# Amicus Curiae Brief — Eldred v. Ashcroft

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URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385014_0514%3A32

## Record

- **Collection:** Supreme Court brief
- **Document type:** Amicus Curiae Brief
- **Published:** January 1, 2003
- **Citation:** 537 U.S. 186

## Text

INTHE
Supreme Court of the Gnited States

Ez:c ELDRED, er ai.,
Petitioners,
Vv.

JokN D. ASHCROFT, In his official capacity as
Attorney General,
Respondent.

On Writ of Certiorari to the United States Court of
Appeals for the District of Columbia Circuit

BRIEF OF AMICI CURIAE OF THE BUREAU OF
NATIONAL AFFAIRS, INC.; CCH INCORPORATED:
HOUGHTON MIFFLIN COMPANY, INC.; THE
MCGRAW-HILL COMPANIES; REED ELSEVIER
INC.; AND THE SOFTWARE & INFORMATION

INDUSTRY ASSOCIATION IN SUPPORT OF
RESPONDENT

_ PAUL BENDER* ._
.- MICHAEL R. KLIPPER
~ “(CHRISTOPHER A. MOHR > *
‘MEYER & Kipper, PLLC
‘923 15th Street, NW. 8 Sr
_ Washington, D.C. 20005 , .
(202) 637-0850 OF apes
Counsel for Amici Curiae’ | :
= ~ 2» isc. * Counsel of Record EE Oe oT age

i

TABLE OF CONTENTS

TABLE OF AUTHORITIES ....................+.

SUT ER S OF ARTIC ...ccccccceccecsesscseccsosenes

I.

II.

THE PETITION DOES NOT
PRESENT A _ JUSTICIABLE
ee) ee

A. The Attorney General Is Not
A Proper Defendant In The
Absence Of A_ Credible
Threat of Federal Criminal
Pe Siistnittiedinciinaidtinitiiiainins

B. Petitioners Present A
Hypothetical And Abstract,
Rather Than A_ Ripe,
Concrete Controversy ............

THE CTEA IS A_ VALID
EXERCISE OF CONGRESS'S
AUTHORITY UNDER THE
COPYRIGHT CLAUSE ...............

A. Petitioners’ Argument is
Inconsistent With the History
of the Copyright Clause and
Asserts an Unduly Narrow
View of How Congress May
Promote Progress ..............-+++.

10

14

15

TABLE OF CONTENTS—Continued

l.

ii

Throughout Most Of The
History Of Federal
Copyright Law, That
Law Provided Protection
Upon Publication And
Dissemination, Not Upon
acetic

The First Congress
Clearly Understood That
Its Power Under The
Copyright Clause
Extended Beyond
Providing Incentives For
The Creation Of New
Work; Later Congresses
Have Followed Suit ........

Throughout History,
Congress Has Frequently
Enacted Copyright Laws
That Cannot Be
Explained As Designed
Only To Provide
Incentives For The
Creation Of New

(a) Applying New
Rights To Existing
IE inistitcncprenmninee

Page

15

17

19

19

21

ill
TABLE OF CONTENTS—Continued

B. Freed Of Petitioners’ Crabbed
Interpretation Of Congress's
Power, The CTEA Easily
Passes Constitutional

Ill. APPLICATION OF THE CTEA'S
COPYRIGHT EXTENSION TO
EXISTING COPYRIGHTS
DOES NOT VIOLATE THE
FIRST AMENDMENT ................

A. Mechanical Reproductive
Copying of Another's
Copyrighted Work Without
Permission Is Probably Not

Free Expression For Purposes
of the First Amendment .........

B. Application of the CTEA's
Copyright Term to Existing
Copyrights Satisfies
Intermediate Scrutiny ............

CETTE ccccccccscccesccsccssccescscscccsccecessees

Page

22

26

27

29

30

iV

TABLE OF AUTHORITIES
CASES

Author's League of America v. Oman,
790 F.2d 220 (2™ Cir. 1986) .............
Boyle v. Landry, 401 U.S. 77, 80-81
SUIT UD cciscchesinensansniiieniiiteashiiantaniibaainidectatalaaiaaiaahs
Burrow-Giles Lithographic Co. v.
Sarony, 111 U.S. 53 (1883) .....8........
Capital Cities Cable, Inc. v. Crisp, 467
eh Ge Ge enenacteemnem
Coleman v. Miller, 307 U.S. 433
ITENTED accnscntnsetiamentennaineniniaeneieaaiienete
Eldred v. Reno, 239 F.3d 372 (D.C. Cir.
TTT cessvitennstencetapuiesasuastiniauspentebinteniniannes
Feist Pubs. v. Rural Telephone, 499
a> Be Ge cxenee
Golden v. Zwicker, 394 US. 103
STEED criemeeninannenieitaaniniatanmemanbisiieiiaien
Harper & Row v. The Nation, 471 U.S.
Fe crnreetesnnniataptatinmmmnaitetinne
Ins. Corp. of Ireland Ltd. v. Companie
des Banxites de Guinee, 456 U.S. 694
puensenesssonmeseasssesanssananene
Kewanee Oil v. Bicron Corp., 416 U.S.
a cictennttianitntniiitceiaianen
Ladd v. Law & Technology Press, 762
F.2d 809 (9" Cir. 1985) ........ccccsesseee
Lynch v. Donnelly, 465 US. 668
STEED cxsrneninmsnnntitiemneaineinnniinnnens
Martin v. City of Indianapolis, 982 F.
Supp. 625 (S.D. Ind. 1997) ................
O'Shea v. Littleton, 414 US. 488
IE cxntnincasiniannnibieninnetuiiansendintsin
Sony v. Universal Studios, 464 U.S. 417
FIDE connsinatnmntintniatnniniienmeianniniandities

13

— — —
—- -

v

TABLE OF AUTHORITIES—Continued

United Christian Scientists v. Christian
Science Bd. of Directors, 829 F.2d
ff ol

United Public Workers of America v.
Mitchell, 330 U.S. 75 (1947) .............

United Video, Inc. v. FCC, 890 F.2d
jp

Valley Forge v. Americans United for
Separation of Church and State, 454

Ss EE ncenenserenesincnnnnenasancenen
STATUTES
Act of Feb. 3, 1831, 4 Stat. 436 ..............
Act of July 8, 1870, 16 Stat. 212 ............
Act of March 4, 1909, 35 Stat. 1075 ......
Act of May 31, 1790, 1 Stat. 124 ...........
Pub. L. No. 98-450, 98 Stat. 1727
IE sineinnanisrntuisindditinanminsininiaianiensin
Pub. L. No. 100-568, 102 Stat. 2853 ......
Pub. L. No. 101-650, 104 Stat. 5089
STE denscinenseninustinnsnntnsesiniemieniinanees
Pub. L. No. 102-307, 106 Stat. 274
STITT cninnsiiunitishitenepndenencmseuiiiiiinmninepbnantens
Pub. L. No. 104-39, 109 Stat. 336
III icierecnindentnieniasisiotaniansinninniiieianintatiinns
Pub. L. No. 105-298, 112 Stat. 2827
TET cctiduusiaiiiiniiandimuantisannsinmninidunntenie
Pub. L. No. 106-160, 113 Stat. 1774
TT icshistdeninniestatnninnerpeeieniisneneniees
Br a TIE diiticnainatanscnnnntiinnninnanieniions
gk |
17 U.S.C. § 106A(G)(2) ..........cccceeeeeeeeees
Be ee Oe ED cinnictsintiieientnerereneeteenevens

eS lll TT

11, 16

16

11, 12, 15, 16
4,11,17

20
23

19, 21
22

20

vi
TABLE OF AUTHORITIES—Continued

17 U.S.C. § 202 cecccccccssssssssssssuessessseeeeeeee
17 U.S.C. § 3O1(Q) coeccccscssesssssuessssssseeeeeee
17 U.S.C. § 301(C) coeccscssssesssssvesessssseeessen
17 U.S.C. § TOD ceseecsccccssccssccssveseccssseseseee
BO UGC. © BODO ccecenceceecaneveccsenccssesen
18 U.S.C. § 1832(a)(2) seececcccveessesssececseee
28 U.S.C. § 2403(a) .ocsccccccsescssessseessveeeee

