs, etc. from the obscure to the familiar and even famous.
47. The works claimed from the public domain for copyright restoration
include, for example, several hundred paintings of Picasso; the collection of works by
J.R.R. Tolkien including The Hobbit, The Fellowship of the Ring, The Two Towers, and
The Return of the King; Virginia Woolf's A Room of One's Own; several books by H.G.
Wells; numerous educational and literary books including Dante, George Orwell, Jane
Austen Practising, Joseph Conrad, Robinson Crusoe, and The Wasteland; hundreds of
songs and sheet music, including such favorites by the Russian composer Serge
Prokofiev as Six Pieces from Cinderella, Romeo and Juliet, and Three Children's Songs
for Piano; a collection of photographs of the Beatles; and still photographs from the
20
Japanese film Godzilla. These are just a few of the thousands of works claimed for
copyright restoration.
48. This radical depletion of the public domain severely harms not just
plaintiffs, but the very foundation of our democratic society. The wide availability of
works envisaged by the Copyright Clause depends on the ability of authors, musicians,
performers, and other artists to use freely works in the public domain for both the
creation of new works and the further dissemination of the public domain works.
Without the availability of such public domain material, the whole creative and artistic
endeavor is severely hampered and the public ultimately disserved.
1. The Harm to Lawrence Golan
49. Lawrence Golan is an acclaimed conductor, violinist, and professor of
conducting, whose passion and professional mission is to bring classical music to new
audiences, young and old. Golan earned his D.M.A. from the New England
Conservatory of Music in May 1995, and is currently the Director of Orchestral Studies
and Professor of Conducting at the University of Denver's Lamont School of Music,
where he teaches students in orchestral music and conducting. Golan is also the
Conductor of the school's Lamont Symphony Orchestra, which has 67 student members
and which performs 6 symphonic concerts and 1 opera each year. All of the symphonic
concerts are free to the public.
50. Golan is also the Music Director and Conductor of the Portland Ballet
Orchestra, which has 42 freelance professional members and which performs the
21
Nutcracker and one other ballet each year for communities in and around Portland,
Maine.
51. As a part of his mission to bring classical music to new audiences,
especially young adults, Golan has founded and continues to conduct the Atlantic
Chamber Orchestra. Under Golan's leadership, the orchestra has originated several
innovative events that incorporate the performance of classical music with other
entertainment that may be more familiar to the public. For example, the orchestra has put
on concert/wine-tastings where every piece of music has a corresponding wine, and
concerts involving Latin music combined with the serving of Latin food. These events
are designed to attract individuals who have not yet experienced the pleasure of listening
to the public performance of great orchestral works.
52. The CTEA's 20-year term extension and § 514's restoration of copyrights
have a profound and lasting harm on Golan's selection of music. For each of his
orchestras, Golan relies vitally on the availability of works from the public domain.
Indeed, public domain works form the vast majority of the works performed by the
Lamont Symphony Orchestra and by the Atlantic Chamber Orchestra, which have a
limited annual budget of $2,000 and $300 respectively. For the Portland Ballet
Orchestra, which has no funds at all for the renting of copyrighted music, Golan must
rely exclusively on public domain works.
53. It is now cost prohibitive for Golan to perform many works that would
have entered or that had already entered the public domain, but now are subject to
copyright protection because of the CTEA and/or § 514. Like most orchestras across the
22
country, Golan's orchestras have a very limited budget or none at all, and simply cannot
afford the rental of many copyrighted works. This is so because an orchestra's budget
must cover two possible annual expenditures for sheet music: (1) the purchase of works
in the public domain at inexpensive cost, or (2) the one-time rental of copyrighted sheet
music typically for hundreds of dollars for each performance and many times more than
the cost of such work when it enters the public domain. The benefit of purchasing a copy
of a work in the public domain is that an orchestra can add the work to its library for
repeated use and can save all the annotations or "markings" that it makes on the sheet
music for the performance. Such markings (including phrase indications, bowings, and
nuances) must be consistent in all instrumental parts and are imperative for the coherence
of an orchestral interpretation. By contrast, renting a copyrighted work means that an
orchestra cannot keep the sheet music with its markings after the performance, but must
again pay for the sheet music and spend hours on the markings each time it wants to
perform the work.
54. Because the CTEA and § 514 diminish the supply of public domain works
and dramatically increase the number of copyrighted works for which copyright holders
can exact rental fees, Golan has been forced to avoid even considering for public
performance whole classes of orchestral works from great American and foreign
composers, including hundreds of foreign works that had previously been in the public
domain.
55. In particular, the CTEA has effectively prevented Golan from selecting for
public performance works of several great American composers such as George
23
Gershwin and Aaron Copland, as well as works of great foreign composers such as
Prokofiev, Dmitri Shostakovich, Igor Stravinsky, Jean Sibelius, and Maurice Ravel.
Many of their works were published around 1923 and following and would have entered
the public domain soon or already had it not been for the 20-year extension of copyright.
For example, George Gershwin's most famous work, Rhapsody in Blue, was first
publicly performed in 1924. Had it not been for the CTEA's 20-year term extension, the
original Rhapsody in Blue would have already entered the public domain.
56. Copyright restoration has also greatly harmed Golan's ability to select
music for his orchestras to perform. Whole classes of foreign works from such
luminaries as Prokofiev, Shostakovich, and Stravinsky that had once before been in the
public domain have now been restored to copyright under § 514 and are simply too
expensive for Golan's orchestras to perform because of the cost to rent the copyrighted
sheet music.