LEGISLATIVE MATERIALS

H.R. Rep. No. 94-1476 (1976) ..........0+
S. Rep. No. 98-162 (1984) ...........cccccccee
7 Reg. Deb. 21, Cong. 2d Sess. App.
CHIX (Deas. 17, 1GSD) ..cccceccocccececcceeee
7 Reg. Deb. 424 (statement of Mr.
Huntington) (Jan. 7, 1831) ............+.

MISCELLANEOUS

Department of Justice, Computer Crime
and Intellectual Property Division,
http://www.cybercrime.gov/ipcases.h
tml (visited June 21, 2002) ................

Edward Samuels, The Public Domain in
Copyright Law, 41 J. Copyright
Soc'y U.S.A. 137, 172-73 (1993) ......

Gorman and Ginsburg, Copyright 347
a

M. Nimmer & D. Nimmer, Nimmer on
COTE, 6 BBG cccemscermssensesentersemeee

Supplemental Report of the Register of
Copyright on the General Revision of
U.S. Copyright Law, 87-88 (1965) ....

Wright and Miller, Federal Practice and
lA

Page
22
19
1]
22
28
28

l
INTEREST OF AMICI'

Amici are five corporations—The Bureau of National
Affairs, Inc., CCH Incorporated ("CCH"), Houghton Mifflin
Company, Inc., The McGraw-Hill Companies, Reed Elsevier
Inc.—and one trade association, the Software & Information
Industry Association ("SIIA").

The Bureau of National Affairs, Inc. is a prominent
publisher of print and electronic news, analysis, and
reference products, providing intensive coverage of legal and
regulatory developments.

CCH Incorporated, founded in 1913, and previously
known as Commerce Clearing House, Inc., has served four
generations of business professionals and their clients. The
company produces approximately 700 print and electronic
products for securities, tax, legal, banking, human resources,
health care and small business markets. CCH is a wholly
owned subsidiary of Wolters Kluwer U.S. Corporation.

Houghton Mifflin Company, a unit of Vivendi Universal
Publishing, is one of the leading educational publishers in
the United States. Houghton Mifflin publishes textbooks,
instructional technology, assessments and other educational
materials for elementary and secondary schools and colleges.
The Company also publishes an extensive line of reference
works and fiction and non-fiction for adults and young
readers. Additionally, Houghton Mifflin offers computer-
administered testing programs and services for the
professional and certification markets.

' No entity or counsel apart from those whose names appear on this
brief have contributed monetarily or substantively to its production, and
consent to its filing has been lodged with the Clerk of the Court.

2

The McGraw-Hill Companies is a global information
provider focusing on financial services, education and
business information. It includes Standard & Poor's, a
worldwide provider of information regarding credit ratings,
investments, and corporate valuations, McGraw-Hill
Education, the largest kindergarten through 12th grade
publisher in the U.S. and a leading global provider of
education materials, and Business Week magazine.

Reed Elsevier Inc. ("REI") is one of the country's
leading publishing and information companies, providing
information in both hard copy and electronic formats to the
government, scientific, legal, educational and business
communities. REI businesses include: Harcourt, a leading
provider of K-12 instructional materials and educational
assessment tools; Elsevier Science, one of the top publishers
of scientific and medical information; LexisNexis, the
industry leader in decision-support information and services
to legal, business, and government professionals; Reed
Business Information, the largest publisher of business and
professional publications in the United States; and Reed
Exhibitions, one of the country's premier exhibition
companies.

The Software & Information Industry Association
("SIIA") is the leading trade association committed to
promoting and protecting the interests of the software and
information industries. SIIA represents over 800 member
companies, including prominent publishers of software and
information products for reference, education, business,
consumer, the Internet and entertainment uses.

Each of these corporations and SIIA's members create
and distribute original works of authorship. Their ability to
do so is directly affected by the operation of the United
States copyright system. Events since the passage of the

— I —

3

Copyright Revision Act of 1976 make it critical that
Congress retain the constitutional authority to amend the law
in response to technological and international developments.

Amici file this brief in support of respondent Attorney
General because of the implications of petitioners’ arguments
for the functioning of the U.S. copyright system. Petitioners
assert limits on Congress's authority under the Copyright
Clause that, if adopted, would significantly curtail the ability
of Congress to enact effective copyright legislation in the
future; those arguments also cast doubt upon many past
exercises of the copyright power that amici rely on to protect
their intellectual property.

SUMMARY OF ARGUMENT

The complaint in this case appears not to present a
justiciable controversy. Petitioners base their standing to sue
the Attorney General on their alleged fear of criminal
prosecution if they reproduce works originally published in
the 1920s that have remained in copyright because of the
1998 Copyright Term Extension Act ("CTEA").’
Petitioners, however, do not allege that they have actually
infringed any 1920s copyrights, nor do they allege that there
are specific, named works they wish to reproduce, that those
works are, in fact, still in copyright, and that petitioners have
been unable to secure permission to publish from the
copyright owners. Petitioners have not been threatened with
either prosecution or civil suit. And, even if one of the
petitioners were to infringe an existing copyright at some
time in the future, the possibility of a federal prosecution for
activities of the type in which they engage is, at best,
extremely remote. In these circumstances, petitioners’
wholly subjective "fear of prosecution” for actions they have

? Pub. L. No. 105-298, 112 Stat. 2827 (1998).

4

not taken does not establish justiciability. Their failure to
specify the actions they wish to take also deprives the case of
the concreteness that Article III requires.

On the merits, petitioners base their position on an
extraordinarily narrow and incorrect view of Congress's
power under the Copyright Clause. According to petitioners,
the only purpose that can support a copyright law—i.e., the
only way that such a law can be said to "Promote the
Progress" of literature and art—is for it to provide incentives
for authors to create new works. According to that view, the
new term of copyright provided by the CTEA cannot be
applied to works created before enactment of the CTEA
because "a term granted to a work already in existence, does
not promote Science." Pet. Br. 10.

This oddly wooden limitation is completely inconsistent
with the theory and history of U.S. copyright laws. It fails to
take into account that the first U.S. Copyright Act’ accorded
statutory copyright to works already in existence, that every
term extension since 1790 has applied to works already in
existence, and that other new benefits of copyright, such as
increased penalties for infringement and new exclusive rights
for copyright owners, have also commonly (and common-
sensically) been made available to the proprietors of existing
copyrights, as well as to authors of future works. Petitioners’
crabbed limitation on Congress's power would not only
invalidate a wide array of copyright laws enacted by
Congress in the past, it would also hamstring the ability of
Congress to enact future copyright statutes to deal with
threats to the rights in existing works.