57. This year, the CTEA and § 514's harmful effects on Golan's ability to
select music have been tremendous. As conductor of the Lamont Symphony Orchestra,
Golan would have liked to perform a notable foreign work, either Shostakovich's
Symphony No. 5, Prokofiev's Symphony No. 1, or Sibelius's Symphony No. 7, because
such foreign works are essential to the diverse education of his students. Had it not been
for the CTEA and § 514, these works would have been in the public domain and
available for purchase at a relatively inexpensive price. However, because of the CTEA
and/or § 514, these works are protected by copyright and must be rented typically for
hundreds of dollars, if not more.
24
58. Because of the incredible expense of renting music in terms of both money
and labor (for the markings), Golan could only select one copyrighted piece, Symphony
No. 2 by the American composer Charles Ives, for rental this year at the "discounted"
educational rate of $685. Because this single rental consumed over 25 percent of Golan's
annual budget, he decided his orchestra simply could not afford additional rentals of
copyrighted works to fill the anticipated 19 other pieces the orchestra would perform over
the year. Instead, Golan purchased several less expensive copies of public domain works
for performance and, for the other selections, had to choose from the public domain
works in the library of the Lamont Symphony.
59. The CTEA and copyright restoration have had an even greater negative
impact on Golan's conducting of smaller orchestras, particularly where he has no budget
at all for the rental of copyrighted music. For these orchestras, Golan must rely almost
exclusively on the availability of works in the public domain. For example, in his former
capacity as Music Director and Conductor of the Community Orchestra of the Portland
Symphony, a small community orchestra in Maine, Golan had no budget for the
procurement of music. During his tenure, Golan wanted to perform several great
orchestral works of Shostakovich, Prokofiev, Gershwin, Sibelius, Stravinsky, and Ravel,
but, because of copyright restoration and/or the CTEA, the works were subject to
extended or retroactive copyright and were simply too expensive for Golan's orchestra to
rent. Had the CTEA and copyright restoration not been enacted, many of these works
would have been in the public domain soon or already, and would have been available for
purchase at a relatively inexpensive price.
25
60. The CTEA and § 514 impact not only conductors and educators such as
Golan, but also his students and the public at large. By removing works from the public
domain and limiting the selection of music that orchestras can afford to perform, the
CTEA and § 514 deprive Golan's students of learning whole classes of orchestral works
from great American and foreign composers. And, perhaps worst of all, these laws
deprive the American public of the important benefits cultural, intellectual, emotional,
and educational of experiencing the public performance of many significant orchestral
works.
2. The Harm to Richard Kapp and ESS.A.Y Recordings
61. Richard Kapp is a renowned conductor, who is dedicated to spreading the
beauty of classical works to the public through performance and recordings. He founded
the Philharmonia Virtuosi in 1968 and continues to conduct the orchestra in
approximately 60 to 80 public performances each year. He also established a series of
musical programs for young children between the ages of 4 and 8 entitled the Cushion
Concerts (a name referring to the fact that children sit on cushions during the
performance), which introduces children to classical music through live performances at
a minimal expense.
62. The CTEA's 20-year extension of the term of copyright has greatly
harmed the supply of public domain works for Kapp and ESS.A.Y Recordings to perform
and record. Before the CTEA was enacted, Kapp and ESS.A.Y Recordings relied on the
yearly natural progression of copyrighted works into the public domain due to the expiry
of the term. The CTEA, however, puts an end to this vital supply of public domain
26
works, at least for 20 years. Because the CTEA increases protection for all copyrighted
works for another 20 years, the term of copyright protection for any existing work will
not end until December 31, 2018 at the earliest.
63. Before the CTEA went into effect, Kapp and ESS.A.Y Recordings had
anticipated that numerous musical works published in 1923 or later would soon enter the
public domain starting in 1998. Kapp and his orchestra (a not-for-profit group) relied on
the availability of such public domain works because they could be performed without
the considerable expense of renting copyrighted sheet music or the payment of royalties.
The CTEA, however, extends the term of copyright for such existing works at least until
December 31, 2018, thereby substantially increasing the cost to perform or record such
works. The CTEA gives copyright holders another 20 years to exact payment for the
renting of sheet music and the payment of royalties for public performances.
64. The CTEA has the effect of keeping from the public domain for another
20 years important classical works written in the prolific post-World War I era. Many of
these works, which were written by such luminaries as Ravel (including Boléro, Tzigane,
Chansons Madécasses, and Piano Concerto for the Left Hand), Stravinsky (including his
orchestral works Concerto, Suite No. 1, Suite No. 2, and Suite from "Pulcinella"), and the
great Finnish composer Jean Sibelius (including Suite Champêtre, Symphony No. 6,
Symphony No. 7, and Tapiola) were written in or after 1923 and would have entered the
public domain soon (within approximately the next five years) or already, had it not been
for the retroactive extension of the term of copyright.
27
65. Because the term of copyright has been extended for such works for
another 20 years, the performance or recording of such works remains expensive.
Orchestras like Philharmonia Virtuosi must pay hundreds of dollars simply to rent the
sheet music of such works for a single performance. In addition, should it decide to
record such works for sale to the public, ESS.A.Y Recordings would be responsible for
the payment of mechanical royalties on the sale of each copy. Copyright term extension
has effectively left Kapp and ESS.A.Y Recordings without any supply of "new" public
domain works until 2019.