Finally, petitioners’ invocation of the First Amendment
turns on their assumption that the "freedom of speech"

* Act of May 31, 1790, 1 Stat. 124.

5

protected by that Amendment includes the right to
mechanically reproduce and distribute the copyrighted works
of others without their permission, and even against their
expressed wishes. Amici doubt the validity of that premise.
But even if copyright infringement is to be considered as
constituting First Amendment activity, Congress's enactment
of a valid, content neutral copyright law pursuant to an
explicit Article I power merely constitutes action supported
by important governmental interests. And inclusion of a
broad fair use provision in that law, coupled with the
doctrine that copyright protects only an author's particular
means of expression—not the ideas set forth through that
expression—amply satisfies any narrow tailoring
requirement.

ARGUMENT

I. THE PETITION DOES NOT PRESENT A
JUSTICIABLE CONTROVERSY

Although justiciability was not questioned below,’ amici
believe that the complaint in this case does not present a
justiciable controversy. This Court has_ repeatedly
emphasized that constitutional issues may be resolved by
federal courts only when those issues arise between real
adversaries in a concrete factual context.” The present
proceeding does not remotely meet that standard.°

* In the court of appeals, respondent questioned petitioners’ standing
to claim that the First Amendment is violated by the application of the
CTEA to works "yet to be created." See Eldred v. Reno, 239 F.3d 372,
375 (D.C. Cir. 2001). Petitioners no longer challenge the
constitutionality of the CTEA's prospective application. See Pet. Br. 48.

> See, e. x., United Public Workers of America v. Mitchell, 330 U.S.
75, 89 (1947) ("For adjudication of constitutional issues ‘concrete legal
issues, presented in actual cases, not abstractions’ are requisite. This is as
true of declaratory judgments as any other field.") (internal citation
omitted); Valley Forge v. Americans United for Separation of Church

Petitioners and their amici have a strong philosophical
disagreement with Congress's 1998 decision to extend the
term of U.S. copyright by 20 years. They seek to bring that
policy dispute to this Court by basing a constitutional claim
on their allegation that "certain of the plaintiffs were
preparing to use in some way" works that would have fallen
out of copyright’ but for enactment of the CTEA, and that
these unspecified petitioners have a "fear of prosecution" if
they do so. Pl.'s 2d Amd. Compl. 914. Petitioners have not,
however, named the works certain of them wish to use.
stated the way in which those petitioners wish to use those
works, alleged that the works are still, in fact, in copyright or
alleged that the use petitioners wish to make of the works
would actually be prohibited by the Copyright Act. Nor do
petitioners allege that they cannot obtain permission from
copyright owners to use the works. Petitioners indeed have
not even included as defendants, much less identified, the

and State, 454 U.S. 464, 472 (1982) (Legal questions must be resolved
“not in the rarified atmosphere of a debating society, but in a concrete
factual context conducive to a realistic appreciation of the consequences
of judicial action."); Coleman v. Miller, 307 U.S. 433, 460 (1939)
(Frankfurter, J. dissenting) ("[CJourts will not pass upon . . . abstract,
intellectual problems, but adjudicate concrete living contest[s] between
adversaries.") (internal quotation omitted).

° A defect in subject-matter jurisdiction is, of course, not waivable
by the parties and may be raised at any time, including by the Court on
its own motion. See, e.g., ns. Corp. of Ireland Ltd. v. Companie des
Banxites de Guinee, 456 U.S. 694, 702 (1982).

’ The CTEA added a twenty-year extension to the term of subsisting
copyrights. A work published in 1923 would have initially been entitled
to two 28-year terms of copyright if the author complied with applicable
statutory formalities, terms that would have ended in 1979. When
Congress passed the comprehensive 1976 revision of the Copyright Act,
it extended the term of subsisting copyrights so that copyrights in their
second 28-year term would have a term of 75 years from the date of
publication. Thus, works published in 1923 would have fallen out of
copyright at the end of 1998, the year in which petitioners’ complaint was
filed, but for the enactment of the CTEA in October of that year.

7

owners of the copyrights in the works in which they
supposedly are interested. They seek relief only against the
Attorney General, who has no civil copyright enforcement
authority and who has never threatened criminal enforcement
against petitioners or allegedly prosecuted anyone for
activities similar to those in which they purportedly wish to
engage. Petitioners thus present an unripe, academic and
completely hypothetical controversy against a nonadversarial
party defendant. Such a "case" is not justiciable.

A. The Attorney General Is Not A Proper
Defendant In The Absence Of A Credible
Threat of Federal Criminal Prosecution

The federal Copyright Act creates private rights that are
almost entirely privately enforced. The United States does
not civilly enforce the rights of copyright owners, nor does it
claim copyright in its own works. The Attorney General is
thus not an adverse party® in this case unless petitioners are
under a real and immediate threat of criminal prosecution by
the United States.’ Petitioners allege no such threat and, in
fact, none exists.

* The Attorney General must, however, be given notice of federal
court challenges to the constitutionality of an Act of Congress affecting
the public interest, and may intervene if he so wishes. 28 U.S.C. §
2403(a). This intervention authority applies only when a justiciable
controversy against an actual adversarial defendant exists; it plainly does
not authorize suit to be brought against the Attorney General simply
because plaintiff wishes to challenge the constitutionality of a federal
Statute.

* See, e.g, O'Shea v. Littleton, 414 U.S. 488, 491, 493 (1974)
(complaint seeking declaration against officials based on discriminatory
prosecution practices dismissed because no plaintiff was facing
prosecution); Boyle v. Landry, 401 U.S. 77, 80-81 (1971) (dismissing
declaratory judgment action against criminal intimidation statute because
no plaintiff had actually been charged under the statute); Golden v.
Zwicker, 394 U.S. 103, 109 (1969) (First Amendment challenge to statute

ee

Petitioners collectively allege that they have a "fear of
prosecution by Defendant [Ashcroft] for violations of the
NET Act." Pl.’s 2d Amd. Compl. § 16. No basis for this
wholly subjective fear is set forth in the complaint. No
petitioner alleges, for example, that he, she or it has ever
been investigated, prosecuted or in any way threatened with
federal prosecution for copyright infringement. No
petitioner even alleges that they have been the subject of any
past (or threatened future) civil copyright infringement
action. The complaint contains no allegation that any
person, entity or company that conducts activities similar to
those conducted by any of the petitioners has ever been
subjected to (or even investigated for or threatened with) a
criminal prosecution.’°

In these circumstances, there is simply no existing threat
that any petitioner faces or would face imminent criminal
prosecution by the United States even if one or more of the
petitioners should, at some time in the future, violate a then-
existing copyright. It is important to bear in mind that the
occurrence of an act of copyright infringement does not
inevitably, usually, or even ordinarily lead to a federal
criminal prosecution. Federal prosecutions for copyright
infringement are, in fact, extraordinarily rare. Amici could,
for example, find no criminal case under the 1976 Copyright
Act—treported or otherwise—in which the basis for
prosecution was the reproduction of books or sheet music,

prohibiting distribution of anonymous election literature non-justiciable
because the prospect of prosecution was neither "real nor immediate”).