66. Copyright restoration has also had a tremendous negative impact on Kapp
and ESS.A.Y Recordings. Between 1968 and the time § 514 went into effect, Kapp
purchased the music of several famous works that had fallen into the public domain in the
United States. The public domain works included works from the famous Russian
composers Stravinsky, Shostakovich, and Prokofiev. Because the works were in the
public domain, Kapp obtained copies of the music at a relatively low price,
approximately $15 or so to purchase a copy of the score, and approximately $20 to $40
for the music for the individual instruments.
67. Copyright restoration has caused the prices of sheet music for formerly
public domain works to increase dramatically, since now the restored copyright holder
has, in effect, a monopoly on the sale and distribution of the music. Kapp and others in
the orchestra community may now expend a thousand dollars or more for the sheet music
of a restored work, which is usually only available for renting (but not purchasing) a copy
for a single performance. After the performance, Kapp must return the copy back to the
28
asserted restored copyright holder, thus requiring Kapp's orchestra to pay several
thousand dollars more should it wish to perform the work again.
68. Copyright restoration also subjects the public performance of restored
musical works to the payment of royalties. Before § 514 went into effect, Kapp's
orchestra could perform these public domain works for the public freely, without having
to pay royalties for the performance. Now, however, with copyright restoration, Kapp
and his orchestra must pay royalties for performance of such works to the collecting
agency ASCAP.
69. For example, for years, Kapp's orchestra performed the famous children's
symphonic fairy tale Peter and the Wolf, which was written by the Russian composer
Prokofiev. The performances were for children at the Cushion Concerts at small venues
in Westchester County, New York. Before § 514 went into effect, Kapp could perform
Peter and the Wolf for children without being subject to a licensing requirement and fee
under ASCAP for the performance. Now, because of copyright restoration, both are
required.
70. Section 514 has also made it more difficult, if not unpleasant, for Kapp to
perform restored works. For example, the music publisher G. Shirmer Inc. a large
corporation that has asserted restored copyrights in numerous musical works, including
the works of Prokofiev contacted Kapp to warn him about his performance of Peter and
the Wolf and told him that he was not entitled to perform the work because he had not
licensed the performance or rented the performance materials from Schirmer. The
representative of Shirmer even suggested to Kapp that he could not own the copy of
29
Peter and the Wolf that he had purchased years ago when it was in the public domain, but
must rent it from Shirmer. Kapp, however, informed Shirmer that he legally owned his
copy of Peter and the Wolf, is a longstanding member of ASCAP, and has always paid
his ASCAP license fees for performances of any copyrighted work.
71. Section 514 has also negatively impacted several of Kapp's own
recordings on his CD label ESS.A.Y Recordings. For example, in 1991, Kapp decided to
make a recording of Stravinsky's sextet Apollon Musagète. One of the main reasons
Kapp chose to record this work was that it had entered the public domain and therefore
would not be subject to the payment of royalties. Given the substantial cost of making a
sound recording, and the relatively small market for classical works, Kapp believed that
the best chance of getting any kind of return on his investment would be to make a
recording of a work in the public domain. Kapp's hopes have been dashed, however, by
§ 514. The copyright to Stravinsky's Apollon Musagète has now been restored, and
ESS.A.Y Recordings must pay mechanical royalties to the collecting agency Harry Fox
on each copy sold. In addition, ESS.A.Y Recordings must expend time and labor in
keeping records of such sales for payment of royalties.
72. Kapp and ESS.A.Y Recordings also now face a diminished supply of
foreign classical works that they would consider economically feasible for them to record
and sell to the public. Before § 514 went into effect, Kapp and ESS.A.Y Recordings had
available many classical works from Russian and other foreign composers that were free
for them to use because they had fallen into the public domain. But now that supply of
works is subject to copyright and is available only at a significant price. Because the cost
30
of producing and recording such copyrighted works would yield so little likely return
(and probably only a loss) for Kapp and ESS.A.Y Recordings, they have decided to
forego recording such works altogether.
3. The Harm to the Symphony of the Canyons
73. For over sixteen years, Plaintiff Symphony of the Canyons has been
performing orchestral and other music to small and medium-sized communities in Utah.
Under the direction of its founder and conductor, Kortney Stirland, Symphony of the
Canyons puts on 8 to 10 public performances each year, as well a major musical and a
performance of Messiah. Symphony of the Canyons is a not-for-profit, community
orchestra that draws its members from Kanab, Utah and surrounding areas in Utah and
Arizona. The ages of the members who perform in the Symphony of the Canyons range
from as young as 12 to as old as 70 years old. Members are paid for travel expenses, but
otherwise receive no compensation.
74. Symphony of the Canyons depends vitally on the availability of music in
the public domain. Nearly 80 percent of the music it performs is public domain music.
Symphony of the Canyons simply cannot afford to pay for renting or performing a large
amount of copyrighted music due to the cost of the rental fees.
75. The CTEA's 20-year extension of the term of copyright has greatly
harmed the anticipated supply of public domain works for Symphony of the Canyons to
perform. These musical works were published in 1923 or later and would have entered
the public domain starting in 1998, had it not been for the CTEA's 20-year extension.
These works include works of the famous and influential American composers George
31
Gershwin (including perhaps his most popular work Rhapsody in Blue, as well as
Concerto in F, Cuban Overture, I Got Rhythm, Embraceable You, The Man I Love, and
selections from Porgy & Bess) and Aaron Copland (including Piano Concerto). All of
these works were written around 1923 and the decade following and would have entered
the public domain soon (within the next ten years) or already, had it not been for the
retroactive extension of the term of copyright. Now, with the enactment of the CTEA,
Symphony of the Canyons cannot rent the music for these works or perform them for the
public without considerable expense for payment to the copyright holder (or ASCAP in
the case of performances) for at least another 20 years. Because Symphony of the
Canyons is a small community orchestra, it simply cannot afford to pay such fees much
beyond the amount it currently expends for copyrighted works (roughly 20 percent of the
music it performs each year).
76. Section 514's retroactive restoration of copyrights also harms Symphony
of the Canyons's selection and performance of works. By restoring copyrights to
numerous foreign works that were in the public domain, § 514 diminishes the available
foreign works indeed, whole categories of works from the great Russian composers
Prokofiev and Stravinsky that Symphony of the Canyons can even consider performing.
77. The CTEA's and § 514's combined diminishment of available works in
the public domain creates an inestimable loss for not only Symphony of the Canyons, but
all the communities in Utah where it performs. These laws effectively make the public
performances of many great orchestral works that had been or would have been in the
32
public domain simply beyond the reach of Symphony of the Canyons and the small
communities in Utah where it performs.
4. The Harm to Ron Hall and Festival Films
78. For twenty-five years, Plaintiff Ron Hall, d/b/a Festival Films, has devoted
his life to selling films for hobbyists, collectors, universities, film archives, and the
general public. While Festival Films deals also with copyrighted works, a mainstay of its
business has been the sale of public domain works, including such favorites as Birth of a
Nation, Phantom of the Opera, Meet John Doe starring Gary Cooper, and Kansas City
Confidential. For years, Festival Films has worked with the Bob DeFlores Archives to
supply public domain stock footage to such shows as A&E Biography, The South Bunk
Show, and other network and cable biographies and feature films. Hall's business at
Festival Films was founded on the principles of copyright law that ensure that works go
into the public domain after a "limited time" and that public domain works can be used
freely by all.
79. Both of these foundations have now been shattered by the CTEA's 20-
year extension of the term of copyright and § 514's retroactive restoration of copyright.
80. The CTEA's 20-year extension of the term of copyright has greatly
harmed the supply of public domain works for Festival Films's business. Before the
CTEA was enacted, Festival Films relied on the natural progression of copyrighted works
into the public domain each year due to the expiry of the term. Such progression into the
public domain was vital for Festival Films to offer "new" titles of public domain works.
33
The CTEA, however, puts an end to this vital supply of public domain works for 20
years.
81. In practical terms, the CTEA has wiped out Festival Films's anticipated
supply of a whole category of films published in 1923 or later. Before the CTEA went
into effect, Festival Films greatly anticipated a number of popular works entering the
public domain due to the expiry of copyright, including a collection of Harold Lloyd
films such as Safefy Lost (1923), which has recently been named by the American Film
Institute as one of the 100 Most Thrilling American Movies ever made; numerous films
starring Lon Chaney, Sr., such as Tell It to the Marines, The Monster, and Laugh, Clown,
Laugh; and many silent films from the 1920s that are too numerous to name. Now, with
the copyright term extension effectuated by the CTEA, Festival Films cannot make these
classic films available to the public as public domain works.
82. Copyright restoration has had a similarly devastating impact on Festival
Films's business. Before § 514 went into effect, Festival Films offered a wide selection
of foreign titles of works that were in the public domain for failure to satisfy the
requirements of the relevant Copyright Act. Festival offered these movies for sale to the
public specifically because they were in the public domain. But, with copyright
restoration, Festival can no longer. Copyright restoration has forced Festival to remove
approximately 50 to 60 foreign titles from its selection, including such favorites as
Joffroi, the French film directed by Marcel Pagnol; Voyage Surprise; The Passion of Joan
of Arc, the classic movie about the life of Joan of Arc directed by Carl Dreyer; Diary of a
Country Priest, the French masterpiece directed by Robert Bresson; numerous films by
34
Jean Renoir, including his epic about the French Revolution Le Marseillaise, the World
War I drama La Grande Illusion, and The Testament of Dr. Cordelier; Le Corbeau, the
French thriller by Henri-Georges Clouzot; the French short film and children's favorite
The Red Balloon; Jean Cocteau's Les Enfants-Terribles; the classic German silent film
Faust; Variete; the first German sound film, The Blue Angel; and the classic Fritz Lang
film Metropolis. Festival Films has also been forced to forego selling hundreds more
foreign films that it anticipated acquiring before copyright restoration.
83. Festival Films also used to sell several classic British films by Alfred
Hitchcock, including Blackmail, The Manxman, Murder, and Number Seventeen. The
works had been in the public domain in United States for years before § 514A went into
effect, but now all of this has ended with copyright restoration. NIEs to restore copyrights
in these Hitchcock works have been filed in the Copyright Office. With copyright
restoration, Festival Films can no longer sell these Hitchcock films and has lost revenue
from lost sales of these works.
5. The Harm to John McDonough and Timeless Video
84. John McDonough's vocation and avocation in life revolve around
preserving and distributing old movies and television shows that are in the public domain.
McDonough founded Timeless Video Alternatives International over 20 years ago, and
has amassed a collection of approximately 800 public domain movies and 800 public
domain television shows, including such favorites as Charade with Cary Grant, Sante Fe
Trail with Erol Flynn, and Royal Wedding with Fred Astaire. Part of McDonough's
business at Timeless Video facilitates the airing of such public domain works on TV.
35
McDonough arranges the airing of such shows with primarily small independent TV
stations in exchange for commercial time, which McDonough in turn sells to advertisers.
McDonough also preserves old films on video and sells them directly to the public.