‘© Even were an infringement of a 1923 work to occur, the
$1,000.00—within 180 days—threshold for NET prosecution would
rarely be met. The described activities of some of the petitioners actually
appear to make them legally immune from prosecution. Most of the
petitioners appear to specialize in out-of-print works and works of
extremely limited general interest and valuing the damage caused by the
infringement of an out-of-print work is extremely difficult.

9

much less a criminal case based on the distribution of sheet
music or books that were in the last twenty years of their
copyright term.'' The dearth of reported cases is confirmed
by amicus’ practical experience. Amicus SIIA has an
extensive antipiracy program, through which it enforces
copyrights on behalf of its members. In SIIA's experience,
even in those instances when hundreds of thousands of
dollars are involved, it is extremely difficult to convince
federal prosecutors to bring cases involving infringements of
works released last year, much less seventy years ago. In
light of the routine appearance of pirated software, music,
and motion pictures on the Internet before or within days of
their public release, it strains credulity to believe that the
Justice Department would make prosecuting infringement of
works published in 1923 a law enforcement priority.'7

Moreover, not only have petitioners sued a party (the
Attorney General) with whom they have no justiciable
dispute, they have failed to sue any of the only parties with
whom they might have such a dispute—the owners of
copyrights of works they supposedly wish to reproduce.

Petitioners’ failure to include or identify any of the
copyright owners whose rights are involved is more than a
technical omission. Copyright owners may have important
information and highly relevant perspectives to contribute to
judicial consideration of the constitutionality of the

'' See, e.g, Department of Justice, Computer Crime and
Intellectual Property Division, http://www.cybercrime.gov/ipcases.htm|
(visited June 21, 2002) (listing representative criminal intellectual
property cases in the last three years). The problem of seventy-year old
works reproduced on the Internet is not a law enforcement (or even in
some cases a copyright owner's) priority.

'? If a petitioner sought to bring an action for declaratory judgment
against a copyright owner, the failure to allege an existing threat of suit
for infringement would defeat federal jurisdiction. See generally Wright
and Miller, Federal Practice and Procedure, § 2761.

10

application of the CTEA to 1923 works. Petitioners’
principal argument on the merits is that Congress had no
rational basis for believing that the extension of the 1923
term of copyrights would contribute to the progress of
literature, art, and music. The owners of those copyrights—
those whom Congress intended to benefit from the extended
term—are uniquely situated to provide information about the
ways in which an extended term for their works may
encourage distribution, preservation or creation of works of
literature or art, or otherwise further the many proper
objectives of copyright law. Their conspicuous absence
deprives this case of the concreteness necessary to render it
justiciable.

B. Petitioners Present A Hypothetical And
Abstract, Rather Than A Ripe, Concrete
Controversy

Petitioners base their standing to sue on their alleged
desire to copy, reprint, perform, restore, or sell 1923 works.
Pl.'s 2d Amd. Comp. %§ 14, 16. As indicated above,
however, petitioners completely fail to specify which of
those works they wish to use, or to describe how they wish to
use those works. They allege instead that “certain of the
Plaintiffs were preparing in some way" (emphasis added) to
use some such works—primarily those that are out-of-print
and of little current commercial value.

By failing to provide specific information about which
works they seek to use and how they seek to use them,
petitioners have made it impossible to know whether there is
a ripe controversy—whether the works they might wish to
use are, in fact, presently subject to federal statutory
copyright; whether, even if the works are in copyright,
petitioners’ proposed uses would be prohibited by the
Copyright Act; and whether, if petitioners’ uses would

1]

constitute copyright infringement, those uses might
nevertheless be authorized or permitted by the copyright
owner, if authorization were to be requested.

Petitioners’ failures may be based on an assumption that
any work created in 1923 would, of necessity, have had its
copyright extended by the CTEA, and that any use of any
such work by a petitioner would necessarily constitute an act
of copyright infringement. Such an assumption would be
entirely incorrect.

e First, the fact that a work may have been created in
1923 does not mean that the copyright term would
have started to run in that year or even within the
mext several years. In 1923—and indeed for the
whole history of the U.S. statutory copyright law
between 1790 and 1978—federal copyright
protection typically began at the time of publication
of a work, not at the moment of its creation.'°

e Second, not all works published in 1923 are the
subject of statutory copyright protection. Such a
work, for example, might fail to meet the
constitutionally required standard of originality, see
17 U.S.C. § 101; Feist Pubs. v. Rural Telephone,
499 U.S. 311 (1991), or might be a work, such as a
sound recording, that was not the subject of federal
copyright at that time. ”

3 See, e.g., Act of March 4, 1909, § 10, 35 Stat. 1075 (1909); Act
of Feb. 3, 1831, § 5, 4 Stat. 436 (1831); Act of May 31, 1790 § 3, Stat.
124 (1790). Even under current law, a work is not “created” until it is
fixed in tangible form. 17 U.S.C. § 102(a).

'* See 17 U.S.C. § 301(c) (pre-1972 sound recordings subject to
state common law protection).

12

e Third, many works first published in 1923 may not
be under copyright protection, failure to comply
because of the formalities that were required in order
to obtain and keep statutory copyright. Under the
1909 Act, an author or his or her assignee would
irrevocably lose statutory protection if the work were
published without a proper notice of copyright.'°
Moreover, if the copyright proprietor did not comply
with the complex renewal provisions, the copyright
was forfeited at the end of its initial 28-year term.'°

e Fourth, even if copyright were properly obtained and
renewed for a 1923 work, the desired use of that
work by one of the petitioners may well not be
proscribed by today's copyright statute. Petitioner Jill
Crandall, for example, alleges that she has been
prevented from "freely copying [unspecified musical]
works that were copyrighted in 1923” that she wishes
to perform with the church choir that she directs.
Pl.'s 2d Amd. Compl. #] 36-38. Even if these works
have survived the copyright formalities, their
performance at church services is exempted from the
exclusive rights that currently belong to a copyright
owner. 17 U.S.C. § 110(3). And copying the scores
of those works for purposes of a church performance,
may—depending upon the size of her choir, whether
the scores are out of print,'’ what is done with the

'S Act of March 4, 1909, § 10.

'® The initial term of copyright in 1923 was 28 years, with an
additional 28-year term potentially available to the copyright owner, but
only if an eligible person applied for renewal in the proper form and
within the strictly limited window of time provided for that purpose. If
renewal were not properly applied for and obtained, copyright would
terminate at the end of the initial 28-year term. See Act of March 4,
1909, § 24.

'" See Harper & Row v. The Nation, 471 U.S. 539, 553 (1986)
(observing that “a key, though not necessarily determinative, factor in

13

scores after the choir performance, and other factors
too numerous to describe'*—might well constitute
fair use of the material, thus providing a complete
defense to an infringement action.

e Finally, in order to violate the federal copyright
statute, a defendant must make the work available
without the consent of the copyright owner. Having
failed to specify the works they wish to use,
petitioners obviously cannot (and do not) allege that
they have sought permission from any copyright
owner to republish any work, or that they have been
unable to obtain permission.