McDonough's entire business was founded on the principles of copyright law that ensure
that works go into the public domain after a "limited time" and that public domain works
are free for all to use and copy.
85. But the CTEA and § 514 now jeopardize these principles and seriously
impact McDonough's business.
86. The CTEA's 20-year extension of the term of copyright has greatly
harmed the supply of public domain works for McDonough's business. Before the
CTEA was enacted, McDonough relied on the natural progression of copyrighted works
into the public domain each year due to the expiry of the term. Such progression into the
public domain was vital for McDonough to offer "new" titles of public domain works.
The CTEA, however, puts an end to this vital supply of public domain works for 20
years.
87. In practical terms, the CTEA has wiped out McDonough's anticipated
supply of a whole category of films published in 1923 or later. Before the CTEA went
into effect, McDonough anticipated a number of popular works entering the public
domain due to the expiry of copyright, including many silent films from the late 1920s
that are too numerous to name, as well as a host of early sound movies from 1929 and
later, including movies starring Edward G. Robinson, Humphrey Bogart, and James
36
Cagney. Now, with the copyright term extension effectuated by CTEA, McDonough
cannot preserve these classic films or make them available to the public.
88. Copyright restoration has had a similarly devastating impact on
McDonough's business. Before § 514 went into effect, McDonough had a selection of
foreign works that were in the public domain in the United States for failure to satisfy the
requirements of the relevant Copyright Act, including such classics as Sydney Gilliat's
Night Train to Munich, The Demi-Paradise starring Laurence Olivier, Against the Wind,
The Baby and the Battleship, The Captive Heart, Doctor Blood's Coffin, Doctor in
Distress, Elizabeth of Ladymead, The Fallen Idol, Forbidden, Green Grow the Rushes
starring Richard Burton, Heidi, Intermezzo starring Ingrid Berman, Jericho, The Night
Has Eyes, On Approval, One of Our Aircraft Is Missing, The Overlanders, The Private
Life of Don Juan starring Douglas Fairbanks, The Private Life of Henry VIII, The Rules of
the Game directed by Jean Renoir, Sanders of the River, Song of Freedom, The Spy in
Black, Things to Come, The Third Man starring Orson Welles, Thursday's Child, Dark
Journey starring Vivien Leigh, The Divorce of Lady X starring Laurence Olivier, Fire
Over England starring Laurence Olivier and Vivien Leigh, Storm in a Teacup starring
Rex Harrison and Vivien Leigh, Ikiru directed by Akira Kurosawa, and several Alfred
Hitchcock thrillers including Blackmail, The Manxman, Murder, Number Seventeen, Rich
and Strange, and The Skin Game. McDonough offered these movies for sale to the
public specifically because they were in the public domain. But, with the asserted
copyright restoration in these movies, McDonough can no longer. Copyright restoration
has forced McDonough to forego selling such works altogether.
37
89. While the loss to Timeless Video has been significant, the loss to the
American public is even worse. Businesses like Timeless Video provide a huge public
service in facilitating the preservation of old films (such as silent and early sound films)
on videotape and making them available to the public. Most of the old silent and early
sound films were made on material (primarily nitrate) that deteriorates rapidly and
eventually becomes lost forever. Neither the Sonny Bono Copyright Term Extension Act
nor the URAA provides any means to insure that such old films are not lost forever. To
the contrary, both Acts exacerbate the problem of film deterioration by making it
impracticable, as well as unlawful, for film preservers like Timeless Video to deal with
works that fall within the ambit of either Act. But there is simply no guarantee that, for
each film that has been granted a retroactive copyright under § 514 or an extended term
of 20 years under the CTEA, a copyright holder even exists or intends to preserve the
film. Section 514 and the CTBA make these "orphan" works essentially unavailable to
the public.
90. The combined effect of term extension and copyright restoration is
devastating to plaintiffs, who rely extensively on public domain works in their businesses
and artistic pursuits. Extending the term of copyrights for another 20 years to existing
works while granting retroactive copyright protection to a whole class of foreign works
essentially shuts off both supply lines of works into the public domain. And waiting 20
years for these works to enter the public domain is essentially waiting a lifetime for
plaintiffs, who are already in their productive years. This unbridled and unprecedented
attempt by Congress to deplete the public domain is patently unconstitutional.
38
COUNT 1
(CTEA/Copyright Clause Violation)
91. Plaintiffs repeat and reallege paragraphs 1 through 90.
92. Article I, § 8, clause 8 of the Constitution limits Congress's authority to
grant copyright protection only "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 (emphasis added).
93. Thus, Congress's power under the Copyright (and Patent) Clause is
expressly limited to enacting laws that are designed "[t]o promote the Progress of Science
and useful Arts." This stated constitutional purpose provides the standard by which all
copyright law must be adjudged. Congress in the exercise of the copyright power may
not exceed the limits imposed by the express constitutional purpose "[t]o promote the
Progress of Science."
94. Moreover, the Copyright Clause further limits the means by which
Congress may exercise its copyright power to one specific means: "by securing for
limited Times to Authors * * * the exclusive Right to their respective writings." Id.
(emphasis added).
95. Despite these constitutional requirements, Congress has prolonged the
term of copyright repeatedly even for subsisting copyrights. The CTEA is the most
recent of Congress's continued expansion of the term of subsisting copyrights. From
1962 through 1974, Congress extended the term of copyright 9 times, with the end result
being that the maximum term of copyright (including renewal) went from 56 to 70 years.