In sum, petitioners allegations show, at most: (1) that
some works created in 1923 are presently subject to
copyright; (2) that some petitioners might at some time wish
to use one or more or these works; (3) that such uses might
possibly be prohibited by the Copyright Act; (4) that the
owners of the copyright might possibly not authorize
petitioners’ uses; and (5) that one or more petitioners
therefore might someday possibly be threatened with federal
criminal prosecution. A case based on that chain of
hypothetical possibilities is not an appropriate context for
judicial resolution of the constitutionality of an important
federal statute.

fair use is whether or not the work is available to the potential user,” and
that “If the work is ‘out of print’ and unavailable for purchase through
normal channels, the user may have more justification for reproducing
it"). The nonprofit use of out-of-print material by other petitioners may
also constitute fair use.

'§ Fair use is copyright’s equitable rule of reason that balances a
variety of interests in determining whether infringement is excused in a
particular case. See Sony v. Universal Studios, 464 U.S. 417, 448 n.31
(1984) (noting the case-by-case nature of fair use).

ee

14

Il. THE CTEA IS A VALID EXERCISE OF
CONGRESS'S AUTHORITY UNDER THE
COPYRIGHT CLAUSE

Petitioners argue that the "retroactive" application of the
CTEA's new term of copyright to works that existed at the
time of the CTEA's enactment is unconstitutional. Pet. Br.
17-31. They base their argument on their assertion that the
single permissible purpose that can justify a copyright law—
i.e., the only way that such a law can "Promote the Progress”
of literature, music and art—is for it to stimulate authors to
create new works.’ Since extension of the term of copyright
for a work already in existence cannot serve as an incentive
for the production of that work, petitioners argue, such an
extension cannot be a valid federal copyright law.7°

This is an odd and artificially straitjacketed view of what
Congress can do to "promote the Progress of Science and
useful Arts."*’ It is inconsistent with the theory and history

'° See Br. or Petitioner at 22-23 (To promote the “Progress of
Science,” a copyright term must, “stimulate . . ‘the creative activity of
authors.’... Whatever else a [copyright law] may do, it must promote
‘creative activity’ to satisfy the limits of the Constitution.”).

*° See Pet. Br. 22 ("It follows that a blanket extension of existing
copyrights cannot be a ‘limited Time []' that ‘promotes the Progress of
Science.’ It cannot, because the incentive is being given for work that
has already been produced. Retroactive extensions cannot ‘promote’ the
past. No matter what we offer Hawthorne or Hemingway or Gershwin,
they will not produce anything more.”).

Petitioners similarly argue that extending the copyright term of
existirg works violates what they call the "Quid Pro Quo Requirement”
of. the copyright clause. Pet. Br. 23 ("[Congress's] Copyright Clause
power is contingent upon an exchange. As nothing is received by the
public in exchange for, or conditioned upon, the retroactive extension [of

copyright to existing works] CTEA is beyond Congress's power.").

*! Amici agree with the court of appeals that the introductory
language of the Copyright Clause is not a judicially enforceable
limitation on Congress's powers under that Clause. See Eldred v. Reno,

239 F.3d 372, 380 (D.C. Cir. 2001). Because amici understand that

15

of U.S. copyright laws and it fails utterly to appreciate that
progress in art, literature and music and knowledge in
society can be promoted in a variety of ways in addition to
the direct stimulation of the creation of new works. The
reasons given by Congress for enactment of the CTEA, such
as encouraging dissemination, increased life expectancy of
authors and their heirs, and international harmonization are
more than sufficient for the exercise of its Article | power,
and are consistent with the historical exercise of that power
over the last 200 years. If adopted, petitioners’ contention
would handcuff Congress in addressing important copyright
problems in the future, and it would, in addition, render
unconstitutional all or part of virtually every copyright
statute that Congress has ever enacted.

A. Petitioners’ Argument is Inconsistent With
the History of the Copyright Clause, and
Takes an Unduly Narrow View of How
Congress May Promote Progress

1. Throughout most of the history of federal
copyright law, that law provided protection
upon publication and dissemination, not
upon creation.

For almost two hundred years, with minor exceptions,
federal copyright protection did not attach upon creation of a
work, but only when the work was published with the
necessary formalities—i.e., when copies of the work were
distributed to the public with notice of copyright.” During

respondent and other amici will address this point in detail, we focus our
comments on petitioners’ incorrect interpretation of the constitutional
language.

* See, e.g, Act of March 4, 1909, § 10 ("Any person entitled
thereto by this title may secure copyright for his work by publication
thereof with the notice of copyright required by this title."). Under § 12

rs

16

the time period between a work's creation and its publication,
copyright protection was the exclusive province of state
law.” Thus, for most of its history, federal copyright law
directly provided incentives to the process of dissemination,
not creation.’ It was not until January 1, 1978, the effective
date of the Copyright Revision Act of 1976, that federal
copyright protection attached at the time of a work's creation
and fixation in tangible form.

Clearly, the Congress that enacted the first federal
copyright law in 1790, and the Congresses that enacted the
major copyright revision laws in 1831,7> 1870°° and 19097’
were primarily concerned with enacting laws pursuant to the
Copyright Clause to promote publication and distribution of
existing works—something petitioners now tell us is an
inadequate constitutional basis for a copyright law.”*
Moreover, even in making the fundamental shift from a
publication-oriented copyright law to one that initiates
protection upon fixation of original works of authorship, the
94" Congress continued to show its concern with
encouraging dissemination. Section 303(a) of the 1976
Copyright Act revision terminated state protection for
existing unpublished works, substituting federal statutory
protection until December 31, 2002. But if the work were

of the 1909 Act, statutory copyright protection was available for certain
unpublished works, such as lectures and photographs, that were typically
publicly exploited by being performed or exhibited without the
distribution of copies to the public.

3 Under § 2 of the 1909 Copyright Act, there was no federal pre-
emption of state protection for unpublished works.

24 See Gorman and Ginsburg, Copyright 347 (2002).

> Act of Feb. 3, 1831, 4 Stat. 436.

6 act of July 8, 1870, 16 Stat. 212.

2” Act of March 4, 1909, 35 Stat. 1075.

28 Patent law similarly has always focused its protection on the act
of making an invention available to the public, not on the act of invention
itself. See Kewanee Oil v. Bicron Corp., 416 U.S. 470, 491-92 (1974)
(policy of patent law is to encourage disclosure).

17

published prior to that date, the work was to remain in
copyright for 25 additional years. The 94" Congress thus
extended copyright protection for works created by authors
"dead for many years, or even centuries." M. Nimmer & D.
Nimmer, Nimmer on Copyright, § 5.04.

2. The First Congress clearly understood that
its power under the Copyright Clause
extended beyond providing incentives for
the creation of new work; later Congresses
have followed suit.

The Congress that enacted the first Copyright Act in
1790 established a term of federal statutory copyright
protection for works to be published in the future—i.e., after
enactment of the 1790 Act. In doing so, Congress provided
incentives for authors to create new works. But the 1790 Act
also afforded federal statutory protection to works already in
existence.” The First Congress thus could not possibly have
believed that its power under the Copyright Clause was, as
petitioners contend, artificially and absolutely limited to
enactments that would provide incentives for the creation of
new works.°’ As the court of appeals correctly observed,
"the First Congress was clearly secure in its power under the

2° The 1790 Act afforded authors protection for "any map, chart,
book or books, already printed within the United States,” as well as those
"already made and composed, but not printed or published, and that shall
thereafter be made and composed.” Act of May 31, 1790, § 1.