In 1976, which effectuated a major overhaul to copyright law, Congress extended the
39
term of subsisting copyrights to 75 years, but also granted works published in or after
1978 a term of protection of life of the author plus 50 years. Finally, in 1998, Congress
enacted the CTEA, which adds 20 more years to the term of copyrights thus creating a
total term of protection of 95 years or life of the author plus 70 years for most works
depending on the date of publication and kind of work. Thus, works published in 1923
and following have had their term of copyright prolonged 11 times, culminating in the
20-year expansion of the CTEA. Had the original grant of copyright (including renewal)
been the exclusive term of protection allowed, all works from 1923 through 1944 would
have already entered the public domain (starting in 1979 and continuing each year up to
the present). Because of Congress's retroactive term extensions, however, these works
will not enter the public domain until December 31, 2018 through December 31, 2039.
96. The CTEA's retroactive extension of the term of copyright for subsisting
copyrights provides no incentive to authors for the further creation of works, or any
benefit to the public, and ultimately does not "promote the Progress of Science."
97. Moreover, Congress's 20-year expansion of the term of copyright for
works already in existence has resulted in a term of copyright that is not "limited."
98. In addition, a separate requirement imposed by the Copyright Clause is
that copyright protection can be granted only to works that are original. Feist
Publications, Inc. v. Rural Telephone Serv. Co., 499 U.S. 340, 345 (1991). The
retroactive extension of the term of copyright to existing works violates this originality
requirement because, at the time the CTEA extended the term of copyright, the existing
40
works added not even a modicum of creative thought or selection. The works were
simply the same as they were before.
99. The CTEA therefore violates the restrictions of Article I, § 8, cl. 8 and is
unconstitutional.
100. Since the unconstitutional sections of the CTEA are not severable from the
remainder of the CTEA, the entire act must be declared unconstitutional.
101. A declaratory judgment will terminate the controversy between the parties.
COUNT 2
(CTEA/First Amendment Violation)
102. Plaintiffs repeat and reallege paragraphs 1 through 90.
103. The First Amendment restricts Congress's power to "make" any law
"abridging the freedom of speech, or of the press." U.S. CONST. amend. I.
104. The CTEA, in its application to both subsisting and future copyrights, is a
law that restricts the plaintiffs' speech. But for the CTEA, plaintiffs could, without threat
of legal punishment, publish works originally copyrighted in 1923 through 1925, and
whose copyrights are presently subsisting. If the CTEA stands, plaintiffs can only
publish such works with the permission of the copyright holder.
105. Whether the CTEA is considered a content-based or content-neutral
restriction on speech, it violates the plaintiffs' freedom of speech.
106. Since the unconstitutional sections of the CTEA are not severable from the
remainder of the CTEA, the entire act must be declared unconstitutional.
107. A declaratory judgment will terminate the controversy between the parties.
41
COUNT 3
(CTEA/Due Process Violation)
108. Plaintiffs repeat and reallege paragraphs 1 through 90.
109. The Due Process Clause states that no person shall be "deprived of life,
liberty, or property, without due process of law." U.S. CONST. amend. V.
110. The Due Process Clause serves to protect individuals from government
action that results in fundamental unfairness, including retroactive legislation that
unfairly burdens individuals and disrupts settled expectations. Eastern Enterprises v.
Apfel, 524 U.S. 498, 556-57 (1998) (Kennedy, J., concurring in judgment and dissenting
in part). "[A] law that is fundamentally unfair because of its retroactivity is a law that is
basically arbitrary." Id. For this reason, "[r]etroactivity is generally disfavored in the
law, in accordance with `fundamental notions of justice' that have been recognized
throughout history." Id. at 532 (plurality) (quoting Kaiser Aluminum & Chemical Co. v.
Bonjorno, 494 U.S. 827, 855 (1990) (Scalia, J., concurring)). Indeed, as the Supreme
Court has admonished: "Retrospective laws are, indeed, generally unjust; and, as has
been forcibly said, neither accord with sound legislation nor with fundamental principles
of the social compact." Id. (plurality) (quoting 2 J. STORY, COMMENTARIES ON THE
CONSTITUTION § 1398 (5th ed. 1891)); see also id. at 547 (Kennedy, J.); id. at 558
(Breyer, J., dissenting).
111. The CTEA is fundamentally unfair in its retroactive increase of the term of
copyright to numerous existing works.
112. The CTEA effectuates a sweeping change from prior copyright law. It
attempts to add 20 more years to the term of copyright for works that have existed for
42
numerous years and that have, over the years, resulted in settled expectations of plaintiffs
and the public about when the copyrighted works will enter the public domain.
113. The retroactive effect of the CTEA is severe in every respect. The CTEA
reaches back over 75 years and grants an additional 20 years of copyright to thousands
and thousands of existing works, many of which had been created years ago potentially
dating back to 1923. While Congress has extended the term of copyright to existing
works several times in the recent past, it has never done so of the order or magnitude of
20 years. The previous term extensions were as follows: 3 years to subsisting copyrights
in 1962 (Pub. L. 87-668); 2 years to subsisting copyrights in 1965 (Pub. L. 89-142); 1
year to subsisting copyrights in 1967 (Pub. L. 90-141), 1968 (Pub. L. 90-416), 1969 (Pub.
L. 91-147), 1970 (Pub. L. 91-555), and 1971 (Pub. L. 92-170); 2 years to subsisting
copyrights in 1972 (Pub. L. 92-566) and 1974 (Pub. L. 93-573); and 5 years to subsisting
copyrights in 1976 (Pub. L. 105-298). The CTEA's 20-year increase is 4 times as great
as the largest of these previous extensions.