3° Congress took the same action in 1976 when it converted existing
state common-law rights into federal statutory ones. As it had in 1790,
Congress in 1976 gave federal protection to works that had already been
produced. It could not have done so if it believed that its only authority
was to incentivize new works. Nor was Congress in 1790 or 1976
required to protect works already in existence in order to avoid
unjustifiable destruction of existing rights under state law. If it truly
believed—as petitioners contend—that it had no constitutional power to
confer rights on works already in existence, it could simply have let the
States continue to protect those works.

18

Copyright Clause fo extend the terms of subsisting
copyrights beyond those granted by the States."®' And, as
this Court noted well over a century ago:

"(t]he construction placed on the constitution by the
first [copyright] act of 1790 ... by the men who
were contemporary with its formation, many of
whom were members of the convention which
framed it, is entitled to very great weight."

Furthermore, every time a subsequent Congress has
increased the term of copyright protection it has increased
the term of protection for subsisting works, as well as for
works yet to be created. Congress took such action in 1831,
1909, 1976 and 1998. This consistent understanding of
Congress's copyright power to provide additional protection
for existing works has remained legally unchallenged until
the instant litigation.’ Such unchallenged congressional
action over the length of our Nation's history is entitled to
great weight: "[W]Jhen it is remembered that the rights thus
established have not been disputed during a period of nearly
a century, it is almost conclusive." Burrow-Giles, 111 U.S.
at 57.

>

*! 239 F.3d at 379 (emphasis added).

*? Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53, 57
(1883). Seventeen members of the First Congress had been delegates at
the Constitutional Convention. See Lynch v. Donnelly, 465 U.S. 668,
674 (1983).

* Similarly, each of the interim extensions that preceded the
enactment of the Copyright Revision Act of 1976 extended the renewal
term of subsisting copyrights that, but for those extensions, would have
expired while Congress considered adoption of that omnibus new law.
M. Nimmer and D. Nimmer, Nimmer on Copyright, § 9.11[A]. Once
again, Congress lacked this power if petitioners are correct.

19

3. Throughout History, Congress: Has
Frequently Enacted Copyright Laws That
Cannot Be Explained As Designed Only
To Provide Incentives For The Creation Of
New Works.

As was true in 1790, and in all legislation regarding
copyright terms since that time, Congress has repeatedly
used its Article I power to enact provisions that did not
encourage the creation of new works.

(a) Applying New Rights To Existing
Works

When Congress has conferred new exclusive rights on
copyright owners it has ordinarily made these rights
available, not only to the authors of works to be created after
enactment of the new law, but also to the proprietors of
existing works. For example, when Congress enacted the
Visual Artists Rights Act of 1990, it expressly made the
new Statutory rights of integrity and paternity applicable to
works created prior to the effective date of the Act.
Similarly, when Congress in 1976 expanded the rights of
copyright proprietors to include the exclusive right to
publicly display certain works, it made that new right
applicable to both existing and future works.*® And while

** Pub. L. No. 101-650, 104 Stat. 5089 (1990).

* 17 U.S.C. § 106A(dX(2) (providing rights of paternity and
integrity if author held title as of effective date). See also Martin v. City
of Indianapolis, 982 F. Supp. 625, 638 (S.D. Ind. 1997) (Work created in
1987 deemed within ambit of Act); Edward Samuels, The Public Domain
in Copyright Law, 41 J. Copyright Soc'y U.S.A. 137, 172-73 (1993)
(discussing the manner in which Congress has over the entire history of
the copyright laws, expanded rights in existing works).

-* 17 USC. § 301(a). Under this provision, all of the exclusive
rights set forth in § 106 apply to works of authorship created before or
after the effective date of the Act. See also Digital Performance Right in

20

the subject matter of copyright was extended by Congress to
include musical compositions in 1831, it was not until 1897
that the law was amended to provide copyright owners with
the exclusive right to publicly perform musical works.*’ It
has always been understood that this new public
performance right applied to works existing at the time of the
1897 amendments, as well as to works produced after 1897.

Other examples abound of adding new rights to existing
copyrights. For instance, when Congress increased the
penalties for civil and criminal copyright infringement, it
applied the new increased penalties not only to infringement
of future works, but also to works already in existence on the
effective date of the increases. See the Digital Theft
Deterrence and Copyright Damages Improvement Act of
1999, Pub. L. No. 106-160, 113 Stat. 1774. Congress has
taken similar "retroactive" action when it has enacted laws in
response to harmful marketplace practices made possible by
new technologies. For instance, both the Record Rental
Amendment Act of 1984** and the Computer Software
Rental Act of 1990°° prohibited unauthorized rental practices
that displace the sales of copyrighted works. These laws
applied to music and software created and copyrighted prior
to their dates of enactment, as well as to works created after
those dates.*° And, when Congress enacted the
comprehensive 1976 revision of the Copyright Act, as a

Sound Recordings Act of 1995, Pub. L. No. 104-39, 109 Stat. 336
(granting to existing copyright owners the new right to publiciy perform
sound recordings by means of digital transmission).

*” See Act of Jan. 6, 1897, 29 Stat. 481.

*8 See Pub. L. No. 98-450, 98 Stat. 1727 (1984); see also S. Rep.
No. 98-162 at 2 (1984).

*° Pub. L. No. 101-650, 104 Stat. 5089 (1990).

*° In order to avoid penalizing reliance on the fact that the law
previously did not prohibit these rental practices, both laws did not apply
to copies acquired prior to the date of enactment and in possession of the
renter as of that date.

2]
general matter it applied the Act's rights and protections both
to pre-existing and future works.*! C ongress could not have
taken any of these actions if. as petitioners contend, it may
not use the copyright power to extend the protection of
existing copyrights.

(b) Other Examples

The foregoing examples demonstrate how C ongress has
consistently promoted progress by applying new rights and
protections to existing works—something Congress could
not do if petitioners’ arguments were to be taken seriouslv.
Congress has also enacted a host of other laws that cannot
possibly be explained as inducing the creation of new works
even in their wholly prospective application. Thus. C ongress
has passed laws to exempt from the exclusive rights of
copyright owners activities such as the public performance
or display of works during certain face-to-face teaching
activity (§110(1)), performances and display during the
course of religious services (§ 110(3)), the playing of radio
and television broadcasts to customers by certain commercial
establishments (§110(5)), and the performance of
nondramatic literary or musical works by nonprofit fraternal
and veterans’ organizations (§110(10)). Enactment of such
—— cannot possibly induce the creation of new
works.

m To take another example, the cable television compulsory license
contained in the 1976 Act, 17 U.S.C. § 111, for the first time required
cable operators to pay for the retransmissions of existing and future
copyrighted works. As its legislative history makes clear, that provision
was designed, in part, to facilitate dissemination of broadcast
programming on a national basis. See, e.g, Capital Cities Cable. Inc. v.
Crisp, 467 U.S. 691, 710 (1984) (noting that in enacting the compulsory
license, Congress clearly sought to further copyright clause goals by
allowing the public to benefit from wider dissemination).

>

ae

Also completely unrelated to creating incentives for the
protection of new works is the Copyright Renewal Act of
1992.*° which eliminated the need for copyright owners of
works then in their initial term of copyright to take any
action to renew their copyrights in order to obtain the 28-
year statutory renewal term. Congress's actions had nothing
to do with stimulating the creation of new works: it sought to
address longstanding concerns that the renewal process had
functioned as a trap for the unwary, and removed this trap by
automatically granting the renewal term to existing works.
The deposit and registration provisions of the copyright law
also promote the progress of arts and sciences by enriching
the collections of the Library of Congress, and facilitating
business transactions between copyright owners and
potential licensees.”

B. Freed Of Petitioners’ Crabbed
Interpretation Of Congress's Power, The
CTEA Easily Passes Constitutional Muster

The foregoing discussion illustrates the broad variety of
ways in which Congress has used its copyright power for
purposes other than stimulating the production of new works.
It has protected existing copyrights against new means of
infringement, expanded the exclusive rights of the
proprietors of existing copyrights, increased penalties for the

* Pub. L. No. 102-307, 106 Stat. 274 (1992).

* See also 17 U.S.C. § 202 (overtuming series of state court
decisions holding that absent an agreement to the contrary, authors or
artists who sold a manuscript or work of art transferred the copyright as
well as physical object); H.R. Rep. No. 94-1476, at 124 (1976)
(explaining the rationale for the provision). . .

* See 17 U.S.C. §§ 701 ef seg. (describing operation of the
Copyright Office), 407-412. In upholding the deposit requirement, one
court has found it within Congress's power because it "sustains a national
library for the public use." Ladd v. Law & Technology Press, 762 F.2d

809, 812 (9 Cir. 1985).

infringement of existing copynghts. conferred copyright on
pre-existing works, increased the term of existing copynghts,
and removed traps through which proprietors of existing
works might lose rights. Congress has also acted to enrich
the collections of our national library, to provide
comprehensive copyright-related records. to harmonize our
laws with those of other nations. and to bring our laws into
conformity with international norms.** If petitioners’
artificially narrow interpretation of C ongress's power were to
be adopted. all of these laws would be unconstitutional, for
none of them can be explained as efforts to stimulate new
creation. Congress's ability to enact copyright legislation in
the future would also be greatly compromised. rendering
Congress incapable of adequately fulfilling its constitutional
responsibility to promote the progress of art. films. literature
and music.

Suppose, for example. a new form of piracy arose that
current copyright law did not adequately address. Petitioners
would permit Congress to amend the law to prohibit this new
form of piracy for works created after the amendment is

* See Berne Implementation Convention Act of 1988. Pub. L. No.
100-568, 102 Stat. 2853. On several occasions. Congress has noted its
concern that domestic copyright terms were less generous than those in
other nations. When it passed the 1831 Act. Congress announced that
one of its key objectives was "to enlarge the period for the enjoyment of
copy-right, and thereby place authors in this country more nearly upon
equality with authors in other countries.” 7 Reg. Deb. 21, Cong. 2d Sess.
App. CXIX (Dec. 17, 1830). Similarly, the legislative history of the
1976 Act reveals that, in increasing copyright terms, Congress was
motivated in part by an interest in conforming U.S. terms to those in
foreign nations. See H.R. Rep. No. 94-1476, at 134-136 (1976). ("The
arguments as to the benefits of uniformity with foreign laws, and the
advantages of international comity that would result from adoption of a
life-plus-50 term, are also highly significant"). See also Supplemental
Report of the Register of Copyright on the General Revision of U.S.
Copyright Law, 87-88 (1965) ("[I]t is ... increasingly important to have
the duration of U.S. copyrights conform to that prevalent abroad.").

24

enacted, but they deem it unconstitutional for Congress to
protect existing works from the new brand of piracy, for such
an amendment could do nothing to stimulate the creation of
existing works.*° Nor, if copyright infringement became a
more serious problem, could Congress increase the criminal
penalties for infringements of existing works, or the level of
statutory damages, for again those increases could not
possibly stimulate création of the works they would protect.
Such results would not only be unfortunate, they would be
patently absurd.

This Court should, instead, recognize Congress's
authority to select means, in its rational judgment, best
further the numerous goals of the Copyright Clause. Once
freed of the illogical and artificial limitation petitioners
would fasten on Congress's power, it is clear that application
of the CTEA's new term of copyright to existing, as well as
future, works was completely appropriate. As set forth in the
CTEA's legislative history, Congress had ample reasons for
following historical practice and applying the CTEA's new
term of copyright to existing works. These included creating
incentives to preserve and restore older works, helping to
harmonize U.S. copyright laws with the laws of other
nations, adequately rewarding authors and protecting their
heirs in view of increased life expectancies, and responding
to new technologies that increase opportunities for
proprietors of existing copyright to disseminate their
works.*”

*© Nor would it be part of the “bargains” struck with the authors of
existing works at the time of their creation. See Pet. Br. 23.

*” The rationality of Congress's actions with respect to the CTEA is
also reflected in the manner in which it conducted its legislative inquiry.
It utilized its fact-finding capabilities by holding balanced hearings that
evoked both strong support for and opposition to the term-extension
proposal. The Senate Judiciary Committee produced a thorough and
balanced Committee Report. Moreover, during the course of the
legislative process that covered two Congresses, changes were made to

25

Application of the CTEA's new copyright term to
existing works adheres to a common-sense tradition that
dates back to the very first federal copyright law in 1790.
The congressional action challenged in this case was thus
neither unprecedented nor aberrational—as petitioners
contend. It would have been aberrational had Congress
decided not to extend the CTEA's new copyright term to
existing copyrights. Congress had never before drawn an
arbitrary line that would leave authors of older works with
less protection that authors of future works. The
Constitution does not require it to do so now.*®

the proposal to accommodate concerns raised about the breadth of the
proposed term extension. For example, the CTEA includes a provision,
17 U.S.C. § 108(h), that provides an exemption from copyright
infringement during the extended term for qualified libraries, archives
and nonprofit educational institutions engaged in activities in the public
interest.

“* Congress is surely entitled to common-sense discretion to decide
to make the same set of rules applicable to all copyright proprietors and
infringers. Cf 7 Reg. Deb. 424 (statement of Mr. Huntington) (noting
that ‘justice, policy and equity alike’ forbade distinction between existing
and pre-existing works) (Jan. 7, 1831). To do otherwise would, in fact,
lead to a crazy-quilt of time-specific copyright rules. Under petitioners’
position, copyright owners could be accorded only those rights that were
part of the copyright law at the time of the creation of each particular
work. In judging infringement claims and actions, courts and litigants
would have to determine exactly when works were originally fixed in
tangible form so as to give the copyright proprietor only those precise
rights that existed at that time, not protections that might have been
added at a later time. It is one thing for Congress to decide for good
reason in particular cases not to apply new rights to existing works. It is
quite another for this Court to lay down a constitutional rule that would
deprive Congress of any ability to apply the same set of rules to all

copyrighted materials.

26

Ill. APPLICATION OF THE CTEA'S
COPYRIGHT EXTENSION TO EXISTING
COPYRIGHTS DOES NOT VIOLATE THE
FIRST AMENDMENT

Petitioners base their First Amendment challenge to the
application of the CTEA to existing copyrights on their
alleged constitutional right to express themselves by
mechanically reproducing and distributing the copyrighted
works of others without permission. It is very doubtful,
however, whether appropriating another's copyrighted work
without permission—as opposed to copying that may be
necessary for the purposes of comment or criticism—is the
copyists "speech," for purposes of the First Amendment.”
In all events, even if mechanical copying of another's
copyrighted work without permission is protectible speech,
application of the CTEA's extension of the term of copyright
to existing works easily passes the intermediate-scrutiny test
that petitioners invoke.