114. Given the existing law at the time, the plaintiffs had settled expectations
that copyrighted works were entitled to protection for the statutory term granted when the
works were created and published. Plaintiffs (as well as no doubt numerous other
members of the public) reasonably relied on the then-existing statutory term for
determining the entry of these copyrighted works into the public domain. In reliance on
this bedrock principle, plaintiffs expended a considerable amount of time, money, and
resources in their businesses to perform or make available public domain works for the
public. Plaintiffs all purchased works that had entered the public domain and that were
43
free for all to use under the prevailing law. Plaintiffs also made business decisions in
reasonable anticipation that copyrighted works published in 1923 and following would
have entered the public domain soon or already.
115. By retroactively granting 20 more years of copyright to works already in
existence, the CTEA greatly upsets the settled expectations of the plaintiffs and deprives
them of property without due process of law. The result is particularly harsh and
oppressive. Plaintiffs chose their vocations years ago and developed their respective
businesses and artistic pursuits based in part upon the design of the copyright system that
allowed them to use freely works in the public domain. Each year, they could expect the
natural progression of at least some copyrighted works into the public domain. In each of
the plaintiffs' lines of work, the availability of "new" public domain works is essential to
their business. (Just imagine a business attempting to survive without any new product
line for 20 years.) The CTEA, however, ends the plaintiffs' (and the public's) supply of
public domain works for 20 years, until January 1, 2019 which may as well be forever
for plaintiffs, who are well into their productive years.
116. The CTEA is a law that is, at its essence, fundamentally unfair. It
unsettles the reasonable expectations of plaintiffs about the progression of works into the
public domain and deprives them of their property without due process of law.
117. Accordingly, plaintiffs seek a declaratory judgment that the CTEA is
unconstitutional.
118. Since the unconstitutional sections of the CTEA are not severable from the
remainder of the CTEA, the entire act must be declared unconstitutional.
44
119. A declaratory judgment will terminate the controversy between the parties.
COUNT 4
(Section 514 of URAA/Copyright Clause Violation)
120. Plaintiffs repeat and reallege paragraphs 1 through 90.
121. Section 514 of the URAA violates the constitutional limitation on
Congress's power to grant copyrights prescribed by Article I, § 8, clause 8 of the
Constitution. Congress's enumerated power under the Copyright (and Patent) Clause is
expressly limited to enacting laws that are designed "[t]o promote the Progress of Science
and useful Arts."
122. The Copyright Clause also requires that the public have free access to
copy and use whatever copyright law has deemed to fall in the public domain.
Accordingly, once a work goes into the public domain, Congress cannot remove it from
free use by the public by granting it a copyright "restored," retroactive, or otherwise.
123. Section 514 of the URAA violates these restrictions of the Copyright
Clause and is therefore unconstitutional. By its own terms, § 514 authorizes copyrights
to works already in the public domain, many of them for many years. See 17 U.S.C. §
104A(a)(1)(B) (granting copyright to certain public domain works as "if the work never
entered the public domain in the United States").
124. Section 514's retroactive restoration of copyright provides no incentive to
authors for the further creation of works, or any benefit to the public, and ultimately does
not "promote the Progress of Science."
125. In addition, a separate requirement imposed by the Copyright Clause is
that copyright protection can be granted only to works that are original. Feist
45
Publications, Inc. v. Rural Telephone Serv. Co., 499 U.S. 340, 345 (1991). The
retroactive grant of copyright protection to works in the public domain violates this
originality requirement because, at the time § 514 granted copyright protection, the works
were already in the public domain and contained not even a modicum of creative thought
or selection when copyright protection was granted. The works were simply the same as
they were before: works in the public domain.
126. Accordingly, plaintiffs seek a declaratory judgment that § 514 of the
URAA is unconstitutional.
127. A declaratory judgment will terminate the controversy between the parties.
COUNT 5
(Section 514 of URAA/First Amendment Violation)
128. Plaintiffs repeat and reallege paragraphs 1 through 90.
129. The First Amendment restricts Congress's power to "make" any law
"abridging the freedom of speech, or of the press." U.S. CONST. amend. I.
130. Section 514 of the URAA is a law that restricts the plaintiffs' speech. But
for § 514, plaintiffs could, without threat of legal punishment, publish works in the public
domain whose copyrights now have been restored. If § 514 stands, plaintiffs can only
publish such works with the permission of the copyright holder.
131. Whether § 514 of the URAA is considered a content-based or content-
neutral restriction on speech, it violates the plaintiffs' freedom of speech.
132. Accordingly, plaintiffs seek a declaratory judgment that § 514 of the
URAA is unconstitutional.
133. A declaratory judgment will terminate the controversy between the parties.
46
COUNT 6
(Section 514 of URAA/Due Process Violation)
134. Plaintiffs repeat and reallege paragraphs 1 through 90.
135. The Due Process Clause states that no person shall be "deprived of life,
liberty, or property, without due process of law." U.S. CONST. amend. V.
136. The Due Process Clause serves to protect individuals from government
action that results in fundamental unfairness, including retroactive legislation that
unfairly burdens individuals and disrupts settled expectations. Eastern Enterprises v.
Apfel, 524 U.S. 498, 556-57 (1998) (Kennedy, J., concurring in judgment and dissenting
in part). "[A] law that is fundamentally unfair because of its retroactivity is a law that is
basically arbitrary." Id. For this reason, "[r]etroactivity is generally disfavored in the
law, in accordance with `fundamental notions of justice' that have been recognized
throughout history." Id. at 532 (plurality) (quoting Kaiser Aluminum & Chemical Co. v.
Bonjorno, 494 U.S. 827, 855 (1990) (Scalia, J., concurring)). Indeed, as the Supreme
Court has admonished: "Retrospective laws are, indeed, generally unjust; and, as has
been forcibly said, neither accord with sound legislation nor with fundamental principles
of the social compact." Id. (plurality) (quoting 2 J. STORY, COMMENTARIES ON THE
CONSTITUTION § 1398 (5th ed. 1891)); see also id. at 547 (Kennedy, J.); id. at 558
(Breyer, J., dissenting).
137. Section 514 of the URAA is fundamentally unfair in its retroactive
restoration of copyrights in numerous works that have been in the public domain, in
many instances for years and years.
47
138. Section 514 effectuates a sweeping change from prior copyright law. It
attempts to revise retroactively several copyright laws that have existed for numerous
years and that have, over the years, resulted in settled expectations of plaintiffs and the
public, including (but not limited to):
a. Whether a particular work is accorded copyright protection is
determined by the law existing at the time of creation and publication of the work;
b. General publication of a work under the 1909 Act without
compliance with the Act's formalities irrevocably injected the work into the
public domain;
c Works in the public domain are free for all to use and copy;
d. Works in the public domain cannot be copyrighted; and
e. Under the first sale doctrine, an owner of a lawfully made and
purchased copy of a work can sell, rent, or otherwise dispose of it freely without
the authorization of the copyright holder.
139. The retroactive effect of § 514 is severe in every respect. Section 514
reaches back over 75 years and grants retroactive copyrights to thousands and thousands
of foreign works, many of which had been created years ago potentially dating back to
the early 1920s. Under the settled law under the 1909 Act and later the 1976 Act, these
works had unequivocally and unconditionally entered the public domain in the United
States because they did not meet the requirements of U.S. copyright law. What § 514
attempts to undo is nearly a hundred years of copyright law retroactively.
48
140. Given the years of copyright law to support them, the settled expectations
of plaintiffs were that these public domain works were free for them to use and copy.
Plaintiffs (as well as no doubt numerous other members of the public) reasonably relied
on the well-established indeed, unassailable principle of law that works in the public
domain are free for all to use. In reliance on this bedrock principle, plaintiffs expended a
considerable amount of time, money, and resources in their businesses to perform or
make available public domain works for the public. Plaintiffs all purchased works that
had entered the public domain and that were free for all to use under the prevailing law.
141. Section 514 now attempts to strip plaintiffs of their ability to continue to
use their property, all of this by retroactively granting copyrights to works that have
already entered the public domain. The result is particularly harsh and oppressive.
Plaintiffs chose their vocations years ago and developed their respective businesses based
in part upon the design of the copyright system that allowed them to use freely works in
the public domain. Over the years, plaintiffs purchased, performed, or made available
foreign works that they now must forego using in their businesses and artistic pursuits
because of the retroactive grant of copyright under § 514.
142. Section 514 is a law that is, at its essence, fundamentally unfair. It
unsettles the reasonable expectations of plaintiffs about the free availability of public
domain works and deprives them of their property without due process of law.
143. Accordingly, plaintiffs seek a declaratory judgment that § 514 of the
URAA is unconstitutional.
144. A declaratory judgment will terminate the controversy between the parties.
49
WHEREFORE, Plaintiffs Lawrence Golan, Richard Kapp, S.A. Publishing Co,,
Inc., Symphony of the Canyons, Ron Hall, d/b/a Festival Films, and John McDonough,
d/b/a Timeless Video Alternatives International request this Court enter judgment:
1. Declaring that the CTEA and § 514 of the URAA are unconstitutional;
2. Enjoining defendant from the enforcement of the CTEA and § 514 of the
URAA;
3. Awarding plaintiffs the costs of this action, including reasonable
attorneys' fees; and
4. Awarding any further relief this Court deems just and appropriate.
Respectfully submitted,
Lawrence Lessig
Edward Lee Carolyn Fairless
STANFORD LAW SCHOOL WHEELER TRIGG & KENNEDY
CENTER FOR INTERNET AND SOCIETY 1801 California Street,
Crown Quadrangle Suite 3600
559 Nathan Abbott Way Denver, CO 80202-2636
Stanford, CA 94305-8610 phone: (303) 292-2525
phone: (650) 736-0999 fax: (303) 294-1879
fax: (650) 723-8440
Jonathan L. Zittrain
Charles R. Nesson
1525 Massachusetts Ave.
Cambridge, MA 02138
phone: (617) 495-7547
Dated: September Counsel for Plaintiffs
[names and addresses listed
below]
50
Plaintiffs
LAWRENCE GOLAN,
1777 Larimer Street, # 1805
Denver, CO 80202
RICHARD KAPP,
20 Oakdale Drive
Hastings on Hudson, NY 10706,
S.A. PUBLISHING Co., INC.,
d/b/a/ ESS.A.Y RECORDINGS,
145 Palisade Street
Dobbs Ferry, NY 10522-1617,
SYMPHONY OF THE CANYONS,
attn: Kortney Stirland
14 East Center
Kanab, Utah 84741,
RON HALL, d/b/a FESTIVAL FILMS,
6115 Chestnut Terrace
Shorewood, MN 55331,
JOHN MCDONOUGH, d/b/a TIMELESS VIDEO
ALTERNATIVES INTERNATIONAL,
3303 Fiechtner Drive, S.W.,
Fargo, ND 58103
51