* In rejecting petitioners’ First Amendment claim, the court of
appeals may have erred when it stated that “copyrights are categorically
immune from challenges under the First Amendment." Eldred, 239 F.3d
at 377. One can imagine a copyright law—such as a law that would
provide copyright on the basis of the political viewpoint of a work—that
would violate the First Amendment. See United Christian Scientists v.
Christian Science Bd. of Directors, 829 F.2d 1152, 1164-65 (D.C. Cir.
1987) (holding that Congress cannot validly enact a private copyright
statute to ensure that Christian Scientists enjoy doctrinal purity).
However, a content-neutral copyright law that is a valid exercise of
Congress's copyright power, that does not purport to protect ideas, but
only the particular expression of the author, and that leaves room for
others to express themselves without unfairly appropriating an author's
work, may well be immune from a First Amendment challenge.

27

A. Mechanical Copying of Another's
Copyrighted Work Without Permission Is
Not Free Expression For Purposes of the
First Amendment

Petitioners assert that mechanical copying of the work of
others and distributing it without their permission constitutes
free expression for purposes of the First Amendment: "By
barring the unauthorized use or dissemination of copyrighted
works, copyright law regulates speech.” Pet. Br. 37.°° That
is an extremely dubious proposition. The First Amendment
is designed to enable people to publish their own expression,
not to appropriate and distribute someone else's expression
without permission. No expressive conduct is involved in
running a photocopier or video tape recorder or in posting
another's book on the Internet without the author's
permission and against the author's wishes.

Petitioners’ unusual claim that intentional copyright
infringement constitutes First Amendment activity is not
supported by any citation of authority. However, at least two
cases in the courts of appeals flatly reject the contention. In
United Video, Inc. v. FCC, 890 F.2d 1173 (D-C. Cir 1989),
petitioner cable television companies were "in the position of
claiming that they have a first amendment right to express
themselves using the copyrighted material of others." /d at
1190. The court of appeals held that they did not: "[T]he
petitioners desire to make commercial use of the copyrighted
works of others. There is no first amendment right to do so.”
Id. at 1191. In reaching this conclusion, the court relied on
this Court's decision in Harper & Row v. Nation Enterprises,

*° We join with amicus Professor Samuels in questioning
petitioners’ related contention that the Constitution on its own face
creates a “public domain" where one has a constitutional right to
appropriate the works of others without their permission. See Br. of Prof.
Samuels as Amicus Curiae at 22-24.

28

471 U.S. 539 (1985), where the Court considered whether a
magazine's unauthorized reproduction of portions of
President Ford's memoirs was a violation of the Copyright
Act. The court of appeals noted that, in upholding the
application of the Act, the Court did not apply First
Amendment scrutiny, but instead based its decision entirely
on whether the magazine's publication constituted "fair use”
under the statute (a claim which the Court rejected). See
also Author's League of America v. Oman, 790 F.2d 220,
223 (2™ Cir. 1986) ("the cases establish that there is a
constitutional right to freely circulate one's ideas .... They do
not, however, create any right to distribute and receive
material that bears the protection of the Copyright Act.").

The Copyright Act appears not to regulate speech
because it does not impose liability based on the content of

the defendant's own expression. Independent creation is a
complete defense to infringement, and liability only flows
based on those portions of a work that are copied from
another. To the extent that any petitioner in this case claims
an interest in publishing their own expression, petitioners fail
to explain how the idea/expression dichotomy and the
Copyright Act's fair use doctrine fail to protect that
freedom.”

*! Petitioners’ contention that mechanical copying is First
Amendment activity would, if accepted, raise doubts, not only about the
Copyright Act, but also other federal statutes that prohibit unauthorized
copying, such as 18 U.S.C. § 1832(a)(2) ("Whoever, with intent to
convert a trade secret, copies, duplicates ... or conveys such
information") and 18 U.S.C. § 1030 (prohibiting copying of information
from a protected computer), as well as numerous applications of the
Lanham Act, trade secret law and common law unfair competition and

mi tener tamer wa

29

B. Application of the CTEA's Copyright Term
to Existing Copyrights Satisfies Intermediate
Scrutiny

Amici believe that petitioners have not asserted any
cognizable First Amendment right, and that the Court's
inquiry should end there. Assuming arguendo that
mechanical reproduction of another's copyrighted material
without permission qualifies as protectible free expression,
application of the CTEA's extended term of copyright to
existing works easily satisfies intermediate scrutiny.
Petitioners’ argument to the contrary is based entirely on
their erroneous assertion that the only legitimate government
interest that can validly justify a federal copyright statute is
to encourage the production of new works. See Pet. Br. 40.

As we have shown in the prior section of this brief,
however, Congress's application of the CTEA's new term of
copyright to existing copyrighted works was a valid and
traditional exercise of the copyright power, supported by
Congress's desire to promote progress in literature, art and
music by encouraging distribution and preservation of
existing works, enhancing international harmonization, and
taking account of increased life expectancies. . Congress's
enactment of a valid copyright statute, pursuant to its express
constitutional authority to enact copyright legislation,
reflects an important governmental interest satisfying
intermediate scrutiny. At the same time, the presence of a
broad, flexible fair use provision and other exemptions and
limitations in that statute satisfies the intermediate scrutiny
requirement of narrow tailoring.~’

* There appears to be a consensus among those urging application
of the First Amendment to copyright infringement that intermediate
scrutiny would be the appropriate constitutional standard.

* See Nihon Keizai Shimbun, Inc. v. Comline Bus. Data, Inc., 166
F.3d 65, 73 (2d Cir. 1999) (noting that First Amendment concerns are

30

CONCLUSION

The complaint in this case does not present a justiciable
controversy. If the Court reaches the merits of the petition,
the decision of the court of appeals should be affirmed.

Respectfully Submitted,

PAUL BENDER *

MICHAEL R. KLIPPER

CHRISTOPHER A. MOHR

MEYER & KLIPPER, PLLC

923 15th Street, N.W.

Washington, D.C. 20005

(202) 637-0850

On Behalf of The Bureau of
National Affairs, Inc., CCH
Incorporated, Houghton
Mifflin Company, Inc., The
McGraw-Hill Companies,
Reed Elsevier Inc., the
Software & Information
Industry Association

* Counsel of Record

August 2002

protected by the fair use doctrine); New Era Pubs. v. Henry Holt & Co.,
813 F.2d 576, 584 (2d Cir. 1989) ("The fair use doctrine encompasses all
claims of first amendment in the copyright field."); Dallas Cowboys
Cheerleaders, Inc. v. Scoreboard Posters, Inc., 600 F.2d 1184, 1188 (Sth
Cir. 1979) (same); Walt Disney Productions v. Air Pirates, 58\ F.2d 751,
758-59 (9th Cir. 1978) (same); Wainwright Securities, Inc. v. Wall Street
Transcript Corp., 558 F.2d 91, 95 (2d Cir. 1977).

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Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385014_0514%3A32. Public record. Not legal advice.